Center for Advanced Study & Research on Innovation Policy


CASRIP Newsletter - Spring/Summer 1997, Volume 4, Issue 2

The United States Patent and Trademark Office (USPTO) Reorganization as a Government Corporation and Various Patent Law Reforms

The Senate Judiciary Committee amended and approved a significant patent bill, S. 507 (Hatch), on May 22, 1997, which converts the United States Patent and Trademark Office (USPTO) to a government corporation, requires publication of patent applications that are also filed abroad, protects prior U.S. users, and reforms reexamination proceedings.1 S. 507 must be taken up by the full Senate before the bill can move on and be considered by the assembled Congress. The House of Representatives passed a similar bill, H.R. 400 (Coble), on April 23, 1997.2 A brief review of the noteworthy features of the respective Senate and House bills follows.

Title I: The Conversion of the USPTO to a Government Corporation

Title I in both S. 507 and H.R. 400 espouses the reorganization of the USPTO as a government corporation. As a government corporation, the USPTO would enjoy more operational flexibility and self-rule than it currently has. S. 507 recommends that the USPTO be headed by a Director who supervises a Commissioner of Patents and a Commissioner of Trademarks; the abolition of statutory patent fees; fee-setting authority be given to the Commissioners; and that the USPTO be allowed to borrow money. H.R. 400 recommends the addition of a position for Under Secretary of Commerce for Intellectual Property Policy; that the Director and Under Secretary both report directly to the Secretary; fee-setting authority remain with Congress; and that section 122 be designed to prevent diversion of fees.

Title II in S. 507 and Part of Title II in H.R. 400: Publication of Applications

In an effort at patent law harmonization, Title II in S. 507 and part of Title II in H.R. 400 require publication of certain applications eighteen months after earliest filing. Specifically, S. 507 requires publication if the applicant is filing abroad; these applicants may obtain a patent as soon as at least one claim is allowable. H. R. 400 provides an exception to publication for independent inventors, small businesses and universities; these special parties may defer publication for greater than five years after filing if they do not file abroad.

Title III in S. 507 and Part of Title II in H.R. 400: Extension of Term

Both bills make it easier to obtain extensions for patent protection terms that expire 20 years after filing.

Title IV in S. 507: Prior User Rights and Title III in H.R. 400: Prior User Rights

Both bills recognize rights for U.S. manufacturers.

Title V in S. 507 and No Provision in H.R. 400: Reexamination Reform

S. 507 contains a provision for estoppel against all third parties requesting and obtaining reexamination on patents, but H.R. 400 dos not contain any such provision.

-- Laraine Morse Ward

1S. 507, 105th Cong. (1997).
2H.R. 400, 105th Cong. (1997)

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