Howard Coble

Mr. COBLE

Mr. COBLE. Mr. Speaker, I ask unanimous consent that all Members may have 5 legislative days within which to revise and extend their remarks on H.R. 3028, as amended.

Mr. COBLE. Mr. Speaker, I ask unanimous consent that the Committee on the Judiciary be discharged from the further consideration of the Senate bill (S. 1255) to protect consumers and promote electronic commerce by amending certain trademark infringement, dilution, and counterfeiting laws, and for other purposes, and ask for its immediate consideration in the House.

Mr. COBLE. Mr. Speaker, I offer a motion.

Mr. COBLE

Mr. COBLE. Mr. Speaker, each year the National Industries for the Blind selects three of its employees to win national awards for service, manufacturing and career achievement. I am proud to say that this year's winner of the Milton J. Samuelson Career Achievement Award is from the Sixth District of North Carolina. The story of our winner, Patricia C. Jarrett of Greensboro, North Carolina, is one of the most inspirational you will ever hear. One sunny summer day in 1977, Patricia went for an early morning walk on the beach. Her peaceful stroll was interrupted by a man with a gun who abducted her and shot her three times when she tried to escape. He left Patricia to die in a sand dune. Luckily she was found, but just barely alive. One bullet lodged in Patricia's brain, a second had pierced her right shoulder, and the third struck her in the nose. When she regained consciousness, Patricia was as helpless as a newborn baby. The damage was permanent. Patricia lost most of her vision along with her hearing in one ear. She was paralyzed on one side of her body. Patricia even had to relearn how to swallow and eat. Patricia completed the 10th and 11th grades of high school through a home tutoring program. She returned to school for the 12th grade winning the award for ``the most courageous senior.'' Fast forward several years to where Patricia met her future husband, Doug, at a church retreat conducted, ironically, at the beach. In 1991, Patricia entered a training program at Industries and business skills. She was hired as Sears TeleService Center where for four years she handled customer complaints and scheduled repair calls. In 1996, Patricia was hired by the organization which trained her, Industries of the Blind, as a receptionist and switchboard operator. In her duties, she greets visitors, manages the switchboard, handles walk-in sales, and processes mail for a manufacturing plant with more than 100 employees. In addition to her work responsibilities, Patricia has served on the Greensboro Mayor's Committee for Persons with Disabilities. She has been involved in initiatives to improve transportation opportunities for the disabled and has helped plan annual celebrations in recognition of the Americans with Disabilities Act. Patricia was even a 1996 torchbearer for the Paralympics relay that came through Greensboro on its way to Atlanta. Now, Patricia is living a full life with no time allowed to feel sorry for herself. In addition to her job, Patricia enjoys spending time at home with her husband and their dog. Looking to the future, Patricia wants to obtain even more computer skills and grow in responsibility at the Industries of the Blind. On behalf of the citizens of the Sixth District of North Carolina, we congratulate Patricia C. Jarrett on her national honor. We are thrilled that the National Industries for the Blind awarded Patricia with the 1999 Milton J. Samuelson Career Achievement Award. Patricia is living proof that the human spirit is greater than the evil which walks among us and that there are no limits placed upon any of us despite the hardships we may endure. Patricia's story is an inspiration to us all.

Mr. COBLE

Mr. COBLE. Mr. Speaker, I thank the gentleman for yielding time to me. Mr. Speaker, my district, which is located in inland North Carolina, was spared this very, very dreadful disease which now plagues eastern North Carolina. But even though we were spared, every time I go home, groups come to me and say, we cannot do enough for those victims down east, and also in New Jersey, but they are talking primarily about North Carolina. I called on an old law school friend of mine from Rocky Mount, which is also inland, Mr. Speaker, just to inquire as to how things are progressing. He said, you cannot imagine how bad it is until you come to see it. He said, the television portrayals really do not bring you up to speed. I guess about the only bright spot, Mr. Speaker, has been the East Carolina University football team. They played South Carolina. They could not return to their home in Greenville because the campus was under water. North Carolina State, which is their arch rival, loaned their stadium to them. There were signs, I noticed, in the East Carolina contingency thanking State, which is quite a landmark, the way those two schools battled each other football-wise. But East Carolina won that game and defeated Miami. An account in the largest newspaper in my district gave a detailed report of the game, but the focus was on the flood and the people from East Carolina who drove the back roads to get to Raleigh just to escape the flood. The concluding line of the story was that, oh, incidentally, East Carolina won the football game. But it was incidental, because keeping things in perspective, the news that day was the flood and how those people gathered in that parking lot in Raleigh to hold hands, to laugh, and to cry. I thank those in this body who are concerned about them, those who are empathizing and sympathizing with the people who have suffered through this disease that plagues North Carolina. A friend said, Howard, they do not need loans, they need grants. I concur. I hope we can come forward quickly and come to the aid of those people who desperately need it.

Mr. COBLE

Mr. COBLE. Mr. Speaker, on Wednesday, September 22, I had to return to North Carolina due the death of my father and was absent for votes the remainder of the week. During my absence, on September 22, 23, and 24, 1999, I missed rollcall votes 430 through 447. Had I been present, I would have voted ``no'' on rollcalls 430, 431, 432, 433, 434, and 435, ``yes'' on rollcalls 436 and 437, ``no'' on rollcalls 438, 439, 440, 441, and 442, ``yes'' on rollcalls 443 and 444, ``no'' on rollcalls 445, ``yes'' on rollcall 446, and ``no'' on rollcall 447.

Mr. COBLE

Mr. COBLE. Mr. Speaker, Lewis Flacks, who was employed nearly 25 years in the U.S. Copyright Office, died on July 23, 1999, in London. As Chairman of the Subcommittee on Courts and Intellectual Property, I have come to rely on the technical expertise on copyright matters that are available through the auspices of the Office. The men and women who work there provide a great and needed service to the Congress and the American public, and their contributions should be recognized with greater frequency. In this regard, while I was saddened to learn of Lewis' death, I am honored to have this opportunity to acknowledge his life and his work. I wish to enter in the Congressional Record the following article regarding Lewis Flacks' accomplishments. It originally appeared in the August issue of Copyright Notices, the staff newsletter of the Copyright Office. [Reprinted from Copyright Notices, Vol. 47, No. 8, August 1999] Lewis Flacks, An Appreciation (By Ruth Sievers) Lewis Flacks, 55 whose career at the Copyright Office spanned over 20 years, died of cancer in London on July 23, where he had lived for the past 6 years since leaving his position as a policy planning advisor to the Register. He was the director of legal affairs for the International Federation of the Phonographic Industry (IFPI). Known for his brilliance, his wit, and his devotion to his family, Lewis (also known as Lew in the Office) played major roles in the revision on the Copyright Act in 1976 and in the decision for the United States to adhere to the Berne Convention in 1988. He was the senior copyright advisor to the U.S. delegation during the TRIPS negotiations at the Uruguay Round of the General Agreement on Traffics and Trade (GATT). He served on virtually every Committee of Experts convened by the World Intellectual Property Organization (WIPO) from 1984 to 1992 to deal with the Berne Convention and the Universal Copyright Convention, and he was influential in negotiating the final texts of the Geneva Phonograms Convention and the Brussels Satellite Convention. More recently, his work was critical in the adoption of two important intellectual property treaties in December 1996, the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. It was not only the incredible depth of his knowledge of copyright law that made him an important resource in negotiations, but his role as a ``peacemaker,'' as former Register of Copyrights Barbara Ringer characterized him. During the revision process, the lengthy period leading up to the passage of the 1976 Act, Lewis came up with ``brilliant solutions'' enabling ``innumerable compromises,'' said Ringer. He was essential ``in putting out all those brush fires.'' ``He was a man of ideas,'' said Register of Copyrights Marybeth Peters. ``He was brilliant at strategies. He could talk about any subject in a way that bound his audience to his ideas.'' ``Because of his unsurpassed copyright expertise, his deft diplomatic touch, and his legendary ability to forge compromises, the United States spoke with a strong voice at the international bargaining table,'' said Ralph Oman, a former Register of Copyright. A native New Yorker, Lewis was a 1964 graduate of the City College of New York and a 1967 graduate of Georgetown Law School. That was the same year he began his career in the Copyright Office, when Barbara Ringer hired him as an examiner, though she says her primary purpose in bringing him on board was to get a project underway at the Library for the preservation of motion pictures. A mutual friend had recommended him to Ringer, who talked with him twice before passing him along to Former Examining Division Chief Art Levine for the actual hiring interview. ``As I recall, we talked nothing but movies,'' she said. ``Nobody knew more about movies than he did.'' He served the Office in various positions: senior examiner, attorney-advisor in the General Counsel's Office, special legal assistant to the Register, International copyright officer, and policy planning advisor. In speaking with his friends and colleagues to write this piece, what comes across in his complete uniqueness. ``I've never known a more brilliant person, but he covered it with his wild, modant humor,'' said Ringer. ``That's what people remember him for, but he had a great deal of depth.'' ``The most remarkable thing about Lewis was that time was of no relevance to him,'' said Neil Turkewitz of the Recording Industry Association of America (RIAA) who has known him since 1987. ``It was the real genius of him; it allowed him to explore the very details of things. He learned from everything, because he was so patient. . . . What really set him apart was his ability to learn.'' ``He would recognize the little nugget tucked away'' that others overlooked, said Ringer. ``He was a fantastic legal technician; he could grasp things that would take others weeks to see, and he could see all the ramifications.'' Furthermore, she said she knew she could rely on him to ``tell things like they are. He'd tell you if he thought you were off on the wrong track. . . . So many people have their own agendas or they just tell you what they think you want to hear. You could always trust what Lewis said--he always saw both sides of the picture.'' Said his wife, Frances Jones, who was his partner for 31 years, ``He had a strong sense of ethics . . . a sense of fairness.'' To a person, everyone mentioned his wit. ``He had keen insights into people, and he was always a wonderful and entertaining person to be around,'' said Art Levine. ``I'd introduce him to some of my clients at WIPO [meetings], and they would always be eager to get together with him again.'' ``He could be very funny, trotting out a variety of voices, especially Yiddish ones, that left his listeners laughing in the aisles,'' said David Levy, former attorney in the Examining Division. ``He was the funniest person I ever met,'' said Eric Schwartz, a former policy planning advisor who worked with Lewis. Schwartz recounts a story of how Flacks met comedian and actor Jerry Lewis in Paris--where Jerry Lewis is revered--in 1987 at a meeting on moral rights. ``Lewis (Flacks) approached Jerry Lewis and introduced himself as Jerry Lewis' `only American fan,' since only the French really appreciate Jerry Lewis' films. Jerry Lewis thought it was the funniest thing he'd heard.'' ``He was a perfect colleague--smart, funny, and bluff; a much sought-after dinner companion, he always had the best jokes, the hottest news, and the latest photographs of his beloved son, Paul,'' said Ralph Oman. His love and devotion to his son Paul, who is now 14, is something else that no one failed to mention in talking about Lewis. As Peters said, ``His son was one of his greatest joys.'' His wife mentioned another important role that Lewis played in private life and in the Office--that of teacher. Said Schwartz: ``He was a great teacher. He taught me international copyright law in a series of long talks in his office, which, combined with our love of films and his sense of humor, made it fun to come to work.'' Said Peter Vankevich, head of the Public Information Section, ``Lewis made copyright come alive, after talking with him, you felt really proud to work in the Office.'' Lewis had many passions--among them books, wine, theater, and more recently, music. He was teaching himself to play the guitar, Chicago-style blues. But above all, he was passionate about movies. ``He knew more about film and film preservation than anyone I've ever met, except for Barbara Ringer,'' said Schwartz, who served as the Library's counsel to the Film Preservation Board. ``I incorporated many of his ideas about film preservation into the legislation creating and reauthorizing the National Film Preservation Board (1988 and 1992) and Foundation (1996). His suggestions really helped the cause of film preservation, and he was very highly regarded in the Motion Picture and Recorded Sound Division.'' Admittedly, Lewis was not perfect. He was famous--or notorious--for not meeting deadlines. ``People had to flog him to get him to finish,'' said Ringer. ``It could be infuriating,'' said Levin, ``because he'd never get anything done on time. But then, when he finally produced a piece, it would be so brilliant, he'd get away with it.'' ``Lewis did everything slowly,'' said Turkewitz. ``He even walked slowly. You had to be careful or you'd be three blocks ahead of him. . . . He was someone who just decided that the decline of western civilization was being caused by its frantic pace, and he wasn't going to live that way.'' Turkewitz said you might think that would mean Lewis was, in terms of technology, a dinosaur, ``but he was just the opposite. He was very interested in technology. . . . He was a true renaissance man. He was complete sui generis.'' Or, as Ringer said, ``I never met anyone like him. He was utterly unique.'' Or, as Jason Berman, head of IFPI said, ``The legacy of Lew Flacks remains the legions of friends and admirers he made around the world in a distinguished 30-year career.'' The Copyright Office is holding a memorial program for Lewis Flacks on September 24 in the Mumford Room of the James Madison Memorial Building.

Mr. COBLE

Mr. COBLE. Mr. Speaker, I yield myself such time as I may consume. Mr. Speaker, I rise today, in support of H.R. 2112, the Multidistrict, Multiparty, Multiforum Trial Jurisdiction Act of 1999 and urge the House to adopt the measure. This bill is authored by the gentleman from Wisconsin (Mr. Sensenbrenner). Section 2 of H.R. 2112 responds to a 1998 Supreme Court decision pertaining to multidistrict litigation, the so-called ``Lexecon'' case. Section 2 of the bill would simply amend the multidistrict litigation statute by explicitly allowing the transferee court to retain jurisdiction over referred cases for trial or refer them to other districts as it sees fit. This change, it seems to me, Mr. Speaker, makes sense in light of past judicial practice under the multidistrict litigation statute. In addition, section 3 of H.R. 2112 offers what I believe are modest but necessary improvements to a specific type of multidistrict litigation, that involving disasters such as an airline or train accident, in which several individuals from different States are killed or injured. Finally, I note that there is a technical error in the committee report. Pursuant to a change advocated by the gentleman from Michigan (Mr. Conyers), which we accepted at full committee markup, the dollar threshold for cases brought under section 3 was raised from a previous draft of $50,000 to $75,000. $75,000 is the correct figure. This legislation obviously promotes judicial administrative efficiency without compromising the rights of litigants and their counsel to due process and appropriate compensation. It is strongly endorsed by the Administrative Office of the United States Courts, and I urge my colleagues to support it as well. Mr. Speaker, I reserve the balance of my time.

Mr. COBLE. Mr. Speaker, I ask unanimous consent that all Members may have 5 legislative days within which to revise and extend their remarks on the bill under consideration.

Mr. COBLE. Mr. Speaker, I thank the gentleman from California (Mr. Martinez) for his generous remarks. Mr. Speaker, I yield such time as he may consume to the gentleman from Wisconsin (Mr. Sensenbrenner), the sponsor of the bill

Mr. COBLE. Mr. Speaker, I have no further requests for time, and I yield back the balance of my time.

Mr. COBLE. Mr. Speaker, I move to suspend the rules and pass the bill (H.R. 2112) to amend title 28, United States Code, to allow a judge to whom a case is transferred to retain jurisdiction over certain multidistrict litigation cases for trial, and to provide for Federal jurisdiction of certain multiparty, multiforum civil actions, as amended.

Mr. COBLE

Mr. COBLE. Mr. Speaker, in light of eleventh-hour negotiations on a final suspension version of H.R. 1907, which the House of Representatives passed on August 4, 1999, changes have been made to the bill which are not reflected in the committee report that was filed. I therefore intend that this document supplement the report for purposes of detailing a more accurate legislative history of H.R. 1907. It should be noted that the later-adopted changes to the suspension version primarily concern title II, title V, and title VI, to which these supplementary comments will be confined. Changes to other sections of the bill are technical. Title II--First Inventor Defense Generally. Title II strikes an equitable balance between the interests of U.S. inventors who have invented and commercialized business methods and processes, many of which until recently were thought not to be patentable, and U.S. or foreign inventors who later patent the methods and processes. The title creates a defense for inventors who have reduced an invention to practice in the U.S. at least one year before the patent filing date of another, typically later, inventor and commercially used the invention in the U.S. before the filing date. A party entitled to the defense must not have derived the invention from the patent owner. The bill protects the patent owner by providing that the establishment of the defense by such an inventor or entrepreneur does not invalidate the patent. The title clarifies the interface between two key branches of intellectual property law--patents and trade secrets. Patent law serves the public interest by encouraging innovation and investment in new technology, and may be thought of as providing a right to exclude other parties from an invention in return for the inventor making a public disclosure of the invention. Trade secret law, however, also serves the public interest by protecting investments in new technology. Trade secrets have taken on a new importance with an increase in the ability to patent all business methods and processes. It would be administratively and economically impossible to expect any inventor to apply for a patent on all methods and processes now deemed patentable. In order to protect inventors and to encourage proper disclosure, this title focuses on methods for doing and conducting business, including methods used in connection with internal commercial operations as well as those used in connection with the sale or transfer of useful end results--whether in the form of physical products, or in the form of services, or in the form of some other useful results; for example, results produced through the manipulation of data or other inputs to produce a useful result. The earlier-inventor defense is important to many small and large businesses, including financial services, software companies, and manufacturing firms--any business that relies on innovative business processes and methods. The 1998 opinion by the U.S. Court of Appeals for the Federal Circuit in State Street Bank and Trust Co. v. Signature Financial Group, \1\ which held that methods of doing business are patentable, has added to the urgency of the issue. As the Court noted, the reference to the business method exception had been improperly applied to a wide variety of processes, blurring the essential question of whether the invention produced a ``useful, concrete, and tangible result.'' in the wake of State Street, thousands of methods and processes used internally are now being patented. In the past, many businesses that developed and used such methods and processes thought secrecy was the only protection available. Under established law, any of these inventions which have been in commercial use--public or secret--for more than one year cannot now be the subject of a valid U.S. patent. --------------------------------------------------------------------------- \1\ 149 F.3d 1368 (Fed. Cir. 1998) [hereinafter State Street] --------------------------------------------------------------------------- Sec. 201. Short title. Title II may be cited as the ``First to Invent Act.'' Sec. 202. Defense to patent infringement based on earlier inventor. In establishing the defense, subsection (a) of Sec. 202 creates a new Sec. 273 of the Patent Act, which in subsection (a) sets forth the following definitions: (5) commercially used and commercial use mean use of any method in the United States so long as the use is in connection with an internal commercial use or an actual sale or transfer of a useful end result; (2) commercial use as applied to a nonprofit research laboratory and nonprofit entities such as a university, research center, or hospital intended to benefit the public means that such entities may assert the defense only based on continued use by and in the entities themselves, but that the defense is inapplicable to subsequent commercialization or use outside the entities; (3) method means any method for doing or conducting an entity's business; and (4) effective filing date means the earlier of the actual filing date of the application for the patent or the filing date of any earlier U.S., foreign, or international application to which the subject matter at issue is entitled under the Patent Act. To be ``commercially used'' or in ``commercial use'' for purposes of subsection (a), the use must be in connection with either an internal commercial use or an actual arm's- length sale or other arm's-length commercial transfer of a useful end result. The method that is the subject matter of the defense may be an internal method for doing business, such as an internal human resources management process, or a method for conducting business such as a preliminary or intermediate manufacturing procedure, which contributes to the effectiveness of the business by producing a useful end result for the internal operation of the business or for external sale. Commercial use does not require the subject matter at issue to be accessible to or otherwise known to the public. Subject matter that must undergo a premarketing regulatory review period during which safety or efficacy is established before commercial marketing or use is considered to be commercially used and in commercial use during the regulatory review period. The issue of whether an invention is a method is to be determined based on its underlying nature and not on the technicality of the form of the claims in the patent. For example, a method for doing or conducting business that has been claimed in a patent as a programmed machine, as in the State Street case, is a method for purposes of Sec. 273 if the invention could have as easily been claimed as a method. Form should not rule substance. Subsection (b)(1) of proposed Sec. 273 establishes a general defense against infringement under Sec. 271 of the Patent Act. Specifically, a person will not be held liable with respect to any subject matter that would otherwise infringe one or more claims to a method in another party's patent if the person: (1) acting in good faith, actually reduced the subject matter to practice at least one year before the effective filing date of the patent; and (2) commercially used the subject matter before the effective filing date of the patent. The first inventor defense is not limited to methods in any particular industry such as the financial services industry, but applies to any industry which relies on trade secrecy for protecting methods for doing or conducting the operations of their business. Subsection (b)(2) states that the sale or other lawful disposition of a useful end result produced by a patented method, by a person entitled to assert a Sec. 273 defense, exhausts the patent owner's rights with respect to that end result to the same extent such rights would have been exhausted had the sale or other disposition been made by the patent owner. For example, if a purchaser would have had the right to resell a product or other end result if bought from the patent owner, the purchaser will have the same right if the product is purchased from a person entitled to a Sec. 273 defense. Subsection (b)(3) creates limitations and qualifications on the use of the defense. First, a person may not assert the defense unless the invention for which the defense is asserted is for a commercial use of a method as defined in Sec. 273(a) (1) and (3). Second, a person may not assert the defense if the subject matter was derived from the patent owner or persons in privity with the patent owner. Third, subsection (b)(3) makes clear that the application of the defense does not create a general license under all claims of the patent in question--it extends only to the specific subject matter claimed in the patent with respect to which the person can assert the defense. At the same time, however, the defense does extend to variations in the quantity or volume of use of the claimed subject matter, and to improvements that do not infringe additional, specifically- claimed subject matter. Subsection (b)(4) requires that the person asserting the defense has the burden of proof in establishing it by clear and convincing evidence. Subsection (b)(5) establishes that the person who abandons the commercial use of subject matter may not rely on activities performed before the date of such abandonment in establishing the defense with respect to actions taken after the date of abandonment. Such a person can rely only on the date when commercial use of the subject matter was resumed. Subsection (b)(6) notes that the defense may only be asserted by the person who performed the acts necessary to establish the defense, and, except for transfer to the patent owner, the right to assert the defense cannot be licensed, assigned, or transferred to a third party except as an ancillary and subordinate part of a good-faith assignment or transfer for other reasons of the entire enterprise or line of business to which the defense relates. When the defense has been transferred along with the enterprise or line of business to which it relates as permitted by subsection (b)(6), subsection (b)(7) limits the sites for which the defense may be asserted. Specifically, when the enterprise or line of business to which the defense relates has been transferred, the defense may be asserted only for uses at those sites where the subject matter was used before the later of the patent filing date or the date of transfer of the enterprise or line of business. Subsection (b)(8) states that a person who fails to demonstrate a reasonable basis for asserting the defense may be held liable for attorneys' fees under Sec. 285 of the Patent Act. Subsection (b)(9) specifies that the successful assertion of the defense does not mean that the affected patent is invalid. Paragraph (9) eliminates a point of uncertainty under current law, and strikes a balance between the rights of an inventor who obtains a patent after another inventor has taken the steps to qualify for a prior use defense. The bill provides that the commercial use of a method in operating a business before the patentee's filing date, by an individual or entity that can establish a Sec. 273 defense, does not invalidate the patent. For example, under current law, although the matter has seldom been litigated, a party who commercially used an invention in secrecy before the patent filing date and who also invented the subject matter before the patent owner's invention may argue that the patent is invalid under Sec. 102(g) of the Patent Act. Arguably, commercial use of an invention in secrecy is not suppression or concealment of the invention within the meaning of Sec. 102(g), and therefore the party's earlier invention could invalidate the patent. \2\ --------------------------------------------------------------------------- \2\ See Dunlop Holdings v. Ram Golf Corp., 524 F.2d 33 (7th Cir. 1975), cert. denied, 424 US 985 (1976). --------------------------------------------------------------------------- Sec. 203. Effective date and applicability. The effective date for Title II is the date of enactment, except that the title does not apply to any infringement action pending on the date of enactment or to any subject matter for which an adjudication of infringement, including a consent judgment, has been made before the date of enactment. Title V--Patent Litigation Reduction Act Generally. Title V is intended to reduce expensive patent litigation in U.S. district courts by giving third-party requesters, in addition to the existing ex parte reexamination in Chapter 30 of title 35, the option of inter partes reexamination proceedings in the PTO. Congress enacted legislation to authorize ex parte reexamination of patents in the PTO in 1980, but such reexamination has been used infrequently since a third party who requests reexamination cannot participate at all after initiating the proceedings. Numerous witnesses have suggested that the volume of lawsuits in district courts will be reduced if third parties can be encouraged to use reexamination by giving them an opportunity to argue their case for patent invalidity in the PTO. Title V provides that opportunity as an option to the existing parte reexamination procedures. Title V leaves existing ex parte reexamination procedures in Chapter 30 of title 35 intact, but establishes an inter parte reexamination procedure which third-party requesters can use at their option. Title V allows third parties who request inter partes reexamination to submit one written comment each time the patent owner files a response to the PTO. In addition, such third-party requesters can appeal to the PTO Board of Patent Appeals and Interferences from an examiner's determination that the reexamined patent is valid, but may not appeal to the Court of Appeals for the Federal Circuit. To prevent harassment, anyone who requests inter partes reexamination must identify the real party in interest and third-party requesters who participate in an inter partes reexamination proceeding are estopped from raising in a subsequent court action or inter partes reexamination any issue of patent validity that they raised or could have raised during such inter partes reexamination. Title V contains the important threshold safeguard (also applied in ex parte reexamination) that an inter partes reexamination cannot be commenced unless the PTO makes a determination that a ``substantial new question'' of patentability is raised. Also, as under Chapter 30, this determination cannot be appealed, and grounds for inter partes reexamination are limited to earlier patents and printed publications--grounds that PTO examiners are well- suited to consider. Sec. 501. Short title. Title V may be cited as the ``Optional Inter Partes Reexamination Procedure Act.'' Sec. 502. Clarification of Chapter 30. Section 502 distinguishes Chapter 31 from existing Chapter 30 by changing the title of Chapter 30 to ``Ex Parte Reexamination of Patents.'' Sec. 503. Definitions. Section 503 amends Sec. 100 of the Patent Act by defining ``third-party requester'' as a person who is not a patent owner requesting ex parte reexamination under Sec. 302 or inter partes reexamination under Sec. 311. Sec. 504. Optional Inter Partes Reexamination Procedure. Section 504 amends Part 3 of title 35 by inserting a new Chapter 31 setting forth optional inter partes reexamination procedures. New Sec. 311 of Sec. 504 differs from Sec. 302 of existing law in Chapter 30 of the Patent Act by requiring any person filing a written request for inter partes reexamination Similar to Sec. 303 of existing law, new Sec. 312 of the Patent Act confers upon the Director the authority and responsibility to determine, within three months after the filing of a request for inter partes reexamination, whether a substantial new question affecting patentability of any claim of the patent is raised by the request. Also, the decision in this regard is final and not subject to judicial review. Proposed Sec. Sec. 313-14 of Sec. 504 are similarly modeled after Sec. Sec. 304-305 of Chapter 30. Under proposed Sec. 313, if the Director determines that a substantial new question of patentability affecting a claim is raised, the determination shall include an order for inter partes reexamination for resolution of the question. The order may be accompanied by the initial PTO action on the merits of the inter partes reexamination conducted in accordance with Sec. 314. Generally, under proposed Sec. 314, inter partes reexamination shall be conducted according to the procedures set forth in Sec. Sec. 132-133 of the Patent Act. The patent owner will be permitted to propose any amendment to the patent and a new claim or claims, with the same exception contained in Sec. 305: No proposed amended or new claim enlarging the scope of the claims will be allowed. Proposed Sec. 314 elaborates on procedure with regard to third-party requesters who, for the first time, are given the option to participate in inter partes reexamination proceedings. With the exception of the inter partes reexamination request, any document filed by either the patent owner or the third-party requester shall be served on the other party. In addition, the third party-requester in an inter partes reexamination shall receive a copy of any communication sent by the PTO to the patent owner. After each response by the patent owner to an action on the merits by the PTO, the third-party requester shall have one opportunity to file written comments addressing issues raised by the PTO or raised in the patent owner's response. Unless ordered by the Director for good cause, the agency must act in an inter partes reexamination matter with special dispatch. Proposed Sec. 315 prescribes the procedures for appeal of an adverse PTO decision by the patent owner and the third- party requester in an inter partes reexamination. Both the patent owner and the third-party requester are entitled to appeal to the Patent Board of Appeals and Interferences (Sec. 134 of the Patent Act), but only the patentee can appeal to the U.S. Court of Appeals for the Federal Circuit (Sec. Sec. 141-144); either may also be a party to any appeal by the other to the Board of Patent Appeals and Interferences. The patentee is not entitled to the alternative of an appeal of an inter partes reexamination to the U.S. District Court for the District of Columbia. Such appeals are rarely taken from inter partes reexamination proceedings under existing law and its removal should speed up the process. To deter unnecessary litigation, proposed Sec. 315 imposes constraints on the third-party requester. In general, a third-party requester who is granted an inter partes reexamination by the PTO may not assert at a later time in any civil action in U.S. district court \3\ the invalidity of any claim finally determined to be patentable on any ground that the third-party requester raised or could have raised during the inter partes reexamination. However, the third- party requester may assert invalidity based on newly discovered prior art unavailable at the time of the reexamination. Prior art was unavailable at the time of the inter partes reexamination if it was not known to the individuals who were involved in the reexamination proceeding on behalf of the third-party requester and the PTO. --------------------------------------------------------------------------- \3\ See 28 U.S.C. Sec. 1338. --------------------------------------------------------------------------- Section 316 provides for the Director to issue and publish certificates canceling unpatentable claims, confirming patentable claims, and incorporating any amended or new claim determined to be patentable in an inter partes procedure. Title V creates a new Sec. 317 which sets forth certain conditions by which inter partes reexamination is prohibited to guard against harassment of a patent holder. In general, once an order for inter partes reexamination has been issued, neither a third-party requester nor the patent owner may file a subsequent request for inter partes reexamination until an inter partes reexamination certificate is issued and published, unless authorized by the Director. Further, if a third-party requester asserts patent invalidity in a civil action and a final decision is entered that the party failed to provide the assertion of invalidity, or if a final decision in an inter partes reexamination instituted by the requester is favorable to patentability, after any appeals, that third-party requester cannot thereafter request inter partes reexamination on the basis of issues which were or which could have been raised. However, the third-party requester may assert invalidity based on newly discovered prior art unavailable at the time of the civil action or inter parties reexamination. Prior art was unavailable at the time if it was not known to the individuals who were involved in the civil action or inter parties reexamination proceeding on behalf of the third-party requester and the PTO. Proposed Sec. 318 gives a patent owner the right, once an inter partes reexamination has been ordered, to obtain a stay of any pending litigation involving an issue of patentability of any claims of the patent that are the subject of the inter partes reexamination, unless the court determines that the stay would not serve the interests of justice. Section 505. Conforming amendments. Section 505 makes the following conforming amendments to the Patent Act: A patent owner must pay a fee of $1,210 for each petition in connection with an unintentionally abandoned application, delayed payment, or delayed response by the patent owner during any reexamination. A patent applicant, any of whose claims have been twice rejected; a patent owner in an reexamination proceeding; and a third-party requester in an inter partes reexamination proceeding may all appeal final adverse decisions from a primary examiner to the Board of Patent Appeals and Interferences. Proposed Sec. 141 states that a patent owner in a reexamination proceeding may appeal an adverse decision by the Board of Patent Appeals and Interferences only to the U.S. Court of Appeals for the Federal Circuit as earlier noted. A third-party requester in an inter partes reexamination proceeding may not appeal beyond the Board of Patent Appeals and Interferences. The Director is required pursuant to Sec. 143 (proceedings on appeal to the Federal Circuit) to submit to the court the grounds for the PTO decision in any reexamination addressing all the issues involved in the appeal. Sec. 506. Report to Congress. Five years after the effective date of title V, the Director must submit to Congress a report evaluating whether the inter partes reexamination proceedings set forth in the title are inequitable to any of the parties in interest and, if so, the report shall contain recommendations for change to eliminate the inequity. Sec. 507. Estoppel Effect of Reexamination. Section 507 estops any party who requests inter partes reexamination from challenging at a later time, in any civil action, any fact determined during the process of the inter partes reexamination, except with respect to a fact determination later proved to be erroneous based on information unavailable at the time of the inter partes reexamination. The estoppel arises after a final decision in the inter partes reexamination or a final decision in any appeal of such reexamination. If Sec. 507 is held to be unenforcable, the enforceability of the rest of title V or the Act is not affected. Sec. 508. Effective date. Title V shall take effect on the date that is one year after the date of enactment and shall apply to all inter partes reexamination requests filed on or after such date. Title VI--Patent and Trademark Office Generally. Title VI establishes the PTO as an agency of the United States within the Department of Commerce. The Secretary of Commerce gives policy direction to the agency, but the agency itself is responsible for the management and administration of operations and has independent control of budget allocations and expenditures, personnel decisions and processes, and procurement. The Committee intends that the office will conduct its patent and trademark operations without micromanagement by Department of Commerce officials, with the exception of policy guidance of the Secretary. The agency is headed by an Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, a Deputy, and a Commissioner of Patents and a Commissioner of Trademarks. The agency is exempt from government-wide personnel ceilings. A patent public advisory committee and a trademark public advisory committee are established to advise the Director on agency policies, goals, performance, budget and user fees. Sec. 601. Short title. Title VI may be cited as the ``Patent and Trademark Office Efficiency Act.'' Subtitle A--United States Patent and Trademark Office Sec. 611. Establishment of Patent and Trademark Office. Section 611 establishes the PTO as an agency of the United States within the Department of Commerce and under the policy direction of the Secretary of Commerce. The PTO is explicitly responsible for decisions regarding the management and administration of its operations and has independent control of budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions. Patent operations and trademark operations are to be treated as separate operating units within the Office. The PTO shall maintain its principal office in the metropolitan Washington, D.C., area, for the service of process and papers and for the purpose of discharging its functions. For purposes of venue in civil actions, the agency is deemed to be a resident of the district in which its principal office if located, except where otherwise provided by law. The PTO is also permitted to establish satellite offices in such other places in the United States as it considers necessary and appropriate to conduct business. Sec. 612. Powers and duties. Subject to the policy direction of the Secretary of Commerce, in general the PTO will be responsible for granting and issuing patents, the registration of trademarks, and the dissemination of patent and trademark information to the public. The PTO will also possess specific powers, which include: (1) a requirement to adopt and use an Office seal for judicial notice purposes and for authenticating patents, trademark certificates and papers issued by the Office; (2) the authority to establish regulations, not inconsistent with law, that (A) govern the conduct of PTO proceedings within the Office, (B) are in accordance with Sec. 553 of title 5, (C) facilitate and expedite the processing of patent applications, particularly those which can be processed electronically, (D) govern the recognition, conduct, and qualifications of agents, attorneys, or other persons representing applicants or others before the PTO, (E) recognize the public interest in ensuring that the patent system retain a reduced fee structure for small entities, and (F) provide for the development of a performance-based process for managing that includes quantitative and qualitative measures, standards for evaluating cost- effectiveness, and consistency with principles of impartiality and competitiveness; (3) the authority to acquire, construct, purchase, lease, hold, manage, operate, improve, alter and renovate any real, personal, or mixed property as it considers necessary to discharge its functions; (4) the authority to make purchases of property, contracts for construction, maintenance, or management and operation of facilities, as well as to contract for and purchase printing services without regard to those federal laws which govern such proceedings; (5) the authority to use services, equipment, personnel, facilities and equipment of other federal entities, with their consent and on a reimbursable basis; (6) the authority to use, with the consent of the United States and the agency, government, or international organization concerned, the services, records, facilities or personnel of any State or local government agency or foreign patent or trademark office or international organization to perform functions on its behalf; (7) the authority to retain and use all of its revenues and receipts; (8) a requirement to advise the President, through the Secretary of Commerce, on national and certain international intellectual property policy issues; (9) a requirement to advise Federal departments and agencies of intellectual property policy in the United States and intellectual property protection abroad; (10) a requirement to provide guidance regarding proposals offered by agencies to assist foreign governments and international intergovernmental organizations on matters of intellectual property protection; (11) the authority to conduct programs, studies of exchanges regarding domestic or international intellectual property law and the effectiveness of intellectual property protection domestically and abroad; (12) a requirement to advise the Secretary of Commerce on any programs and studies relating to intellectual property policy that the PTO may conduct or is authorized to conduct, cooperatively with foreign intellectual property offices and international intergovernmental organizations; and (13) the authority to (A) coordinate with the Department of State in conducting programs and studies cooperatively with foreign intellectual property offices and international intergovernmental organizations, and (B) transfer, with the concurrence of the Secretary of State, up to $100,000 in any year to the Department of State to pay an international intergovernmental organization for studies and programs advancing international cooperation concerning patents, trademarks, and other matters. The specific powers set forth in new subsection (b) are clarified in new subsection (c). The special payments of paragraph (14)(B) are additional to other payments or contributions and are not subject to any limitation imposed by law. Nothing in subsection (b) derogates from the duties of the Secretary of State or the United States Trade Representative as set forth in Sec. 141 of the Trade Act of 1974,\4\ nor derogates from the duties and functions of the Register of Copyrights. The Director is required to consult with the Administrator of General Services when exercising authority under paragraphs (3) and (4)(A). Finally, nothing in Sec. 612 may be construed to nullify, void, cancel, or interrupt any pending request-for-proposal let or contract issued by the General Services Administration for the specific purpose of relocating or leasing space to the PTO. --------------------------------------------------------------------------- \4\ 19 U.S.C. Sec. 2171. --------------------------------------------------------------------------- Sec. 613. Organization and management. Section 613 details the organization and management of the agency. The powers and duties of the PTO shall be vested in the Director, who shall be appointed by the President, by and with the consent of the Senate. The Director performs two main functions. As Under Secretary of Commerce for Intellectual Property, she serves as the policy advisor to the Secretary of Commerce on intellectual property issues. As Director, she is responsible for the management and direction of the PTO. She shall consult with the Public Advisory Committees, infra, on a regular basis regarding operations of the agency and before submitting budgetary proposals and fee or regulation changes. the Director shall take an oath of office. The President may remove the Director from office, but must provide notification to both houses of Congress. The Secretary of Commerce, upon nomination of the director, shall appoint a Deputy Director to act in the capacity of the Director if the Director is absent or incapacitated. The Secretary of Commerce shall also appoint two Commissioners, one for Patents, the other for Trademarks, without regard to chapters 31, 51, or 53 of the U.S. Code. The Commissioners will have five-year terms and may be reappointed to new terms by the Secretary. Each Commissioner shall possess a demonstrated experience in patent and trademark law, respectively; and they shall be responsible for the management and direction of the patent and trademark operations, respectively. In addition to receiving a basic rate of compensation under the Senior Executive Service \5\ and a locality payment ,\6\ the Commissioners may receive bonuses of up to 50 percent of their annual basic rate of compensation, not to exceed the salary of the Vice President, based on a performance evaluation by the Secretary, acting through the Director. The Secretary may remove Commissioners for misconduct or unsatisfactory performance. --------------------------------------------------------------------------- \5\ 28 U.S.C. Sec. 5382. \6\ 5 U.S.C. Sec. 5304(h)(2)(C). --------------------------------------------------------------------------- The Director may also appoint other officers, agents, and employees as she sees fit, and define their responsibilities with equal discretion. The PTO is specifically not subject to any administratively or statutorily imposed limits (full-time equivalents, or ``FTEs'') on positions or personnel. The PTO is charged with developing and submitting to Congress a proposal for an incentive program to retain senior (of the primary examiner grade or higher) patent and trademark examiners eligible for retirement for the sole purpose of training patent and trademark examiners. The PTO will be subject to all provisions of title 5 of the U.S. Code governing federal employees. All relevant labor agreements which are in effect the day before enactment of title VI shall be adopted by the agency. All PTO employees as of the day before the effective date of Title VI shall remain officers and employees of the agency without a break in service. Other personnel of the Department of Commerce shall be transferred to the PTO only if necessary to carry out purposes of title VI of the bill and if a major function of their work is reimbursed by the PTO they spend at least half of their work time in support of the PTO, or a transfer to the PTO would be in the interest of the agency, as determined by the Secretary of Commerce in consultation with the Director. On or after the effective date of the Act, the President shall appoint an individual to serve as Director until a Director qualifies under subsection (a). The persons serving as the Assistant Commissioner for Patents and the Assistant Commissioner for Trademarks on the day before the effective date of the Act may serve as the Commissioner for Patents and the Commissioner for Trademarks, respectively, until a respective Commissioner is appointed under subsection (b)(2). Sec. 614. Public Advisory Committees. Section 613 provides a new section 5 of the Patent Act which establishes a Patent Public Advisory Committee and a Trademark Public Advisory Committee. Each Committee has nine voting members with three- year terms appointed by and serving at the pleasure of the Secretary of Commerce. Initial appointments will be made within three months of the effective date of the Act; and three of the initial appointees will receive one-year terms, three will receive two-year terms, and three will receive full terms. Vacancies will be filled within three months. The Secretary will also designate chairpersons for three-year terms. The members of the Committees will be U.S. citizens and will be chosen to represent the interests of users. The Patent Public Advisory Committee shall have members who represent small and large entity applicants in the United States in proportion to the number of applications filed by the small and large entity applicants. In no case shall the small entity applicants be represented by less than 25 percent of the members of the Patent Public Advisory Committee, at least one of whom shall be an independent inventor. The members of both Committees shall include individuals with substantial background and achievement in finance, management, labor relations, science, technology, and office automation. The patent and trademark examiners' unions are entitled to have one representative on their respective Advisory Committee in a non-voting capacity. The Committees meet at the call of the chair to consider an agenda established by the chair. Each Committee reviews the policies, goals, performance, budget, and user fees that bear on its area of concern and advises the Director on these matters. Within 60 days of the end of a fiscal year, the Committees prepare annual reports, transmit the reports to the Secretary of Commerce, the President, and the Committees on the Judiciary of the Congress, and publish the reports in the Official Gazette of the PTO. Members of the Committees are compensated at a defined daily rate for meeting and travel days. Members are provided access to PTO records and information other than personnel or other privileged information including that concerning patent applications. Members are special Government employees within the meaning of Sec. 202 of title 18. The Federal Advisory Committee Act shall not apply to the Committees. Finally, Sec. 614 provides that Committee meetings shall be open to the public unless by a majority vote the Committee meets in executive session to consider personnel or other confidential information. Sec. 615. Patent and Trademark Office funding. Pursuant to Sec. 42(c) of the Patent Act, fee available to the Commissioner under Sec. 31 of the Trademark Act of 1946 \7\ may be used only for the processing of trademark registrations and for other trademark-related activities, and to cover a proportionate share of the administrative costs of the PTO. In an effort to more tightly ``fence'' trademark funds for trademark purposes, Sec. 615 amends this language such that all (trademark) fees available to the Commissioner shall be used for trademark registration and other trademark- related purposes. In other words, the Commissioner may exercise no discretion when spending funds; they must be earmarked for trademark purposes. --------------------------------------------------------------------------- \7\ 15 U.S.C. Sec. 1051, et. seq. --------------------------------------------------------------------------- Sec. 616. Conforming amendments. Technical conforming amendments to the Patent Act are set forth in Sec. 616. Sec. 617. Trademark Trial and Appeal Board. Section 617 amends Sec. 17 of the Trademark Act of 1946 by specifying that the Director shall give notice to all affected parties and shall direct a Trademark Trial and Appeal Board to determine the respective rights of those parties before it in a relevant proceeding. The section also invests the Director with the power of appointing administrative trademark judges to the Board. The Director, the Commissioner for Trademarks, the Commissioner for Patents, and the administrative trademark judges shall serve on the Board. Sec. 618. Board of Patent Appeals and Interferences. Under existing Sec. 7 of the Patent Act, the Commissioner, Deputy Commissioner, Assistant Commissioner, and the examiners-in- chief constitute the Board of Patent Appeals and Interferences. Pursuant to Sec. 618 of Title VI, the Board is comprised of the Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges. In addition, the existing statute allows each appellant a hearing before three members of the Board who are designated by the Commissioner. Section 618 empowers the Director with this authority. Sec. 619. Annual report of Director. No later than 180 days after the end of each fiscal year, the Director must provide a report to Congress detailing funds received and expended by the PTO, the purposes for which the funds were spent, the quality and quantity of PTO work, the nature of training provided to examiners, the evaluations of the Commissioners by the Secretary of Commerce, the Commissioners' compensation, and other information relating to the agency. Sec. 620. Suspension or exclusion from practice. Under existing Sec. 32 of the Patent Act, the Commissioner (the Director pursuant to Sec. 632 of this Act) has the authority, after notice and a hearing, to suspend or exclude from further practice before the PTO any person who is incompetent, disreputable, indulges in gross misconduct or fraud, or is noncompliant with PTO regulations. Section 620 permits the Director to designate an attorney who is an officer or employee of the PTO to conduct a hearing under Sec. 32. Sec. 621. Pay of Director and Deputy Director. Section 621 replaces the Assistant Secretary of Commerce and Commissioner of Patents and Trademarks with the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office to receive pay at Level III of the Executive Schedule.\8\ Section 621 also establishes the pay of the Deputy Director at Level IV of the Executive Schedule.\9\ --------------------------------------------------------------------------- \8\ 5 U.S.C. Sec. 5314. \9\ 5 U.S.C. Sec. 5315. --------------------------------------------------------------------------- Sec. 622. Study on fees. Section 622 call on the Under Secretary of Commerce for Intellectual Property to conduct a study of alternative fee structures to encourage maximum participation by inventors in the PTO. Subtitle B--Effective Date; Technical Amendments Sec. 631. Effective Date. The effective date of Title VI is four months after the date of enactment. Section 632. Technical and conforming amendments. Section 632 sets forth numerous technical and conforming amendments related to Title VI. Subtitle C--Miscellaneous Provisions Sec. 641. References. Section 641 clarifies that any reference to the transfer of a function from a department or office to the head of such department or office means the head of such department or office to which the function is transferred. In addition, in other federal materials to the Commissioner of Patents and Trademarks refer, upon enactment, to the Director of the United States Patent and Trademark Office. Similarly, references to the Assistant Commissioner for Patents deemed to refer to the Commissioner for Patents and references to the Assistant Commissioner for Trademarks are deemed to refer to the Commissioner for Trademarks. Sec. 642. Exercise of authorities. Under Sec. 642, except as otherwise provided by law, a federal official to whom a function is transferred pursuant to Title VI may exercise all authorities under any other provision of law that were available regarding the performance of that function to the official empowered to perform that function immediately before the date of the transfer of the function. Sec. 643. Savings provisions. Relevant legal documents that relate to a function which is transferred by Title VI, and which are in effect on the date of such transfer, shall continue in effect according to their terms unless later modified or repealed in an appropriate manner. Applications or proceedings concerning any benefit, service, or license pending on the effective date of Title VI before an office transferred shall not be affected, and shall continue thereafter, but may later be modified or repealed in the appropriate manner. Title VI will not affect suits commenced before the effective date of passage. Suits or actions by or against the Department of Commerce, its employees, or the Secretary shall not abate by reason of enactment of Title VI. Suits against a relevant government officer in her official capacity shall continue post enactment, and if a function has transferred to another officer by virtue of enactment, that other officer shall substitute as the defendant. Finally, administrative and judicial review procedures that apply to a function transferred shall apply to the head of the relevant federal agency and other officers to which the function is transferred. Sec. 644. Transfer of assets. Section 644 states that all available personnel, property, records, and funds related to a function transferred pursuant to Title VI shall be made available to the relevant official or head of the agency to which the function transfers at such time or times as the Director of the Office of Management and Budget (OMB) directs. Sec. 645. Delegation and assignment. Section 645 allows an official to whom a function is transferred under Title VI to delegate that function to another officer or employee. The official to whom the function was originally transferred nonetheless remains responsible for the administration of the function. Sec. 646. Authority of Director of the Office of Management and Budget with respect to functions transferred. Pursuant to Sec. 646, if necessary the Director of OMB shall make any determination of the functions transferred pursuant to Title

Mr. COBLE

Mr. COBLE. Mr. Speaker, on that I demand the yeas and nays.

Mr. COBLE. Mr. Speaker, I ask unanimous consent that all Members may have 5 legislative days to revise and extend their remarks and include extraneous material on the bill under consideration.

Mr. COBLE. Mr. Speaker, I yield myself such time as I may consume. Mr. Speaker, I want to say to my friend from California and to my friend from Ohio, the gentlewoman from California's comments, I think, make it clear that no one is trying to roll anyone. I think that has been made clear by the gentlewoman from California's comment subsequent to the beginning of the debate. I rise tonight, Mr. Speaker, in support of H.R. 1907, the American Inventors Protection Act, and urge the House to adopt the measure. Mr. Speaker, a coalition of Members, staff, administration officials and other contributors have negotiated in good faith into the early evening to clarify what few outstanding issues remain in this 100-plus- page bill. I now anticipate overwhelming support for this complex, important and often misunderstood measure which will bring our patent and trademark system into the 21st century to the benefit of American inventors and American consumers. Mr. Speaker, H.R. 1907 is a product of compromise and negotiation. It is comprised of several provisions that have been suggested by the gentleman from California (Mr. Rohrabacher), the gentleman from California (Mr. Campbell), each of whom opposed this the last session, the gentleman from Illinois (Mr. Manzullo) and the gentleman from Indiana (Mr. Burton), in addition to other administration and industry officials. The gentlewoman from California (Ms. Lofgren), the gentleman from California (Mr. Berman), the ranking member of the subcommittee, among others, have been very helpful in this process. I want to thank all the participants and others too numerous to name for their patience and insight as we have labored to bring this bill finally to the floor. Mr. Speaker, with a bill this complex and lengthy, no one who participates in its construction can get everything he or she wants. I think we have all done a good job, however, of addressing those legitimate concerns registered by independent inventors while retaining the core protections of the legislation. There is no doubt in my mind that H.R. 1907 will make our patent and trademark system, already the world's best, even better in the new millennium. Mr. Speaker, I place an exchange of letters in the Record concerning committee jurisdiction on the bill H.R. 1907 between Chairman Burton and Chairman Hyde. U.S. House of Representatives, Committee on Government Reform, Washington, DC, August 3, 1999. Hon. Henry J. Hyde, Chairman, Committee on the Judiciary, Washington, DC. Dear Mr. Chairman: I am writing with regard to H.R. 1907, the American Inventors Protection Act of 1999. As you know, under House Rule X of the Committee on Government Reform and Oversight has jurisdiction over the federal civil service and the overall economy, efficiency, and management of government operations and activities. Sections 612, 613, 614, and 621 of the amended bill address matters that are within the jurisdiction of this Committee. In the interest of expediting floor consideration for this measure, the Committee on Government Reform will agree not to exercise its jurisdiction over those sections on the understanding that you have agreed to amend the bill as follows: 1. Section 613 will be revised to provide that the total compensation of the Commissioner for Patents and the Commissioner for Trademarks may not exceed the salary of the Vice President. (It is our understanding that the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office and the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office will not be eligible for bonuses under a revised version of the bill that your committee has already agreed to.) 2. Section 614 will be further revised to require the Patent and Trademark Office to submit to Congress a legislative proposal to retain patent and trademark examiners for the purpose of training other patent and trademark examiners rather than allow the Office to develop and implement such program without congressional intervention. Our decision not to exercise our jurisdiction over this measure is not intended or designed to waive or limit our jurisdiction over any future consideration of related matters. Sincerely, Dan Burton, Chairman.

Mr. COBLE. This deletion was done at the request of the Patent and Trademark Office, and the reason given by PTO was that it considered it a constitution of an additional administrative burden, and for that reason that change was made.

Mr. COBLE. Mr. Speaker, I move to suspend the rules and pass the bill (H.R. 1907) to amend title 35, United States Code, to provide enhanced protection for inventors and innovators, protect patent terms, reduce patent litigation, and for other purposes, as amended.

Mr. COBLE. We will get to that substantively. Mr. Speaker, I yield 5 minutes to the gentleman from California (Mr. Rohrabacher).

Mr. COBLE. Mr. Speaker, will the gentlewoman yield?

Mr. COBLE. Mr. Speaker, it is limited, I say to the gentlewoman from California, to the State Street Bank case. There was some discussion early on that. Perhaps the first inventive defense should apply to processes as well as methods. But we finally concluded that we would restrict it to methods only, and that, by having done that, we were able to satisfy some folks who were opposed to the bill otherwise.

Mr. COBLE. Mr. Speaker, will the gentlewoman yield?

Mr. COBLE. If the gentlewoman from California would continue to yield?

Mr. COBLE. Primarily this was done for the benefit of the independent inventors to balance the interest of a third party with those of a patent need, patentee, by allowing a third party to pursue reexamination under the existing system or opting for a strictly limited ex parte reexamination while assuring that a patentee would not be subject to harassment in such proceedings.

Mr. COBLE

Mr. COBLE. Madam Speaker, the gentleman who opened the House today, Reverend Carter, I came to know him, his wife, Betty, his son David, and the Baptist Temple Church family when I initially was a candidate for Congress in 1984. Don and his church family and the entire Alamance County Ministerial Association serve their county well, and we are honored to have Don to open our service today. The bad news is I no longer represent him. As a result of redistricting, Alamance County was assigned to another Congressional District, and they are now ably represented by the gentleman to whom I yield. I am pleased to yield, Madam Speaker, to the gentleman from North Carolina (Mr. Burr).