GRI

Trademark Clarification Act of 1984

Law Intellectual property Law
Date: 8th Nov, 1984 Source: Congress.gov Country: USA Original Source

Brief

The Federal District Court Organization Act of 1984 aims to enhance the efficiency and effectiveness of the federal court system. Key provisions include the establishment of the Federal Claims Court, with jurisdiction over claims against the United States, and authorization for special masters to assist in carrying out its functions. The law also makes technical amendments to other laws related to federal courts, clarifies rights and obligations under funding agreements, and introduces new procedures for patent applications and foreign protection.

PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3335
Public Law 98-620
98th Congress
An Act
To amend title 28. United States Code, with respect to the places where court shall be Nov. 8, 1984
held in certain judicial districts, and for other purposes. [H.R. 6163]
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
TITLE I Trademark
Clarification Act
SHORT TITLE of 1984.
SEC. 101. This title may be cited as the "Trademark Clarification 15 use 1051
Act of 1984". note.
AMENDMENT TO THE TRADEMARK ACT
SEC. 102. Section 14(c) of the Trademark Act of 1946, commonly
known as the Lanham Trademark Act (15 U.S.C. 1064(c)) is amended
by adding before the semicolon at the end of such section a period
and the following: "A registered mark shall not be deemed to be the
common descriptive name of goods or services solely because such
mark is also used as a name of or to identify a unique product or
service. The primary significance of the registered mark to the
relevant public rather than purchaser motivation shall be the test
for determining whether the registered mark has become the
common descriptive name of goods or services in connection v-^ith
which it has been used".
DEFINITIONS
SEC. 103. Section 45 of such Act (15 U.S.C. 1127) is amended as
follows:
(1) Strike out "The term 'trade-mark' includes any word,
name, symbol, or device or any combination thereof adopted
and used by a manufacturer or merchant to identify his goods
and distinguish them from those manufactured or sold by
others." and insert in lieu thereof the following: "The term
'trademark' includes any word, name, symbol, or device or any
combination thereof adopted and used by a manufacturer or
merchant to identify and distinguish his goods, including a
unique product, from those manufactured or sold by others and
to indicate the source of the goods, even if that source is
unknown.".
(2) Strike out "The term 'service mark' means a mark used in
the sale or advertising of services to identify the services of one
person and distinguish them from the services of others." and
insert in lieu thereof the following: "The term 'service mark'
means a mark used in the sale or advertising of services to
identify and distinguish the services of one person, including a
unique service, from the services of others and to indicate the
source of the services, even if that source is unknown.". 98 STAT. 3336 PUBLIC LAW 98-620—NOV. 8, 1984
(3) Add at the end of subparagraph (b) in the paragraph which
begins "A mark shall be deemed to be 'abandoned'", the follow­
ing new sentence: "Purchaser motivation shall not be a test for
determining abandonment under this subparagraph.".
15 use 1064
note.
State Justice
Institute Act of
1984.
42 use 10701
note.
42 use 10701. JUDGMENTS
SEC. 104. Nothing in this title shall be construed to provide a basis
for reopening of any final judgment entered prior to the date of
enactment of this title.
TITLE II
SHORT TITLE
SEC. 201. This title may be cited as the "State Justice Institute Act
of 1984".
DEFINITIONS
SEC. 202. As used in this title, the term—
(1) "Board" means the Board of Directors of the Institute;
(2) "Director" means the Executive Director of the Institute;
(3) "Governor" means the Chief Executive Officer of a State;
(4) "Institute" means the State Justice Institute;
(5) "recipient" means any grantee, contractor, or recipient of
financial assistance under this title;
(6) "State" means any State of the United States, the District
of Columbia, the Commonwealth of Puerto Rico, the Virgin
Islands, Guam, American Samoa, the Northern Mariana
Islands, the Trust Territory of the Pacific Islands, and any other
territory or possession of the United States; and
(7) "Supreme Court" means the highest appellate court
within a State unless, for the purposes of this title, a constitu­
tionally or legislatively established judicial council acts in place
of that court.
eorporation.
42 use 10702. ESTABLISHMENT OF INSTITUTE; DUTIES
SEC. 203. (a) There is established a private nonprofit corporation
which shall be known as the State Justice Institute. The purpose of
the Institute shall be to further the development and adoption of
improved judicial administration in State courts in the United
States. The Institute may be incorporated in any State pursuant to
section 204(a)(6) of this title. To the extent consistent with the
provisions of this title, the Institute may exercise the powers con­
ferred upon a nonprofit corporation by the laws of the State in
which it is incorporated.
(b) The Institute shall—
(1) direct a national program of assistance designed to assure
each person ready access to a fair and effective system of justice
by providing funds to—
(A) State courts;
(B) national organizations which support and are sup­
ported by State courts; and
(C) any other nonprofit organization that will support and
achieve the purposes of this title;
(2) foster coordination and cooperation with the Federal judi­
ciary in areas of mutual concern; PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3337
(3) promote recognition of the importance of the separation of
powers doctrine to an independent judiciary; and
(4) encourage education for judges and support personnel of
State court systems through national and State organizations,
including universities.
(c) The Institute shall not duplicate functions adequately per­
formed by existing nonprofit organizations and shall promote, on
the part of agencies of State judicial administration, responsibility
for the success and effectiveness of State court improvement pro­
grams supported by Federal funding.
(d) The Institute shall maintain its principal offices in the State in
which it is incorporated and shall maintain therein a designated
agent to accept service of process for the Institute. Notice to or
service upon the agent shall be deemed notice to or service upon the
Institute.
(e) The Institute, and any program assisted by the Institute, shall
be eligible to be treated as an organization described in section
170(c)(2)(B) of the Internal Revenue Code of 1954 (26 U.S.C.
170(c)(2)(B)) and as an organization described in section 501(c)(3) of
the Internal Revenue Code of 1954 (26 U.S.C. 501(c)(3)) which is
exempt from taxation under section 501(a) of such Code (26 U.S.C.
501(a)). If such treatments are conferred in accordance with the
provisions of such Code, the Institute, and programs assisted by the
Institute, shall be subject to all provisions of such Code relevant to
the conduct of organizations exempt from taxation.
(D The Institute shall afford notice and reasonable opportunity for
comment to interested parties prior to issuing rules, regulations,
guidelines, and instructions under this title, and it shall publish in
the Federal Register, at least thirty days prior to their effective
date, all rules, regulations, guidelines, and instructions. Federal
Register,
publication.
BOARD OF DIRECTORS
SEC. 204. (a)(1) The Institute shall be supervised by a Board of
Directors, consisting of eleven voting members to be appointed by
the President, by and with the advice and consent of the Senate. The
Board shall have both judicial and nonjudicial members, and shall,
to the extent practicable, have a membership representing a variety
of backgrounds and reflecting participation and interest in the
administration of justice.
(2) The Board shall consist of—
(A) six judges, to be appointed in the manner provided in
paragraph (3);
(B) one State court administrator, to be appointed in the
manner provided in paragraph (3); and
(C) four members from the public sector, no more than two of
whom shall be of the same political party, to be appointed in the
manner provided in paragraph (4).
(3) The President shall appoint six judges and one State court
administrator from a list of candidates submitted to the President
by the Conference of Chief Justices. The Conference of Chief Jus­
tices shall submit a list of at least fourteen individuals, including
judges and State court administrators, whom the conference consid­
ers best qualified to serve on the Board. Whenever the term of any
of the members of the Board described in subparagraphs (A) and (B)
terminates and that member is not to be reappointed to a new term,
and whenever a vacancy otherwise occurs among those members, 42 use 10703. 98 STAT. 3338 PUBLIC LAW 98-620—NOV. 8, 1984
the President shall appoint a new member from a list of three
qualified individuals submitted to the President by the Conference
of Chief Justices. The President may reject any list of individuals
submitted by the Conference under this paragraph and, if such a list
is so rejected, the President shall request the Conference to submit
to him another list of qualified individuals. Prior to consulting with
or submitting a list to the President, the Conference of Chief Jus­
tices shall obtain and consider the recommendations of all inter­
ested organizations and individuals concerned with the administra­
tion of justice and the objectives of this title.
(4) In addition to those members appointed under paragraph (8),
the President shall appoint four members from the public sector to
serve on the Board.
(5) The President shall make the initial appointments of members
of the Board under this subsection within ninety days after the
effective date of this title. In the case of any other appointment of a
member, the President shall make the appointment not later than
ninety days after the previous term expires or the vacancy occurs, as
the case may be. The Conference of Chief Justices shall submit lists
of candidates under paragraph (H) in a timely manner so that the
appointments can be made within the time periods specified in this
paragraph.
((i) The initial members of the Board of Directors shall be the
incorporators of the Institute and shall determine the State in
which the Institute is to be incorporated.
(b)(1) Except as provided in paragraph (2), the term of each voting
member of the Board shall be three years. Each member of the
Board shall continue to serve until the successor to such member
has been appointed and qualified.
(2) Five of the members first appointed by the President shall
serve for a term of two years. Any member appointed to serve an
unexpired term which has arisen by virtue of the death, disability,
retirement, or resignation of a member shall be appointed only for
such unexpired term, but shall be eligible for reappointment.
(8) The term of initial members shall commence from the date of
the first meeting of the Board, and the term of each member other
than an initial member shall commence from the date of termina­
tion of the preceding term.
Prohibition. (O No member shall be reappointed to more than two consecutive
terms immediately following such member's initial term.
(d) Members of the Board shall serve without compensation, but
shall be reimbursed for actual and necessary expenses incurred in
the performance of their official duties.
(e) The members of the Board shall not, by reason of such mem­
bership, be considered officers or employees of the United States.
(f) Each member of the Board shall be entitled to one vote. A
simple majority of the membership shall constitute a quorum for the
conduct of business. The Board shall act upon the concurrence of a
simple majority of the membership present and voting.
(g) The Board shall select from among the voting members of the
Board a chairman, the first of whom shall serve for a term of three
years. Thereafter, the Board shall annually elect a chairman from
among its voting members.
(h) A member of the Board may be removed by a vote of seven
members for malfeasance in office, persistent neglect of, or inability
to discharge duties, or for any offense involving moral turpitude, but
for no other cause. PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3339
(i) Regular meetings of the Board shall be held quarterly. Special
meetings shall be held from time to time upon the call of the
chairman, acting at his own discretion or pursuant to the petition of
any seven members.
(j) All meetings of the Board, any executive committee of the
Board, and any council established in connection with this title,
shall be open and subject to the requirements and provisions of
section 552b of title 5, United States Code, relating to open meetings.
(k) In its direction and supervision of the activities of the Institute,
the Board shall—
(1) establish policies and develop such programs for the Insti­
tute that will further the achievement of its purpose and per­
formance of its functions;
(2) establish policy and funding priorities and issue rules,
regulations, guidelines, and instructions pursuant to such
priorities;
(3) appoint and fix the duties of the Executive Director of the
Institute, who shall serve at the pleasure of the Board and shall
be a nonvoting ex officio member of the Board;
(4) present to other Government departments, agencies, and
instrumentalities whose programs or activities relate to the
administration of justice in the State judiciaries of the United
States, the recommendations of the Institute for the improve­
ment of such programs or activities;
(5) consider and recommend to both public and private agen­
cies aspects of the operation of the State courts of the United
States considered worthy of special study; and
(6) award grants and enter into cooperative agreements or
contracts pursuant to section 206(a).
OFFICERS AND EMPLOYEES
SEC. 205. (a)(1) The Director, subject to general policies established 42 use 10704.
by the Board, shall supervise the activities of persons employed by
the Institute and may appoint and remove such employees as he
determines necessary to carry out the purposes of the Institute. The
Director shall be responsible for the executive and administrative
operations of the Institute, and shall perform such duties as are
delegated to such Director by the Board and the Institute.
(2) No political test or political qualification shall be used in
selecting, appointing, promoting, or taking any other personnel
action with respect to any officer, agent, or employee of the Insti­
tute, or in selecting or monitoring any grantee, contractor, person,
or entity receiving financial assistance under this title.
(b) Officers and employees of the Institute shall be compensated at
rates determined by the Board, but not in excess of the rate of level
V of the Executive Schedule specified in section 5316 of title 5,
United States Code.
(c)(1) Except as otherwise specifically provided in this title, the
Institute shall not be considered a department, agency, or instru­
mentality of the Federal Government.
(2) This title does not limit the authority of the Office of Manage­
ment and Budget to review and submit comments upon the Insti­
tute's annual budget request at the time it is transmitted to the
Congress. 98 STAT. 3340 PUBLIC LAW 98-620—NOV. 8, 1984
5 use 8101, 8301
et seq.,
8701 et seq.,
8901 et seq. (d)(1) Except as provided in paragraph (2), officers and employees
of the Institute shall not be considered officers or employees of the
United States.
(2) Officers and employees of the Institute shall be considered
officers and employees of the United States solely for the purposes of
the following provisions of title 5, United States Code: Subchapter I
of chapter 81 (relating to compensation for work injuries); chapter
83 (relating to civil service retirement); chapter 87 (relating to life
insurance); and chapter 89 (relating to health insurance). The Insti­
tute shall make contributions under the provisions referred to in
this subsection at the same rates applicable to agencies of the
Federal Government.
(e) The Institute and its officers and employees shall be subject to
the provisions of section 552 of title 5, United States Code, relating
to freedom of information.
42 use 10705.
Research and
development.
Public
information.
Education.
Education. GRANTS AND CONTRACTS
SEC. 206. (a) The Institute is authorized to award grants and enter
into cooperative agreements or contracts, in a manner consistent
with subsection (b), in order to—
(1) conduct research, demonstrations, or special projects per­
taining to the purposes described in this title, and provide
technical assistance and training in support of tests, demonstra­
tions, and special projects;
(2) serve as a clearinghouse and information center, where
not otherwise adequately provided, for the preparation, publica­
tion, and dissemination of information regarding State judicial
systems;
(8) participate in joint projects with other agencies, including
the Federal Judicial Center, with respect to the purposes of this
title;
(4) evaluate, when appropriate, the programs and projects
carried out under this title to determine their impact upon the
quality of criminal, civil, and juvenile justice and the extent to
which they have met or failed to meet the purposes and policies
of this title;
(5) encourage and assist in the furtherance of judicial
education;
(6) encourage, assist, and serve in a consulting capacity to
State and local justice system agencies in the development,
maintenance, and coordination of criminal, civil, and juvenile
justice programs and services; and
(7) be responsible for the certification of national programs
that are intended to aid and improve State judicial systems.
(b) The Institute is empowered to award grants and enter into
cooperative agreements or contracts as follows:
(1) The Institute shall give priority to grants, cooperative
agreements, or contracts with—
(A) State and local courts and their agencies,
(B) national nonprofit organizations controlled by, operat­
ing in conjunction with, and serving the judicial branches of
State governments; and
(C) national nonprofit organizations for the education and
training of judges aad-support personnel of the judicial
branch of State governments. PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3341
(2) The Institute may, if the objective can better be served
thereby, award grants or enter into cooperative agreements or
contracts with—
(A) other nonprofit organizations with expertise in judi­
cial administration;
(B) institutions of higher education;
(C) individuals, partnerships, firms, or corporations; and
(D) private agencies with expertise in judicial administra­
tion.
(3) Upon application by an appropriate Federal, State, or local
agency or institution and if the arrangements to be made by
such agency or institution will provide services which could not
be provided adequately through nongovernmental arrange­
ments, the Institute may award a grant or enter into a coopera­
tive agreement or contract with a unit of Federal, State, or local
government other than a court.
(4) Each application for funding by a State or local court shall
be approved, consistent with State law, by the State's supreme
court, or its designated agency or council, which shall receive,
administer, and be accountable for all funds awarded by the
Institute to such courts.
(c) Funds available pursuant to grants, cooperative agreements, or
contracts awarded under this section may be used—
(1) to assist State and local court systems in establishing
appropriate procedures for the selection and removal of judges
and other court personnel and in determining appropriate
levels of compensation;
(2) to support education and training programs forjudges and
other court personnel, for the performance of their general
duties and for specialized functions, and to support national and
regional conferences and seminars for the dissemination of
information on new developments and innovative techniques;
(8) to conduct research on alternative means for using nonju­
dicial personnel in court decisionmaking activities, to imple­
ment demonstration programs to test innovative approaches,
and to conduct evaluations of their effectiveness;
(4) to assist State and local courts in meeting requirements of
Federal law applicable to recipients of Federal funds;
(5) to support studies of the appropriateness and efficacy of
court organizations and financing structures in particular
States, and to enable States to implement plans for improved
court organization and finance;
((>) to support State court planning and budgeting staffs and to
provide technical assistance in resource allocation and service
forecasting techniques;
(7) to support studies of the adequacy of court management
systems in State and local courts and to implement and evalu­
ate innovative responses to problems of record management,
data processing, court personnel management, reporting and
transcription of court proceedings, and juror utilization and
management;
(8) to collect and compile statistical data and other informa­
tion on the work of the courts and on the work of other agencies
which relate to and effect the work of courts;
(D) to conduct studies of the causes of trial and appellate court
delay in resolving cases, and to establish and evaluate experi­
mental programs for reducing case processing time; Education.
Education.
Research and
development. 98 STAT. 3342 PUBLIC LAW 98-620—NOV. 8, 1984
(10) to develop and test methods for measuring the perform­
ance of judges and courts and to conduct experiments in the use
of such measures to improve the functioning of such judges and
courts;
(11) to support studies of court rules and procedures, discovery
devices, and evidentiary standards, to identify problems with
the operation of such rules, procedures, devices, and standards,
to devise alternative approaches to better reconcile the require­
ments of due process with the need for swift and certain justice,
and to test the utility of those alternative approaches;
(12) to support studies of the outcomes of cases in selected
subject matter areas to identify instances in which the sub­
stance of justice meted out by the courts diverges from public
expectations of fairness, consistency, or equity, to propose alter­
native approaches to the resolving of cases in problem areas,
and to test and evaluate those alternatives;
(13) to support programs to increase court responsiveness to
the needs of citizens through citizen education, improvement of
court treatment of witnesses, victims, and jurors, and develop­
ment of procedures for obtaining and using measures of public
satisfaction with court processes to improve court performance;
(14) to test and evaluate experimental approaches to provid­
ing increased citizen access to justice, including processes which
reduce the cost of litigating common grievances and alternative
techniques and mechanisms for resolving disputes between citi­
zens; and
(15) to carry out such other programs, consistent with the
purposes of this title, as may be deemed appropriate by the
Institute.
(d) The Institute shall incorporate in any grant, cooperative agree­
ment, or contract awarded under this section in which a State or
local judicial system is the recipient, the requirement that the
recipient provide a match, from private or public sources, not less
than 50 per centum of the total cost of such grant, cooperative
agreement, or contract, except that such requirement may be
waived in exceptionally rare circumstances upon the approval of the
chief justice of the highest court of the State and a majority of the
Board of Directors.
(e) The Institute shall monitor and evaluate, or provide for inde­
pendent evaluations of, programs supported in whole or in part
under this title to ensure that the provisions of this title, the bylaws
of the Institute, and the applicable rules, regulations, and guidelines
promulgated pursuant to this title, are carried out.
Study. (f) The Institute shall provide for an independent study of the
financial and technical assistance programs under this title.
LIMITATIONS ON GRANTS AND CONTRACTS
42 use 10706. SEC. 207. (a) With respect to grants made and contracts or coopera­
tive agreements entered into under this title, the Institute shall—
(1) ensure that no funds made available to recipients by the
Institute shall be used at any time, directly or indirectly, to
influence the issuance, amendment, or revocation of any Execu­
tive order or similar promulgation by any Federal, State, or
local agency, or to undertake to influence the passage or defeat
of any legislation or constitutional amendment by the Congress
of" the United States, or by any State or local legislative body, or PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3343
any State proposal by initiative petition, or of any referendum,
unless a governmental agency, legislative body, a committee, or
a member thereof—
(A) requests personnel of the recipients to testify, draft, or
review measures or to make representations to such
agency, body, committee, or member; or
(B) is considering a measure directly affecting the activi­
ties under this title of the recipient or the Institute;
(2) ensure all personnel engaged in grant, cooperative agree­
ment or contract assistance activities supported in whole or part
by the Institute refrain, while so engaged, from any partisan
political activity; and
(3) ensure that each recipient that files with the Institute a
timely application for refunding is provided interim funding
necessary to maintain its current level of activities until—
(A) the application for refunding has been approved and
funds pursuant thereto received; or
(B) the application for refunding has been finally denied
in accordance with section 9 of this title.
(b) No funds made available by the Institute under this title,
either by grant, cooperative agreement, or contract, may be used to
support or conduct training programs for the purpose of advocating
particular nonjudicial public policies or encouraging nonjudicial
political activities.
(c) The authorization to enter into cooperative agreements, con­
tracts or any other obligation under this title shall be effective only
to the extent, and in such amounts, as are provided in advance in
appropriation Acts.
(d) To ensure that funds made available under this Act are used to
supplement and improve the operation of State courts, rather than
to support basic court services, funds shall not be used—
(1) to supplant State or local funds currently supporting a
program or activity; or
(2) to construct court facilities or structures, except to
remodel existing facilities to demonstrate new architectural or
technological techniques, or to provide temporary facilities for
new personnel or for personnel involved in a demonstration or
experimental program.
RESTRICTIONS ON ACTIVITIES OF THE INSTITUTE
SEC. 208. (a) The Institute shall not— 42 use 10707.
(1) participate in litigation unless the Institute or a recipient
of the Institute is a party, and shall not participate on behalf of
any client other than itself;
(2) interfere with the independent nature of any State judicial
system or allow financial assistance to be used for the funding
of regular judicial and administrative activities of any State
judicial system other than pursuant to the terms of any grant,
cooperative agreement, or contract with the Institute, consist­
ent with the requirements of this title; or
(3) undertake to influence the passage or defeat of any legisla­
tion by the Congress of the United States or by any State or
local legislative body, except that personnel of the Institute may
testify or make other appropriate communication—
(A) when formally requested to do so by a legislative
body, committee, or a member thereof; 98 STAT. 3344 PUBLIC LAW 98-620—NOV. 8, 1984
(B) in connection with legislation or appropriations
directly affecting the activities of the Institute; or
(C) in connection with legislation or appropriations deal­
ing with improvements in the State judiciary, consistent
with the provisions of this title.
(b)(1) The Institute shall have no power to issue any shares of
stock, or to declare or pay any dividends.
(2) No part of the income or assets of the Institute shall enure to
the benefit of any director, officer, or employee, except as reasonable
compensation for services or reimbursement for expenses.
(3) Neither the Institute nor any recipient shall contribute or
make available Institute funds or program personnel or equipment
to any political party or association, or the campaign of any candi­
date for public or party office.
(4) The Institute shall not contribute or make available Institute
funds or program personnel or equipment for use in advocating or
opposing any ballot measure, initiative, or referendum.
(c) Officers and employees of the Institute or of recipients shall not
at any time intentionally identify the Institute or the recipient with
any partisan or nonpartisan political activity associated with a
political party or association, or the campaign of any candidate for
public or party office.
SPECIAL PROCEDURES
42 use 10708. SEC. 209. The Institute shall prescribe procedures to ensure that—
(1) financial assistance under this title shall not be suspended
unless the grantee, contractor, person, or entity receiving finan­
cial assistance under this title has been given reasonable notice
and opportunity to show cause why such actions should not be
taken; and
(2) financial assistance under this title shall not be termi­
nated, an application for refunding shall not be denied, and a
suspension of financial assistance shall not be continued for
longer than thirty days, unless the recipient has been afforded
reasonable notice and opportunity for a timely, full, and fair
hearing, and, when requested, such hearing shall be conducted
by an independent hearing examiner. Such hearing shall be
held prior to any final decision by the Institute to terminate
financial assistance or suspend or deny funding. Hearing exam­
iners shall be appointed by the Institute in accordance with
procedures established in regulations promulgated by the
Institute.
PRESIDENTIAL COORDINATION
42 use 10709. SEC. 210. The President may, to the extent not inconsistent with
any other applicable law, direct that appropriate support functions
of the Federal Government may be made available to the Institute
in carrying out its functions under this title.
RECORDS AND REPORTS
42 use 10710. SEC. 211. (a) The Institute is authorized to require such reports as
it deems necessary from any recipient with respect to activities
carried out pursuant to this title.
(b) The Institute is authorized to prescribe the keeping of records
with respect to funds provided by any grant, cooperative agreement, PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3345
or contract under this title and shall have access to such records at
all reasonable times for the purpose of ensuring compliance with
such grant, cooperative agreement, or contract or the terms £ind
conditions upon which financial assistance was provided.
(c) Copies of all reports pertinent to the evaluation, inspection, or
monitoring of any recipient shall be submitted on a timely basis to
such recipient, and shall be maintained in the principal office of the
Institute for a period of at least five years after such evaluation,
inspection, or monitoring. Such reports shall be available for public
inspection during regular business hours, and copies shall be fur­
nished, upon request, to interested parties upon payment of such
reasonable fees as the Institute may establish.
(d) Non-Federal funds received by the Institute, and funds re­
ceived for projects funded in part by the Institute or by any recipient
from a source other than the Institute, shall be accounted for and
reported as receipts and disbursements separate and distinct from
Federal funds.
AUDITS
SEC. 212. (a)(1) The accounts of the Institute shall be audited
annually. Such audits shall be conducted in accordance with gener­
ally accepted auditing standards by independent certified public
accountants who are certified by a regulatory authority of the
jurisdiction in which the audit is undertaken.
(2) The audits shall be conducted at the place or places where the
accounts of the Institute are normally kept. All books, accounts,
financial records, reports, files, and other papers or property belong­
ing to or in use by the Institute and necessary to facilitate the audits
shall be made available to the person or persons conducting the
audits. The full facilities for verifying transactions with the bal­
ances and securities held by depositories, fiscal agents, and custo­
dians shall be afforded to any such person.
(3) The report of the annual audit shall be filed with the General
Accounting Office and shall be available for public inspection during
business hours at the principal office of the Institute.
(b)(1) In addition to the annual audit, the financial transactions of
the Institute for any fiscal year during which Federal funds are
available to finance any portion of its operations may be audited by
the General Accounting Office in accordance with such rules and
regulations as may be prescribed by the Comptroller General of the
United States.
(2) Any such audit shall be conducted at the place or places where
accounts of the Institute are normally kept. The representatives of
the General Accounting Office shall have access to all books, ac­
counts, financial records, reports, files, and other papers or property
belonging to or in use by the Institute and necessary to facilitate the
audit. The full facilities for verifying transactions with the balances
and securities held by depositories, fiscal agents, and custodians
shall be afforded to such representatives. All such books, accounts,
financial records, reports, files, and other papers or property of the
Institute shall remain in the possession and custody of the Institute
throughout the period beginning on the date such possession or
custody commences and ending three years after such date, but the
General Accounting Office may require the retention of such books,
accounts, financial records, reports, files, and other papers or prop­
erty for a longer period under section 3523(c) of title 31, United
States Code. Public
availability.
42 use 10711.
Report.
Public
availability. 98 STAT. 3346 PUBLIC LAW 98-620—NOV. 8, 1984
Report.
Reports.
Public
availability. (3) A report of such audit shall be made by the Comptroller
General to the Congress and to the Attorney General, together with
such recommendations with respect thereto as the Comptroller
General deems advisable.
(c)(1) The Institute shall conduct, or require each recipient to
provide for, an annual fiscal audit. The report of each such audit
shall be maintained for a period of at least five years at the
principal office of the Institute.
(2) The Institute shall submit to the Comptroller General of the
United States copies of such reports, and the Comptroller General
may, in addition, inspect the books, accounts, financial records, files,
and other papers or property belonging to or in use by such grantee,
contractor, person, or entity, which relate to the disposition or use of
funds received from the Institute. Such audit reports shall be avail­
able for public inspection during regular business hours, at the
principal office of the Institute.
REPORT BY ATTORNEY GENERAL
42 use 10712. SEC. 213. On October 1, 1987, the Attorney General, in con­
sultation with the Federal Judicial Center, shall transmit to the
Committees on the Judiciary of the Senate and the House of Repre­
sentatives a report on the effectiveness of the Institute in carrying
out the duties specified in section 203(b). Such report shall include
an assessment of the cost effectiveness of the program as a whole
and, to the extent practicable, of individual grants, an assessment of
whether the restrictions and limitations specified in sections 207
and 208 have been respected, and such recommendations as the
Attorney General, in consultation with the Federal Judicial Center,
deems appropriate.
AMENDMENTS TO OTHER LAWS
SEC. 214. Section 620(b) of title 28, United States Code, is amended
by-
(1) striking out "and" at the end of paragraph (3);
(2) striking out the period at the end of paragraph (4) and
inserting in lieu thereof "; and"; and
(3) inserting the following new paragraph (5) at the end
thereof:
"(5) Insofar as may be consistent with the performance of the
other functions set forth in this section, to cooperate with the State
Justice Institute in the establishment and coordination of research
and programs concerning the administration of justice.".
AUTHORIZATIONS
42 use 10713. SEC. 215. There are authorized to be appropriated to carry out the
purposes of this title, $13,000,000 for fiscal year 1986, $15,000,000 for
fiscal year 1987, and $15,000,000 for fiscal year 1988.
EFFECTIVE DATE
42 use 10701 SEC. 216. The provisions of this title shall take effect on October 1,
note. 1985. PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3347
TITLE III
SHORT TITLE
SEC. 301. This title may be cited as the "Semiconductor Chip
Protection Act of 1984".
PROTECTION OF SEMICONDUCTOR CHIP PRODUCTS
SEC. 302. Title 17, United States Code, is amended by adding at the
end thereof the following new chapter:
"CHAPTER 9—PROTECTION OF SEMICONDUCTOR
CHIP PRODUCTS Semiconductor
Chip Protection
Act of 1984.
17 use 901 note.
Computers.
"Sec.
"901. Definitions.
"902. Subject matter of protection.
"903. Ownership and transfer.
"904. Duration of protection.
"905. Exclusive rights in mask works.
"906. Limitation on exclusive rights: reverse engineering; first sale.
"907. Limitation on exclusive rights: innocent infringement.
"908. Registration of claims of protection.
"909. Mask work notice.
"910. Enforcement of exclusive rights.
"911. Civil actions.
"912. Relation to other laws.
"913. Transitional provisions.
"914. International transitional provisions.
"§ 901. Definitions
"(a) As used in this chapter—
"(1) a 'semiconductor chip product' is the final or intermedi­
ate form of any product—
"(A) having two or more layers of metallic, insulating, or
semiconductor material, deposited or otherwise placed on,
or etched away or otherwise removed from, a piece of
semiconductor material in accordance with a predeter­
mined pattern; and
"(B) intended to perform electronic circuitry functions;
"(2) a 'mask work' is a series of related images, however fixed
or encoded—
"(A) having or representing the predetermined, three-
dimensional pattern of metallic, insulating, or semiconduc­
tor material present or removed from the layers of a semi­
conductor chip product; and
"(B) in which series the relation of the images to one
another is that each image has the pattern of the surface of
one form of the semiconductor chip product;
"(3) a mask work is 'fixed' in a semiconductor chip product
when its embodiment in the product is sufficiently permanent
or stable to permit the mask work to be perceived or reproduced
from the product for a period of more than transitory duration;
"(4) to 'distribute' means to sell, or to lease, bail, or otherv/^ise
transfer, or to offer to sell, lease, bail, or otherwise transfer;
"(5) to 'commercially exploit' a mask work is to distribute to
the public for commercial purposes a semiconductor chip prod­
uct embodying the mask work; except that such term includes
an offer to sell or transfer a semiconductor chip product only 17 use 901. 98 STAT. 3348 PUBLIC LAW 98-620—NOV. 8, 1984
when the offer is in writing and occurs after the mask work is
fixed in the semiconductor chip product;
"(6) the 'owner' of a mask work is the person who created the
mask work, the legal representative of that person if that
person is deceased or under a legal incapacity, or a party to
whom all the rights under this chapter of such person or
representative are transferred in accordance with section
903(b); except that, in the case of a work made within the scope
of a person's employment, the owner is the employer for whom
the person created the mask work or a party to whom all the
rights under this chapter of the employer are transferred in
accordance with section 903(b);
"(7) an 'innocent purchaser' is a person who purchases a
semiconductor chip product in good faith and without having
notice of protection with respect to the semiconductor chip
product;
"(8) having 'notice of protection' means having actual knowl­
edge that, or reasonable grounds to believe that, a mask work is
protected under this chapter; and
"(9) an 'infringing semiconductor chip product' is a semicon­
ductor chip product which is made, imported, or distributed in
violation of the exclusive rights of the owner of a mask work
under this chapter.
"(b) For purposes of this chapter, the distribution or importation
of a product incorporating a semiconductor chip product as a part
thereof is a distribution or importation of that semiconductor chip
product.
17 use 902. "§ 902. Subject matter of protection
"(a)(1) Subject to the provisions of subsection (b), a mask work
fixed in a semiconductor chip product, by or under the authority of
the owner of the mask work, is eligible for protection under this
chapter if—
"(A) on the date on which the mask work is registered under
section 908, or is first commercially exploited anywhere in the
world, whichever occurs first, the owner of the mask work is (i)
a national or domiciliary of the United States, (ii) a national,
domiciliary, or sovereign authority of a foreign nation that is a
party to a treaty affording protection to mask works to which
the United States is also a party, or (iii) a stateless person,
wherever that person may be domiciled;
"(B) the mask work is first commercially exploited in the
United States; or
"(C) the mask work comes within the scope of a Presidential
proclamation issued under paragraph (2).
President "(2) Whenever the President finds that a foreign nation extends,
of U.S. to mask works of owners who are nationals or domiciliaries of the
United States protection (A) on substantially the same basis as that
on which the foreign nation extends protection to mask works of its
own nationals and domiciliaries and mask works first commercially
exploited in that nation, or (B) on substantially the same basis as
provided in this chapter, the President may by proclamation extend
protection under this chapter to mask works (i) of owners who are,
on the date on which the mask works are registered under section
908, or the date on which the mask works are first commercially
exploited anywhere in the world, whichever occurs first, nationals, PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3349
domiciliaries, or sovereign authorities of that nation, or (ii) which
are first commercially exploited in that nation.
"(b) Protection under this chapter shall not be available for a
mask work that—
"(1) is not original; or
"(2) consists of designs that are staple, commonplace, or famil­
iar in the semiconductor industry, or variations of such designs,
combined in a way that, considered as a whole, is not original.
"(c) In no case does protection under this chapter for a mask work
extend to any idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in which it is
described, explained, illustrated, or embodied in such work.
"§ 903. Ownership, transfer, licensing, and recordation 17 use 903.
"(a) The exclusive rights in a mask work subject to protection
under this chapter belong to the owner of the mask work.
"(b) The owner of the exclusive rights in a mask work may
transfer all of those rights, or license all or less than all of those
rights, by any written instrument signed by such owner or a duly
authorized agent of the owner. Such rights may be transferred or
licensed by operation of law, may be bequeathed by will, and may
pass as personal property by the applicable laws of intestate
succession.
"(c)(1) Any document pertaining to a mask work may be recorded
in the Copyright Office if the document filed for recordation bears
the actual signature of the person who executed it, or if it is
accompanied by a sworn or official certification that it is a true copy
of the original, signed document. The Register of Copyrights shall,
upon receipt of the document and the fee specified pursuant to
section 908(d), record the document and return it with a certificate
of recordation. The recordation of any transfer or license under this
paragraph gives all persons constructive notice of the facts stated in
the recorded document concerning the transfer or license.
"(2) In any case in which conflicting transfers of the exclusive
rights in a mask work are made, the transfer first executed shall be
void as against a subsequent transfer which is made for a valuable
consideration and without notice of the first transfer, unless the
first transfer is recorded in accordance with paragraph (1) within
three months after the date on which it is executed, but in no case
later than the day before the date of such subsequent transfer.
"(d) Mask works prepared by an officer or employee of the United
States Government as part of that person's official duties are not
protected under this chapter, but the United States Government is
not precluded from receiving and holding exclusive rights in mask
works transferred to the Government under subsection (b).
"§ 904. Duration of protection 17 USC 904.
"(a) The protection provided for a mask work under this chapter
shall commence on the date on which the mask work is registered
under section 908, or the date on which the mask work is first
commercially exploited anywhere in the world, whichever occurs
first.
"(b) Subject to subsection (c) and the provisions of this chapter, the
protection provided under this chapter to a mask work shall end ten
years after the date on which such protection commences under
subsection (a). 98 STAT. 3350 PUBLIC LAW 98-620—NOV. 8, 1984
"(c) All terms of protection provided in this section shall run to
the end of the calendar year in which they would otherwise expire.
17 use 905. "§ 905. Exclusive rights in mask works
"The owner of a mask work provided protection under this chap­
ter has the exclusive rights to do and to authorize any of the
following:
"(1) to reproduce the mask work by optical, electronic, or any
other means;
"(2) to import or distribute a semiconductor chip product in
which the mask work is embodied; and
"(3) to induce or knowingly to cause another person to do any
of the acts described in paragraphs (1) and (2).
17 use 906. "§ 906. Limitation on exclusive rights: reverse engineering; first
sale
"(a) Notwithstanding the provisions of section 905, it is not an
infringement of the exclusive rights of the owner of a mask work
for—
"(1) a person to reproduce the mask work solely for the
purpose of teaching, analyzing, or evaluating the concepts or
techniques embodied in the mask work or the circuitry, logic
flow, or organization of components used in the mask work; or
"(2) a person who performs the analysis or evaluation
described in paragraph (1) to incorporate the results of such
conduct in an original mask work which is made to be
distributed.
"(b) Notwithstanding the provisions of section 905(2), the owner of
a particular semiconductor chip product made by the owner of the
mask work, or by any person authorized by the owner of the mask
work, may import, distribute, or otherwise dispose of or use, but not
reproduce, that particular semiconductor chip product without the
authority of the owner of the mask work.
17 use 907. "§ 907. Limitation on exclusive rights: innocent infringement
"(a) Notwithstanding any other provision of this chapter, an
innocent purchaser of an infringing semiconductor chip product—
"(1) shall incur no liability under this chapter with respect to
the importation or distribution of units of the infringing semi­
conductor chip product that occurs before the innocent pur­
chaser has notice of protection with respect to the mask work
embodied in the semiconductor chip product; and
"(2) shall be liable only for a reasonable royalty on each unit
of the infringing semiconductor chip product that the innocent
purchaser imports or distributes after having notice of protec­
tion with respect to the mask work embodied in the semiconduc­
tor chip product.
"(b) The amount of the royalty referred to in subsection (a)(2) shall
be determined by the court in a civil action for infringement unless
the parties resolve the issue by voluntary negotiation, mediation, or
binding arbitration.
"(c) The immunity of an innocent purchaser from liability re­
ferred to in subsection (a)(1) and the limitation of remedies with
respect to an innocent purchaser referred to in subsection (a)(2)
shall extend to any person who directly or indirectly purchases an
infringing semiconductor chip product from an innocent purchaser. PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3351
"(d) The provisions of subsections (a), (b), and (c) apply only with
respect to those units of an infringing semiconductor chip product
that an innocent purchaser purchased before having notice of pro­
tection with respect to the mask work embodied in the semiconduc­
tor chip product.
"§ 908. Registration of claims of protection
"(a) The owner of a mask work may apply to the Register of
Copyrights for registration of a claim of protection in a mask work.
Protection of a mask work under this chapter shall terminate if
application for registration of a claim of protection in the mask
work is not made as provided in this chapter within two years after
the date on which the mask work is first commercially exploited
anywhere in the world.
"(b) The Register of Copyrights shall be responsible for all admin­
istrative functions and duties under this chapter. Except for section
708, the provisions of chapter 7 of this title relating to the general
responsibilities, organization, regulatory authority, actions, records,
and publications of the Copyright Office shall apply to this chapter,
except that the Register of Copyrights may make such changes as
may be necessary in applying those provisions to this chapter.
"(c) The application for registration of a mask work shall be made
on a form prescribed by the Register of Copyrights. Such form may
require any information regarded by the Register as bearing upon
the preparation or identification of the mask work, the existence or
duration of protection of the mask work under this chapter, or
ownership of the mask work. The application shall be accompanied
by the fee set pursuant to subsection (d) and the identifying material
specified pursuant to such subsection.
"(d) The Register of Copyrights shall by regulation set reasonable
fees for the filing of applications to register claims of protection in
mask works under this chapter, and for other services relating to
the administration of this chapter or the rights under this chapter,
taking into consideration the cost of providing those services, the
benefits of a public record, and statutory fee schedules under this
title. The Register shall also specify the identifying material to be
deposited in connection with the claim for registration.
"(e) If the Register of Copyrights, after examining an application
for registration, determines, in accordance with the provisions of
this chapter, that the application relates to a mask work which is
entitled to protection under this chapter, then the Register shall
register the claim of protection and issue to the applicant a certifi­
cate of registration of the claim of protection under the seal of the
Copyright Office. The effective date of registration of a claim of
protection shall be the date on which an application, deposit of
identifying material, and fee, which are determined by the Register
of Copyrights or by a court of competent jurisdiction to be acceptable
for registration of the claim, have all been received in the Copyright
Office.
"(f) In any action for infringement under this chapter, the certifi­
cate of registration of a mask work shall constitute prima facie
evidence (1) of the facts stated in the certificate, and (2) that the
applicant issued the certificate has met the requirements of this
chapter, and the regulations issued under this chapter, with respect
to the registration of claims.
"(g) Any applicant for registration under this section who is
dissatisfied with the refusal of the Register of Copyrights to issue a 17 use 908.
Termination.
17 use 701
et seq.
Regulations.
Effective date.
Prima facie
evidence. 98 STAT. 3352 PUBLIC LAW 98-620—NOV. 8, 1984
17 use 909.
Regulations.
Prima facie
evidence. certificate of registration under this section may seek judicial
review of that refusal by bringing an action for such review in an
appropriate United States district court not later than sixty days
5 use 701 after the refusal. The provisions of chapter 7 of title 5 shall apply to
etseq. such judicial review. The failure of the Register of Copyrights to
issue a certificate of registration within four months after an appli­
cation for registration is filed shall be deemed to be a refusal to issue
a certificate of registration for purposes of this subsection and
section 910(b)(2), except that, upon a showing of good cause, the
district court may shorten such four-month period.
"§ 909. Mask work notice
"(a) The owner of a mask work provided protection under this
chapter may affix notice to the mask work, and to masks and
semiconductor chip products embodying the mask work, in such
manner and location as to give reasonable notice of such protection.
The Register of Copyrights shall prescribe by regulation, as exam­
ples, specific methods of affixation and positions of notice for pur­
poses of this section, but these specifications shall not be considered
exhaustive. The affixation of such notice is not a condition of
protection under this chapter, but shall constitute prima facie evi­
dence of notice of protection.
"(b) The notice referred to in subsection (a) shall consist of—
"(1) the words 'mask force', the sumbol *M*, or the symbol
@) (the letter M in a circle); and
"(2) the name of the owner or owners of the mask work or an
abbreviation by which the name is recognized or is generally
known.
17 use 910. "§ 910. Enforcement of exclusive rights
"(a) Except as otherwise provided in this chapter, any person who
violates any of the exclusive rights of the owner of a mask work
under this chapter, by conduct in or affecting commerce, shall be
liable as an infringer of such rights.
"(b)(1) The owner of a mask work protected under this chapter, or
the exclusive licensee of all rights under this chapter with respect to
the mask work, shall, after a certificate of registration of a claim of
protection in that mask work has been issued under section 908, be
entitled to institute a civil action for any infringement with respect
to the mask work which is committed after the commencement of
protection of the mask work under section 904(a).
"(2) In any case in which an application for registration of a claim
of protection in a mask work and the required deposit of identifying
material and fee have been received in the Copyright Office in
proper form and registration of the mask work has been refused, the
applicant is entitled to institute a civil action for infringement
under this chapter with respect to the mask work if notice of the
action, together with a copy of the complaint, is served on the
Register of Copyrights, in accordance with the Federal Rules of Civil
Procedure. The Register may, at his or her option, become a party to
the action with respect to the issue of whether the claim of protec­
tion is eligible for registration by entering an appearance within
sixty days after such service, but the failure of the Register to
become a party to the action shall not deprive the court of jurisdic­
tion to determine that issue.
Regulations. "(c)(1) The Secretary of the Treasury and the United States Postal
Service shall separately or jointly issue regulations for the enforce-PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3353
ment of the rights set forth in section 905 with respect to importa­
tion. These regulations may require, as a condition for the exclusion
of articles from the United States, that the person seeking exclusion
take any one or more of the following actions:
"(A) Obtain a court order enjoining, or an order of the Inter­
national Trade Commission under section 387 of the Tariff Act
of 1930 excluding, importation of the articles. 19 USC 1337.
"(B) Furnish proof that the mask work involved is protected
under this chapter and that the importation of the articles
would infringe the rights in the mask work under this chapter.
"(C) Post a surety bond for any injury that may result if the
detention or exclusion of the articles proves to be unjustified.
"(2) Articles imported in violation of the rights set forth in section Seizure and
905 are subject to seizure and forfeiture in the same manner as forfeiture.
property imported in violation of the customs laws. Any such for­
feited articles shall be destroyed as directed by the Secretary of the
Treasury or the court, as the case may be, except that the articles
may be returned to the country of export whenever it is shown to
the satisfaction of the Secretary of the Treasury that the importer
had no reasonable grounds for believing that his or her acts consti­
tuted a violation of the law.
"§911. Civil actions 17USC911.
"(a) Any court having jurisdiction of a civil action arising under
this chapter may grant temporary restraining orders, preliminary
injunctions, and permanent injunctions on such terms as the court
may deem reasonable to prevent or restrain infringement of the
exclusive rights in a mask work under this chapter.
"(b) Upon finding an infringer liable, to a person entitled under
section 910(b)(1) to institute a civil action, for an infringement of
any exclusive right under this chapter, the court shall award such
person actual damages suffered by the person as a result of the
infringement. The court shall also award such person the infringer's
profits that are attributable to the infringement and are not taken
into account in computing the award of actual damages. In estab­
lishing the infringer's profits, such person is required to present
proof only of the infringer's gross revenue, and the infringer is
required to prove his or her deductible expenses and the elements of
profit attributable to factors other than the mask work.
"(c) At any time before final judgment is rendered, a person
entitled to institute a civil action for infringement may elect,
instead of actual damages and profits as provided by subsection (b),
an award of statutory damages for all infringements involved in the
action, with respect to any one mask work for which any one
infringer is liable individually, or for which any two or more infring­
ers are liable jointly and severally, in an amount not more than
$250,000 as the court considers just.
"(d) An action for infringement under this chapter shall be barred
unless the action is commenced within three years after the claim
accrues.
"(e)(1) At any time while an action for infringement of the exclu­
sive rights in a mask work under this chapter is pending, the court
may order the impounding, on such terms as it may deem reasona­
ble, of all semiconductor chip products, and any drawings, tapes,
masks, or other products by means of which such products may be
reproduced, that are claimed to have been made, imported, or used
in violation of those exclusive rights. Insofar as practicable, applica-98 STAT. 3354 PUBLIC LAW 98-620—NOV. 8, 1984
tions for orders under this paragraph shall be heard and determined
in the same manner as an application for a temporary restraining
order or preliminary injunction.
"(2) As part of a final judgment or decree, the court may order the
destruction or other disposition of any infringing semiconductor
chip products, and any masks, tapes, or other articles by means of
which such products may be reproduced.
"(f) In any civil action arising under this chapter, the court in its
discretion may allow the recovery of full costs, including reasonable
attorneys' fees, to the prevailing party.
17 use 912. "§ 912. Relation to other laws
"(a) Nothing in this chapter shall affect any right or remedy held
17 use 1-801 et by any person under chapters 1 through 8 of this title, or under
se?- title 35.
"(b) Except as provided in section 908(b) of this title, references to
'this title' or 'title 17' in chapters 1 through 8 of this title shall be
deemed not to apply to this chapter.
"(c) The provisions of this chapter shall preempt the laws of any
State to the extent those laws provide any rights or remedies with
respect to a mask work which are equivalent to those rights or
remedies provided by this chapter, except that such preemption
shall be effective only with respect to actions filed on or after
January 1, 1986.
28 use 1338, "(d) The provisions of sections 1338, 1400(a), and 1498 Qa) and (c) of
1400,1498. title 28 shall apply with respect to exclusive rights in mask works
under this chapter.
"(e) Notwithstanding subsection (c), nothing in this chapter shall
detract from any rights of a mask work owner, whether under
Federal law (exclusive of this chapter) or under the common law or
the statutes of a State, heretofore or hereafter declared or enacted,
with respect to any mask work first commercially exploited before
July 1, 1983.
17 use 913. "§ 913. Transitional provisions
Prohibition. "(a) No application for registration under section 908 may be filed,
and no civil action under section 910 or other enforcement proceed­
ing under this chapter may be instituted, until sixty days after the
date of the enactment of this chapter.
Prohibition. "(b) No monetary relief under section 911 may be granted with
respect to any conduct that occurred before the date of the enact­
ment of this chapter, except as provided in subsection (d).
"(c) Subject to subsection (a), the provisions of this chapter apply
to all mask works that are first commercially exploited or are
registered under this chapter, or both, on or after the date of the
enactment of this chapter.
"(d)(1) Subject to subsection (a), protection is available under this
chapter to any mask work that was first commercially exploited on
or after July 1, 1983, and before the date of the enactment of this
chapter, if a claim of protection in the mask work is registered in
the Copyright Office before July 1, 1985, under section 908.
"(2) In the case of any mask work described in paragraph (1) that
is provided protection under this chapter, infringing semiconductor
chip product units manufactured before the date of the enactment of
this chapter may, without liability under sections 910 and 911, be
imported into or distributed in the United States, or both, until two
years after the date of registration of the mask work under section PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3355
908, but only if the importer or distributor, as the case may be, first
pays or offers to pay the reasonable royalty referred to in section
907(a)(2) to the mask work owner, on all such units imported or
distributed, or both, after the date of the enactment of this chapter.
"(3) In the event that a person imports or distributes infringing
semiconductor chip product units described in paragraph (2) of this
subsection without first paying or offering to pay the reasonable
royalty specified in such paragraph, or if the person refuses or fails
to make such payment, the mask work owner shall be entitled to the
relief provided in sections 910 and 911.
"§ 914. International transitional provisions 17 USC 914.
"(a) Notwithstanding the conditions set forth in subparagraphs
(A) and (C) of section 902(a)(1) with respect to the availability of
protection under this chapter to nationals, domiciliaries, and sover­
eign authorities of a foreign nation, the Secretary of Commerce may,
upon the petition of any person, or upon the Secretary's own motion,
issue an order extending protection under this chapter to such
foreign nationals, domiciliaries, and sovereign authorities if the
Secretary finds—
"(1) that the foreign nation is making good faith efforts and
reasonable progress toward—
"(A) entering into a treaty described in section
902(a)(1)(A); or
"(B) enacting legislation that would be in compliance
with subparagraph (A) or (B) of section 902(aX2); and
"(2) that the nationals, domiciliaries, and sovereign authori­
ties of the foreign nation, and persons controlled by them, are
not engaged in the misappropriation, or unauthorized distribu­
tion or commercial exploitation, of mask works; and
"(3) that issuing the order would promote the purposes of this
chapter and international comity with respect to the prote<;tion
of mask works.
"(b) While an order under subsection (a) is in effect with respect to Prohibition.
a foreign nation, no application for registration of a claim for
protection in a mask work under this chapter may be denied solely
because the owner of the mask work is a national, domiciliary, or
sovereign authority of that foreign nation, or solely because the
mask work was first commercially exploited in that foreign nation.
"(c) Any order issued by the Secretary of Commerce under subsec­
tion (a) shall be effective for such period as the Secretary designates
in the order, except that no such order may be effective after the
date on which the authority of the Secretary of Commerce termi­
nates under subsection (e). The effective date of any such order shall
also be designated in the order. In the case of an order issued upon
the petition of a person, such effective date may be no earlier than
the date on which the Secretary receives such petition.
"(d)(1) Any order issued under this section shall terminate if— Termination.
"(A) the Secretary of Commerce finds that any of the condi­
tions set forth in paragraphs (1), (2), and (3) of subsection (a) no
longer exist; or
"(B) mask works of nationals, domiciliaries, and sovereign
authorities of that foreign nation or mask works first commer­
cially exploited in that foreign nation become eligible for protec­
tion under subparagraph (A) or (C) of section 902(aXl).
"(2) Upon the termination or expiration of an order issued under
this section, registrations of claims of protection in mask works 98 STAT. 3356 PUBLIC LAW 98-620—NOV. 8, 1984
Federal
Register,
publication.
Report. made pursuant to that order shall remain valid for the period
specified in section 904.
"(e) The authority of the Secretary of Commerce under this
section shall commence on the date of the enactment of this chapter,
and shall terminate three years after such date of enactment.
"(fid) The Secretary of Commerce shall promptly notify the Regis­
ter of Copyrights and the Committees on the Judiciary of the Senate
and the House of Representatives of the issuance or termination of
any order under this section, together with a statement of the
reasons for such action. The Secretary shall also publish such
notification and statement of reasons in the Federal Register.
"(2) Two years after the date of the enactment of this chapter, the
Secretary of Commerce, in consultation with the Register of Copy­
rights, shall transmit to the Committees on the Judiciary of the
Senate and the House of Representatives a report on the actions
taken under this section and on the current status of international
recognition of mask work protection. The report shall include such
recommendations for modifications of the protection accorded under
this chapter to mask works owned by nationals, domiciliaries, or
sovereign authorities of foreign nations as the Secretary, in consul­
tation with the Register of Copyrights, considers would promote the
purposes of this chapter and international comity with respect to
mask work protection.".
17 use 901 note. TECHNICAL AMENDMENT
SEC. 303. The table of chapters at the beginning of title 17, United
States Code, is amended by adding at the end thereof the following
new item:
"9. Protection of semiconductor chip products 901".
AUTHORIZATION OF APPROPRIATIONS
SEC. 304. There are authorized to be appropriated such sums as
may be necessary to carry out the purposes of this title and the
amendments made by this title.
TITLE IV—FEDERAL COURTS IMPROVEMENTS
SUBTITLE A—CIVIL PRIORITIES
28 use 1657.
28 use 2241 et
seq., 1826. ESTABLISHMENT OF PRIORITY OF CIVIL ACTIONS
SEC. 401. (a) Chapter 111 of title 28, United States Code, is
amended by adding at the end thereof the following new section:
"§ 1657. Priority of civil actions
"(a) Notwithstanding any other provision of law, each court of the
United States shall determine the order in which civil actions are
heard and determined, except that the court shall expedite the
consideration of any action brought under chapter 153 or section
1826 of this title, any action for temporary or preliminary injunctive
relief, or any other action if good cause therefor is shown. For
purposes of this subsection, 'good cause' is shown if a right under the
Constitution of the United States or a Federal Statute (including
rights under section 552 of title 5) would be maintained in a factual
context that indicates that a request for expedited consideration has
merit. PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3357
"(b) The Judicial Conference of the United States may modify the
rules adopted by the courts to determine the order in which civil
actions are heard and determined, in order to establish consistency
among the judicial circuits.".
(b) The section analysis of chapter 111 of title 28, United States
Code, is amended by adding at the end thereof the following new
item:
"1657. Priority of civil actions.".
AMENDMENTS TO OTHER LAWS
SEC. 402. The following provisions of law are amended—
(1)(A) Section 309(a)(10) of the Federal Election Campaign Act
of 1971 (2 U.S.C. 437g(a)(10) is repealed.
(B) Section 310(c) of the Federal Election Campaign Act of
1971 (2 U.S.C. 437h(c)) is repealed.
(2) Section 552(a)(4)(D) of title 5, United States Code, is
repealed.
(3) Section 6(a) of the Commodity Exchange Act (7 U.S.C. 8(a))
is amended by striking out "The proceedings in such cases in
the court of appeals shall be made a preferred cause and shall
be expedited in every way.".
(4)(A) Section 6(c)(4) of the Federal Insecticide, Fungicide, and
Rodenticide Act (7 U.S.C. 136d(c)(4)) is amended by striking out
the second sentence.
(B) Section 10(d)(3) of the Federal Insecticide, Fungicide, and
Rodenticide Act (7 U.S.C. 136h(d)(3)) is amended by striking out
"The court shall give expedited consideration to any such
action.".
(C) Section 16(b) of the Federal Insecticide, Fungicide, and
Rodenticide Act (7 U.S.C. 136n(b)) is amended by striking out
the last sentence.
(D) Section 25(a)(4)(E)(iii) of the Federal Insecticide, Fungicide,
and Rodenticide Act (7 U.S.C. 136w(a)(4)(E)(iii)) is repealed.
(5) Section 204(d) of the Packers and Stockyards Act, 1921 (7
U.S.C. 194(d)), is amended by striking out the second sentence.
(6) Section 366 of the Agricultural Adjustment Act of 1938 (7
U.S.C. 1366) is amended in the fourth sentence by striking out
"At the earliest convenient time, the court, in term time or
vacation," and inserting in lieu thereof "The court".
(7)(A) Section 410 of the Federal Seed Act (7 U.S.C. 1600) is
amended by striking out "The proceedings in such cases in the
court of appeals shall be made a preferred cause and shall be
expedited in every way.".
(B) Section 411 of the Federal Seed Act (7 U.S.C. 1601) is
amended by striking out "The proceedings in such cases shall be
made a preferred cause and shall be expedited in every way.".
(8) Section 816(c)(4) of the Act of October 7, 1975, commonly
known as the Department of Defense Appropriation Authoriza­
tion Act of 1976 (10 U.S.C. 2304 note) is amended by striking out
(9) Section 5(d)(6)(A) of the Home Owners' Loan Act of 1933
(12 U.S.C. 1464(d)(6)(A)) is amended by striking out "Such pro­
ceedings shall be given precedence over other cases pending in
such courts, and shall be in every way expedited.". 98 STAT. 3358 PUBLIC LAW 98-620—NOV. 8, 1984
(lOXA) Section 7A(f)(2) of the Clayton Act (15 U.S.C. 18a(f)(2))
is amended to read as follows: "(2) certifies the United States
district court for the judicial district within which the respond­
ent resides or carries on business, or in which the action is
brought, that it or he believes that the public interest requires
relief pendente lite pursuant to this subsection, then upon the
filing of such motion and certification, the chief judge of such
district court shall immediately notify the chief judge of the
United States court of appeals for the circuit in which such
district court is located, who shall designate a United States
district judge to whom such action shall be assigned for all
purposes.".
(B) Section 11(e) of the Clayton Act (15 U.S.C. 21(e)) is
amended by striking out the first sentence.
(11) Section 1 of the Act of February 11, 1903, commonly
known as the Expediting Act (15 U.S.C. 28) is repealed.
(12) Section 5(e) of the Federal Trade Commission Act (15
U.S.C. 45(e)) is amended by striking out the first sentence.
(13) Section 21(f)(3) of the Federal Trade Commission
Improvements Act of 1980 (15 U.S.C. 57a-l(f)(3)) is repealed.
(14) Section llA(c)(4) of the Securities Exchange Act of 1934
(15 U.S.C. 78k-l(c)(4)) is amended—
(A) by striking out "(A)" after "(4)"; and
(B) by striking out subparagraph (B).
(15)(A) Section 309(e) of the Small Business Investment Act of
1958 (15 U.S.C. 687a(e)) is amended by striking out the sixth
sentence.
(B) Section 309(f) of the Small Business Investment Act of
1958 (15 U.S.C. 687a(f)) is amended by striking out the last
sentence.
(C) Section 311(a) of the Small Business Investment Act of
1958 (15 U.S.C. 687c(a)) is amended by striking out the last
sentence.
(16) Section 10(c)(2) of the Alaska Natural Gas Transportation
Act (15 U.S.C. 719h(c)(2)) is repealed.
(17) Section 155(a) of the National Traffic and Motor Vehicle
Safety Act of 1966 (15 U.S.C. 1415(a)) is amended by striking out
"(1)" and by striking out paragraph (2).
(18) Section 503(b)(3)(E) of the Motor Vehicle Information and
Cost Savings Act (15 U.S.C. 2003(b)(3)(E)) is amended by striking
out clause (ii) and redesignating clauses (iii) and (iv) as clauses
(ii) and (iii), respectively.
(19) Section 23(d) of the Toxic Substances Control Act (15
U.S.C. 2622(d)) is amended by striking out the last sentence.
(20) Section 12(e)(3) of the Coastal Zone Management Improve­
ment Act of 1980 (16 U.S.C. 1463a(e)(3)) is repealed.
(21) Section 11 of the Act of September 28, 1976 (16 U.S.C.
1910), is amended by striking out the last sentence.
(22) (A) Section 807(b) of the Alaska National Interest Lands
Conservation Act (16 U.S.C. 3117(b)) is repealed.
(B) Section 1108 of the Alaska National Interest Lands Con­
servation Act (16 U.S.C. 3168) is amended to read as follows:
"INJUNCTIVE RELIEF
"SEC. 1108. No court shall have jurisdiction to grant any injunc­
tive relief lasting longer than ninety days against any action pursu-PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3359
ant to this title except in conjunction with a final judgment entered
in a case involving an action pursuant to this title.".
(23)(A) Section 10(b)(3) of the Central Idaho Wilderness Act of
1980 (Public Law 96-312; 94 Stat. 948) is repealed.
(B) Section 10(c) of the Central Idaho Wilderness Act of 1980 is
amended to read as follows:
"(c) Any review of any decision of the United States District Court
for the District of Idaho shall be made by the Ninth Circuit Court of
Appeals of the United States.".
(24)(A) Section 1964(b) of title 18, United States Code, is
amended by striking out the second sentence.
(B) Section 1966 of title 18, United States Code, is amended by
striking out the last sentence.
(25)(A) Section 408(i)(5) of the Federal Food, Drug, and Cos­
metic Act (21 U.S.C. 346a(i)(5)) is amended by striking out the
last sentence.
(B) Section 409(g)(2) of the Federal Food, Drug, and Cosmetic
Act (21 U.S.C. 348(g)(2)) is amended by striking out the last
sentence.
(26) Section 8(f) of the Foreign Agents Registration Act of 1938
(22 U.S.C. 618(f)) is amended by striking out the last sentence.
(27) Section 4 of the Act of December 22, 1974 (25 U.S.C.
64()d-3), is amended by striking out "(a)" and by striking out
subsection (b).
(28XA) Section 3310(e) of the Internal Revenue Code of 1954
(26 U.S.C. 3310(e)) is repealed.
(B) Section 6110(0(5) of the Internal Revenue Code of 1954 (26
U.S.C. 6110(f)(5)) is amended by striking out "and the Court of
Appeals shall expedite any review of such decision in every way
possible".
(C) Section 6363(dX4) of the Internal Revenue Code of 1954 (26
U.S.C. 6363(d)(4)) is repealed.
(D) Section 7609(h)(3) of the Internal Revenue Code of 1954 (26
U.S.C. 7609(hX3)) is repealed.
(E) Section 9010(c) of the Internal Revenue Code of 1954 (26
U.S.C. 9010(c)) is amended by striking out the last sentence.
(F) Section 9011(bX2) of the Internal Revenue Code of 1954 (26
U.S.C. 9011(bX2)) is amended by striking out the last sentence.
(29XA) Section 596(aX3) of title 28, United States Code, is
amended by striking out the last sentence.
(B) Section 636(cX4) of title 28, United States Code, is amended
in the second sentence by striking out "expeditious and".
(C) Section 1296 of title 28, United States Code, and the item
relating to that section in the section analysis of chapter 83 of
that title, are repealed.
(D) Subsection (c) of section 1364 of title 28, United States
Code, the section heading of which reads "Senate actions", is
rGT3C31GQ
(E) Section 2284(bX2) of title 28, United States Code, is
amended by striking out the last sentence.
(F) Section 2349(b) of title 28, United States Code, is amended
by striking out the last two sentences.
(G) Section 2647 of title 28, United States Code, and the item
relating to that section in the section analysis of chapter 169 of
that title, are repealed.
(30) Section 10 of the Act of March 23, 1932, commonly known
as the Norris-LaGuardia Act (29 U.S.C. 110), is amended by 98 STAT. 3360 PUBLIC LAW 98-620—NOV. 8, 1984
striking out "with the greatest possible expedition" and all that
follows through the end of the sentence and inserting in lieu
thereof "expeditiously".
(31) Section 10(i) of the National Labor Relations Act (29
U.S.C. 160(i)) is repealed.
(32) Section 11(a) of the Occupational Safety and Health Act
of 1970 (29 U.S.C. 660(a)) is amended by striking out the last
sentence.
(33) Section 4003(e)(4) of the Employee Retirement Income
Security Act of 1974 (29 U.S.C. 1303(e)(4)) is repealed.
(34) Section 106(a)(1) of the Federal Coal Mine Health and
Safety Act of 1969 (30 U.S.C. 816(a)(1)) is amended by striking
out trip l&st SGntGnCG
(35) Section 1016 of the Impoundment Control Act of 1974 (31
2 use 687. U.S.C. 1406) is amended by striking out the second sentence.
(36) Section 2022 of title 38, United States Code, is amended
by striking out "The court shall order speedy hearing in any
such case and shall advance it on the calendar.".
(37) Section 3628 of title 39, United States Code, is amended
by striking out the fourth sentence.
(38) Section 1450(i)(4) of the Public Health Service Act (42
U.S.C. 300j-9(i)(4)) is amended by striking out the last sentence.
(39) Section 304(e) of the Social Security Act (42 U.S.C. 504(e))
IS rGOGQ-lGQ
(40) Section 814 of the Act of April 11, 1968 (42 U.S.C. 3614), is
repealed.
(41) The matter under the subheading "Exploration of
National Petroleum Reserve in Alaska" under the headings
"ENERGY AND MINERALS" and "GEOLOGICAL SURVEY" in title I of
the Act of December 12, 1980 (94 Stat. 2964; 42 U.S.C. 6508), is
amended in the third paragraph by striking out the last
sentence.
(42) Section 214(b) of the Emergency Energy Conservation Act
of 1979 (42 U.S.C. 8514(b)) is repealed.
(43) Section 2 of the Act of February 25, 1885 (43 U.S.C. 1062),
is amended by striking out "; and any suit brought under the
provisions of this section shall have precedence for hearing and
trial over other cases on the civil docket of the court, and shall
be tried and determined at the earliest practicable day".
(44) Section 23(d) of the Outer Continental Shelf Lands Act (43
U.S.C. 1349(d)) is repealed.
(45) Section 511(c) of the Public Utilities Regulatory Policies
Act of 1978 (43 U.S.C. 2011(c)) is amended by striking out "Any
such proceeding shall be assigned for hearing at the earliest
possible date and shall be expedited by such court.".
(46) Section 203(d) of the Trans-Alaska Pipeline Authorization
Act (43 U.S.C. 1652(d)) is amended by striking out the fourth
sentence.
(47) Section 5(f) of the Railroad Unemployment Insurance Act
(45 U.S.C. 355(f)) is amended by striking out ", and shall be
given precedence in the adjudication thereof over all other civil
cases not otherwise entitled by law to precedence".
(48) Section 305(d)(2) of the Regional Rail Reorganization Act
of 1973 (45 U.S.C. 745(d)(2)) is amended—
(A) in the first sentence by striking out "Within 180 days
after" and inserting in lieu thereof "After"; and PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3361
(B) in the last sentence by striking out "Within 90 days
after" and inserting in lieu thereof "After".
(49) Section 124(b) of the Rock Island Transition and Em­
ployee Assistance Act (45 U.S.C. 1018(b)) is amended by striking
out ", and shall render a final decision no later than 60 days
after the date the last such appeal is filed".
(50) Section 402(g) of the Communications Act of 1934 (47
U.S.C. 402(g)) is amended—
(A) by striking out "At the earliest convenient time the"
and inserting in lieu thereof "The"; and
(B) by striking out "10(e) of the Administrative Procedure
Act" and inserting in lieu thereof "706 of title 5, United
States Code".
(51) Section 405(e) of the Surface Transportation Assistance
Act of 1982 (Public Law 97-424; 49 U.S.C. 2305(e)) is amended by
striking out the last sentence.
(52) Section 606(c)(1) of the Rail Safety and Service Improve­
ment Act of 1982 (Public Law 97-468; 49 U.S.C. 1205(c)(1)) is
amended by striking out the second sentence.
(53) Section 13A(a) of the Subversive Activities Control Act of
1950 (50 U.S.C. 792a note) is amended in the third sentence by
striking out "or any court".
(54) Section 12(a) of the Military Selective Service Act of 1967
(50 U.S.C. App. 462(a)) is amended by striking out the last
sentence.
(55) Section 4(b) of the Act of July 2, 1948 (50 U.S.C. App.
1984(b)), is amended by striking out the last sentence. 49 use app.
2305.
45 use 1205.
EFFECTIVE DATE
SEC. 403. The amendments made by this subtitle shall not apply to
cases pending on the date of the enactment of this subtitle. 28 use 1657
note.
SUBTITLE B—DISTRICT COURT ORGANIZATION
SEC. 404. This subtitle may be cited as the "Federal District Court
Organization Act of 1984".
SEC. 405. The second sentence of subsection (c) of section 112 of
title 28, United States Code, is amended to read as follows:
"Court for the Eastern District shall be held at Brooklyn, Haup-
pauge, and Hempstead (including the village of Uniondale).".
SEC. 406. (a) Subsection (a) of section 93 of title 28, United States
Code, is amended—
(1) in paragraph (1) by striking out "De Kalb," and
"McHenry,"; and
(2) in paragraph (2)—
(A) by inserting "De Kalb," immediately after "Carroll,";
and
(B) by inserting "McHenry," immediately after "Lee,".
(b) The amendments made by subsection (a) of this section shall
apply to any action commenced in the United States District Court
for the Northern District of Illinois on or after the effective date of
this subtitle, and shall not affect any action pending in such court
on such effective date.
(c) The second sentence of subsection (b) of section 93 of title 28,
United States Code, is amended by inserting "Champaign/Urbana,"
before "Danville". Federal District
eourt
Organization
Act of 1984.
28 use 1 note.
28 use 93 note. 98 STAT. 3362 PUBLIC LAW 98-620—NOV. 8, 1984
SEC. 407. (a) Subsection (b) of section 124 of title 26, United States
28 use 124. Code, is amended—
(1) by striking out "six divisions" and inserting in lieu thereof
"seven divisions";
(2) in paragraph (4) by striking out ", Hidalgo, Starr,"; and
(3) by adding at the end thereof the following:
"(7) The McAllen Division comprises the counties of Hidalgo
and Starr.
"Court for the McAllen Division shall be held at McAllen.".
28 use 124 note. (b) The amendments made by subsection (a) of this section shall
apply to any action commenced in the United States District Court
for the Southern District of Texas on or after the effective date of
this subtitle, and shall not affect any action pending in such court
on such effective date.
SEC. 408. (a) Paragraph (1) of section 90(a) of title 28, United States
Code, is amended—
(1) by inserting "Fannin," after "Dawson,";
(2) by inserting "Gilmer," after "Forsyth,"; and
(3) by inserting "Pickens," after "Lumpkin,".
(b) Paragraph (2) of section 90(a) of title 28, United States Code, is
amended by striking out "Fannin,", "Gilmer,", and "Pickens,".
(c) Paragraph (6) of section 90(c) of title 28, United States Code, is
amended by striking out "Swainsboro" each place it appears and
inserting in lieu thereof "Statesboro".
28 use 90 note. (d) The amendments made by this section shall apply to any
action commenced in the United States District Court for the North­
ern District of Georgia on or after the effective date of this subtitle,
and shall not affect any action pending in such court on such
effective date.
SEC. 409. Section 85 of title 28, United States Code, is amended by
inserting "Boulder," before "Denver".
SEC. 410. The second sentence of section 126 of title 28, United
States Code, is amended by inserting "Bennington," before "Brattle-
boro".
Effective date. SEC. 411. (a) The amendments made by this subtitle shall take
28 use 85 note, effect on January 1,1985.
(b) The amendments made by this subtitle shall not affect the
composition, or preclude the service, of any grand or petit jury
summoned, impaneled, or actually serving on the effective date of
this subtitle.
Technical
Amendments
to the Federal
eourts
Improvement
Act of 1982.
28 use 1 note. SUBTITLE C—AMENDMENTS TO THE FEDERAL COURTS IMPROVEMENTS
ACT OF 1982
This subtitle may be cited as the "Technical Amendments to the
Federal Courts Improvement Act of 1982".
SEC. 412. (a) Section 1292(b) of title 28, United States Code, is
amended by inserting "which would have jurisdiction of an appeal of
such action" after "The Court of Appeals".
(b) Section 1292(c)(1) of title 28, United States Code, is amended by
inserting "or (b)" after "(a)".
SEC. 413. Section 337(c) of the Tariff Act of 1930 (19 U.S.C 1337(c))
is amended in the fourth sentence by inserting ", within 60 days
after the determination becomes fmal," after "appeal such
determination".
SEC. 414. (a) Sections 142, 143, and 144 of title 35, United States
Code, are amended to read as follows: PUBLIC LAW 98-620-NOV. 8, 1984 98 STAT. 3363
"§ 142. Notice of appeal 35 use 142.
"When an appeal is taken to the United States Court of Appeals
for the Federal Circuit, the appellant shall file in the Patent and
Trademark Office a written notice of appeal directed to the Comniis-
sioner, within such time after the date of the decision from which
the appeal is taken as the Commissioner prescribes, but in no case
less than 60 days after that date.
"§ 143. Proceedings on appeal 35 USC 143.
"With respect to an appeal described in section 142 of this title,
the Commissioner shall transmit to the United States Court of
Appeals for the Federal Circuit a certified list of the documents
comprising the record in the Patent and Trademark Office. The
court may request that the Commissioner forward the original or
certified copies of such documents during pendency of the appeal. In
an ex parte case, the Commissioner shall submit to the court in
writing the grounds for the decision of the Patent and Trademark
Office, addressing all the issues involved in the appeal. The court
shall, before hearing an appeal, give notice of the time and place of
the hearing to the Commissioner and the parties in the appeal.
"§ 144. Decision on appeal 35 USC 144.
"The United States Court of Appeals for the Federal Circuit shall
review the decision from which an appeal is taken on the record
before the Patent and Trademark Office. Upon its determination the
court shall issue to the Commissioner its mandate and opinion,
which shall be entered of record in the Patent and Trademark Office
and shall govern the further proceedings in the case.".
(b) Paragraphs (2), (3), and (4) of subsection (a) of section 21 of the
Act entitled "An Act to provide for the registration and protection
of trademarks used in commerce, to carry out the provisions of
certain international conventions, and for other purposes",
approved July 5, 1946 (15 U.S.C. 1071(a) (2), (3), and (4)), are amended
to read as follows:
"(2) When an appeal is taken to the United States Court of
Appeals for the Federal Circuit, the appellant shall file in the
Patent and Trademark Office a written notice of appeal directed to
the Commissioner, within such time after the date of the decision
from which the appeal is taken as the Commissioner prescribes, but
in no case less than 60 days after that date.
"(3) The Commissioner shall transmit to the United States Court
of Appeals for the Federal Circuit a certified list of the documents
comprising the record in the Patent and Trademark Office. The
court may request that the Commissioner forward the original or
certified copies of such documents during pendency of the appeal. In
an ex parte case, the Commissioner shall submit to that court a brief
explaining the grounds for the decision of the Patent and Trade­
mark Office, addressing all the issues involved in the appeal. The
court shall, before hearing an appeal, give notice of the time and
place of the hearing to the Commissioner and the parties in the
appeal.
"(4) The United States Court of Appeals for the Federal Circuit
shall review the decision from which the appeal is taken on the
record before the Patent and Trademark Office. Upon its determina­
tion the court shall issue its mandate and opinion to the Commis-98 STAT. 3364 PUBLIC LAW 98-620—NOV. 8, 1984
sioner, which shall be entered of record in the Patent and Trade­
mark Office and shall govern the further proceedings in the case.".
35 use 142 note. (c) The amendments made by this section shall apply to proceed­
ings pending in the Patent and Trademark Office on the date of the
enactment of this Act and to appeals pending in the United States
Court of Appeals for the Federal Circuit on such date.
28 use 713 note. SEC. 415. Any individual who, on the date of the enactment of the
Federal Courts Improvement Act of 1982, was serving as marshal for
the Court of Appeals for the District of Columbia under section
713(c) of title 28, United States Code, may, after the date of the
enactment of this Act, so serve under that section as in effect on the
date of the enactment of the Federal Courts Improvement Act of
1982. While such individual so serves, the provisions of section 714(a)
of title 28, United States Code, shall not apply to the Court of
Appeals for the District of Columbia.
SEC. 416. Title 28, United States Code, is amended in the following
respects:
(a) There shall be inserted, after section 797 thereof, in chapter 51
thereof, the following new section 798, which shall read as follows:
28 use 798. "§798. Places of holding court; appointment of special masters
"(a) The United States Claims Court is hereby authorized to
utilize facilities and hold court in Washington, District of Columbia,
and in four locations outside of the Washington, District of Colum­
bia metropolitan area, for the purpose of conducting trials and such
other proceedings as may be appropriate to executing the court's
functions. The Director of the Administrative Office of the United
States Courts shall designate such locations and provide for such
facilities.
"(b) The chief judge of the Claims Court may appoint special
masters to assist the court in carrying out its functions. Any special
masters so appointed shall carry out their responsibilities and be
compensated in accordance with procedures set forth in the rules of
the court.".
(b) The caption of chapter 51, title 28, shall be amended to include
the following item:
"798. Places of holding court; appointment of special masters.".
TITLE V—GOVERNMENT RESEARCH AND DEVELOPMENT
PATENT POLICY
SEC. 501. Chapter 18 of title 35, United States Code, is amended—
(1) by adding "or any novel variety of plant which is or may
be protectable under the Plant Varietv Protection Act (7 U.S.C.
35 use 201. 2321 et seq.)" immediately after "title in section 201(d);
(2) by adding ": Provided, That in the case of a variety of
plant, the date of determination (as defined in section 41(d) of
the Plant Variety Protection Act (7 U.S.C. 2401(d))) must also
occur during the period of contract performance" immediately
after "agreement" in section 201(e); >
Contracts with (3) in section 202(a), by amending clause (i) to read as follows:
U.S. "(i) when the contractor is not located in the United States or
35^ use 202 *^°®^ ^^^ have a place of business located in the United States or
is subject to the control of a foreign government,"; by striking
the word "or" before "ii", and by adding after the words
"security of such activities" in the first sentence of such para-PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3365
graph, the following: "or, iv) when the funding agreement
includes the operation of a Government-owned, contractor-oper­
ated facility of the Department of Energy primarily dedicated to
that Department's naval nuclear propulsion or weapons related
programs and all funding agreement limitations under this
subparagraph on the contractor's right to elect title to a subject
invention are limited to inventions occurring under the above
two programs of the Department of Energy."
(4) by amending paragraphs (1) and (2) of section 202(b) to read
as follows:
"(b)(1) The rights of the Government under subsection (a) shall not
be exercised by a Federal agency unless it first determines that at
least one of the conditions identified in clauses (i) through (iv) of
subsection (a) exists. Except in the case of subsection (a)(iii), the
agency shall file with the Secretary of Commerce, within thirty days
after the award of the applicable funding agreement, a copy of such
determination. In the case of a determination under subsection
(a)(ii), the statement shall include an analysis justifying the determi­
nation In the case of determinations applicable to funding agree­
ments with small business firms, copies shall also be sent to the
Chief Counsel for Advocacy of the Small Business Administration. If
the Secretary of Commerce believes that any individual determina­
tion or pattern of determinations is contrary to the policies and
objectives of this chapter or otherwise not in conformance with this
chapter, the Secretary shall so advise the head of the agency
concerned and the Administrator of the Office of Federal Procure­
ment Policy, and recommend corrective actions.
"(2) Whenever the Administrator of the Office of Federal Procure­
ment Policy has determined that one or more Federal agencies are
utilizing the authority of clause (i) or (ii) of subsection (a) of this
section in a manner that is contrary to the policies and objectives of
this chapter, the Administrator is authorized to issue regulations
describing classes of situations in which agencies may not exercise
the authorities of those clauses.";
(4A) By adding at the end of section 202(b) the following new
paragraph:
"(4) If the contractor believes that a determination is contrary to
the policies and objectives of this chapter or constitutes an abuse of
discretion by the agency, the determination shall be subject to the
last paragraph of section 203(2).".
(5) by amending paragraphs (1), (2), (3), and (4) of section 202(c)
to read as follows:
"(1) That the contractor disclose each subject invention to the
Federal agency within a reasonable time after it becomes
known to contractor personnel responsible for the administra­
tion of patent matters, and that the Federal Government may
receive title to any subject invention not disclosed to it within
such time.
"(2) That the contractor make a written election within two
years after disclosure to the Federal agency (or such additional
time as may be approved by the Federal agency) whether the
contractor will retain title to a subject invention: Provided, That
in any case where publication, on sale, or public use, has
initiated the one year statutory period in which valid patent
protection can still be obtained in the United States, the period
for election may be shortened by the Federal agency to a date
that is not more than sixty days prior to the end of the statutory 35 use 202.
Small business.
Regulations.
Contracts with
U.S.
Grants.
Contracts with
U.S.
Grants.
31-194 0-86-32 : QL.3 Part3 98 STAT. 3366 PUBLIC LAW 98-620—NOV. 8, 1984
International
agreements.
Defense and
national
security.
35 use 202.
Contracts with
U.S.
Grants.
Small business. period: And provided further, That the Federal Government
may receive title to any subject invention in which the contrac­
tor does not elect to retain rights or fails to elect rights within
such times.
"(3) That a contractor electing rights in a subject invention
agrees to file a patent application prior to any statutory bar
date that may occur under this title due to publication, on sale,
or public use, and shall thereafter file corresponding patent
applications in other countries in which it wishes to retain title
within reasonable times, and that the Federal Government may
receive title to any subject inventions in the United States or
other countries in which the contractor has not filed patent
applications on the subject invention within such times.
"(4) With respect to any invention in which the contractor
elects rights, the Federal agency shall have a nonexclusive,
nontransferrable, irrevocable, paid-up license to practice or
have practiced for or on behalf of the United States any subject
invention throughout the world: Provided, That the funding
agreement may provide for such additional rights; including the
right to assign or have assigned foreign patent rights in the
subject invention, as are determined by the agency as necessary
for meeting the obligations of the United States under any
treaty, international agreement, arrangement of cooperation,
memorandum of understanding, or similar arrangement,
including military agreement relating to weapons development
and production.".
(6) by striking out "may" in section 202(c)(5) and inserting in
lieu thereof "as well as any information on utilization or efforts
at obtaining utilization obtained as part of a proceeding under
section 203 of this chapter shall";
(7) by striking out "and which is not, itself, engaged in or does
not hold a substantial interest in other organizations engaged in
the manufacture or sales of products or the use of processes that
might utilize the invention or be in competition with embodi­
ments of the invention" in clause (A) of section 202(c)(7);
(8) by amending clauses (B)-(D) of section 202(c)(7) to read as
follows: "(B) a requirement that the contractor share royalties
with the inventor; (C) except with respect to a funding agree­
ment for the operation of a Government-owned-contractor-oper-
ated facility, a requirement that the balance of any royalties or
income earned by the contractor with respect to subject inven­
tions, after payment of expenses (including payments to inven­
tors) incidental to the administration of subject inventions, be
utilized for the support of scientific research or education; (D) a
requirement that, except where it proves infeasible after a
reasonable inquiry, in the licensing of subject inventions shall be
given to small business firms; and (E) with respect to a funding
agreement for the operation of a Government-owned-contractor-
operated facility, requirements (i) that after payment of patent­
ing costs, licensing costs, payments to inventors, and other
expenses incidental to the administration of subject inventions,
100 percent of the balance of any royalties or income earned
and retained by the contractor during any fiscal year up to an
amount equal to 5 percent of the annual budget of the facility,
shall be used by the contractor for scientific research, develop­
ment, and education consistent with the research and develop­
ment mission and objectives of the facility, including activities PUBLIC LAW 98-620—NOV. 8, 1984 98 STAT. 3367
that increase the licensing potential of other inventions of the
facility; provided that if said balance exceeds 5 percent of the
annual budget of the facility, that 75 percent of such excess
shall be paid to the Treasury of the United States and the
remaining 25 percent shall be used for the same purposes as
described above in this clause (D); and (ii) that, to the extent it
provides the most effective technology transfer, the licensing of
subject inventions shall be administered by contractor employ­
ees on location at the facility."
(9) by adding "(1. before the word "With" in the first line of
section 203, and by adding at the end of section 203 the
following:
"(2) A determination pursuant to this section or section 202(b)(4)
shall not be subject to the Contract Disputes Act (41 U.S.C. § 601 et
seq.). An administrative appeals procedure shall be established by
regulations promulgated in accordance with section 206. Addi­
tionally, any contractor, inventor, assignee, or exclusive licensee
adversely affected by a determination under this section may, at any
time within sixty days after the determination is issued, file a
petition in the United States Claims Court, which shall have juris­
diction to determine the appeal on the record and to affirm, reverse,
remand or modify, ", as appropriate, the determination of the
Federal agency. In cases described in paragraphs (a) and (c), the
agency's determination shall be held in abeyance pending the
exhaustion of appeals or petitions filed under the preceding
sentence.";
(10) by amending section 206 to read as follows:
"§ 206. Uniform clauses and regulations
"The Secretary of Commerce may issue regulations which may be
made applicable to Federal agencies implementing the provisions of
sections 202 through 204 of this chapter and shall establish standard
funding agreement provisions required under this chapter. The
regulations and the standard funding agreement shall be subject to
public comment before their issuance.";
(11) in section 207 by inserting "(a)" before "Each Federal"
and by adding the following new subsection at the end thereof:
"(b) For the purpose of assuring the effective management of
Government-owned inventions, the Secretary of Commerce is
authorized to—
"(1) assist Federal agency efforts to promote the licensing and
utilization of Government-owned inventions;
"(2) assist Federal agencies in seeking protection and main­
taining inventions in foreign countries, including the payment
of fees and costs connected therewith; and
"(3) consult with and advise Federal agencies as to areas of
science and technology research and development with poten­
tial for commercial utilization."; and
(12) in section 208 by striking out "Administrator of General
Services" and inserting in lieu thereof "Secretary of
Commerce".
(13) by deleting from the first sentence of section 210(c),
"August 23, 1971 (36 Fed. Reg. 16887)" and inserting in lieu
thereof "February 18, 1983", and by inserting the following
before the period at the end of the first sentence of section 210(c)
"except that all funding agreements, including those with other
than small business firms and nonprofit organizations, shall 35 use 203.
Regulations.
35 use 206.
eontracts with
U.S.
Grants. 98 STAT. 3368 PUBLIC LAW 98-620—NOV. 8, 1984
include the requirements established in paragraph 202(cX4) and
section 203 of this title."
(14) by adding at the end thereof the following new section:
Prohibition. **§ 212. Disposition of rights in educational awards
"No scholarship, fellowship, training grant, or other funding
agreement made by a Federal agency primarily to an awardee for
educational purposes will contain any provision giving the Federal
agency any rights to inventions made by the awardee."; and
(15) by adding at the end of the table of sections for the
chapter the following new item:
"212. Disposition of rights in educational awards.".
Approved November 8, 1984.
LEGISLATIVE HISTORY—H.R. 6163:
HOUSE REPORT No. 98-1062 (Comm. on the Judiciary).
CONGRESSIONAL RECORD, Vol. 130 (1984):
Sept. 24, considered and passed House.
Oct. 3, considered and passed Senate, amended.
Oct. 9, House concurred in Senate amendments.
WEEKLY COMPILATION OF PRESIDENTIAL DOCUMENTS, Vol. 20, No. 45 (1984):
July 9, Presidential statement.

Highlights content goes here...

Purpose

The primary purpose of the Federal District Court Organization Act of 1984 is to enhance the efficiency and effectiveness of the federal court system. This law aims to improve the administration of justice in state courts, provide protection for semiconductor chip products and their mask works, and establish priorities for civil actions in federal courts. The document also amends various federal laws to clarify rights and obligations related to funding agreements and patent applications.

Key Provisions

The key provisions of this law include:

  1. Amendments to Trademark Act: The Trademark Act of 1946 is amended to clarify that a registered mark is not deemed the common descriptive name of goods or services solely because it is also used as a product name.

  2. Establishment of State Justice Institute: A private nonprofit corporation called the State Justice Institute is established to further the development and adoption of improved judicial administration in state courts.

  3. Granting Authority: The Institute is authorized to award grants and enter into cooperative agreements or contracts for research, demonstrations, special projects, and other purposes related to justice system improvement.

  4. Protection of Semiconductor Chip Products: A new chapter is added to Title 17, US Code, providing protection for semiconductor chip products and their mask works.

  5. Expedited Consideration in Federal Courts: The document amends various federal laws to establish priorities for civil actions in federal courts, including expedited consideration for certain types of cases.

  6. Board of Directors for State Justice Institute: The Board is composed of 11 voting members appointed by the President, with a mix of judicial and non-judicial members.

Industry Impact

The impact of this law on various industries includes:

  1. Improved Judicial Administration: The establishment of the State Justice Institute will focus on improving judicial administration in state courts, leading to more efficient and effective justice delivery.

  2. Research and Development Funding: Funds are authorized for research and development related to justice system improvement, including grants and cooperative agreements or contracts.

  3. Protection for Semiconductor Chip Products: The addition of a new chapter in Title 17, US Code provides protection for semiconductor chip products and their mask works, safeguarding intellectual property rights.

  4. Expedited Consideration in Federal Courts: Priority will be given to expedited consideration of certain types of cases in federal courts, reducing the time and resources required for legal proceedings.

Updates/Amendments

The law makes various technical amendments to other laws related to federal courts, including:

  1. Changes to Appeals in Patent Cases: The rules governing appeals in patent cases are amended.

  2. Plant Variety Protection Act Amendments: The Plant Variety Protection Act is amended to clarify the rights and obligations of contractors and the federal government.

  3. Federal Trade Commission Act Repeal: Certain provisions in the Federal Trade Commission Act related to expedited consideration of actions are repealed.

  4. Procedural Changes: New procedures are created for the exercise of rights by the federal government under funding agreements, and changes are made to the rules governing disclosure and election of title to inventions made under funding agreements.

Congress.gov

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