[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[S. 148 Introduced in Senate (IS)]
103d CONGRESS
1st Session
S. 148
To amend section 337 of the Tariff Act of 1930 and title 28 of the
United States Code to provide effective procedures to deal with unfair
practices in import trade and to conform section 337 and title 28 to
the General Agreement on Tariffs and Trade, and for other purposes.
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
January 21 (legislative day, January 5), 1993
Mr. Rockfeller (for himself, Mr. Hatch, and Mr. Wofford) introduced the
following bill; which was read twice and referred to the Committee on
Finance
_______________________________________________________________________
A BILL
To amend section 337 of the Tariff Act of 1930 and title 28 of the
United States Code to provide effective procedures to deal with unfair
practices in import trade and to conform section 337 and title 28 to
the General Agreement on Tariffs and Trade, and for other purposes.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ``Intellectual Property Protection Act
of 1993''.
SEC. 2. FINDINGS AND PURPOSE.
(a) Findings.--The Congress finds the following:
(1) Section 337 of the Tariff Act of 1930 (19 U.S.C. 1337)
is one of the most important laws available to United States
businesses to deal with unfair practices in import trade and to
enforce intellectual property rights against infringing
imports.
(2) On November 23, 1988, a panel of the General Agreement
on Tariffs and Trade (hereafter in this Act referred to as
``GATT'') found section 337 to be in violation of United States
obligations under the GATT, because certain procedures under
section 337 did not provide national treatment for imported
goods and because some aspects of the procedures were
unnecessary for effective compliance with United States patent
law.
(3) On November 7, 1989, the United States allowed adoption
of the GATT panel report on section 337, thereby assuming an
obligation to reform section 337 to comply with its obligations
under the GATT.
(4) Because of the special difficulties in enforcing
intellectual property rights against unfairly traded imports,
special enforcement procedures that apply only to imports are
necessary to effectively enforce intellectual property rights
against infringing imports.
(5) The GATT allows special enforcement procedures when
such procedures are not less favorable than the procedures used
against domestic products or such procedures are necessary to
secure compliance with copyright, patent, trademark, and mask
work registration protection laws or regulations.
(6) To be effective, such enforcement procedures must
establish administrative proceedings which can reach multiple
parties in one forum, allow efficient foreign discovery,
provide expeditious dispute resolution, and provide border
enforcement by the United States Customs Service.
(b) Purpose.--The purpose of this Act is to conform section 337 of
the Tariff Act of 1930 and title 28 of the United States Code to the
provisions of the GATT to ensure that section 337 procedures can reach
multiple parties in one forum, allow efficient foreign discovery,
provide expeditious dispute resolution even in the absence of a
deadline for final determinations, and provide border enforcement of
determinations.
SEC. 3. AMENDMENT OF SECTION 337 OF THE TARIFF ACT OF 1930.
(a) Investigation.--Section 337(b) of the Tariff Act of 1930 (19
U.S.C. 1337(b)) is amended--
(1) by striking ``; Time Limits'' in the heading;
(2) in paragraph (1), by striking ``The Commission shall
conclude any such investigation'' and all that follows through
the end period and inserting the following: ``The Commission
shall conclude any such investigation and make its
determination under this section at the earliest practicable
time after the date of publication of notice of such
investigation. To promote expeditious adjudication, the
Commission shall, within 30 days of the initiation of an
investigation, establish a target date for its final
determination.''; and
(3) by striking the fifth sentence in paragraph (3).
(b) Determination; Review.--Section 337(c) of such Act is amended--
(1) by striking ``a settlement agreement'' in the first
sentence and inserting ``an agreement between the parties'';
(2) by striking ``subsection (d) or (e)'' in the second
sentence and inserting ``subsection (d), (e), or (f) (and each
declaration under subsection (o))''; and
(3) by striking ``(f), or (g)'' in the fourth sentence and
inserting ``(f), (g), or (o)''.
(c) Exclusion of Articles From Entry.--Section 337(d) of such Act
is amended by inserting after the first sentence the following new
sentence: ``No article shall be excluded from entry where the
Commission determines that the owner, importer, or consignee of the
article has established a sufficient counterclaim directly related to
the unfair methods or acts determined by the Commission to exist.''.
(d) Entry Under Bond.--Section 337(e) of such Act is amended--
(1) in the last sentence of paragraph (1), by striking
``determined by the Commission'' and all that follows through
the end period and inserting: ``prescribed by the Secretary in
an amount determined by the Commission to be sufficient to
protect the complainant from any injury. If the Commission
later determines that the respondent has violated the
provisions of this section, the bond may be forfeited to the
complainant.'';
(2) by adding at the end of paragraph (2), the following
new sentence: ``If the Commission later determines that the
respondent has not violated the provisions of this section, the
bond may be forfeited to the respondent.''; and
(3) by adding at the end thereof the following new
paragraph:
``(4) The Commission may prescribe the terms and conditions
under which bonds may be forfeited under paragraphs (1) and
(2).''.
(e) Cease and Desist Orders.--Section 337(f)(1) of such Act is
amended--
(1) by inserting after the first sentence the following new
sentence: ``A permanent cease and desist order shall not be
issued if the Commission determines that the owner, importer,
or consignee of the article has established a sufficient
counterclaim directly related to the unfair methods or acts
determined by the Commission to exist.''; and
(2) by adding at the end thereof the following: ``If a
temporary cease and desist order is issued in addition to, or,
in lieu of, an exclusion order under subsection (e), the
Commission may require the complainant to post a bond as a
prerequisite to the issuance of an order under this subsection.
If the Commission later determines that the respondent has not
violated the provisions of this section, the bond may be
forfeited to the respondent. The Commission may prescribe the
terms and conditions under which bonds may be forfeited under
this paragraph.''.
(f) Conditions Applicable for General Exclusion Orders.--Section
337(g) of such Act is amended by adding at the end thereof the
following new paragraph:
``(3) The authority of the Commission to issue an exclusion
from entry of articles shall be limited to persons determined
by the Commission to be violating this section unless the
Commission determines that--
``(A) a general exclusion from entry of articles is
necessary to prevent circumvention of an exclusion from
entry limited to such persons; or
``(B) there is a pattern of violation of this
section and it is difficult to identify the persons
responsible.''.
(g) Entry Under Bond After Referral to President.--Section
337(j)(3) of such Act is amended by striking ``shall be entitled to
entry under bond'' and all that follows through the end period and
inserting ``shall, until such determination becomes final, be entitled
to entry under bond prescribed by the Secretary in an amount determined
by the Commission to be sufficient to protect the complainant from
injury. If the determination becomes final, the bond may be forfeited
to the complainant. The Commission may prescribe the terms and
conditions under which bonds may be forfeited under this paragraph.''.
(h) Declaratory Relief.--Section 337 of such Act is amended by
adding at the end thereof the following new subsection:
``(o) Complaint for Declaratory Relief by Owner, Importer, or
Consignee.--In a case of actual controversy as to the existence of
unfair methods of competition and unfair acts described in subsection
(a), upon the filing of a complaint for declaratory relief under oath
by the owner, importer, or consignee of an imported article (or part
thereof), the Commission may declare the rights and other legal
relations of the parties, whether or not further relief is or could be
sought. A declaration made under this subsection shall have the force
and effect of a final determination of the Commission and shall be
reviewable as such. In the case of unfair acts involving the validity
of patents as described in subsection (a)(1)(B), such a declaration
shall be only for the purpose of determining whether there is a
violation of this section and shall not have the effect of claim or
issue preclusion.''.
SEC. 4. AMENDMENT OF TITLE 28, UNITED STATES CODE.
(a) In General.--Chapter 111 of title 28, United States Code, is
amended by adding at the end thereof the following new section:
``Sec. 1659. Stay of certain actions pending disposition of related
proceedings before the United States International Trade
Commission
``(a) Stay.--In a civil action involving parties that are also
parties to a proceeding before the United States International Trade
Commission pursuant to section 337 of the Tariff Act of 1930 (19 U.S.C.
1337), at the request of a party that is a respondent in the proceeding
before the Commission (other than a respondent to a counterclaim in a
proceeding for declaratory relief), a district court shall stay, until
the determination of the Commission becomes final, proceedings in the
civil action with respect to any claim that involves the same issues
involved in the proceeding before the Commission.
``(b) Use of Commission Record.--After dissolution of a stay under
subsection (a), portions of the record of the proceeding before the
United States International Trade Commission that bear on issues in a
civil action shall be admissible in the civil action, subject to such
protective order as the district court determines necessary and to the
extent permitted under the Federal Rules of Evidence and the Federal
Rules of Civil Procedure.''.
(b) Clerical Amendment.--The chapter analysis for chapter 111 of
title 28, United States Code, is amended by adding at the end the
following new item:
``1659. Stay of certain actions pending disposition of related
proceedings before the United States
International Trade Commission.''.
SEC. 5. EFFECTIVE DATE.
The amendments made by this Act apply to complaints filed and
investigations initiated under section 337 of the Tariff Act of 1930
(19 U.S.C. 1337) after the date of the enactment of this Act.
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