[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[H.R. 4307 Reported in House (RH)]

                                                 Union Calendar No. 405

103d CONGRESS

  2d Session

                               H. R. 4307

                          [Report No. 103-728]

_______________________________________________________________________

                                 A BILL

To amend title 35, United States Code, with respect to applications for 
                            process patents.

_______________________________________________________________________

                           September 20, 1994

  Reported with an amendment, committed to the Committee of the Whole 
       House on the State of the Union, and ordered to be printed





                                                 Union Calendar No. 405
103d CONGRESS
  2d Session
                                H. R. 4307

                          [Report No. 103-728]

To amend title 35, United States Code, with respect to applications for 
                            process patents.


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                             April 28, 1994

Mr. Hughes (for himself, Mr. Moorhead, Mr. Frank of Massachusetts, Mr. 
  Boucher, Mr. Sensenbrenner, Mr. Fish, and Mr. Coble) introduced the 
  following bill; which was referred to the Committee on the Judiciary

                           September 20, 1994

                    Additional sponsor: Mr. McCollum

                           September 20, 1994

  Reported with an amendment, committed to the Committee of the Whole 
       House on the State of the Union, and ordered to be printed
 [Strike out all after the enacting clause and insert the part printed 
                               in italic]
 [For text of introduced bill, see copy of bill as introduced on April 
                               28, 1994]

_______________________________________________________________________

                                 A BILL


 
To amend title 35, United States Code, with respect to applications for 
                            process patents.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. EXAMINATION OF PROCESS PATENT APPLICATIONS FOR OBVIOUSNESS.

    Section 103 of title 35, United States Code, is amended--
            (1) by designating the first paragraph as subsection (a);
            (2) by designating the second paragraph as subsection (c); 
        and
            (3) by inserting after the first paragraph the following:
    ``(b)(1) Notwithstanding subsection (a), and upon timely election 
by the applicant for patent to proceed under this subsection, a process 
using or resulting in a composition of matter that is novel under 
section 102 and nonobvious under subsection (a) of this section shall 
be considered nonobvious if--
            ``(A) claims to the process and the composition of matter 
        are contained in either the same application for patent or in 
        separate applications having the same effective filing date; 
        and
            ``(B) the composition of matter, and the process at the 
        time it was invented, were owned by the same person or subject 
        to an obligation of assignment to the same person.
    ``(2) A patent issued on a process under paragraph (1)--
            ``(A) shall also contain the claims to the composition of 
        matter used in or made by that process, or
            ``(B) shall, if such composition of matter is claimed in 
        another patent, be set to expire on the same date as such other 
        patent, notwithstanding section 154.''.

SEC. 2. PRESUMPTION OF VALIDITY; DEFENSES.

    Section 282 of title 35, United States Code, is amended by 
inserting after the second sentence of the first paragraph the 
following: ``Notwithstanding the preceding sentence, if a claim to a 
composition of matter is held invalid and that claim was the basis of a 
determination of nonobviousness under section 103(b)(1), the process 
shall no longer be considered nonobvious solely on the basis of section 
103(b)(1).''.

SEC. 3. EFFECTIVE DATE.

    The amendments made by section 1 shall apply to any application for 
patent filed on or after the date of the enactment of this Act and to 
any application for patent pending on such date of enactment, including 
(in either case) an application for the reissue of a patent.