[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[H.R. 4505 Introduced in House (IH)]

103d CONGRESS
  2d Session
                                H. R. 4505

 To amend title 35, United States Code, to establish a 20-year patent 
   term from the date of filing and to establish a domestic priority 
                    system, and for other purposes.


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                              May 26, 1994

   Mr. Hughes (by request) introduced the following bill; which was 
               referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
 To amend title 35, United States Code, to establish a 20-year patent 
   term from the date of filing and to establish a domestic priority 
                    system, 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 ``Patent Term Amendment Act of 1994''.

SEC. 2. PATENT TERM.

    Section 154 of title 35, United States Code, is amended to read as 
follows:
``Sec. 154 Contents and term of patent
    ``(a) Every patent shall contain a short title of the invention and 
a grant to the patentee, his heirs or assigns, of the right to exclude 
others from making, using, or selling the invention throughout the 
United States and, if the invention is a process, of the right to 
exclude others from using or selling throughout the United States, or 
importing into the United States, products made by that process, 
referring to the specification for the particulars thereof. Subject to 
the payment of fees as provided for in this title, such grant shall be 
for a term beginning on the date on which the patent issues and ending 
twenty years from the date on which the application for the patent was 
filed in the United States or, if the application contains a specific 
reference to an earlier filed application or applications under 
sections 120, 121 or 365(c) of this title, from the date on which the 
earliest such application was filed. Priority under sections 119, 
365(a) or 365(b) of this title shall not be taken into account in 
determining the term of a patent. A copy of the specification and 
drawings shall be annexed to the patent and be a part thereof.
    ``(b) Where the issuance of an original patent is delayed because 
of a proceeding under section 135(a) of this title or the application 
is placed under an order pursuant to section 181 of this title, the 
term of the patent shall be extended for the period of delay up to five 
years. Any and all extensions available under this subsection shall not 
extend the term of an original patent for more than five years.''.

SEC. 3. ESTABLISHMENT OF A DOMESTIC PRIORITY SYSTEM.

    (a) Section 119 of title 35, United States Code, is amended to read 
as follows:
``Sec. 119 Benefit of earlier filing date; right of priority
    ``(a) An application for patent for an invention filed in this 
country by any person who has, or whose legal representatives or 
assigns have, previously filed an application for a patent for the same 
invention in a foreign country which affords similar privileges in the 
case of applications filed in the United States shall have the same 
effect as the same application would have if filed in this country on 
the date on which the application for patent for the same invention was 
first filed in such foreign country, if the application in this country 
is filed within twelve months from the earliest date on which such 
foreign application was filed; but no patent shall be granted on any 
application for patent for an invention which had been patented or 
described in a printed publication in any country more than one year 
before the date of the actual filing of the application in this 
country, or which had been in public use or on sale in this country 
more than one year prior to such filing.
    ``(b) No application for patent shall be entitled to a right of 
priority under subsection (a) unless a claim therefor and a certified 
copy of the original foreign application, specification and drawings 
upon which it is based are filed in the Patent and Trademark Office 
before the patent is granted, or at such time during the pendency of 
the application as required by the Commissioner not earlier than six 
months after the filing of the application in this country. Such 
certification shall be made by the patent office of the foreign country 
in which filed and show the date of the application and of the filing 
of the specification and other papers. The Commissioner may require a 
translation of the papers filed if not in the English language and such 
other information as he deems necessary.
    ``(c) In like manner and subject to the same conditions and 
requirements, the right provided under subsection (a) may be based upon 
a subsequent regularly filed application in the same foreign country 
instead of the first filed foreign application, provided that any 
foreign application has been withdrawn, abandoned, or otherwise 
disposed of, without having been laid open to public inspection and 
without leaving any rights outstanding, and has not served, nor 
thereafter shall serve, as a basis for claiming a right of priority.
    ``(d) Applications for inventor's certificates filed in a foreign 
country in which applicants have a right to apply, at their discretion, 
either for a patent or for an inventor's certificate shall be treated 
in this country in the same manner and have the same effect for purpose 
of the right of priority under subsection (a) as applications for 
patents, subject to the same conditions and requirements of this 
section as apply to applications for patents, provided such applicants 
are entitled to the benefits of the Stockholm Revision of the Paris 
Convention at the time of such filing.
    ``(e) An application for patent filed under sections 111(a) or 363 
of this title for an invention disclosed in the manner provided by the 
first paragraph of section 112 of this title in a provisional 
application filed under section 111(b) of this title, by an inventor or 
inventors named in the provisional application shall have the same 
effect, as to such invention, as though filed on the date of the 
provisional application filed under section 111(b) of this title, if 
the application for patent filed under sections 111(a) or 363 of this 
title is filed within twelve months from the date on which the 
provisional application was filed and if it contains or is amended to 
contain a specific reference to the provisional application. A 
provisional application filed under section 111(b) of this title may 
not be relied upon in any proceeding in the Patent and Trademark Office 
unless the fee set forth in subsections 41(a)(1) (A) or (C) has been 
paid and the provisional application was pending on the filing date of 
the application for patent under sections 111(a) or 363 of this 
title.''.
    (b) Section 41(a)(1) of title 35, United States Code, is amended to 
include a new subparagraph c, as follows:
            ``c. On filing each provisional application for an original 
        patent, $150.00.''.
    (c) Section 111 of title 35, United States Code, is amended to read 
as follows:
``Sec. 111 Application
    ``(a) Application for patent shall be made, or authorized to be 
made, by the inventor, except as otherwise provided in this title, in 
writing to the Commissioner. Such application shall include (1) a 
specification as prescribed by section 112 of this title; (2) a drawing 
as prescribed by section 113 of this title; and (3) an oath by the 
applicant as prescribed by section 115 of this title. The application 
must be accompanied by the fee required by law. The fee and oath may be 
submitted after the specification and any required drawing are 
submitted, within such period and under such conditions, including the 
payment of a surcharge, as may be prescribed by the Commissioner. Upon 
failure to submit the fee and oath within such prescribed period, the 
application shall be regarded as abandoned, unless it is shown to the 
satisfaction of the Commissioner that the delay in submitting the fee 
and oath was unavoidable or unintentional. The filing date of an 
application shall be the date on which the specification and any 
required drawing are received in the Patent and Trademark Office.
    ``(b)(1) A provisional application for patent shall be made, or 
authorized to be made, by the inventor, in accordance with regulations 
prescribed by the Commissioner. Such application shall include (A) a 
specification as prescribed by the first paragraph of section 112 of 
this title; and (B) a drawing as prescribed by section 113 of this 
title. A claim shall not be required in a provisional application. The 
application must be accompanied by the fee required by law. The fee may 
be submitted after the specification and any required drawing are 
submitted, within such period and under such conditions, including the 
payment of a surcharge, as may be prescribed by the Commissioner. Upon 
failure to submit the fee within such prescribed period, the 
application shall be regarded as abandoned, unless it is shown to the 
satisfaction of the Commissioner that the delay in submitting the fee 
was unavoidable or unintentional. The filing date of a provisional 
application shall be the date on which the specification and any 
required drawing are received in the Patent and Trademark Office. The 
provisional application shall be regarded as abandoned twelve months 
after its filing date and shall not be subject to revival thereafter. 
Subject to all the conditions in this subsection, subsections 111(b)(2) 
and 119(e) and as prescribed by the Commissioner, an application for 
patent filed under section 111(a) of this title may be treated as a 
provisional application for patent.
    ``(2) A provisional application shall not be entitled to the right 
of priority of any other application under sections 119 or 365(a) of 
this title or the benefit of an earlier filing date in the United 
States under sections 120, 121 or 365(c) of this title.
    ``(3) The provisions of this title relating to applications for 
patent shall be applicable to provisional applications for patent, 
except as otherwise provided and except that provisional applications 
for patent shall not be subject to sections 115, 131, 135 and 157 of 
this title.''.

SEC. 4. CONFORMING CHANGES.

    (a) The table of sections for chapter 11 of title 35, United States 
Code, is amended in the item relating to section 111 by deleting ``for 
patent'' and in the item relating to section 119 by deleting ``in 
foreign country.''
    (b) Section 156 of title 35, United States Code, is amended by 
adding ``under subsection (e)(1) of this section'' after ``extended'' 
in subsection (a)(2).
    (c) Section 172 of title 35, United States Code, is amended by 
changing ``section 119'' to ``subsections 119(a) through 119(d)''. 
Further, ``The right of priority provided for by subsection 119(e) of 
this title shall not apply to designs.'' has been added as a second 
sentence.
    (d) Section 173 of title 35, United States Code, is amended by 
adding ``from the date of grant'' after ``years.''
    (e) Subsection 365(a) of title 35, United States Code, is amended 
by changing ``section 119'' to ``subsections 119(a) through 119(d)'' 
and subsection 365(b) of title 35, United States Code, is amended by 
changing ``the first paragraph of section 119'' to ``subsection 
119(a).''
    (f) Subsection 373 of title 35, United States Code, is amended by 
changing ``section 119'' to ``subsections 119(a) through 119(d)''.

SEC. 5. EFFECTIVE DATE.

    Sections 2 through 4 shall take effect six months from the date of 
enactment and shall apply to all applications filed in the United 
States on or after the effective date. The term of a patent granted on 
a plant or utility application that is filed after the effective date 
and that contains a specific reference to an earlier filed application 
under the provisions of sections 120, 121 or 365(c) of title 35 shall 
be measured from the filing date of the earliest filed application, a 
reference to which is made under sections 120, 121 or 365(c) of this 
title.