[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[S. 2488 Introduced in Senate (IS)]

103d CONGRESS
  2d Session
                                S. 2488

  To amend chapter 11 of title 35, United States Code, to provide for 
 early publication of patent applications, to amend chapter 14 of such 
  title to provide provisional rights for the period of time between 
  early publication and patent grant, and to amend chapter 10 of such 
    title to provide a prior art effect for published applications.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

           September 30 (legislative day, September 12), 1994

 Mr. DeConcini introduced the following bill; which was read twice and 
               referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
  To amend chapter 11 of title 35, United States Code, to provide for 
 early publication of patent applications, to amend chapter 14 of such 
  title to provide provisional rights for the period of time between 
  early publication and patent grant, and to amend chapter 10 of such 
    title to provide a prior art effect for published applications.

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

SEC. 1. SHORT TITLE.

    This Act may be cited as the ``Patent Application Publication Act 
of 1994''.

SEC. 2. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.

    Section 102(e) of title 35, United States Code, is amended to read 
as follows:
    ``(e) the invention was described in--
            ``(1) an application for patent, published under section 
        122(b), by another filed in the United States before the 
        invention thereof by the applicant for patent; or
            ``(2) a patent granted on an application for patent by 
        another filed in the United States before the invention thereof 
        by the applicant for patent, or on an international application 
        by another who has fulfilled the requirements of paragraphs 
        (1), (2), and (4) of section 371(c) of this title before the 
        invention thereof by applicant for patent, or''.

SEC. 3. TIME FOR CLAIMING BENEFIT OF EARLIER FILING DATE.

    (a) In a Foreign Country.--The second paragraph of section 119 of 
title 35, United States Code, is amended to read as follows:
    ``No application for patent shall be entitled to this right of 
priority 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 at such time during the 
pendency of the application as required by the Commissioner. The 
Commissioner may consider the failure of the applicant to file a timely 
claim for priority as a waiver of any such claim. The certification of 
the original foreign application, specification and drawings 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.
    (b) In the United States.--Section 120 of title 35, United States 
Code, is amended by adding at the end thereof the following: ``The 
Commissioner may determine the time period within which an amendment 
containing the specific reference to the earlier filed application 
shall be submitted.''.

SEC. 4. EARLY PUBLICATION.

    (a) In General.--Section 122 of title 35, United States Code, is 
amended to read as follows:
``Sec. 122. Confidential status of applications; publication of patent 
              applications
    ``(a) Except as provided in subsection (b), applications for 
patents shall be kept in confidence by the Patent and Trademark Office 
and no information concerning the same given without authority of the 
applicant or owner unless necessary to carry out the provisions of any 
Act of Congress or in such special circumstances as may be determined 
by the Commissioner.
    ``(b) Each application for patent shall be published, in accordance 
with procedures as determined by the Commissioner, as soon as possible 
after the expiration of a period of 18 months from the earliest filing 
date for which a benefit is sought under this title, except that an 
application that is no longer pending shall not be published and an 
application subject to a secrecy order under section 181 of this title 
shall not be published. An application not subject to a secrecy order 
under section 181 of this title may be published earlier than the 
expiration date described in the preceding sentence at the request of 
the applicant. No information concerning published patent applications 
shall be made available to the public except as the Commissioner shall 
determine. Notwithstanding any other provision of law, a determination 
by the Commissioner to release or not to release information concerning 
a published patent application shall be final and nonreviewable.''.
    (b) Cost Recovery for Publication.--The Commissioner shall recover 
the cost of early publication required by the amendment made under 
subsection (a) by adjusting the filing, issue and maintenance fees, by 
charging a separate publication fee, or by any combination of these 
methods.

SEC. 5. PROVISIONAL RIGHTS.

    Section 154 of title 35, United States Code, is amended--
            (1) by inserting ``(a)'' before ``Every patent''; and
            (2) by adding at the end thereof the following new 
        subsection:
    ``(b)(1) In addition to other rights provided by this section, a 
patent shall include the right to obtain a reasonable royalty from any 
person who, during the period from publication of the application for 
such patent under subsection 122(b) of this title until issue of that 
patent--
            ``(A)(i) makes, uses, or sells in the United States the 
        invention as claimed in the published patent application or 
        imports such an invention into the United States; or
            ``(ii) if the invention as claimed in the published patent 
        application is a process, uses or sells in the United States or 
        imports into the United States products made by that process as 
        claimed in the published patent application; and
            ``(B) had actual notice or knowledge of the published 
        patent application.
    ``(2) The right to obtain a reasonable royalty shall not be 
available under this subsection unless the invention claimed in the 
patent is substantially identical to the invention as claimed in the 
published patent application.''.

SEC. 6. TECHNICAL AND CONFORMING AMENDMENTS.

    (1) Section 12 of title 35, United States Code, is amended by 
inserting ``published applications and'' before ``patents''.
    (2) Section 13 of title 35, United States Code, is amended by 
inserting ``published applications and'' before ``patents''.
    (3) The table of sections for chapter 11 of title 35, United States 
Code, is amended in the item relating to section 122 by inserting ``; 
publication of patent applications'' after ``applications''.
    (4) The table of sections for chapter 14 of title 35, United States 
Code, is amended in the item relating to section 154 by inserting ``; 
provisional rights'' after ``patent''.
    (5) Section 181 of title 35, United States Code, is amended--
            (A) in the first paragraph--
                    (i) by inserting ``by the publication of an 
                application or'' after ``disclosure''; and
                    (ii) by inserting ``the publication of an 
                application or'' after ``withhold'';
            (B) in the second paragraph by inserting ``by the 
        publication of an application or'' after ``disclosure of an 
        invention'';
            (C) in the third paragraph--
                    (i) by inserting ``by the publication of the 
                application or'' after ``disclosure of the invention''; 
                and
                    (ii) by inserting ``the publication of the 
                application or'' after ``withhold''; and
            (D) in the fourth paragraph of the first sentence by 
        inserting ``the publication of an application or'' after ``kept 
        secret and''.

SEC. 7. EFFECTIVE DATE.

    (a) In General.--Subject to subsection (b), sections 2 through 6 
shall take effect on January 1, 1996 and shall apply to all national 
applications filed in the United States on or after such date.
    (b) Provisional Rights.--The amendment made by section 5 of this 
Act shall only apply to applications subject to a term beginning on the 
date on which the patent issues and ending--
            (1) 20 years after the date on which the application for 
        patent was filed in the United States; or
            (2) if the application contains a specific reference to an 
        earlier filed application or applications under sections 120, 
        121 or 365(c) of title 35, United States Code, 20 years after 
        the date on which the earliest such application was filed.
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