[Congressional Bills 104th Congress]
[From the U.S. Government Publishing Office]
[H.R. 1733 Introduced in House (IH)]







104th CONGRESS
  1st Session
                                H. R. 1733

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


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                              May 25, 1995

Mr. Moorhead  (for himself and Mrs. Schroeder) introduced the following 
       bill; which was referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
To amend title 35, United States Code, to provide for early publication 
of patent applications, to provide provisional rights for the period of 
time between early publication and patent grant, and 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,
SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Patent Application Publication Act 
of 1995''.

SEC. 2. EARLY PUBLICATION.

    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)(1) Subject to paragraph (2), each application for patent, 
except applications for design patents under chapter 16 of this title 
and provisional applications filed under section 111(b) of this title, 
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shall not be published and an application that is subject to a secrecy 
order pursuant to section 181 of this title shall not be published. An 
application may be published earlier than the above date 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.
    ``(2) Upon request, an application will not be published in 
accordance with paragraph (1) until 3 months after the Commissioner 
makes a notification to the applicant under section 132 of this title. 
Applications filed pursuant to section 363 of this title, applications 
asserting priority under section 119 or 365(a) of this title, and 
applications asserting the benefit of an earlier application under 
section 120, 121, or 365(c) of this title shall not be eligible for a 
request pursuant to this paragraph. Furthermore, the applicant shall 
certify that the invention disclosed in the application was not or will 
not be the subject of an application filed in a foreign country. A 
request under this paragraph shall only be available to an independent 
inventor who has been accorded status under section 41(h) of this 
title. The Commissioner may establish appropriate procedures and fees 
for a request in accordance with this paragraph.''.
SEC. 3. TIME FOR CLAIMING BENEFIT OF EARLIER FILING DATE.

    (a) In a Foreign Country.--Section 119(b) of title 35, United 
States Code, is amended to read as follows:
    ``(b) 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 during the pendency of 
the application within which an amendment containing the specific 
reference to the earlier filed application shall be submitted. The 
Commissioner may consider the failure to timely submit such an 
amendment as a waiver of any benefit under this section.''.

SEC. 4. PROVISIONAL RIGHTS.

    Section 154 of title 35, United States Code, is amended by adding 
the following new subsection:
    ``(d) Provisional Rights.--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 pursuant to section 122(b) of this title or 
from international publication of an international application 
designating the United States until issue of that patent--
            ``(1)(A) makes, uses, offers for sale, 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
            ``(B) if the invention as claimed in the published patent 
        application is a process, uses, offers for sale, 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
            ``(2) had actual notice or knowledge of the published 
        patent application.
The right to obtain a reasonable royalty shall not be available under 
this subsection unless the invention claimed in the patent is identical 
to the invention as claimed in the published patent application. The 
right to obtain a reasonable royalty based upon the international 
publication of an international application designating the United 
States shall commence from the date that the Patent and Trademark 
Office receives a copy of the international publication of the 
international application, unless already communicated by the 
International Bureau, or, if the international publication of the 
international application is in a language other than English, from the 
date that the Patent and Trademark Office makes a translation thereof 
available to the public. The Commissioner may require the applicant to 
provide a copy of the international publication of the international 
application and a translation thereof.''.

SEC. 5. 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)(A) an application for patent, published pursuant to 
        section 122(b) of this title, by another filed in the United 
        States before the invention thereof by the applicant for 
        patent, or
            ``(B) an international application, published pursuant to 
        section 122(b) of this title, 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
            ``(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 the applicant for patent, or''.

SEC. 6. COST RECOVERY FOR PUBLICATION.

    The Commissioner shall recover the cost of early publication 
required by the amendment made by section 2 by adjusting the filing, 
issue, and maintenance fees, by charging a separate publication fee, or 
by any combination of these methods.

SEC. 7. CONFORMING CHANGES.

    The following provisions of title 35, United States Code, are 
amended:
            (1) Section 11 is amended in subsection (a)(1) by inserting 
        ``and published applications'' after ``Patents''.
            (2) Section 12 is amended by inserting ``published 
        applications and'' before ``patents''.
            (3) Section 13 is amended by inserting ``published 
        applications and'' before ``patents''.
            (4) The item relating to section 122 in the table of 
        sections for chapter 11 is amended by inserting ``; publication 
        of patent applications'' after ``applications''.
            (5) The item relating to section 154 in the table of 
        sections for chapter 14 is amended by inserting ``; provisional 
        rights'' after ``patent''.
            (6) Section 181 is amended--
                    (A) in the first paragraph by inserting ``by the 
                publication of an application or'' after 
                ``disclosure'', and ``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 by inserting ``by the 
                publication of the application or'' after ``disclosure 
                of the invention'', and ``the publication of the 
                application or'' after ``withhold''; and
                    (D) in the fourth paragraph by inserting ``the 
                publication of an application or'' after ``and'' in the 
                first sentence.
SEC. 8. PATENT TERM EXTENSION AUTHORITY.

    Section 154(b) of title 35, United States Code, is amended to read 
as follows:
    ``(b) Term Extension.--
            ``(1) Basis for patent term extension.--Subject to the 
        limitations of paragraph (2) of this subsection, if the issue 
        of an original patent is delayed due to--
                    ``(A) a proceeding under section 135(a) of this 
                title,
                    ``(B) the imposition of an order pursuant to 
                section 181 of this title,
                    ``(C) appellate review by the Board of Patent 
                Appeals and Interferences or by a Federal court where 
                the patent was issued pursuant to a decision in the 
                review reversing an adverse determination of 
                patentability, or
                    ``(D) an unusual administrative delay by the Office 
                in issuing the patent,
        the term of the patent shall be extended for the period of 
        delay. The Commissioner shall prescribe regulations to govern 
        the determination of the period of delay and the particular 
        circumstances deemed to be an unusual administrative delay.
            ``(2) Limitations.--
                    ``(A) Maximum period of extension.--The total 
                duration of all extensions of a patent under this 
                subsection shall not exceed 10 years. To the extent 
                that periods of delay attributable to grounds specified 
                in paragraph (1) overlap, the period of any extension 
                granted under this subsection shall not exceed the 
                actual number of days the issuance of the patent was 
                delayed.
                    ``(B) Minimum pendency before extension 
                available.--No patent shall be extended under this 
                section that has been issued before the expiration of 3 
                years after the filing date of the application leading 
                to the patent or the commencement of the national stage 
                under section 371 of this title, whichever is later, 
                not taking into account the benefit of any earlier 
                filed application or applications under section 120, 
                121, or 365(c) of this title.
                    ``(C) Reasonable efforts.--The period of extension 
                of the term of a patent under this subsection shall be 
                reduced by a period equal to the time during the 
                processing or examination of the application leading to 
                the patent in which the applicant failed to engage in 
                reasonable efforts to conclude processing or 
                examination of the application. The Commissioner shall 
                prescribe regulations establishing the circumstances 
                that constitute a failure of an applicant to engage in 
                reasonable efforts to conclude processing or 
                examination of an application.
                    ``(D) Terminal disclaimer.--No patent whose term 
                has been disclaimed beyond a specified date may be 
                extended under this section beyond the expiration date 
                specified in the disclaimer.''.

SEC. 9. LAST DAY OF PENDENCY OF PROVISIONAL APPLICATION.

    Section 119(e) of title 35, United States Code, is amended by 
adding the following at the end: ``If the day that is 12 months after 
the filing date of a provisional application falls on a Saturday, 
Sunday, or Federal holiday within the District of Columbia, the period 
of pendency of the provisional application shall be extended to the 
next succeeding secular or business day.''.

SEC. 10. EFFECTIVE DATE.

    (a) Sections 2 Through 7.--Sections 2 through 7, and the amendments 
made by such sections, shall take effect on January 1, 1996, and shall 
apply to all applications filed under section 111 of title 35, United 
States Code, on or after that date, and all applications complying with 
section 371 of title 35, United States Code, that resulted from 
international applications filed on or after that date. The amendment 
made by section 4 shall also apply to international applications 
designating the United States that are filed on or after January 1, 
1996.
    (b) Sections 8 and 9.--The amendments made by sections 8 and 9 
shall take effect on the date of the enactment of this Act and shall 
apply to any application filed on or after June 8, 1995.
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