[Congressional Bills 104th Congress]
[From the U.S. Government Publishing Office]
[S. 1540 Introduced in Senate (IS)]







104th CONGRESS
  2d Session
                                S. 1540

 To amend chapter 14 of title 35, United States Code, to preserve the 
                         full term of patents.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                            January 26, 1996

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

_______________________________________________________________________

                                 A BILL


 
 To amend chapter 14 of title 35, United States Code, to preserve the 
                         full term of patents.

    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 ``Full Patent Term Preservation Act of 
1996''.

SEC. 2. PATENT TERM DETERMINATION AUTHORITY.

    (a) In General.--Section 154(b) of title 35, United States Code, is 
amended to read as follows:
    ``(b) Determination of Patent Term.--
            ``(1) Basis for patent term adjustment.--
                    ``(A) In general.--Subject to paragraph (2), the 
                term of a patent shall be adjusted to include the 
                period of time for which the issue of the original 
                patent was delayed due to--
                            ``(i) a proceeding under section 135(a) of 
                        this title;
                            ``(ii) the imposition of an order pursuant 
                        to section 181 of this title;
                            ``(iii) 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
                            ``(iv) an unusual administrative delay by 
                        the Office in issuing the patent.
                    ``(B) Regulations.--The Commissioner shall 
                prescribe regulations to govern the determination of 
                the period of delay, including the particular 
                circumstances determined to be an unusual 
                administrative delay under subparagraph (A).
            ``(2) Limitations.--
                    ``(A) Maximum period of adjustment.--The total 
                duration of all adjustments of a patent term under this 
                subsection shall not exceed 10 years. No patent term 
                may be adjusted by a period greater than the actual 
                period of time that the issue of a patent was delayed 
                as determined by the Commissioner. To the extent that 
                periods of delay attributable to grounds specified in 
                paragraph (1) overlap, the period of any adjustment 
                granted under this subsection shall not exceed the 
                actual number of days the issuance of the patent was 
                delayed.
                    ``(B) Due diligence.--The period of adjustment 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 did not act with due 
                diligence to conclude processing or examination of the 
                application. The Commissioner shall prescribe 
                regulations establishing the circumstances that 
                constitute a failure of an applicant to act with due 
                diligence to conclude processing or examination of an 
                application.
                    ``(C) Terminal disclaimer.--No patent, the term of 
                which has been disclaimed beyond a specified date, may 
                be adjusted under this section beyond the expiration 
                date specified in the disclaimer.
            ``(3) Notice to commissioner.--In a case in which a patent 
        term is adjusted under this subsection, the Commissioner shall 
        determine the period of any patent term adjustment available 
        under this section and shall include a copy of that 
        determination with the final notice. The Commissioner shall 
        prescribe regulations establishing procedures for the 
        application for, and notification of, patent term adjustments 
        granted by the Commissioner under this subsection.
            ``(4) Judicial review.--Any applicant dissatisfied with a 
        determination by the Commissioner under paragraph (3) may have 
        remedy by civil action in the United States Court of Federal 
        Claims if commenced within 60 days after the mailing of the 
        notice of allowance as the Commissioner appoints. The 
        initiation of a civil action under this section shall not delay 
        the issuance of a patent.''.
    (b) Technical Clarification.--Section 156(a) of title 35, United 
States Code, is amended--
            (1) in the matter preceding paragraph (1) by inserting ``, 
        which shall include any patent term adjustment granted under 
        section 154(b),'' after ``the original expiration date of the 
        patent''; and
            (2) in paragraph (2) by inserting before the semicolon ``, 
        except as provided under section 154(b)''.

SEC. 3. EFFECTIVE DATE.

    The amendments made by section 2 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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