[Congressional Record Volume 140, Number 14 (Friday, February 11, 1994)]
[Senate]
[Page S]
From the Congressional Record Online through the Government Printing Office [www.gpo.gov]


[Congressional Record: February 11, 1994]
From the Congressional Record Online via GPO Access [wais.access.gpo.gov]

 
          STATEMENTS ON INTRODUCED BILLS AND JOINT RESOLUTIONS

      By Mr. DeCONCINI:
  S. 1854. A bill to amend the provisions of title 35, United States 
Code, to provide for patent simplification; to the Committee on the 
Judiciary.


                   patent simplification act of 1994

 Mr. DeCONCINI. Mr. President, I introduce the Patent Term and 
Publication Reform Act of 1994. By reforming two areas of our patent 
code, this legislation would give U.S. inventors the ability to compete 
on the same level as their foreign competitors in the developing global 
market. It will lead to a patent system that can better deal with new 
technologies as well as curb the abuse of the system that has led to 
the granting of patents many years after the initial filing of a patent 
application.
  The reforms in this legislation are simple but important. First, it 
establishes a fixed 20-year patent term beginning from the date that 
the application is filed. Second, the bill provides for the publication 
of all patent applications after 18 months.


                20-year patent term from date of filing

  Under the current U.S. patent system, a patent term runs for 17 years 
from the date the patent is granted. In contrast, many industrialized 
nations provide a 20-year patent term measured from the date the patent 
application is filed.


           what is better about a 20-year from filing system?

  Under the 17-year-from-date-of-grant system, inventors have no 
incentive to have their filed patent application prosecuted 
expeditiously. Rather, they have an incentive to prolong the period 
they spend at the Patent Office, benefiting from the secrecy of their 
application and thereby extending the life of their patent.
  In recent years U.S. industry has experienced the spectacle of 
patents being issued 10 years, 20 years, or even longer after the 
filing date. With a patent term measured from grant, such inventors 
have exclusive rights extending for 30, 40, or more years after a 
technology is first commercialized. Cases have occurred in which a 
patent remains in force for an extended period in the United States, 
while counterparts of that patent have expired in the rest of the 
world.
  Commonly referred to as submarine patents, these patents on basic 
processes or products of technology are filed shortly after development 
of the technology. The inventor will then intentionally prolong his/her 
review at the Patent Office so that the patent will be issued long 
after an industry has been established in that technology. These 
patents may have serious detrimental effects on established industries 
when they surface, particularly when the patent covers basic elements 
of the technology.
  The Patent Term and Publication Reform Act of 1994 sets a fixed 20-
year patent term tolling from the filing date of the application. This 
reform puts the U.S. patent system on par with the systems of other 
industrialized nations, establishes certainty in patent terms, and 
respects the constitutional premise of our patent system--that 
inventors are entitled to the fruits of their discoveries for only a 
limited period.


              18-month publication of patent applications

  Applications and the information and technology contained within them 
are currently kept secret while at the Patient Office until a patent is 
granted, which is often many years after filing. The result is that 
inventors sometimes commit substantial resources to the development of 
an invention based on an incomplete, erroneous assessment of 
patentability of the applications they file.


             what are the benefits of 18-month publication?

  Disclosure of information is only as important as it is timely. 
Automatic publication 18 months after the filing of an application 
would facilitate the use of technology by American innovators and 
permit the identification of potential patent conflicts earlier than 
now possible.
  It would provide prompt access for U.S. inventors to a comprehensive 
technological database that foreign inventors receive in their own 
language from their own patent offices.
  Currently, almost every major innovation made by American inventors 
in the fields of superconductivity, biotechnology or semiconductor 
fabrication is the subject of a Japanese patent application, filed in 
the Japanese language, then published and made available to Japanese 
researchers.
  Publication in the United States after 18 months will provide 
American inventors with leading-edge foreign technology of all types. 
Indeed, saving resources by preventing duplication of research, 
signaling promising areas of research, and indicating which fields or 
research topics are being pursued by other firms can all be achieved 
through an 18-month publication system.
  In a joint hearing before the Senate Judiciary Subcommittee on 
Patents, Copyrights and Trademarks and the House Judiciary Subcommittee 
on Intellectual Property and Judicial Administration, Professor Merges 
of Boston University School of Law testified that early disclosure will 
appeal to small inventors, who often want to know as soon as possible 
whether it is worth spending their hard-earned money on a patent 
application or whether others are already in that game.
  The opening to the public and publication at 18 months of all pending 
patent applications would also provide a more effective patent search 
by the Patent Office. Publication would allow patent applicants 
themselves, for the first time, to cite to the patent examiner any 
pertinent applications that the patent examiner might have overlooked.
  Mr. President, for many years the United States has been negotiating 
a treaty that would harmonize our patent laws with our trading 
partners. In support of that effort, last Congress I introduced, as did 
Representatives Hughes and Moorhead, legislation that would harmonize 
our patent laws with our trading partners subject to the signing of a 
treaty. Our intention was to begin to explore and discuss this issue in 
Congress.
  Recently, the Clinton administration announced, through Commerce 
Secretary Brown, that they would not seek to resume negotiations of a 
treaty harmonizing the world's patent laws.
  Although the reforms included in this legislation have been discussed 
in those negotiations, it is my belief that they should be enacted now 
rather than continuing to wait indefinitely for the conclusion of a 
harmonization agreement the future of which has been put into question 
by this administration. Furthermore, a 20-year patent term from date of 
filing is included in the Trade Related Aspects of Intellectual 
Property Rights [TRIPs] Agreement of the Uruguay round of GATT. Thus, 
this provision will inevitably be considered in implementing language 
for that agreement.
  I would also note that the Clinton administration recently signed an 
agreement with Japan in which the administration agreed to support the 
introduction of legislation establishing a 20-year patent term from the 
date of filing. In return, Japan agreed to permit the filing of 
applications in English at the Japanese Patent Office.
  I would be pleased to consider an offer from the administration to 
introduce their proposed legislation whenever it is forwarded to 
Congress. Hopefully, we will be able to agree on language as this bill 
proceeds.
  Mr. President, this legislation contains reforms that will bring 
certainty to the term of a patent and reduce abuse of our patent 
system. We should move forward on this bill and I urge my colleagues to 
support it.
  I ask unanimous consent that a copy of the bill be printed in the 
Record.
  There being no objection, the bill was ordered to be printed in the 
Record, as follows:

                                S. 1854

       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 Simplification Act of 
     1994''.

     SEC. 2. PATENT SIMPLIFICATION.

       (a) Definition.--Section 100 of title 35, United States 
     Code, is amended by adding at the end thereof the following:
       ``(e) The term `filing date' means the earliest of the 
     actual filing date or any priority date claimed by the 
     applicant under section 119, 120, or 365.''.
       (b) Conditions for Patentability; Novelty and Loss of Right 
     to Patent.--Section 102(e) of title 35, United States Code, 
     is amended to read as follows:
       ``(e) the invention was described in--
       ``(1) a published patent application,
       ``(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
       ``(3) in an international application that--
       ``(A) is filed by another before the invention thereof by 
     the applicant for patent, and
       ``(B) enters the national stage under section 371, or''.
       (c) Benefit of Earlier Filing Date; Right of Priority.--(1) 
     Section 119 of title 35, United States Code, is amended--
       (A) in the section heading by striking out ``in foreign 
     country'';
       (B) by designating the first, second, third, and fourth 
     undesignated paragraphs as subsections (a), (c), (d), and 
     (e), respectively; and
       (C) by inserting after subsection (a) (as designated by 
     subparagraph (B) of this paragraph) the following new 
     subsection:
       ``(b)(1) An application for patent for an invention 
     described in paragraph (2) that is filed by an inventor named 
     in the previously filed application described under paragraph 
     (2), shall have the same effect, as to such invention, as if 
     such application had been filed on the filing date of the 
     previously filed application, if such application--
       ``(A) is filed within one year after the filing date of the 
     previously filed application (or earlier priority date); and
       ``(B)(i) contains a specific reference to the previously 
     filed application; or
       ``(ii) within three months after the actual filing date of 
     such application, is amended to contain--
       ``(I) a specific reference to the previously filed 
     application; or
       ``(II) such other item as the Commissioner may prescribe.
       ``(2) An invention referred to under paragraph (1) is an 
     invention that is disclosed--
       ``(A) in the specification as provided under section 112 in 
     an application filed in the United States before the 
     application described under paragraph (1) is filed; or
       ``(B) as provided under section 363.''.
       (2) The table of sections for chapter 11 of title 35, 
     United States Code, is amended in the item relating to 
     section 119 by striking out ``in foreign country''.
       (d) Benefit of Earlier Filing Date in the United States.--
     Section 120 of title 35, United States Code, is amended to 
     read as follows:

     ``Sec. 120. Benefit of earlier filing date in the United 
       States

       ``(a) An application for patent for an invention described 
     under subsection (b) that is filed by an inventor named in 
     the previously filed application described under subsection 
     (b), shall have the same effect, as to such invention, as if 
     such application had been filed on the filing date of the 
     previously filed application, if such application--
       ``(1) is filed before the patenting, abandonment of, or 
     termination of proceedings on--
       ``(A) the previously filed application; or
       ``(B) an application similarly entitled to the benefit of 
     the filing date of the previously filed application;
       ``(2) is not otherwise entitled to a priority right under 
     section 119(b); and
       ``(3)(A) contains a specific reference to the previously 
     filed application; or
       ``(B) within fifteen months after the actual filing date of 
     such application, is amended to contain--
       ``(i) a specific reference to the previously filed 
     application; or
       ``(ii) such other item as the Commissioner may prescribe.
       ``(b) An invention referred to under subsection (a) is an 
     invention that is disclosed--
       ``(1) in the specification as provided under section 112 in 
     an application filed in the United States before the 
     application described under subsection (a) is filed; or
       ``(2) as provided under section 363.''.
       (e) Opening of Patent Applications; Confidential Status.--
     (1) Section 122 of title 35, United States Code, is amended 
     to read as follows:

     ``Sec. 122. Opening of patent applications; confidential 
       status

       ``(a) Except as provided under subsection (b), applications 
     for patents shall be kept in confidence by the Patent and 
     Trademark Office and no information concerning such 
     applications may be disclosed.
       ``(b) On and after the date occurring 18 months after the 
     filing date of an application for patent (including all 
     priority claims) each application for patent shall be open to 
     public inspection and copies shall be made available to the 
     public under such procedures as may be determined by the 
     Commissioner, except--
       ``(1) an application may be made so available during such 
     18-month period if confidentiality is waived by the 
     applicant; and
       ``(2) an application may be maintained in secrecy under any 
     order under chapter 17.
       ``(c) The Commissioner shall publish each patent 
     application promptly when open to public inspection under 
     subsection (b).''.
       (2) The table of sections for chapter 11 of title 35, 
     United States Code, is amended by amending the item relating 
     to section 122 to read as follows:

``122. Opening of patent applications; confidential status.''.

       (f) Contents and Term of Patent.--Section 154 of title 35, 
     United States Code, is amended to read as follows:

     ``Sec. 154. Contents and term of patent

       ``(a)(1) Subject to the provisions of paragraph (2), every 
     patent shall contain--
       ``(A) a short title of the invention;
       ``(B) a grant to the patentee, and the heirs or assigns of 
     the patentee--
       ``(i) for a term beginning on the date on which the patent 
     is issued and ending on a date 20 years from the date on 
     which the application for patent is filed in the United 
     States, excluding any claims of priority under section 119 or 
     365;
       ``(ii) of the right to exclude others from making, using, 
     or selling the invention throughout the United States or 
     importing the invention into the United States;
       ``(iii) 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; and
       ``(iv) that refers to the specification for the particulars 
     of the invention; and
       ``(C) a copy of the specification and drawings which shall 
     be annexed to the patent and be a part of the patent.
       ``(2) The grant of a patent shall be subject to the payment 
     of fees as provided by this title.
       ``(b)(1) In addition to the contents described under 
     subsection (a), the grant of a patent described under 
     paragraph (2) shall additionally include the right to obtain 
     a reasonable royalty from any other person who, during the 
     period before the grant--
       ``(A)(i) makes, uses, or sells the claimed invention in the 
     United States, or imports the claimed invention into the 
     United States; or
       ``(ii) if the claimed invention is a process, uses or sells 
     throughout the United States or imports into the United 
     States products made by that process; and
       ``(B) had actual knowledge of the published application.
       ``(2) Paragraph (1) applies to any patent--
       ``(A) that is granted based on an application published 
     under section 122(c) before such patent is granted; and
       ``(B) to the extent the patent claims in the issued patent 
     are substantially identical with the claims in such published 
     application.''.
       (g) Term of Design Patent.--Section 173 of title 35, United 
     States Code, is amended by striking out ``fourteen years.'' 
     and inserting in lieu thereof ``seventeen years from the 
     filing date, as determined under section 154(a) of this 
     title.''.

     SEC. 3. EFFECTIVE DATE AND APPLICABILITY.

       The provisions of this Act and the amendments made by this 
     Act shall take effect 90 days after the date of the enactment 
     of this Act and shall apply only to applications filed on and 
     after such effective date.

                          ____________________