[Congressional Record Volume 140, Number 132 (Tuesday, September 20, 1994)]
[House]
[Page H]
From the Congressional Record Online through the Government Printing Office [www.gpo.gov]


[Congressional Record: September 20, 1994]
From the Congressional Record Online via GPO Access [wais.access.gpo.gov]

 
              RELATING TO APPLICATIONS FOR PROCESS PATENTS

  Mr. HUGHES. Mr. Speaker, I move to suspend the rules and pass the 
bill (H.R. 4307) to amend title 35, United States Code, with respect to 
applications for process patents, as amended.
  The Clerk read as follows:

                               H.R. 4307

       Be it enacted by the Senate and House of Representatives of 
     the United States of America in Congress assembled,
                  TITLE I--PROCESS PATENT APPLICATIONS

     SECTION 101. EXAMINATION OF PROCESS PATENT APPLICATIONS FOR 
                   OBVIOUSNESS.

       Section 103 of title 35, United States Code, is amended--
       (1) by designating the first paragraph as subsection (a);
       (2) by designating the second paragraph as subsection (c); 
     and
       (3) by inserting after the first paragraph the following:
       ``(b)(1) Notwithstanding subsection (a), and upon timely 
     election by the applicant for patent to proceed under this 
     subsection, a process using or resulting in a composition of 
     matter that is novel under section 102 and nonobvious under 
     subsection (a) of this section shall be considered nonobvious 
     if--
       ``(A) claims to the process and the composition of matter 
     are contained in either the same application for patent or in 
     separate applications having the same effective filing date; 
     and
       ``(B) the composition of matter, and the process at the 
     time it was invented, were owned by the same person or 
     subject to an obligation of assignment to the same person.
       ``(2) A patent issued on a process under paragraph (1)--
       ``(A) shall also contain the claims to the composition of 
     matter used in or made by that process, or
       ``(B) shall, if such composition of matter is claimed in 
     another patent, be set to expire on the same date as such 
     other patent, notwithstanding section 154.''.

     SEC. 102. PRESUMPTION OF VALIDITY; DEFENSES.

       Section 282 of title 35, United States Code, is amended by 
     inserting after the second sentence of the first paragraph 
     the following: ``Notwithstanding the preceding sentence, if a 
     claim to a composition of matter is held invalid and that 
     claim was the basis of a determination of nonobviousness 
     under section 103(b)(1), the process shall no longer be 
     considered nonobvious solely on the basis of section 
     103(b)(1).''.

     SEC. 103. EFFECTIVE DATE.

       The amendments made by section 101 shall apply to any 
     application for patent filed on or after the date of the 
     enactment of this Act and to any application for patent 
     pending on such date of enactment, including (in either case) 
     an application for the reissue of a patent.
                       TITLE II--COPYRIGHT REFORM

     SEC. 201. SHORT TITLE.

       This Act may be cited as the ``Copyright Reform Act of 
     1993''.

     SEC. 202. DEPOSIT OF COPIES OR PHONORECORDS FOR LIBRARY OF 
                   CONGRESS.

       Section 407 of title 17, United States Code, is amended as 
     follows:
       (1) Subsection (a) is amended by striking ``(a)'' and all 
     that follows through ``publication--'' and inserting the 
     following:
       ``(a) Required Deposits.--Except as provided in subsection 
     (c), the owner of copyright in a work or of the exclusive 
     right of publication of a work in the United States shall 
     deposit, after the earliest date of such publication--''.
       (2) Subsection (b) is amended--
       (A) by inserting ``Deposit in Copyright Office.--'' after 
     ``(b)''; and
       (B) by adding at the end the following: ``A deposit made 
     under this section may be used to satisfy the deposit 
     requirements of section 408.''.
       (3) Subsection (c) is amended--
       (A) by inserting ``Regulations.--'' after ``(c)''; and
       (B) by striking ``Register of Copyrights'' and inserting 
     ``Librarian of Congress''.
       (4) Subsection (d) is amended--
       (A) by redesignating paragraphs (1), (2), and (3) as 
     subparagraphs (A), (B), and (C), respectively;
       (B) by striking ``(d) At any time after publication of a 
     work as provided by subsection (a)'' and inserting the 
     following:
       ``(d) Procedures.--(1) During November of each year, the 
     Librarian of Congress shall publish in the Federal Register a 
     statement of the categories of works of which the Library of 
     Congress wishes to acquire copies or phonorecords under this 
     section during the next calendar year. The Librarian shall 
     review such statement annually in light of the changes in the 
     Library's policies and procedures, changes in technology, and 
     changes in patterns of publication. The statement shall also 
     describe--
       ``(A) the types of works of which only one copy or 
     phonorecord need be deposited;
       ``(B) the types of works for which the deposit requirements 
     may be fulfilled by placing the Library of Congress on a 
     subscription list; and
       ``(C) the categories of works which are exempt under 
     subsection (c) from the deposit requirements.
       ``(2) At any time after publication in the United States of 
     a work or body of works'';
       (C) by striking ``Register of Copyrights'' and inserting 
     ``Librarian of Congress'';
       (D) by inserting after the first sentence the following: 
     ``Such demand shall specify a date for compliance with the 
     demand.'';
       (E) by inserting ``in a civil action'' after ``are 
     liable'';
       (F) in subparagraph (B) (as redesignated by subparagraph 
     (A) of this paragraph) by striking ``cost of'' and inserting 
     ``cost to'';
       (G) in subparagraph (C) (as redesignated by subparagraph 
     (A) of this paragraph) by striking ``clauses (1) and (2)'' 
     and inserting ``subparagraphs (A) and (B)''; and
       (H) by adding after subparagraph (C) (as so redesignated) 
     the following:

     ``In addit ion to the penalties set forth in subparagraphs 
     (A), (B), and (C), the person against whom an action is 
     brought under this paragraph shall be liable in such action 
     for all costs of the United States in pursuing the demand, 
     including an amount equivalent to a reasonable attorney's 
     fee.''.
       (5) Subsection (e) is amended--
       (A) by inserting ``Transmission Programs.--'' after 
     ``(e)'';
       (B) by striking ``Register of Copyrights shall, after 
     consulting with the Librarian of Congress and other 
     interested organizations and officials,'' and inserting 
     ``Librarian of Congress shall, after consulting with 
     interested organizations and officials,''; and
       (C) in paragraph (2) by striking ``Register of Copyrights'' 
     and inserting ``Librarian of Congress''.
       (6) Section 407 of title 17, United States Code, is further 
     amended by adding at the end the following:
       ``(f) Obligation to Make Deposits.--Immediately upon the 
     publication in the United States of any work in which 
     copyright subsists under this title, it shall be the 
     obligation of the persons identified in subsection (a) with 
     respect to that work, subject to the requirements and 
     exceptions specified in this section, to deposit, for the use 
     or disposition of the Library of Congress, the copies or 
     phonorecords specified in such subsection. The obligation to 
     make such deposit arises without any prior notification or 
     demand for compliance with subsection (a).
       ``(g) Records of Deposits.--The Librarian of Congress shall 
     establish and maintain public records of the receipt of 
     copies and phonorecords deposited under this section.
       ``(h) Database of Deposit Records.--The Librarian of 
     Congress shall establish and maintain an electronic database 
     containing its records of all deposits made under this 
     section on and after October 1, 1995, and shall make such 
     database available to the public through one or more 
     international information networks.
       ``(i) Delegation Authority.--The Librarian of Congress may 
     delegate to the Register of Copyrights or other officer or 
     employee of the Library of Congress any of the Librarian's 
     responsibilities under this section.''.

     SEC. 203. COPYRIGHT REGISTRATION IN GENERAL.

       Section 408 of title 17, United States Code, is amended--
       (1) in subsection (c)--
       (A) in paragraph (1) by adding at the end the following: 
     ``The Register is also authorized to specify by regulation 
     classes of material in which registration may be made without 
     deposit of any copy or phonorecord, in cases in which the 
     Register determines that the purposes of examination, 
     registration, and deposit can be adequately served by deposit 
     of descriptive material only, or by a written obligation to 
     deposit copies or phonorecords at a later date.''; and
       (B) in paragraph (2) by striking ``periodicals, including 
     newspapers'' and all that follows through the end of 
     subparagraph (B) and inserting ``collective works, including 
     periodicals, published within a 5-year period, on the basis 
     of a single deposit and application and upon payment of any 
     special registration fee imposed under section 708(a)(10), if 
     the application identifies each work separately, including 
     the collective work containing it and its date of first 
     publication.''; and
       (2) by adding at the end the following:
       ``(f) Copyright Office Hearings.--Not later than 1 year 
     after the effective date of this subsection, and at 1-year 
     intervals thereafter, the Register of Copyrights shall hold 
     public hearings to consider proposals to amend the 
     regulations and practices of the Copyright Office with 
     respect to deposit of works in order to eliminate deposits 
     that are unnecessary for copyright examination or the 
     collections of the Library of Congress, and in order to 
     simplify the registration procedures.''.

     SEC. 204. APPLICATION FOR COPYRIGHT REGISTRATION.

       (a) Applications.--Section 409 of title 17, United States 
     Code, is amended--
       (1) by striking ``The application'' and inserting ``(a) 
     Contents of Application.--The application'';
       (2) in paragraph (5) by inserting before the semicolon the 
     following: ``, and if the document by which ownership was 
     obtained has been recorded in the Copyright Office, the 
     volume and page number of such recordation'';
       (3) by striking paragraphs (9) and (10) and inserting the 
     following:
       ``(9) in the case of a compilation or derivative work, an 
     identification of any preexisting work or works that it is 
     substantially based on or substantially incorporates, and a 
     brief, general statement of the additional material covered 
     by the copyright claim being registered;
       ``(10) at the option of the applicant, names, addresses, 
     and telephone numbers of persons or organizations that 
     potential users of the work should contact concerning 
     permissions or licenses to use the work, and any information 
     with respect to the terms of such permissions or licenses; 
     and''; and
       (4) by adding at the end the following:
       ``(b) Short-Form Application.--
       ``(1) Use of short-form.--The Register of Copyrights shall 
     prescribe a short-form application which may be used 
     whenever--
       ``(A) the work is by a living author;
       ``(B) the claimant is the author;
       ``(C) the work is not anonymous, pseudonymous, or made for 
     hire; and
       ``(D) the work as a whole, or substantial portions of it, 
     have not been previously published or registered.
       ``(2) Contents of short-form.--The short-form application 
     shall include--
       ``(A) the name and address of the author;
       ``(B) the title of the work;
       ``(C) the nationality or domicile of the author;
       ``(D) the year in which creation of the work was completed;
       ``(E) if the work has been published, the date and nation 
     of its first publication;
       ``(F) any other information regarded by the Register of 
     Copyrights as bearing upon the preparation or identification 
     of the work or the existence, ownership, or duration of the 
     copyright; and
       ``(G) at the option of the applicant, names, addresses, and 
     telephone numbers of persons or organizations that potential 
     users of the work should contact concerning permissions or 
     licenses to use the work, and any information with respect to 
     the terms of such permissions or licenses.''.
       (b) Effective Date.--The amendments made by this section 
     take effect 6 months after the date of the enactment of this 
     Act.

     SEC. 205. REGISTRATION OF CLAIM AND ISSUANCE OF CERTIFICATE.

       (a) Determination of Registration.--Section 410 of title 
     17, United States Code, is amended by striking subsections 
     (a) and (b) and inserting the following:
       ``(a) Determination of Register.--If, after examination, 
     the Register of Copyrights determines, in accordance with the 
     provisions of this title, that there is no reasonable 
     possibility that a court would hold the work for which a 
     deposit is made pursuant to section 408(c) to be 
     copyrightable subject matter, or the Register determines that 
     the claim is invalid for any other reason, the Register shall 
     refuse registration and notify the applicant in writing of 
     the reasons for such refusal. In all other cases, the 
     Register shall register the claim and issue to the applicant 
     a certificate of registration under the seal of the Copyright 
     Office. A certificate of registration issued under this 
     section extends only to those component parts of the work 
     that both are the subject matter of copyright and the 
     copyright owner has the right to claim. The certificate shall 
     contain the information set forth in the application, 
     together with the number and effective date of the 
     registration.
       ``(b) Appeals Procedure.--The Register of Copyrights shall 
     establish, and publish in the Federal Register, a formal 
     procedure by which appeals may be taken from refusals under 
     subsection (a) to register claims to copyright. Such 
     procedure shall include a final appeal to the Register.''.
       (b) Judicial Proceedings.--Subsection (c) of section 410 of 
     title 17, United States Code, is amended--
       (1) by inserting ``Evidentiary Weight of Certificate.--'' 
     after ``(c)''; and
       (2) by adding at the end the following: ``Any error or 
     omission made in good faith or upon reasonable reliance on 
     counsel shall not affect the validity of the registration. In 
     no case shall an incorrect statement made in an application 
     for copyright registration invalidate the copyright.''.
       (c) Technical Amendment.--Subsection (d) of section 410 of 
     title 17, United States Code, is amended by inserting 
     ``Effective Date of Registration.--'' after ``(d)''.

     SEC. 206. COPYRIGHT REGISTRATION PROVISIONS.

       (a) Registration and Infringement Actions.--(1) Section 411 
     of title 17, United States Code, is amended--
       (A) by amending the section caption to read as follows:

     ``Sec. 411. Registration and infringement actions for certain 
       works'';

       (B) by striking subsection (a); and
       (C) in subsection (b)--
       (i) by striking ``(b)''; and
       (ii) by striking paragraphs (1) and (2) and inserting the 
     following:
       ``(1) serves notice upon the infringer, not less than 10 or 
     more than 30 days before such fixation, identifying the work 
     and the specific time and source of its first transmission; 
     and
       ``(2) submits an application for registration of the 
     copyright claim in the work, in accordance with this title, 
     within 3 months after the first transmission of the work.''.
       (2) The item relating to section 411 in the table of 
     sections at the beginning of chapter 4 of title 17, United 
     States Code, is amended to read as follows:

``411. Registration and infringement actions for certain works.''.

       (b) Registration as Prerequisite to Certain Remedies for 
     Infringement.--Section 412 of title 17, United States Code, 
     and the item relating to section 412 in the table of sections 
     at the beginning of chapter 4 of title 17, United States 
     Code, are repealed.

     SEC. 207. REMEDIES FOR INFRINGEMENT.

       Section 504(c)(2) of title 17, United States Code, is 
     amended in the second sentence--
       (1) by striking ``court it'' and inserting ``court in'';
       (2) by inserting ``or eliminate'' after ``reduce''; and
       (3) by striking ``to a sum of not less than $200''.

     SEC. 208. NOTIFICATION OF FILING AND DETERMINATION OF 
                   ACTIONS.

       Section 508 of title 17, United States Code, is amended--
       (1) in subsection (a)--
       (A) in the first sentence by inserting ``and the party 
     filing the action'' after ``United States''; and
       (B) in the second sentence by inserting ``and the party 
     filing the action'' after ``clerk''; and
       (2) in subsection (b) by inserting ``and the party filing 
     the action'' after ``clerk of the court''.

     SEC. 209. STUDY ON MANDATORY DEPOSIT.

       (a) Subject Matter of Study.--Upon the enactment of this 
     Act, the Librarian of Congress shall conduct a study of the 
     mandatory deposit provisions of section 407 of title 17, 
     United States Code. Such study shall place particular 
     emphasis on the implementation of section 407(e) of such 
     title with respect to the deposit of transmission programs, 
     as well as possible alternative methods of obtaining deposits 
     if the mandatory deposit requirements of such section 407 are 
     expanded to authorize the collection, archival preservation, 
     and use by the Library of Congress of other publicly 
     transmitted works, including unpublished works such as 
     computer programs and online databases.
       (b) Conduct of Study.--The study under subsection (a) shall 
     be conducted by the Register of Copyright, in consultation 
     with any affected interests, and may include the voluntary 
     establishment, in collaboration with representatives of such 
     interests, of practical tests and pilot projects.
       (c) Report to Congress.--Not later than 18 months after the 
     date of the enactment of this Act, the Librarian shall submit 
     to the Congress a report on the results of the study 
     conducted under this section, together with recommendations 
     the Librarian has on--
       (1) safeguarding the interests of copyright owners whose 
     works are subject to the mandatory deposit provisions 
     referred to in subsection (a);
       (2) fulfilling the present and future needs of the Library 
     of Congress with respect to archival and other collections 
     development; and
       (3) any legislation that may be necessary.

     SEC. 210. STUDIES OF EFFECTS OF REGISTRATION AND DEPOSIT 
                   PROVISIONS.

       Upon the enactment of this Act, the Librarian of Congress, 
     after consultation with the Register of Copyrights and any 
     affected interests, shall commence a study of the extent to 
     which changes in the registration and deposit provisions of 
     title 17, United States Code, that are made by this Act have 
     affected the acquisitions of the Library of Congress and the 
     operations of the copyright registration system, and any 
     recommendations the Librarian may have with respect to such 
     effects. Not later than 3 years after the date of the 
     enactment of this Act, the Librarian shall submit to the 
     Congress a report on such study. The Librarian may conduct 
     further studies described in the first sentence, and report 
     to the Congress on such studies.

     SEC. 211. CONFORMING AMENDMENTS.

       (a) Definitions.--Section 101 of title 17, United States 
     Code, is amended by striking the definition of the ``country 
     of origin'' of a Berne Convention work.
       (b) Infringement of Copyright.--Section 501(b) of title 17, 
     United States Code, is amended in the first sentence by 
     striking ``, subject to the requirements of section 411,''.
       (c) Remedies for Infringement.--Section 504(a) of title 17, 
     United States Code, is amended by striking ``Except as 
     otherwise provided by this title, an'' and inserting ``An''.

     SEC. 212. ADDITIONAL TECHNICAL AMENDMENTS.

       (a) Amendments to Title 17, United States Code.--Title 17, 
     United States Code, is amended as follows:
       (1) The definition of ``publicly'' contained in section 101 
     is amended--
       (A) by striking ``clause'' and inserting ``paragraph''; and
       (B) by striking ``processs'' and inserting ``process''.
       (2) The definition of ``registration'' contained in section 
     101 is amended by striking ``412,''.
       (3) Section 108(e) is amended in the matter preceding 
     paragraph (1) by striking ``pair'' and inserting ``fair''.
       (4) Section 109(b)(2)(B) is amended by striking 
     ``Copyright'' and inserting ``Copyrights''.
       (5) Section 304(c) is amended in the matter preceding 
     paragraph (1) by striking ``the subsection (a)(1)(C) and 
     inserting ``subsection (a)(1)(C)''.
       (6) Section 405(b) is amended by striking ``condition or'' 
     and inserting ``condition for''.
       (7) The item relating to section 504 in the table of 
     sections at the beginning of chapter 5 is amended by striking 
     ``Damage'' and inserting ``Damages''.
       (8) Section 501(a) is amended by striking ``sections 106 
     through 118'' and inserting ``section 106''.
       (9) Section 509(b) is amended by striking ``merchandise; 
     and baggage'' and inserting ``merchandise, and baggage''.
       (10) Section 601 of title 17, United States Code, is 
     amended--
       (A) in subsection (a) by striking ``nondramtic'' and 
     inserting ``nondramatic''; and
       (B) in subsection (b)(1) by striking ``subsustantial'' and 
     inserting ``substantial''.
       (11) Section 801(b)(4) of title 17, United States Code, is 
     amended by adding a period after ``chapter 10''.
       (12) The item relating to section 903 in the table of 
     sections at the beginning of chapter 9 is amended to read as 
     follows:

``903. Ownership, transfer, licensing, and recordation.''.

       (13) Section 909(b)(1) is amended--
       (A) by striking ``force'' and inserting ``work''; and
       (B) by striking ``sumbol'' and inserting ``symbol''.
       (14) Section 910(a) is amended in the second sentence by 
     striking ``as used'' and inserting ``As used''.
       (15) Section 1006(b)(1) is amended by striking ``Federation 
     Television'' and inserting ``Federation of Television''.
       (16) Section 1007 is amended--
       (A) in subsection (a)(1) by striking ``the calendar year in 
     which this chapter takes effect'' and inserting ``calendar 
     year 1992''; and
       (B) in subsection (b) by striking ``the year in which this 
     section takes effect'' and inserting ``1992''.
       (17) The table of chapters at the beginning of title 17, 
     United States Code, is amended--
       (A) by amending the item relating to chapter 6 to read as 
     follows:

``6. Manufacturing Requirements and Importation..............601'';....

       (B) by amending the item relating to chapter 9 to read as 
     follows:

``9. Protection of Semiconductor Chip Products...............901'';....

     and
       (C) by adding at the end the following:

``10. Digital Audio Recording Devices and Media.............1001''.....

       (b) Other Provisions of Law.--(1) Section 2319(b)(1) of 
     title 18, United States Code, is amended by striking ``at 
     last'' and inserting ``at least''.
       (2) Section 1(a)(1) of the Act entitled ``An Act to amend 
     chapter 9 of title 17, United States Code, regarding 
     protection extended to semiconductor chip products of foreign 
     entities'', approved November 9, 1987 (17 U.S.C. 914 note), 
     is amended by striking ``orginating'' and inserting 
     ``originating''.
       (3) Section 3(a)(1)(C) of the Audio Home Recording Act of 
     1992 is amended by striking ``adding the following new 
     paragraph at the end'' and inserting ``inserting after 
     paragraph (3) the following new paragraph''.

     SEC. 213. EFFECTIVE DATE.

       (a) In General.--Except as provided in section 204(b), and 
     subject to subsection (b) of this section, this Act and the 
     amendments made by this Act take effect on the date of the 
     enactment of this Act.
       (b) Pending Actions.--The amendments and repeals made by 
     section 206 shall not affect any action brought under title 
     17, United States Code, before the date of the enactment of 
     this Act.

  The SPEAKER pro tempore. Pursuant to the rule, the gentleman from New 
Jersey [Mr. Hughes] will be recognized for 20 minutes, and the 
gentleman from California [Mr. Moorhead] will be recognized for 20 
minutes.
  The Chair recognizes the gentleman from New Jersey [Mr. Hughes].
  Mr. HUGHES. Mr. Speaker, I yield myself such time as I may consume.
  Mr. Speaker, I rise in support of H.R. 4307. H.R. 4307 includes two 
titles, a patent process title and a copyright title.
  The subject matter of title I of H.R. 4307 has been debated and 
considered by Congress for the past 6 years. Title I of H.R. 4307 is a 
response to two court decisions which have affected the examination of 
patent applications at the Patent and Trademark Office. The two court 
decisions, a 1985 decision issued by the Court of Appeals for the 
Federal circuit, In Re Durden, and a subsequent case, In Re 
Pleuddemann, decided in 1990 have led to inconsistent practices by the 
Patent and Trademark Office in the examination of applications for 
process patents and claims. The result has been that some process 
patents and claims have been granted without any delay or controversy 
while other applications, similar in nature, have been rejected or 
required to be defended at length with the patent examiner.
  Without the protection of a process patent, many American industries 
are unable to prevent the use of their product overseas--for which they 
spent the millions in research and development--in production of a 
product which can then be imported into the United States without the 
fear of infringement.
  The legislation provides for a modified patent examination by the 
Patent and Trademark Office of process patents. Under title I of H.R. 
4307, a process will not have to undergo a separate review of 
nonobviousness under certain conditions. If the process produces or 
uses a patentable composition of matter the process will be determined 
nonobvious for purposes of the patent examination.
  This expedited review will resolve the delays and inconsistent 
determinations faced by process patent applicants under present Patent 
and Trademark Office practices without any harm to the basic principles 
of patentability. Title I of H.R. 4307 only impacts one element of 
patentability--that of nonobviousness. There is no guarantee of 
patentability if the process patent application satisfies the new 
examination procedure. The process must still fulfill other 
requirements of patentability,
  There has been more than ample opportunity to consider this 
legislation. In 6 years, there have been at least five different 
hearings held by the House subcommittee of Jurisdiction on related 
legislation. The solution devised in title I of H.R. 4307 has taken 
into account all the concerns and problems raised by various industry 
groups and is a middle-ground approach which is neither industry-
specific or totally generic.
  Given the failure of the courts to resolve the seemingly inconsistent 
decisions and the inability of the Patent and Trademark Office to solve 
the problems administratively, Congress has an obligation to act. Title 
I of H.R. 4307 addresses the issue in the most appropriate manner.
  Title II of H.R. 4307 contains the Copyright Reform Act of 1993 in 
the identical form as passed by the House on November 20, 1993. 
Although there is a companion bill in the other body, they have not had 
the opportunity to process that legislation, mostly due to the time 
spent on the satellite bill.
  Passage of the Copyright Reform Act is even more necessary since the 
Supreme Court's decision earlier this year in the Fogerty case. In 
Fogerty, the Court held that in awarding attorney's fees, courts should 
award them to prevailing defendants on the same basis as to prevailing 
plaintiffs. This means that prevailing defendants may receive 
attorney's fees in cases where the plaintiff, if he had prevailed, 
could not, because of section 412. This fact will, undoubtedly, have a 
chilling effect on copyright owners.
  Both title of H.R. 4307 are important and require immediate action. I 
urge my colleagues to adopt H.R. 4307.
  Mr. Speaker, I want to thank and commend the distinguished ranking 
Republican on the Intellectual Property and Judicial Administration 
Subcommittee, the gentleman from California [Mr. Moorhead], for his 
work, his staff's work, the majority staff for their work, Hayden 
Gregory and Jarilyn Dupont, just behind me, who worked on this 
important legislation, and Bill Patry, as well as the distinguished 
chairman of the full committee, the gentleman from Texas [Mr. Brooks], 
and his staff, and the gentleman from New York [Mr. Fish] and his 
staff.
  It is a good bill. It warrants your support.
  Mr. Speaker, I reserve the balance of my time.

                              {time}  1650

  Mr. MOORHEAD. Mr. Speaker, I yield myself as much time as I may 
consume.
  (Mr. MOORHEAD asked and was given permission to revise and extend his 
remarks.)
  Mr. MOORHEAD. Mr. Speaker, I rise in support of H.R. 4307, the 
Process Patent Protection Act of 1994.
  I would like to commend our chairman Jack Brooks, and ranking member, 
Ham Fish, for their help in scheduling this legislation for the floor 
and the subcommittee chairman, the gentleman from New Jersey [Mr. 
Hughes], for his hard work and leadership in this complex area. I also 
would like to thank the gentleman from Virginia, Rick Boucher for all 
of his effort and support of this important legislation.
  From an economic point of view, the U.S. biotech industry has gone 
from zero revenues and zero jobs 15 years ago to $6 billion and 70,000 
jobs today. The White House Council on Competitiveness projects a $30 
to $50 billion market for biotech products by the year 2000, and many 
in the industry believe this estimate to be conservative.
  Companies that depend heavily on research and development are 
especially vulnerable to foreign competitors who copy and sell their 
products without permission. The reason that high technology companies 
are so vulnerable is that for them the cost of innovation, rather than 
the cost of production, is the key cost incurred in bringing a product 
to market.
  In addition to the ability to obtain and enforce a patent, small 
companies in particular must be concerned about obtaining a patent in a 
timely fashion. In 1992 the pendency of a biotech patient application 
was 27 months with the backlog in applications increasing from 17,000 
in 1990 to almost 20,000 in 1992. The Patent Office has taken steps to 
improve the situation by reorganizing its biotechnology examination 
group and increasing the number of new examiners. The PTO has also 
implemented special pay rates for their biotechnology examiners. As a 
result, biotech patent application pendency has been reduced from 27 
months to 21 months and the backlog in applications have been reduced 
from 20,000 in 1992 to 17,000 in 1994.
  Although this is slow progress it is a substantial improvement. 
However, we must continue to reduce these delays because this industry 
is so dependent on patents in order to raise capital for reinvestment 
in manufacturing plants and in new product development, and even more 
so for an industry targeted by Japan for major and concerted 
competition.
  The House Judiciary Committee took the first step in 1988 when the 
Congress enacted two bills which I introduced relating to process 
patents and reform of the International Trade Commission. However, our 
work will not be complete until we enact H.R. 4307. This bill modifies 
the test for obtaining a process patent. It overrules In Re Durden 
(1985), a case frequently criticized that has been cited by the Patent 
Office as grounds for denial of biotech patents, as well as chemical 
and other process patent cases.

  Because so many of the biotech inventions are protected by patents, 
the future of that industry depends greatly on what Congress does to 
protect U.S. patents from unfair foreign competition. America's foreign 
competitors, most of whom have invested comparatively little in 
biotechnology research, have targeted the biotech industry for major 
and concerted action. According to the Biotechnology Association, in 
Japan the Ministry of International Trade and Industry [MITI] and the 
Japanese biotechnology industry have joined forces and established a 
central plan to turn Japanese biotechnology into a 127 billion yen per 
year industry by the year 2000. If we fail to enact this legislation, 
the Congress may contribute to fulfillment of that projection.
  In conclusion, Mr. Speaker, this is important legislation. The 
biotech industry is an immensely important industry started in the 
United States with many labs housed in California. In the decade ahead, 
biotechnology research will improve the lives and health of virtually 
every American family. It will put people to work and it will save 
people's lives. I urge its adoption.
  Mr. Speaker, I yield back the balance of my time.
  Mr. HUGHES. Mr. Speaker, I yield such time as he may consume to the 
distinguished chairman of the full Committee on the Judiciary, the 
gentleman from Texas [Mr. Brooks].
  (Mr. BROOKS asked and was given permission to revise and extend his 
remarks.)
  Mr. BROOKS. Mr. Speaker, the patent provisions of H.R. 4307 represent 
a long sought solution to the vexing problem of process patent 
protection. For too long, confusion in our patent law and practice has 
permitted foreign manufacturers to exploit the creativity of U.S. 
companies and inventors. H.R. 4307 modifies the examination for process 
patents to eliminate the nonobviousness requirement for otherwise 
patentable processes connected to patentable products.
  For newly emerging industries, such as biotechnology firms, the 
legislation will give the needed certainty to continue to make needed 
strides in medical and scientific advances. At the same time, I am 
confident that this legislation will not have undue consequences on 
industries vital to our economy, such as the chemical industry. The 
legislation is intended to solve existing problems, not to cause new 
ones for industries that have functioned smoothly within the current 
system.
  I congratulate Congressman Bill Hughes, chairman of the Subcommittee 
on Intellectual Property and Judicial Administration, and Congressman 
Carlos Moorhead, the ranking subcommittee member, for their steadfast 
dedication to this issue. The proposal before the House today reflects 
years of work on this issue.
  With regard to the copyright provisions of this bill, they are the 
same as were passed on November 20, 1993, when the House adopted H.R. 
897 by voice vote. These provisions are designed to bring needed 
reforms to the copyright office registration process by removing 
bureaucratic obstacles to the protection and enforcement of copyrights.
  Again, Congressmen Hughes and Moorhead are to be particularly 
commended for their fine work as leaders in the copyright field.
  This package deserves the support of the House of Representatives, 
and I urge my colleagues to vote aye.
  Mr. HUGHES. Mr. Speaker, I yield myself 30 seconds.
  (Mr. HUGHES asked and was given permission to revise and extend his 
remarks.)
  Mr. HUGHES. Mr. Speaker, I take this time to single out particularly 
the gentleman I am going to yield to next, Rick Boucher, the gentleman 
from Virginia, who has developed an expertise in the intellectual 
property area second to none. This has been one of his loves for a long 
time.
  He introduced, I guess, about 5 or 6 years ago, a bill that was both 
industry-specific as well as generic to try to fix a very serious 
problem that has evolved over the years in the biotechnology process 
patent area. I might say that this is a highly complex area. It does 
put industry at a tremendous competitive disadvantage in this country 
vis-a-vis foreign industries, and this is going to correct that 
loophole.
  The gentleman is a very, very good Member. In addition to being 
patient, he has been patient with this subcommittee because we had 
waited on the courts for the better part of 2 years. We thought that 
they would solve this issue. Then we thought that the PTO would resolve 
this administratively.
  I want to acknowledge in particular the work of the gentleman from 
Virginia.
  Mr. Speaker, I yield 4 minutes to the gentleman from Virginia [Mr. 
Boucher].
  Mr. BOUCHER. I thank the gentleman for yielding this time to me. I 
want to express my appreciation to the gentleman from New Jersey [Mr. 
Hughes] for those kind remarks.
  Mr. Speaker, I also want to thank the gentleman from New Jersey [Mr. 
Hughes] for directing the House's attention to a very urgent need of 
one of the most commercially important industries in the United States, 
and that is the biotechnology industry. The gentleman has responded 
very effectively to the arguments that I raised along with the 
gentleman from California [Mr. Moorhead] some several years ago about a 
defect in the patent law that serves as a real inhibition to the 
forward progress of the biotechnology industry.
  That industry is itself a bright promise for the success of this 
Nation in international markets. It is a unique American enterprise 
that has created to date approximately 70,000 highly skilled, high-wage 
jobs and has the promise to do much more in the future.
  Biotechnology firms are making major contributions to this Nation's 
social needs in the area both of health care and agriculture.
  On the market today are products derived from biotechnology for the 
treatment of cancer, diabetes, and heart attacks. Firms are now 
developing potential treatments or even cures for AIDS, Alzheimer's 
disease, cystic fibrosis, and Lou Gehrig's disease.
  Yet the promise of this industry is seriously challenged by a simple 
and obvious inadequacy in the Nation's patent laws. That inadequacy 
opens the door for foreign firms to expropriate American inventions and 
compete in this country directly with the inventing firm. In essence, 
the patent law confers an advantage on foreign companies not enjoyed by 
U.S. firms and actually encourages a pilfering of U.S. creativity.
  We have numerous examples of that practice occurring. It is that 
defect in our patent law that the legislation before the House now is 
designed to address.
  The bill offered by the gentleman from New Jersey [Mr. Hughes] 
addresses that need by opening the door to a more certain award of 
process patents for biotechnology firms and other inventors. It will 
markedly improve the commercial prospects for an industry which will in 
the future make enormous contributions to the U.S. economy. I am 
pleased to rise in support of the legislation.
  Mr. Speaker, I again commend the gentleman from New Jersey [Mr. 
Hughes] and the gentleman from California [Mr. Moorhead] for their 
steadfast and productive work in bringing this measure before the House 
and I thank again the gentleman from New Jersey.
  Mr. HUGHES. Mr. Speaker, I have no more requests for time and I yield 
back the balance of my time.
  The SPEAKER pro tempore (Mr. Hastings). The question is on the motion 
offered by the gentleman from New Jersey [Mr. Hughes] that the House 
suspend the rules and pass the bill, H.R. 4307, as amended.
  The question was taken; and (two-thirds having voted in favor 
thereof) the rules were suspended and the bill, as amended, was passed.
  The title of the bill was amended so as to read: ``A bill to amend 
title 35, United States Code, with respect to applications for process 
patents, and for certain other purposes.''.
  A motion to reconsider was laid on the table.

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