[Congressional Record Volume 140, Number 144 (Thursday, October 6, 1994)]
[Senate]
[Page S]
From the Congressional Record Online through the Government Printing Office [www.gpo.gov]


[Congressional Record: October 6, 1994]
From the Congressional Record Online via GPO Access [wais.access.gpo.gov]

 
                   PATENT APPLICATION AMENDMENTS ACT

                                 ______


               DeCONCINI (AND OTHERS) AMENDMENT NO. 2636

  Mr. FORD (for Mr. DeConcini for himself, Mr. Hatch, and Mr. Kennedy) 
proposed an amendment to the bill (H.R. 4307) to amend title 35, United 
States Code, with respect to applications for process patents; as 
follows:

       Strike out all after the enacting clause and insert in lieu 
     thereof the following:

                  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
       ``(b)(1) Notwithstanding subsection (a), and upon timely 
     election by the applicant for patent to proceed under this 
     subsection, a `biotechnological 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 effect 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.''.
       For purposes of subsection (b), the term ``biotechnological 
     process'' means a process of genetically altering or 
     otherwise inducing a cell or a living organism to express an 
     exogenous nucleotide sequence or to express specific 
     physiological characteristics. Such process include genetic 
     alteration of a cell to express an exogenous nucleotide 
     sequence, cell fusion procedures yielding a cell line that 
     expresses a specific protein, including a monoclonal 
     antibody, and genetic alteration of a multicellular organism 
     to include said organism to express an exogenous nucleotide 
     sequence or to express predefined physiological 
     characteristics.

     SEC. 102. RESUMPTION 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 proceding 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.
                                 ______


                        HATCH AMENDMENT NO. 2637

  Mr. FORD (for Mr. Hatch) proposed an amendment to the bill (H.R. 
4307) to amend title 35, United States Code, with respect to 
applications for process patents, as follows:

         On page ____, insert between lines ____ and ____ the 
     following:

     SEC. ____. JURISDICTION OF UNITED STATES COURT OF FEDERAL 
                   CLAIMS RELATING TO CERTAIN SOFTWARE AND SERVICE 
                   CLAIMS.

       (a) Jurisdiction.--Jurisdiction is conferred upon the 
     United States Court of Federal Claims to hear, determine, and 
     render conclusions that are sufficient to inform the Congress 
     of the amount, if any, legally or equitably due upon the 
     claims of Inslaw, Inc., a Delaware Corporation (hereinafter 
     referred to as ``Inslaw'') and William A. Hamilton and Nancy 
     Burke Hamilton, individually against the United States which 
     claims arise out of the furnishing of computer software and 
     services to the United States Department of Justice. The 
     hearings and proceedings conducted, determinations and 
     conclusions made, and report submitted to the Congress under 
     this subsection shall be conducted in accordance with the 
     provisions of section 2509 of title 28, United States Code.
         (b) Waiver of Sovereign Immunity and Defenses.--For 
     purposes of the report submitted under subsection (a), any 
     available defense relating to statute of limitations, any 
     form of estoppel, laches, res judicata, failure to exhaust 
     all remedies, and any available defense of sovereign immunity 
     of the United States, the Department of Justice, or any other 
     United States Government agency is specifically waived as to 
     the respective claims of Inslaw, William A. Hamilton, and 
     Nancy Burke Hamilton.

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