103D CONGRESS

2D SESSION H. R. 4307

AMENDMENT
In the Senate of the United States,

October 6 (legislative day, September 12), 1994.

Resolved, That the bill from the House of Representatives (H.R. 4307) entitled ‘‘An Act to amend title 35, United

States Code, with respect to applications for process patents,

and for certain other purposes’’, do pass with the following

AMENDMENT:

Strike out all after the enacting clause and insert:

1 TITLE I—PROCESS PATENT

2 APPLICATIONS

3 SEC. 101. EXAMINATION OF PROCESS PATENT APPLICA4 TIONS FOR OBVIOUSNESS.

5 Section 103 of title 35, United States Code, is amend6 ed—

7 (1) by designating the first paragraph as sub8 section (a);

9 (2) by designating the second paragraph as sub10 section (c); and

11 (3) by inserting after the first paragraph the fol12 lowing:

13 ‘‘(b)(1) Notwithstanding subsection (a), and upon

14 timely election by the applicant for patent to proceed under

15 this subsection, a ‘‘biotechnological process’’ using or result16 ing in a composition of matter that is novel under section
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1 102 and nonobvious under subsection (a) of this section

2 shall be considered nonobvious if—

3 ‘‘(A) claims to the process and the composition

4 of matter are contained in either the same applica5 tion for patent or in separate applications having the

6 same effective filing date; and

7 ‘‘(B) the composition of matter, and the process

8 at the time it was invented, were owned by the same

9 person or subject to an obligation of assignment to the

10 same person.

11 ‘‘(2) A patent issued on a process under paragraph

12 (1)—

13 ‘‘(A) shall also contain the claims to the com14 position of matter used in or made by that process,

15 or

16 ‘‘(B) shall, if such composition of matter is

17 claimed in another patent, be set to expire on the

18 same date as such other patent, notwithstanding sec19 tion 154.’’.

20 For purposes of subsection (b), the term biotechnological

21 process’’ means a process of genetically altering or otherwise

22 inducing a cell or a living organism to express an exogenous

23 nucleotide sequence or to express specific physiological char24 acteristics. Such processes include genetic alteration of a

25 cell to express an exogenous nucleotide sequence, cell fusion
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1 procedures yielding a cell line that expresses a specific pro2 tein, including a monoclonal antibody, and genetic alter3 ation of a multicellular organism to induce said organism

4 to express an exogenous nucleotide sequence or to express

5 predefined physiological characteristics.

6 SEC. 102 PRESUMPTION OF VALIDITY; DEFENSES.

7 Section 282 of title 35, United States Code, is amended

8 by inserting after the second sentence of the first paragraph

9 the following: ‘‘Notwithstanding the preceding sentence, if

10 a claim to a composition of matter is held invalid and that

11 claim was the basis of a determination of nonobviousness

12 under section 103(b)(1), the process shall no longer be con13 sidered nonobvious solely on the basis of section 103(b)(1).’’.

14 SEC. 103. EFFECTIVE DATE.

15 The amendments made by section 101 shall apply to

16 any application for patent filed on or after the date of the

17 enactment of this Act and to any application for patent

18 pending on such date of enactment, including (in either

19 case) as application for the reissue of a patent.

20 SEC. 104. JURISDICTION OF UNITED STATES COURT OF

21 FEDERAL CLAIMS RELATING TO CERTAIN

22 SOFTWARE AND SERVICE CLAIMS.

23 (a) JURISDICTION.—Jurisdiction is conferred upon the

24 United States Court of Federal Claims to hear, determine,

25 and render conclusions that are sufficient to inform the
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1 Congress of the amount, if any, legally or equitably due

2 upon the claims of Inslaw, Inc., a Delaware Corporation

3 (hereinafter referred to as ‘‘Inslaw’’) and William A. Ham4 ilton and Nancy Burke Hamilton, individually against the

5 United States which claims arise out of the furnishing of

6 computer software and services to the United States Depart7 ment of Justice. The hearings and proceedings conducted,

8 determinations and conclusions made, and report submitted

9 to the Congress under this subsection shall be conducted in

10 accordance with the provisions of section 2509 of title 28,

11 United States Code.

12 (b) WAIVER OF SOVEREIGN IMMUNITY AND DE13 FENSE.—For purposes of the report submitted under sub14 section (a), any available defense relating to statute of limi15 tations, any form of estoppel, laches, res judicata, failure

16 to exhaust all remedies, and any available defense of sov17 ereign immunity of the United States, the Department of

18 Justice, or any other United States Government agency is

19 specifically waived as to the respective claims of Inslaw,

20 William A. Hamilton, and Nancy Burke Hamilton.

Attest:

Secretary.