Union Calendar No. 405

103D CONGRESS

2D SESSION H. R. 4307

[Report No. 103–728]

A BILL

To amend title 35, United States Code, with

respect to applications for process patents.

SEPTEMBER 20, 1994

Reported with an amendment, committed to the Commitordered to be printed tee of the Whole House on the State of the Union, and
IB

Union Calendar No. 405

103D CONGRESS

2D SESSION H. R. 4307

[Report No. 103–728]

To amend title 35, United States Code, with respect to applications for

process patents.

IN THE HOUSE OF REPRESENTATIVES

APRIL 28, 1994

Mr. HUGHES (for himself, Mr. MOORHEAD, Mr. FRANK of Massachusetts, Mr.

BOUCHER, Mr. SENSENBRENNER, Mr. FISH, and Mr. COBLE) introduced

the following bill; which was referred to the Committee on the Judiciary

SEPTEMBER 20, 1994

Additional sponsor: Mr. MCCOLLUM

SEPTEMBER 20, 1994

Reported with an amendment, committed to the Committee of the Whole

House on the State of the Union, and ordered to be printed

[Strike out all after the enacting clause and insert the part printed in italic]

[For text of introduced bill, see copy of bill as introduced on April 28, 1994]

A BILL

To amend title 35, United States Code, with respect to

applications for process patents.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,
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1 SECTION 1. EXAMINATION OF PROCESS PATENT APPLICA2 TIONS FOR OBVIOUSNESS.

3 Section 103 of title 35, United States Code, is amend4 ed—

5 (1) by designating the first paragraph as sub6 section (a);

7 (2) by designating the second paragraph as sub8 section (c); and

9 (3) by inserting after the first paragraph the fol10 lowing:

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

12 timely election by the applicant for patent to proceed under

13 this subsection, a process using or resulting in a composi14 tion of matter that is novel under section 102 and

15 nonobvious under subsection (a) of this section shall be con16 sidered nonobvious if—

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

18 of matter are contained in either the same applica19 tion for patent or in separate applications having the

20 same effective filing date; and

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

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

23 person or subject to an obligation of assignment to the

24 same person.

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

26 (1)—
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1 ‘‘(A) shall also contain the claims to the com2 position of matter used in or made by that process,

3 or

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

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

6 same date as such other patent, notwithstanding sec7 tion 154.’’.

8 SEC. 2. PRESUMPTION OF VALIDITY; DEFENSES.

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

10 by inserting after the second sentence of the first paragraph

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

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

13 claim was the basis of a determination of nonobviousness

14 under section 103(b)(1), the process shall no longer be con15 sidered nonobvious solely on the basis of section 103(b)(1).’’.

16 SEC. 3. EFFECTIVE DATE.

17 The amendments made by section 1 shall apply to any

18 application for patent filed on or after the date of the enact19 ment of this Act and to any application for patent pending

20 on such date of enactment, including (in either case) an

21 application for the reissue of a patent.