```

[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[H.R. 4307 Engrossed Amendment Senate (EAS)]

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:

                  TITLE I--PROCESS PATENT APPLICATIONS

SEC. 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 
``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 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.''.
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 processes 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 induce said organism to 
express an exogenous nucleotide sequence or to express predefined 
physiological characteristics.

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) as application for the reissue of a patent.

SEC. 104. 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 Defense.--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.

            Attest:

                                                             Secretary.
```