I

103D CONGRESS

2D SESSION H. R. 4505

To amend title 35, United States Code, to establish a 20-year patent term

from the date of filing and to establish a domestic priority system,

and for other purposes.

IN THE HOUSE OF REPRESENTATIVES

MAY 26, 1994

Mr. HUGHES (by request) introduced the following bill; which was referred to

the Committee on the Judiciary

A BILL

To amend title 35, United States Code, to establish a 20-

year patent term from the date of filing and to establish

a domestic priority system, and for other purposes.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,

3 SECTION 1. SHORT TITLE.

4 This Act may be cited as the ‘‘Patent Term Amend5 ment Act of 1994’’.

6 SEC. 2. PATENT TERM.

7 Section 154 of title 35, United States Code, is

8 amended to read as follows:
2

HR 4505 IH

1 ‘‘§ 154 Contents and term of patent

2 ‘‘(a) Every patent shall contain a short title of the

3 invention and a grant to the patentee, his heirs or assigns,

4 of the right to exclude others from making, using, or sell5 ing the invention throughout the United States and, if the

6 invention is a process, of the right to exclude others from

7 using or selling throughout the United States, or import8 ing into the United States, products made by that process,

9 referring to the specification for the particulars thereof.

10 Subject to the payment of fees as provided for in this title,

11 such grant shall be for a term beginning on the date on

12 which the patent issues and ending twenty years from the

13 date on which the application for the patent was filed in

14 the United States or, if the application contains a specific

15 reference to an earlier filed application or applications

16 under sections 120, 121 or 365(c) of this title, from the

17 date on which the earliest such application was filed. Pri18 ority under sections 119, 365(a) or 365(b) of this title

19 shall not be taken into account in determining the term

20 of a patent. A copy of the specification and drawings shall

21 be annexed to the patent and be a part thereof.

22 ‘‘(b) Where the issuance of an original patent is de23 layed because of a proceeding under section 135(a) of this

24 title or the application is placed under an order pursuant

25 to section 181 of this title, the term of the patent shall

26 be extended for the period of delay up to five years. Any
3

HR 4505 IH

1 and all extensions available under this subsection shall not

2 extend the term of an original patent for more than five

3 years.’’.

4 SEC. 3. ESTABLISHMENT OF A DOMESTIC PRIORITY SYS5 TEM.

6 (a) Section 119 of title 35, United States Code, is

7 amended to read as follows:

8 ‘‘§ 119 Benefit of earlier filing date; right of priority

9 ‘‘(a) An application for patent for an invention filed

10 in this country by any person who has, or whose legal rep11 resentatives or assigns have, previously filed an applica12 tion for a patent for the same invention in a foreign coun13 try which affords similar privileges in the case of applica14 tions filed in the United States shall have the same effect

15 as the same application would have if filed in this country

16 on the date on which the application for patent for the

17 same invention was first filed in such foreign country, if

18 the application in this country is filed within twelve

19 months from the earliest date on which such foreign appli20 cation was filed; but no patent shall be granted on any

21 application for patent for an invention which had been

22 patented or described in a printed publication in any coun23 try more than one year before the date of the actual filing

24 of the application in this country, or which had been in
4

HR 4505 IH

1 public use or on sale in this country more than one year

2 prior to such filing.

3 ‘‘(b) No application for patent shall be entitled to a

4 right of priority under subsection (a) unless a claim there5 for and a certified copy of the original foreign application,

6 specification and drawings upon which it is based are filed

7 in the Patent and Trademark Office before the patent is

8 granted, or at such time during the pendency of the appli9 cation as required by the Commissioner not earlier than

10 six months after the filing of the application in this coun11 try. Such certification shall be made by the patent office

12 of the foreign country in which filed and show the date

13 of the application and of the filing of the specification and

14 other papers. The Commissioner may require a translation

15 of the papers filed if not in the English language and such

16 other information as he deems necessary.

17 ‘‘(c) In like manner and subject to the same condi18 tions and requirements, the right provided under sub19 section (a) may be based upon a subsequent regularly filed

20 application in the same foreign country instead of the first

21 filed foreign application, provided that any foreign applica22 tion has been withdrawn, abandoned, or otherwise dis23 posed of, without having been laid open to public inspec24 tion and without leaving any rights outstanding, and has
5

HR 4505 IH

1 not served, nor thereafter shall serve, as a basis for claim2 ing a right of priority.

3 ‘‘(d) Applications for inventor’s certificates filed in a

4 foreign country in which applicants have a right to apply,

5 at their discretion, either for a patent or for an inventor’s

6 certificate shall be treated in this country in the same

7 manner and have the same effect for purpose of the right

8 of priority under subsection (a) as applications for pat9 ents, subject to the same conditions and requirements of

10 this section as apply to applications for patents, provided

11 such applicants are entitled to the benefits of the Stock12 holm Revision of the Paris Convention at the time of such

13 filing.

14 ‘‘(e) An application for patent filed under sections

15 111(a) or 363 of this title for an invention disclosed in

16 the manner provided by the first paragraph of section 112

17 of this title in a provisional application filed under section

18 111(b) of this title, by an inventor or inventors named

19 in the provisional application shall have the same effect,

20 as to such invention, as though filed on the date of the

21 provisional application filed under section 111(b) of this

22 title, if the application for patent filed under sections

23 111(a) or 363 of this title is filed within twelve months

24 from the date on which the provisional application was

25 filed and if it contains or is amended to contain a specific
6

HR 4505 IH

1 reference to the provisional application. A provisional ap2 plication filed under section 111(b) of this title may not

3 be relied upon in any proceeding in the Patent and Trade4 mark Office unless the fee set forth in subsections

5 41(a)(1) (A) or (C) has been paid and the provisional ap6 plication was pending on the filing date of the application

7 for patent under sections 111(a) or 363 of this title.’’.

8 (b) Section 41(a)(1) of title 35, United States Code,

9 is amended to include a new subparagraph c, as follows:

10 ‘‘c. On filing each provisional application for an

11 original patent, $150.00.’’.

12 (c) Section 111 of title 35, United States Code, is

13 amended to read as follows:

14 ‘‘§ 111 Application

15 ‘‘(a) Application for patent shall be made, or author16 ized to be made, by the inventor, except as otherwise pro17 vided in this title, in writing to the Commissioner. Such

18 application shall include (1) a specification as prescribed

19 by section 112 of this title; (2) a drawing as prescribed

20 by section 113 of this title; and (3) an oath by the appli21 cant as prescribed by section 115 of this title. The applica22 tion must be accompanied by the fee required by law. The

23 fee and oath may be submitted after the specification and

24 any required drawing are submitted, within such period

25 and under such conditions, including the payment of a
7

HR 4505 IH

1 surcharge, as may be prescribed by the Commissioner.

2 Upon failure to submit the fee and oath within such pre3 scribed period, the application shall be regarded as aban4 doned, unless it is shown to the satisfaction of the Com5 missioner that the delay in submitting the fee and oath

6 was unavoidable or unintentional. The filing date of an

7 application shall be the date on which the specification and

8 any required drawing are received in the Patent and

9 Trademark Office.

10 ‘‘(b)(1) A provisional application for patent shall be

11 made, or authorized to be made, by the inventor, in ac12 cordance with regulations prescribed by the Commissioner.

13 Such application shall include (A) a specification as pre14 scribed by the first paragraph of section 112 of this title;

15 and (B) a drawing as prescribed by section 113 of this

16 title. A claim shall not be required in a provisional applica17 tion. The application must be accompanied by the fee re18 quired by law. The fee may be submitted after the speci19 fication and any required drawing are submitted, within

20 such period and under such conditions, including the pay21 ment of a surcharge, as may be prescribed by the Commis22 sioner. Upon failure to submit the fee within such pre23 scribed period, the application shall be regarded as aban24 doned, unless it is shown to the satisfaction of the Com25 missioner that the delay in submitting the fee was un-
8

HR 4505 IH

1 avoidable or unintentional. The filing date of a provisional

2 application shall be the date on which the specification and

3 any required drawing are received in the Patent and

4 Trademark Office. The provisional application shall be re5 garded as abandoned twelve months after its filing date

6 and shall not be subject to revival thereafter. Subject to

7 all the conditions in this subsection, subsections 111(b)(2)

8 and 119(e) and as prescribed by the Commissioner, an ap9 plication for patent filed under section 111(a) of this title

10 may be treated as a provisional application for patent.

11 ‘‘(2) A provisional application shall not be entitled to

12 the right of priority of any other application under sec13 tions 119 or 365(a) of this title or the benefit of an earlier

14 filing date in the United States under sections 120, 121

15 or 365(c) of this title.

16 ‘‘(3) The provisions of this title relating to applica17 tions for patent shall be applicable to provisional applica18 tions for patent, except as otherwise provided and except

19 that provisional applications for patent shall not be subject

20 to sections 115, 131, 135 and 157 of this title.’’.

21 SEC. 4. CONFORMING CHANGES.

22 (a) The table of sections for chapter 11 of title 35,

23 United States Code, is amended in the item relating to

24 section 111 by deleting ‘‘for patent’’ and in the item relat25 ing to section 119 by deleting ‘‘in foreign country.’’
9

HR 4505 IH

1 (b) Section 156 of title 35, United States Code, is

2 amended by adding ‘‘under subsection (e)(1) of this sec3 tion’’ after ‘‘extended’’ in subsection (a)(2).

4 (c) Section 172 of title 35, United States Code, is

5 amended by changing ‘‘section 119’’ to ‘‘subsections

6 119(a) through 119(d)’’. Further, ‘‘The right of priority

7 provided for by subsection 119(e) of this title shall not

8 apply to designs.’’ has been added as a second sentence.

9 (d) Section 173 of title 35, United States Code, is

10 amended by adding ‘‘from the date of grant’’ after

11 ‘‘years.’’

12 (e) Subsection 365(a) of title 35, United States Code,

13 is amended by changing ‘‘section 119’’ to ‘‘subsections

14 119(a) through 119(d)’’ and subsection 365(b) of title 35,

15 United States Code, is amended by changing ‘‘the first

16 paragraph of section 119’’ to ‘‘subsection 119(a).’’

17 (f) Subsection 373 of title 35, United States Code,

18 is amended by changing ‘‘section 119’’ to ‘‘subsections

19 119(a) through 119(d)’’.

20 SEC. 5. EFFECTIVE DATE.

21 Sections 2 through 4 shall take effect six months

22 from the date of enactment and shall apply to all applica23 tions filed in the United States on or after the effective

24 date. The term of a patent granted on a plant or utility

25 application that is filed after the effective date and that
10

HR 4505 IH

1 contains a specific reference to an earlier filed application

2 under the provisions of sections 120, 121 or 365(c) of title

3 35 shall be measured from the filing date of the earliest

4 filed application, a reference to which is made under sec5 tions 120, 121 or 365(c) of this title.