I

104TH CONGRESS

1ST SESSION H. R. 1733

To amend title 35, United States Code, to provide for early publication

of patent applications, to provide provisional rights for the period of

time between early publication and patent grant, and to provide a prior

art effect for published applications.

IN THE HOUSE OF REPRESENTATIVES

MAY 25, 1995

Mr. MOORHEAD (for himself and Mrs. SCHROEDER) introduced the following

bill; which was referred to the Committee on the Judiciary

A BILL

To amend title 35, United States Code, to provide for early

publication of patent applications, to provide provisional

rights for the period of time between early publication

and patent grant, and to provide a prior art effect for

published applications.

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 Application

5 Publication Act of 1995’’.
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1 SEC. 2. EARLY PUBLICATION.

2 Section 122 of title 35, United States Code, is

3 amended to read as follows:

4 ‘‘§ 122. Confidential status of applications; publica5 tion of patent applications

6 ‘‘(a) Except as provided in subsection (b), applica7 tions for patents shall be kept in confidence by the Patent

8 and Trademark Office and no information concerning the

9 same given without authority of the applicant or owner

10 unless necessary to carry out the provisions of any Act

11 of Congress or in such special circumstances as may be

12 determined by the Commissioner.

13 ‘‘(b)(1) Subject to paragraph (2), each application for

14 patent, except applications for design patents under chap15 ter 16 of this title and provisional applications filed under

16 section 111(b) of this title, shall be published, in accord17 ance with procedures as determined by the Commissioner,

18 as soon as possible after the expiration of a period of 18

19 months from the earliest filing date for which a benefit

20 is sought under this title, except that an application that

21 is no longer pending shall not be published and an applica22 tion that is subject to a secrecy order pursuant to section

23 181 of this title shall not be published. An application may

24 be published earlier than the above date at the request

25 of the applicant. No information concerning published pat26 ent applications shall be made available to the public ex-
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1 cept as the Commissioner shall determine. Notwithstand2 ing any other provision of law, a determination by the

3 Commissioner to release or not to release information con4 cerning a published patent application shall be final and

5 nonreviewable.

6 ‘‘(2) Upon request, an application will not be pub7 lished in accordance with paragraph (1) until 3 months

8 after the Commissioner makes a notification to the appli9 cant under section 132 of this title. Applications filed pur10 suant to section 363 of this title, applications asserting

11 priority under section 119 or 365(a) of this title, and ap12 plications asserting the benefit of an earlier application

13 under section 120, 121, or 365(c) of this title shall not

14 be eligible for a request pursuant to this paragraph. Fur15 thermore, the applicant shall certify that the invention dis16 closed in the application was not or will not be the subject

17 of an application filed in a foreign country. A request

18 under this paragraph shall only be available to an inde19 pendent inventor who has been accorded status under sec20 tion 41(h) of this title. The Commissioner may establish

21 appropriate procedures and fees for a request in accord22 ance with this paragraph.’’.
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1 SEC. 3. TIME FOR CLAIMING BENEFIT OF EARLIER FILING

2 DATE.

3 (a) IN A FOREIGN COUNTRY.—Section 119(b) of title

4 35, United States Code, is amended to read as follows:

5 ‘‘(b) No application for patent shall be entitled to this

6 right of priority unless a claim therefor and a certified

7 copy of the original foreign application, specification and

8 drawings upon which it is based are filed in the Patent

9 and Trademark Office at such time during the pendency

10 of the application as required by the Commissioner. The

11 Commissioner may consider the failure of the applicant

12 to file a timely claim for priority as a waiver of any such

13 claim. The certification of the original foreign application,

14 specification and drawings shall be made by the patent

15 office of the foreign country in which filed and show the

16 date of the application and of the filing of the specification

17 and other papers. The Commissioner may require a trans18 lation of the papers filed if not in the English language

19 and such other information as he deems necessary.’’.

20 (b) IN THE UNITED STATES.—Section 120 of title

21 35, United States Code, is amended by adding at the end

22 thereof the following:

23 ‘‘The Commissioner may determine the time period during

24 the pendency of the application within which an amend25 ment containing the specific reference to the earlier filed

26 application shall be submitted. The Commissioner may
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1 consider the failure to timely submit such an amendment

2 as a waiver of any benefit under this section.’’.

3 SEC. 4. PROVISIONAL RIGHTS.

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

5 amended by adding the following new subsection:

6 ‘‘(d) PROVISIONAL RIGHTS.—In addition to other

7 rights provided by this section, a patent shall include the

8 right to obtain a reasonable royalty from any person who,

9 during the period from publication of the application for

10 such patent pursuant to section 122(b) of this title or from

11 international publication of an international application

12 designating the United States until issue of that patent—

13 ‘‘(1)(A) makes, uses, offers for sale, or sells in

14 the United States the invention as claimed in the

15 published patent application or imports such an in16 vention into the United States; or

17 ‘‘(B) if the invention as claimed in the pub18 lished patent application is a process, uses, offers for

19 sale, or sells in the United States or imports into the

20 United States products made by that process as

21 claimed in the published patent application; and

22 ‘‘(2) had actual notice or knowledge of the pub23 lished patent application.

24 The right to obtain a reasonable royalty shall not be avail25 able under this subsection unless the invention claimed in
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1 the patent is identical to the invention as claimed in the

2 published patent application. The right to obtain a reason3 able royalty based upon the international publication of

4 an international application designating the United States

5 shall commence from the date that the Patent and Trade6 mark Office receives a copy of the international publica7 tion of the international application, unless already com8 municated by the International Bureau, or, if the inter9 national publication of the international application is in

10 a language other than English, from the date that the Pat11 ent and Trademark Office makes a translation thereof

12 available to the public. The Commissioner may require the

13 applicant to provide a copy of the international publication

14 of the international application and a translation there15 of.’’.

16 SEC. 5. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.

17 Section 102(e) of title 35, United States Code, is

18 amended to read as follows:

19 ‘‘(e) the invention was described in—

20 ‘‘(1)(A) an application for patent, published

21 pursuant to section 122(b) of this title, by another

22 filed in the United States before the invention there23 of by the applicant for patent, or

24 ‘‘(B) an international application, published

25 pursuant to section 122(b) of this title, by another
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1 who has fulfilled the requirements of paragraphs (1),

2 (2), and (4) of section 371(c) of this title before the

3 invention thereof by applicant for patent, or

4 ‘‘(2) a patent granted on an application for pat5 ent by another filed in the United States before the

6 invention thereof by the applicant for patent, or on

7 an international application by another who has ful8 filled the requirements of paragraphs (1), (2), and

9 (4) of section 371(c) of this title before the invention

10 thereof by the applicant for patent, or’’.

11 SEC. 6. COST RECOVERY FOR PUBLICATION.

12 The Commissioner shall recover the cost of early pub13 lication required by the amendment made by section 2 by

14 adjusting the filing, issue, and maintenance fees, by charg15 ing a separate publication fee, or by any combination of

16 these methods.

17 SEC. 7. CONFORMING CHANGES.

18 The following provisions of title 35, United States

19 Code, are amended:

20 (1) Section 11 is amended in subsection (a)(1)

21 by inserting ‘‘and published applications’’ after

22 ‘‘Patents’’.

23 (2) Section 12 is amended by inserting ‘‘pub24 lished applications and’’ before ‘‘patents’’.
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1 (3) Section 13 is amended by inserting ‘‘pub2 lished applications and’’ before ‘‘patents’’.

3 (4) The item relating to section 122 in the table

4 of sections for chapter 11 is amended by inserting

5 ‘‘; publication of patent applications’’ after ‘‘applica6 tions’’.

7 (5) The item relating to section 154 in the table

8 of sections for chapter 14 is amended by inserting

9 ‘‘; provisional rights’’ after ‘‘patent’’.

10 (6) Section 181 is amended—

11 (A) in the first paragraph by inserting ‘‘by

12 the publication of an application or’’ after ‘‘dis13 closure’’, and ‘‘the publication of an application

14 or’’ after ‘‘withhold’’;

15 (B) in the second paragraph by inserting

16 ‘‘by the publication of an application or’’ after

17 ‘‘disclosure of an invention’’;

18 (C) in the third paragraph by inserting

19 ‘‘by the publication of the application or’’ after

20 ‘‘disclosure of the invention’’, and ‘‘the publica21 tion of the application or’’ after ‘‘withhold’’;

22 and

23 (D) in the fourth paragraph by inserting

24 ‘‘the publication of an application or’’ after

25 ‘‘and’’ in the first sentence.
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1 SEC. 8. PATENT TERM EXTENSION AUTHORITY.

2 Section 154(b) of title 35, United States Code, is

3 amended to read as follows:

4 ‘‘(b) TERM EXTENSION.—

5 ‘‘(1) BASIS FOR PATENT TERM EXTENSION.—

6 Subject to the limitations of paragraph (2) of this

7 subsection, if the issue of an original patent is de8 layed due to—

9 ‘‘(A) a proceeding under section 135(a) of

10 this title,

11 ‘‘(B) the imposition of an order pursuant

12 to section 181 of this title,

13 ‘‘(C) appellate review by the Board of Pat14 ent Appeals and Interferences or by a Federal

15 court where the patent was issued pursuant to

16 a decision in the review reversing an adverse

17 determination of patentability, or

18 ‘‘(D) an unusual administrative delay by

19 the Office in issuing the patent,

20 the term of the patent shall be extended for the pe21 riod of delay. The Commissioner shall prescribe reg22 ulations to govern the determination of the period of

23 delay and the particular circumstances deemed to be

24 an unusual administrative delay.

25 ‘‘(2) LIMITATIONS.—
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1 ‘‘(A) MAXIMUM PERIOD OF EXTENSION.—

2 The total duration of all extensions of a patent

3 under this subsection shall not exceed 10 years.

4 To the extent that periods of delay attributable

5 to grounds specified in paragraph (1) overlap,

6 the period of any extension granted under this

7 subsection shall not exceed the actual number

8 of days the issuance of the patent was delayed.

9 ‘‘(B) MINIMUM PENDENCY BEFORE EX10 TENSION AVAILABLE.—No patent shall be ex11 tended under this section that has been issued

12 before the expiration of 3 years after the filing

13 date of the application leading to the patent or

14 the commencement of the national stage under

15 section 371 of this title, whichever is later, not

16 taking into account the benefit of any earlier

17 filed application or applications under section

18 120, 121, or 365(c) of this title.

19 ‘‘(C) REASONABLE EFFORTS.—The period

20 of extension of the term of a patent under this

21 subsection shall be reduced by a period equal to

22 the time during the processing or examination

23 of the application leading to the patent in which

24 the applicant failed to engage in reasonable ef25 forts to conclude processing or examination of
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1 the application. The Commissioner shall pre2 scribe regulations establishing the cir3 cumstances that constitute a failure of an appli4 cant to engage in reasonable efforts to conclude

5 processing or examination of an application.

6 ‘‘(D) TERMINAL DISCLAIMER.—No patent

7 whose term has been disclaimed beyond a speci8 fied date may be extended under this section

9 beyond the expiration date specified in the dis10 claimer.’’.

11 SEC. 9. LAST DAY OF PENDENCY OF PROVISIONAL APPLI12 CATION.

13 Section 119(e) of title 35, United States Code, is

14 amended by adding the following at the end: ‘‘If the day

15 that is 12 months after the filing date of a provisional

16 application falls on a Saturday, Sunday, or Federal holi17 day within the District of Columbia, the period of pend18 ency of the provisional application shall be extended to the

19 next succeeding secular or business day.’’.

20 SEC. 10. EFFECTIVE DATE.

21 (a) SECTIONS 2 THROUGH 7.—Sections 2 through 7,

22 and the amendments made by such sections, shall take ef23 fect on January 1, 1996, and shall apply to all applica24 tions filed under section 111 of title 35, United States

25 Code, on or after that date, and all applications complying
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1 with section 371 of title 35, United States Code, that re2 sulted from international applications filed on or after that

3 date. The amendment made by section 4 shall also apply

4 to international applications designating the United States

5 that are filed on or after January 1, 1996.

6 (b) SECTIONS 8 AND 9.—The amendments made by

7 sections 8 and 9 shall take effect on the date of the enact8 ment of this Act and shall apply to any application filed

9 on or after June 8, 1995.

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