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r REi: ro"':A4161583 

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84TH CONGRESS 

lsT SESSION" s. 116 

1N THE SEN ArrE OlT l'Hl~ UNl'l':ElD S'11ATES 

JANUARY 6, 1955 

Mr. DIRKSEN introdtte:ecl the following bill; whie:h was read twie:e a.nd referred 

i · to the Committee on the .Judieinry · 

A BILL 

To; authorize the extension of pat.en ts covering inventions who~e . 

. practice·was pfovented or;curtailed during certain· emergency 

. periods. by service of the patent owner in the Armed Forces . ' . I . 

or by production controls. ' . 

1 Be it enacted by the Senate and 11 ouse of Rep1'esenta2 t·ives of the_ United 8tal~s of. Ame1·ica in Cong1·ess assenibled, 

3 That (a)· if at any time during any of the periods speci:(ied 

~ . in su~section ( d) of this section5 ( 1) . the term of any patent of. the United States 

6 including tirne dnring which any individual or individI . 

7 uals, owni1'1g solely or jointly \Vith his spouse or their 

8 spouses the. entire interest in such. paterit, was. or were 

9 perfo~·ming honoraLle serv1cp on active duty m the ,•i + 

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r Army, Na.vy Air Force, .Marine Corps, or Coast Guard, 

which service prevented or substn.ntially cnrtai1ed the 

normal use, exploitation, promotion, or development of 

the patent; or 

( 2) the normal use, exp1oita.tion, promotion, or deve]oprnent ·of· the inventions described and cla.imed in 

any pa.tent of the United States was prevented or substantiaJly cmtailed by any order of an agency of the 

Government prohibiting or limiting the production or 

use of any cfoss of nrncbines, articles, or materials, or the 

use of. any class of processes or formulas; or 

(3) to further the inl;ercsts of the United States of 

America; the owner of such pntent has heretofore granted 

a license thereunder to the United States, or to manufacturers, producers, or contractors authorizing them to 

produce or furnish goods or services for or to the United . . 

·States, without payment of royalty, or at a nominal 

royalty, such Jiccnse lrnving- been granted by such owner 

to promote .a.r.1}r wm· effort, or any progmm of rearm~-

ment or preparation for the national defense, in 'vhich 

the United States has been engaged since the invasion 

of Pola:nd by Gernumy on Septern.her 1, 1939; and 

since Septernher J, 1939, under the authority of such 

license, tho United States, or manufacturers, producers, 

or contractors furnishing goods. or services to the United 
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3 .. · ·States, have ma:de substa:iitial nse of the invention em~ 

bodied in such patent in. the prn~duction oi· furnishing of 

goods or ser:vices' fot. or to -tbe United States, such use 

of said .im~ention having been· of' material assistance and 

"benefit to the United Staites i11. connectiol.1 ,vith any war 

-. effort, oi· any .program of rean!m1nent . or preparation 

· Jl)i:· · _ ; for th~ . national 'defense, which granting: of a license 

: S : ~::;. · p1~evented or :substantiaill)r curtailed the ]1onmd use, ex-

:. 9 '[:'~ . plbitation, ·promotion, or d·e~"efopmertt of the patent; 

10 ;; nh:elil •the Lterm ·of. such: patent :rira;y he; extended· ,in··a:ccordan:ce 

11 with the ptovisiorrs= of -this Act. 

12 (b) The period of extensfon of, a. patent under· this Act 

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:shall. be· a: further .term from tbe expiration -9f the original 

1'4 .t~r-?J. as~folloirs: ·: 

15- :., 1 •. " ( lf In cases 'where the __ oniy ·grounds tOl" extensioi1 

·]!6.. are t~ose described in: sl1bsec'tion .. (a) -(1) of this sec17: · . tion, the furtlre1· term shaU1 eql1al twice the· length of 

18 the active service during tbe·dpplicabltY perfod 'or periods 

19 specified in subsection, ( d) . ' . ' 

( 2) / In cn.ses--,v.bere· the onlY grni.rnds ·for; extension 

2JJ.: .. - d.te· those- des.cribed in subs·e6tion · (a.) ( 2) the· furt1Ye1· 

22: · · term shall :equal the time for which (during the ·appli~ 

23· -: , · ca;b1e period· or: periods specified in; sttbsection · ( d) ) the 

24:.: < , piactice :of the inventions described and claimed in the 
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patent· was prevented or substantially curtailed as set 

forth in subsection (a) . 

( 3') Iri cases where the only grounds for extension 

ar·e thos·e described in subsection (a) ( 3) , the further 

term shall equal the period during 'which the initial license granted by the owner of such patent;· ·without payment of royalty,· or at a nominal royalty, was in effect 

after September 1, 1939: Provided, however, That in 

no event shall the period of .extension hereunder be 

greater than the period . during which the normal use. 

exploitation, or development of the patent was ·prevented 

or substantially curtailed. 

( 4) In cases where grounds for extension· exist 

under more than one paragraph of subsection (a)·, the 

further terms designated iri this subsection (b) shall not 

be cumulative but shall be determined urider the applicable paragraph of this subsection (b) which results in 

the'Iongest extension.· 

( c) If the ownership of the patent nt 'the time the cir-

:w cumstances, described in subsection (a) , which qualify the 

-21 · patent for extension, first arose,· is different from the owner22 ship at the time· of tbe filing of the application for e.xtension 

23 under this Aet, such application shall be acted. 'u'pon only if 

24 the owner or owners at the time such circumstances first 
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1 . a.rose ~(or their fogal representatives) have joined m such 

2 application. 

·3 (d) The periods during which .one .or more of the cfr4 . cumstances described in subsection (a) ( 1) 01' subsectioh 

5 (a)· ( 2) mi1st have occurred in order to qualify a patent fo): 

6 extension under this Act are as follows: ·' ,_, 

7 ( 1) .. The period beginning December 7, 1941, an'd 

8 ending 'September 2, i945. .. , 

9 ( 2) rrhe period beg:inning June 26, 1950, and ·encl10 ing July 26, 1953 . 

11 ( e) For the purposes of this section, a reissue -in\.te1it'~ 

12 shall be considered to be the same patent as: that which it:· 

13 supersedes. . ' ' 

14 SEC. 2. On th~ filing of an application 'for extension of 

15 ;· ,. the term of a patent hereunder, togethci~ with stich informa'-

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16 tion as may be required b:y the Commissioner, and iipo11 . -

17 payment of such initial fees as the Commissioner .rna.y frm'n· 

18 time to ·time prescribe, ·the .Oomrnis_sioner ·shall publish ·a 

19 _ notice thereof in the Official Gazette of the Patent Office.· 

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20 'Vithin sixty days from such publication any person may 

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21 ·.·oppose. an _application for extension by ·filing with the Corri22 missioner a. notice of opposition thereto stating the ground~· r - ~ . . .._, therefor, which shall not include any charge that the patenf 

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1 . is ~i:nyalid. ·. If a proper notice of oppositioJJ is filed and pa)r2 rnent is made by the opponent of such initial fees ·as the Conl'~ 

-~: ·1 1qi-ssioner .m~y front time to ti1ne prescribe, the Ccifrimission& 

,4. .:_:·~hall set· a day for hearil)g whic;ih shall be within forty-five 

-5.~ days of th_e .. date .of the fili1ig of such notic'e of opposition·, an(1 

. 6 shall give not less than thirty days' notice .ol such hearing tb 

!7-;r; the parties in interest. Upon tlie ··hearing the parties ll1 

8 interest shall present such «widei1ce as· they belie\fe is relevail't 

-~'L .. aJ.).!;bs~1ch; Qther pertinent evidence as may be required hy tlfo 

10 Commissioner. If, from all the·. evidence presented befofo_ 

1.~, ·.d1im;. ·the,:Oornmi'ssionei· is satisfied that a patent should be· 

1.~ ,;: extended. in accordance with. thi's Act, he shall grant .such 

13 extension. The Conunis~ioner shall take action granting or. 

11 1 denying anJextcnsion within six months. after the filing of a·n· 

1.?:' ;i1rJ>,plici1.tion for extension.- The Commissioner shall fix the 

16 · 11· ( · t· · 1. ·<1."·1r;o)· ·1 ·11 1 I' : . ''''t:;'.tota 'ees n_o exceet mg <Ii' .J to JC pall :iy encl npp leant 

1Yr<for extension. of the term of· a pi1terit'hercunder and the total 

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; ~:fees.·.( not ,exceedii1g' $50) to be paid by each cipp.o'nent· to ai-i 

~~-~"application;. the' specific aniotint of all such fees to· be. detei;~ 

~?i·' mined'. qccording·:to the w01;k of the Patent Office re<]tiired ~n 

~\ .. 'processirig the;hppli'cation or i11'11earirig· a'ii opponent thereto; 

22 h - . b l 'b' . ] ' h ., f . h' :.- .. )r~ras·:·t e:i Cqse .. rn:ay· c,-\ anc · t · e estunatet ··cost' t ereo ·'to t · e 

23 P _ Offi - - _ 0 - - , • '· • • ., ;•'.1' μ,tent·. ce;··::r.· ·-.r;i ·:' ··;r:.. - . .. .... -

24 SEC. 3. If any applicant for an extension is >dissatisfied 

25 with the decision of the Commissioner or of any board 

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i established by the Commissioner for . the determination .of 

applica:tio.ns for extensions, be sba11 have the same remedy 

by appeal to the· United States Court of Custori1s and Patcht 

Appeals, ·or suit in the District Court for the District of 

Colum·bia, as provided, in the case of applications for patent. 

6 SEO. 4, The Commissioner shall issue a certificate m7i7 dencing the granting of an extension heremider. A notice ·of 

8 the granting of an extension shall appear ·in the· Offici1tl 

9· Gazette of the Patent Office. 

10 SEO. 5. Upon the issuance of the certificate of extensiohj 

11 ·. said patent sba.U have the same force and effect in law as 

12 though it bad been originally granted for seventeen yea)·s 

13 plus the term of such extension, except as otherwise ·provided 

14 herein. 

15 SEO. 6. Except where the owner of a patent ·exte11dbd 

16. · hereunder was entitled ·to ·royalties under said patent 

17 . (whether 9r not such royalties wore received or 'vaived) foi' 

18 any class of machines, articles or_ rnat~1;ials, · o~· for· the u'se 

19 ··of any class of processes or· for~ulas; produced or ·furn!shed 

20 . ·exclusively to or for the benefit of the United States, 01~ used 

21. exclusively by or. for the benefit of the United States, no 

22 patent extended .under _the proyi_si_ons of t~is;Act shall;~orve. 

23 as a basis for any claim by reason of manufacture, ~se, or 

24 ·sale: by. or for the United· States during the periotl of exteTI:..: 

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~·.1 siC:n, and the rights of the.·u nited States shall remnin in all 

.2 respects as if such patent hnd not been extended. 

3 SEC. 7. In the event that an extension is not issue·a until 

4 after the date of expiration 'of the original term of a patent 

5 or reissue thereof, the extension order· shall provide that mi:Y 

6 · vested rights arising out of the actual manufacture, use, or 

7 sale of the invention· covered by the patent so ·ext_ended, 

8 which took place after the said expiration and before the 

9 issuance of the extension -order ii.my continue difring the 

10 remainder, if any, of the period of the extension ·upon such 

11 terms and conditions as the Commissioner ·may prescribe, .. 

12 including the· prryrnent of reasonblc i·oyalties, providing the 

13 person or persons claiming such vested· rights establish· such 

14 rights ·to the satisfaction of. the Commissioner upon 'a 

15 h eariri g. 

16 SEC. 8. In any action fot irifu:ingeme11t after the ·expit;a17 tlon of seventeen years from the grant of the patent and 

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during the pei·iod ·of such extension, the defendant may 

plead and prove that any material statement of the application for extension required by this Act 'is not true in fact; 

and if any one or more of such statements· shall be found mi2_2 . true in fact, ·judgment -shall be -rendered for the defenda1it, 

23 with costs·. 

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SEC. 9. Any application for the extension of the terrri 

of a patent hereunder shall be filed within one year from the 
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1 effective date of this Act except for applications which are 

2 filed under subsection (a) ( 1) of section 1, which applica3 tions shall be filed within one year from the effective date of 

4 this Act or within one year from the date of the applicant's 

5 honorable discharge from service.