II

103D CONGRESS

1ST SESSION S. 149

To amend section 182 of the Trade Act of 1974 to permit the United

States to respond to the actions of countries that do not provide adequate

and effective patent protection to United States nationals.

IN THE SENATE OF THE UNITED STATES

JANUARY 21 (legislative day, JANUARY 5), 1993

Mr. ROCKEFELLER (for himself, Ms. MIKULSKI, Mr. HATCH, and Mr.

WOFFORD) introduced the following bill; which was read twice and referred to the Committee on Finance

A BILL

To amend section 182 of the Trade Act of 1974 to permit

the United States to respond to the actions of countries

that do not provide adequate and effective patent protection to United States nationals.

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 ‘‘International Protec5 tion of Patent Rights Act of 1993’’.

6 SEC. 2. FINDINGS AND PURPOSE.

7 (a) FINDINGS.—The Congress finds that—
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1 (1) Several countries (including Brazil, India,

2 Indonesia, Japan, Korea, Pakistan, Taiwan, and

3 Thailand) maintain patent systems that effectively

4 deny adequate and effective patent protection to

5 United States nationals because of—

6 (A) unreasonable delays in granting or en7 forcing patents,

8 (B) pre-grant opposition to patent applica9 tions,

10 (C) unnecessarily narrow interpretations of

11 patent claims by the authorities which deter12 mine patent validity and infringement, and

13 (D) other policies and practices.

14 (2) The lack of adequate and effective patent

15 protection in these countries denies fair and equi16 table market access to United States nationals that

17 rely upon intellectual property rights protection.

18 (b) PURPOSE.—The purpose of this Act is to amend

19 the Trade Act of 1974 to respond to the actions of coun20 tries that do not provide adequate and effective patent

21 protection to United States nationals.

22 SEC. 3. IDENTIFICATION OF FOREIGN COUNTRIES.

23 Section 182 of the Trade Act of 1974 (19 U.S.C.

24 2242) is amended—

25 (1) in subsection (a)(1)—
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1 (A) by striking ‘‘or’’ at the end of subpara2 graph (A),

3 (B) by striking ‘‘and’’ at the end of sub4 paragraph (B) and inserting ‘‘or’’, and

5 (C) by inserting after subparagraph (B)

6 the following new subparagraph:

7 ‘‘(C) deny adequate substantive standards,

8 and’’;

9 (2) in subsection (b)(1)(A)—

10 (A) by striking ‘‘or’’ at the end of clause

11 (i),

12 (B) by inserting ‘‘or’’ at the end of clause

13 (ii), and

14 (C) by inserting after clause (ii) the follow15 ing new clause:

16 ‘‘(iii) deny adequate substantive

17 standards,’’;

18 (3) by adding at the end of subsection (d), the

19 following new paragraph:

20 ‘‘(4) A foreign country denies adequate sub21 stantive standards if the country enforces or permits

22 procedures under its patent approval system that re23 sult in, among other practices—

24 ‘‘(A) patent applications being subject to

25 pre-grant opposition,
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1 ‘‘(B) extended deferral (beyond 3 years) of

2 patent examination,

3 ‘‘(C) an inordinately long period of time

4 for patent application approval,

5 ‘‘(D) an inordinately short patent term

6 measured either from the date of grant or from

7 the date of filing,

8 ‘‘(E) an inordinate delay in obtaining judi9 cial review or unavailability of judicial review

10 for patent applications that are denied, or

11 ‘‘(F) unnecessarily narrow interpretations

12 of patent claims by the authorities which deter13 mine patent validity and infringement.’’; and

14 (4) by adding at the end of subsection (e) the

15 following new sentence: ‘‘Such publication shall in16 clude information with respect to any act, policy, or

17 practice identified under subsection (a) and informa18 tion with respect to any action taken (or the reasons

19 for not taking action) to eliminate such act, policy,

20 or practice.’’.

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