Calendar No. 681

103D CONGRESS

2D SESSION S. 2272

A BILL

To amend chapter 28 of title 35, United States

other purposes.based on prior use by certain persons, and forCode, to provide a defense to patent infringement

SEPTEMBER 28 (legislative day, SEPTEMBER 12), 1994

Reported with an amendment
II

Calendar No. 681

103D CONGRESS

2D SESSION S. 2272

To amend chapter 28 of title 35, United States Code, to provide a defense

to patent infringement based on prior use by certain persons, and for

other purposes.

IN THE SENATE OF THE UNITED STATES

JULY 1 (legislative day, JUNE 7), 1994

Mr. DECONCINI (for himself and Mr. BIDEN) introduced the following bill;

which was read twice and referred to the Committee on the Judiciary

SEPTEMBER 28 (legislative day, SEPTEMBER 12), 1994

Reported by Mr. BIDEN, with an amendment

[Strike out all after the enacting clause and insert the part printed in italic]

A BILL

To amend chapter 28 of title 35, United States Code, to

provide a defense to patent infringement based on prior

use by certain persons, 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 Prior User

5 Rights Act of 1994’’.
2

•S 2272 RS

1 SEC. 2. DEFENSE TO PATENT INFRINGEMENT BASED ON

2 PRIOR USE.

3 (a) IN GENERAL.—Chapter 28 of title 35, United

4 States Code, is amended by adding at the end thereof the

5 following new section:

6 ‘‘§ 273. Rights based on prior use; defense to infringe7 ment

8 ‘‘(a) DEFINITIONS.—For purposes of this section, the

9 term—

10 ‘‘(1) ‘commercially used’ means the use in

11 interstate or intrastate commerce, including the use

12 of processes, equipment, tooling, and intermediate

13 materials in the design, testing or production of

14 commercial products whether or not such processes,

15 equipment, tooling, and intermediate materials are

16 normally accessible, available, or otherwise known to

17 the public;

18 ‘‘(2) ‘effective and serious preparation’ means

19 that a person, in the United States, has—

20 ‘‘(A) reduced to practice the subject matter

21 for which rights based on prior use are claimed;

22 and

23 ‘‘(B) made serious plans, and a substantial

24 investment or much of the investment necessary

25 for the subject matter to be commercially used;

26 and
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•S 2272 RS

1 ‘‘(3) ‘critical date’ means the filing date or the

2 priority date, whichever occurs first, of the applica3 tion for patent.

4 ‘‘(b) IN GENERAL.—A person shall not be liable as

5 an infringer under a patent granted to another with re6 spect to any subject matter claimed in the patent that

7 such person had, acting in good faith, commercially used

8 in the United States or made effective and serious prepa9 ration therefor in the United States, before the critical

10 date.

11 ‘‘(c) LIMITATION OF DEFENSE.—Subject to sub12 section (d), rights based on prior use under this section

13 extend only to the claimed invention that the person claim14 ing rights based on prior use was in possession of prior

15 to the critical date.

16 ‘‘(d) CERTAIN VARIATIONS AND IMPROVEMENTS NOT

17 AN INFRINGEMENT.—The rights based on prior use under

18 this section shall include the right to make and use vari19 ations or improvements, including variations in the quan20 tity or volume of such use. Such variations or improve21 ments may not infringe additional claims of the patent.

22 ‘‘(e) QUALIFICATIONS.—(1) The rights based on

23 prior use under this section are personal and shall not be

24 licensed or assigned or transferred to another except in
4

•S 2272 RS

1 connection with the assignment or transfer of the entire

2 business or enterprise to which the rights relate.

3 ‘‘(2) A person may not claim rights based on prior

4 use under this section if the activity under which such per5 son claims the rights was—

6 ‘‘(A) based on information obtained or derived

7 from the patentee or those in privity with the pat8 entee; or

9 ‘‘(B) abandoned on or after the critical date,

10 except that for abandonment which occurs after the

11 critical date, rights based on prior use may be used

12 as a defense to infringement for that period of activ13 ity which occurred prior to abandonment if such ac14 tivity would otherwise, in the absence of abandon15 ment, have been allowed under this section.

16 ‘‘(3) The rights based on prior use under this section

17 are not a general license under all claims of the patent,

18 but are restricted in scope to cover only that subject mat19 ter claimed in the patent that has been commercially used,

20 or for which there has been effective and serious prepara21 tion, in the United States, before the critical date.

22 ‘‘(f) BURDEN OF PROOF.—In any action in which a

23 person claims a defense to infringement under this section

24 the burden of proof for establishing the defense shall be

25 on the person claiming rights based on prior use.’’.
5

•S 2272 RS

1 (b) TECHNICAL AND CONFORMING AMENDMENT.—

2 The table of sections for chapter 28 of title 35, United

3 States Code, is amended by adding at the end thereof the

4 following:

‘‘273. Rights based on prior use; defense to infringement.’’.

5 SEC. 3. EFFECTIVE DATE.

6 The provisions of this Act and the amendments made

7 by this Act shall take effect on the date of the enactment

8 of this Act.

9 SECTION 1. SHORT TITLE.

10 This Act may be cited as the ‘‘Patent Prior User

11 Rights Act of 1994’’.

12 SEC. 2. DEFENSE TO PATENT INFRINGEMENT BASED ON

13 PRIOR USE.

14 (a) IN GENERAL.—Chapter 28 of title 35, United

15 States Code, is amended by adding at the end thereof the

16 following new section:

17 ‘‘§ 273. Rights based on prior use; defense to infringe18 ment

19 ‘‘(a) DEFINITIONS.—For purposes of this section, the

20 term—

21 ‘‘(1) ‘commercially used’ means the use in inter22 state or intrastate commerce, including the use of

23 processes, equipment, tooling, and intermediate mate24 rials in the design, testing, or production of commer25 cial products whether or not such processes, equip-
6

•S 2272 RS

1 ment, tooling, and intermediate materials are nor2 mally accessible, available, or otherwise known to the

3 public;

4 ‘‘(2) ‘effective and serious preparation’ means

5 that a person has, in the United States—

6 ‘‘(A) actually reduced to practice the subject

7 matter for which rights based on prior use are

8 claimed; and

9 ‘‘(B) made serious plans, and a substantial

10 investment or a substantial portion of the total

11 investment necessary for the subject matter to be

12 commercially used; and

13 ‘‘(3) ‘effective filing date’ means the earlier of the

14 actual filing date of the application for patent or the

15 filing date of any earlier United States, foreign, or

16 international application to which the subject matter

17 at issue is entitled under sections 119, 120, or 365 of

18 this title.

19 ‘‘(b) IN GENERAL.—A person shall not be liable as an

20 infringer under section 271 of this title with respect to any

21 subject matter claimed in the patent being asserted that

22 such person had, acting in good faith, commercially used

23 in the United States or made effective and serious prepara24 tion therefore in the United States, before the effective filing

25 date.
7

•S 2272 RS

1 ‘‘(c) LIMITATION OF DEFENSE.—Rights based on prior

2 use under this section are not a general license under all

3 claims of the patent, but subject to subsection (d), extend

4 only to the claimed invention that the person claiming

5 rights based on prior use was in possession of prior to the

6 effective filing date.

7 ‘‘(d) CERTAIN VARIATIONS AND IMPROVEMENTS NOT

8 AN INFRINGEMENT.—The rights based on prior use under

9 this section shall include the right to vary the quantity or

10 volume of commercial use or to make improvements that

11 do not infringe additional claims of the patent.

12 ‘‘(e) QUALIFICATIONS.—(1) The rights based on prior

13 use under this section are personal and shall not be licensed

14 or assigned or transferred to another except in connection

15 with the good faith assignment or transfer of the entire busi16 ness or enterprise or the entire line of business or enterprise

17 to which the rights relate.

18 ‘‘(2) A person may not claim rights based on prior

19 use under this section if the activity under which such per20 son claims the rights was—

21 ‘‘(A) based on information obtained or derived

22 from the patentee or those in privity with the pat23 entee; or

24 ‘‘(B) abandoned on or after the effective filing

25 date, except that for abandonment which occurs after
8

•S 2272 RS

1 the effective filing date, rights based on prior use may

2 be used as a defense to infringement for that period

3 of activity which occurred prior to abandonment if

4 such activity would otherwise, in the absence of aban5 donment, have been allowed under this section.

6 ‘‘(f) BURDEN OF PROOF.—In any action in which a

7 person claims a defense to infringement under this section

8 the burden of proof for establishing the defense shall be on

9 the person claiming rights based on prior use.’’.

10 (b) TECHNICAL AND CONFORMING AMENDMENT.—The

11 table of sections for chapter 28 of title 35, United States

12 Code, is amended by adding at the end thereof the following:

‘‘273. Rights based on prior use; defense to infringement.’’.

13 SEC. 3. EFFECTIVE DATE.

14 The provisions of this Act and the amendments made

15 by this Act shall take effect on the date of the enactment

16 of this Act.