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[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[S. 2272 Introduced in Senate (IS)]

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

_______________________________________________________________________

                                 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.

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

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Patent Prior User Rights Act of 
1994''.

SEC. 2. DEFENSE TO PATENT INFRINGEMENT BASED ON PRIOR USE.

    (a) In General.--Chapter 28 of title 35, United States Code, is 
amended by adding at the end thereof the following new section:
``Sec. 273. Rights based on prior use; defense to infringement
    ``(a) Definitions.--For purposes of this section, the term--
            ``(1) `commercially used' means the use in interstate or 
        intrastate commerce, including the use of processes, equipment, 
        tooling, and intermediate materials in the design, testing or 
        production of commercial products whether or not such 
        processes, equipment, tooling, and intermediate materials are 
        normally accessible, available, or otherwise known to the 
        public;
            ``(2) `effective and serious preparation' means that a 
        person, in the United States, has--
                    ``(A) reduced to practice the subject matter for 
                which rights based on prior use are claimed; and
                    ``(B) made serious plans, and a substantial 
                investment or much of the investment necessary for the 
                subject matter to be commercially used; and
            ``(3) `critical date' means the filing date or the priority 
        date, whichever occurs first, of the application for patent.
    ``(b) In General.--A person shall not be liable as an infringer 
under a patent granted to another with respect to any subject matter 
claimed in the patent that such person had, acting in good faith, 
commercially used in the United States or made effective and serious 
preparation therefor in the United States, before the critical date.
    ``(c) Limitation of Defense.--Subject to subsection (d), rights 
based on prior use under this section extend only to the claimed 
invention that the person claiming rights based on prior use was in 
possession of prior to the critical date.
    ``(d) Certain Variations and Improvements Not an Infringement.--The 
rights based on prior use under this section shall include the right to 
make and use variations or improvements, including variations in the 
quantity or volume of such use. Such variations or improvements may not 
infringe additional claims of the patent.
    ``(e) Qualifications.--(1) The rights based on prior use under this 
section are personal and shall not be licensed or assigned or 
transferred to another except in connection with the assignment or 
transfer of the entire business or enterprise to which the rights 
relate.
    ``(2) A person may not claim rights based on prior use under this 
section if the activity under which such person claims the rights was--
            ``(A) based on information obtained or derived from the 
        patentee or those in privity with the patentee; or
            ``(B) abandoned on or after the critical date, except that 
        for abandonment which occurs after the critical date, rights 
        based on prior use may be used as a defense to infringement for 
        that period of activity which occurred prior to abandonment if 
        such activity would otherwise, in the absence of abandonment, 
        have been allowed under this section.
    ``(3) The rights based on prior use under this section are not a 
general license under all claims of the patent, but are restricted in 
scope to cover only that subject matter claimed in the patent that has 
been commercially used, or for which there has been effective and 
serious preparation, in the United States, before the critical date.
    ``(f) Burden of Proof.--In any action in which a person claims a 
defense to infringement under this section the burden of proof for 
establishing the defense shall be on the person claiming rights based 
on prior use.''.
    (b) Technical and Conforming Amendment.--The table of sections for 
chapter 28 of title 35, United States Code, is amended by adding at the 
end thereof the following:

``273. Rights based on prior use; defense to infringement.''.

SEC. 3. EFFECTIVE DATE.

    The provisions of this Act and the amendments made by this Act 
shall take effect on the date of the enactment of this Act.
                                 <all>
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