II

103D CONGRESS

2D SESSION S. 2488

To amend chapter 11 of title 35, United States Code, to provide for early

publication of patent applications, to amend chapter 14 of such title

to provide provisional rights for the period of time between early publication and patent grant, and to amend chapter 10 of such title to provide

a prior art effect for published applications.

IN THE SENATE OF THE UNITED STATES

SEPTEMBER 30 (legislative day, SEPTEMBER 12), 1994

Mr. DECONCINI introduced the following bill; which was read twice and

referred to the Committee on the Judiciary

A BILL

To amend chapter 11 of title 35, United States Code, to

provide for early publication of patent applications, to

amend chapter 14 of such title to provide provisional

rights for the period of time between early publication

and patent grant, and to amend chapter 10 of such

title 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 SEC. 1. SHORT TITLE.

4 This Act may be cited as the ‘‘Patent Application

5 Publication Act of 1994’’.
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1 SEC. 2. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.

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

3 amended to read as follows:

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

5 ‘‘(1) an application for patent, published under

6 section 122(b), by another filed in the United States

7 before the invention thereof by the applicant for pat8 ent; or

9 ‘‘(2) a patent granted on an application for pat10 ent by another filed in the United States before the

11 invention thereof by the applicant for patent, or on

12 an international application by another who has ful13 filled the requirements of paragraphs (1), (2), and

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

15 thereof by applicant for patent, or’’.

16 SEC. 3. TIME FOR CLAIMING BENEFIT OF EARLIER FILING

17 DATE.

18 (a) IN A FOREIGN COUNTRY.—The second paragraph

19 of section 119 of title 35, United States Code, is amended

20 to read as follows:

21 ‘‘No application for patent shall be entitled to this

22 right of priority unless a claim therefor and a certified

23 copy of the original foreign application, specification and

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

25 and Trademark Office at such time during the pendency

26 of the application as required by the Commissioner. The
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1 Commissioner may consider the failure of the applicant

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

3 claim. The certification of the original foreign application,

4 specification and drawings shall be made by the patent

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

6 date of the application and of the filing of the specification

7 and other papers. The Commissioner may require a trans8 lation of the papers filed if not in the English language

9 and such other information as he deems necessary.

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

11 35, United States Code, is amended by adding at the end

12 thereof the following: ‘‘The Commissioner may determine

13 the time period within which an amendment containing

14 the specific reference to the earlier filed application shall

15 be submitted.’’.

16 SEC. 4. EARLY PUBLICATION.

17 (a) IN GENERAL.—Section 122 of title 35, United

18 States Code, is amended to read as follows:

19 ‘‘§ 122. Confidential status of applications; publica20 tion of patent applications

21 ‘‘(a) Except as provided in subsection (b), applica22 tions for patents shall be kept in confidence by the Patent

23 and Trademark Office and no information concerning the

24 same given without authority of the applicant or owner

25 unless necessary to carry out the provisions of any Act
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1 of Congress or in such special circumstances as may be

2 determined by the Commissioner.

3 ‘‘(b) Each application for patent shall be published,

4 in accordance with procedures as determined by the Com5 missioner, as soon as possible after the expiration of a pe6 riod of 18 months from the earliest filing date for which

7 a benefit is sought under this title, except that an applica8 tion that is no longer pending shall not be published and

9 an application subject to a secrecy order under section 181

10 of this title shall not be published. An application not sub11 ject to a secrecy order under section 181 of this title may

12 be published earlier than the expiration date described in

13 the preceding sentence at the request of the applicant. No

14 information concerning published patent applications shall

15 be made available to the public except as the Commis16 sioner shall determine. Notwithstanding any other provi17 sion of law, a determination by the Commissioner to re18 lease or not to release information concerning a published

19 patent application shall be final and nonreviewable.’’.

20 (b) COST RECOVERY FOR PUBLICATION.—The Com21 missioner shall recover the cost of early publication re22 quired by the amendment made under subsection (a) by

23 adjusting the filing, issue and maintenance fees, by charg24 ing a separate publication fee, or by any combination of

25 these methods.
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1 SEC. 5. PROVISIONAL RIGHTS.

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

3 amended—

4 (1) by inserting ‘‘(a)’’ before ‘‘Every patent’’;

5 and

6 (2) by adding at the end thereof the following

7 new subsection:

8 ‘‘(b)(1) In addition to other rights provided by this

9 section, a patent shall include the right to obtain a reason10 able royalty from any person who, during the period from

11 publication of the application for such patent under sub12 section 122(b) of this title until issue of that patent—

13 ‘‘(A)(i) makes, uses, or sells in the United

14 States the invention as claimed in the published pat15 ent application or imports such an invention into the

16 United States; or

17 ‘‘(ii) if the invention as claimed in the published

18 patent application is a process, uses or sells in the

19 United States or imports into the United States

20 products made by that process as claimed in the

21 published patent application; and

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

24 ‘‘(2) The right to obtain a reasonable royalty shall

25 not be available under this subsection unless the invention
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1 claimed in the patent is substantially identical to the in2 vention as claimed in the published patent application.’’.

3 SEC. 6. TECHNICAL AND CONFORMING AMENDMENTS.

4 (1) Section 12 of title 35, United States Code, is

5 amended by inserting ‘‘published applications and’’ before

6 ‘‘patents’’.

7 (2) Section 13 of title 35, United States Code, is

8 amended by inserting ‘‘published applications and’’ before

9 ‘‘patents’’.

10 (3) The table of sections for chapter 11 of title 35,

11 United States Code, is amended in the item relating to

12 section 122 by inserting ‘‘; publication of patent applica13 tions’’ after ‘‘applications’’.

14 (4) The table of sections for chapter 14 of title 35,

15 United States Code, is amended in the item relating to

16 section 154 by inserting ‘‘; provisional rights’’ after ‘‘pat17 ent’’.

18 (5) Section 181 of title 35, United States Code, is

19 amended—

20 (A) in the first paragraph—

21 (i) by inserting ‘‘by the publication of an

22 application or’’ after ‘‘disclosure’’; and

23 (ii) by inserting ‘‘the publication of an ap24 plication or’’ after ‘‘withhold’’;
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1 (B) in the second paragraph by inserting ‘‘by

2 the publication of an application or’’ after ‘‘disclo3 sure of an invention’’;

4 (C) in the third paragraph—

5 (i) by inserting ‘‘by the publication of the

6 application or’’ after ‘‘disclosure of the inven7 tion’’; and

8 (ii) by inserting ‘‘the publication of the ap9 plication or’’ after ‘‘withhold’’; and

10 (D) in the fourth paragraph of the first sen11 tence by inserting ‘‘the publication of an application

12 or’’ after ‘‘kept secret and’’.

13 SEC. 7. EFFECTIVE DATE.

14 (a) IN GENERAL.—Subject to subsection (b), sections

15 2 through 6 shall take effect on January 1, 1996 and shall

16 apply to all national applications filed in the United States

17 on or after such date.

18 (b) PROVISIONAL RIGHTS.—The amendment made

19 by section 5 of this Act shall only apply to applications

20 subject to a term beginning on the date on which the pat21 ent issues and ending—

22 (1) 20 years after the date on which the appli23 cation for patent was filed in the United States; or

24 (2) if the application contains a specific ref25 erence to an earlier filed application or applications
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1 under sections 120, 121 or 365(c) of title 35, United

2 States Code, 20 years after the date on which the

3 earliest such application was filed.

Æ