I 

109TH CONGRESS 

2D SESSION H. R. 5120 

To amend title 35, United States Code, to conform certain filing provisions 

within the Patent and Trademark Office. 

IN THE HOUSE OF REPRESENTATIVES 

APRIL 6, 2006 

Mr. JENKINS (for himself, Mr. DELAHUNT, Mr. DUNCAN, and Mr. MEEHAN) 

introduced the following bill; which was referred to the Committee on the 

Judiciary 

A BILL 

To amend title 35, United States Code, to conform certain 

filing provisions within the Patent and Trademark Office. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. FINDINGS. 

4 The Congress finds the following: 

5 (1) The Congress historically has provided vig6 orous support for innovation in the useful arts by es7 tablishing a system of patent protection for products 

8 and processes. 

9 (2) Through section 156 of title 35, United 

10 States Code, the Congress sought to promote the deVerDate Aug 31 2005 23:42 Apr 14, 2006 Jkt 049200 PO 00000 Frm 00001 Fmt 6652 Sfmt 6201 E:\BILLS\H5120.IH H5120

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1 velopment of innovative drugs by granting patent 

2 term restoration to companies to recover a portion 

3 of the patent term for such drugs that was con4 sumed during the approval process conducted by the 

5 Food and Drug Administration. 

6 (3) Consistent with the historic purpose of pro7 moting innovation, patent legislation, and subse8 quent rules promulgated by the United States Pat9 ent and Trademark Office (PTO), have routinely 

10 given the PTO wide discretion to excuse late filings 

11 and other mistakes that might otherwise result in 

12 the forfeiture of underlying patent rights. 

13 (4) Contrary to this routine practice, however, 

14 under section 156 of title 35, United States Code, 

15 the PTO has no discretion to excuse a filing that is 

16 even one day late. 

17 (5) In order to be consistent with the intent of 

18 protecting patent rights and promoting further inno19 vation, the PTO should be granted limited, cir20 cumscribed discretion to consider patent term res21 toration applications filed in an untimely manner. 


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1 SEC. 2. FILING OF APPLICATIONS FOR EXTENSIONS OF A 

2 PATENT TERM. 

3 (a) IN GENERAL.—Section 156 of title 35, United 

4 States Code, is amended by adding at the end the fol5 lowing new subsection: 

6 ‘‘(i) UNINTENTIONAL DELAY.—The Director may ac7 cept an application under this section that is filed not later 

8 than 5 days after the expiration of the 60-day period pro9 vided in subsection (d)(1) if the applicant files a petition 

10 showing, to the satisfaction of the Director, that the delay 

11 in filing the application was unintentional. Such petition 

12 must be filed with the application in the case of an appli13 cation filed on or after the date of the enactment of this 

14 subsection and must be filed not later than 5 days after 

15 such date of enactment in the case of an application 

16 which, on such date of enactment, is pending, is the sub17 ject of a request for reconsideration of a denial of a patent 

18 term extension under this section, or has been denied a 

19 patent term extension under this section in a case in which 

20 the period for seeking reconsideration of such denial has 

21 not yet expired. The Director shall make a determination 

22 on a petition under this subsection not later than 30 days 

23 after the date on which the petition is received. If no de24 termination has been made on the petition within that 30- 

25 day period, the petition shall be deemed to be denied.’’. 


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1 (b) REVIVAL FEES.—Section 41(a)(7) of title 35, 

2 United States Code, is amended— 

3 (1) by striking ‘‘or for an’’ and inserting ‘‘for 

4 an’’; and 

5 (2) by inserting after ‘‘reexamination pro6 ceeding,’’ the following: ‘‘or for an unintentionally 

7 delayed application for patent term extension,’’. 

8 (c) EFFECTIVE DATE.—The amendments made by 

9 this section shall take effect on the date of the enactment 

10 of this Act, and shall apply to any application for patent 

11 term extension under section 156 of title 35, United 

12 States Code, which— 

13 (1) is filed on or after the date of the enact14 ment of this Act; or 

15 (2) on such date of enactment— 

16 (A) is pending; 

17 (B) is the subject of a request for reconsid18 eration of a denial of a patent term extension 

19 under section 156; or 

20 (C) has been denied a patent term exten21 sion under such section 156 in a case in which 

22 the period for seeking reconsideration of such 

23 denial has not yet expired. 

Æ 


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