I

105TH CONGRESS

1ST SESSION H. R. 811

To restore the term of patents and to provide for the publication of patent

applications.

IN THE HOUSE OF REPRESENTATIVES

FEBRUARY 25, 1997

Mr. ROHRABACHER (for himself, Ms. KAPTUR, Mr. CAMPBELL, Mr. HUNTER,

Mr. FORBES, Mr. ABERCROMBIE, Mr. ACKERMAN, Mr. BARR of Georgia,

Mr. BARTLETT of Maryland, Mr. BURTON of Indiana, Mr. CALVERT,

Mrs. CHENOWETH, Mr. CONDIT, Mr. COX of California, Mr.

CUNNINGHAM, Mr. DAVIS of Virginia, Mr. DELLUMS, Mr. DOOLITTLE,

Mr. DUNCAN, Mr. FOLEY, Mr. GILLMOR, Mr. GRAHAM, Mr. HANSEN,

Mr. HAYWORTH, Mr. LARGENT, Mr. MASCARA, Mr. NEY, Mr. NORWOOD,

Mr. PAUL, Mr. ROYCE, Mr. SANFORD, Mr. SCHIFF, Mr. SMITH of Michigan, Mr. STEARNS, Mr. TIAHRT, Mr. TRAFICANT, Mr. WALSH, Mr.

WAMP, and Ms. WATERS) introduced the following bill; which was referred to the Committee on the Judiciary

A BILL

To restore the term of patents and to provide for the

publication of patent applications.

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 Term Restora5 tion Act of 1997’’.
2

•HR 811 IH

1 SEC. 2. PATENT TERMS.

2 (a) AMENDMENT OF TITLE 35.—Effective on the

3 date of the enactment of this Act, section 154 of title 35,

4 United States Code, as amended by the Uruguay Round

5 Agreements Act, is amended—

6 (1) in paragraph (2) of subsection (a), by strik7 ing ‘‘and ending’’ and all that follows in that para8 graph and inserting ‘‘and ending—

9 ‘‘(A) 17 years from the date of the grant

10 of the patent, or

11 ‘‘(B) 20 years from the date on which the

12 application for the patent was filed in the

13 United States, except that if the application

14 contains a specific reference to an earlier filed

15 application or applications under section 120,

16 121, or 365(c) of this title, 20 years from the

17 date on which the earliest such patent applica18 tion was filed,

19 whichever is later.’’.

20 (2) in subsection (c)(1), by striking ‘‘shall be

21 the greater of the 20-year term as provided in sub22 section (a), or 17 years from grant’’ and inserting

23 ‘‘shall be the term provided in subsection (a)’’.

24 (b) TECHNICAL AMENDMENT.—Section 534(b) of the

25 Uruguay Round Agreements Act is amended by striking

26 paragraph (3).
3

•HR 811 IH

1 SEC. 3. DEFINITION OF SPECIAL CIRCUMSTANCES TO PRO2 TECT THE CONFIDENTIALITY STATUS OF AP3 PLICATIONS.

4 Section 122 of title 35, United States Code, is

5 amended by striking ‘‘as may be determined by the Com6 missioner’’ and inserting ‘‘as in any of the following:

7 ‘‘(1) In the case of an application under section

8 111(a) for a patent for an invention for which the

9 applicant intends to file or has filed an application

10 for a patent in a foreign country, the Commissioner

11 may publish, at the discretion of the Commissioner

12 and by means determined suitable for the purpose,

13 no more than that data from such application under

14 section 111(a) which will be made or has been made

15 public in such foreign country. Such a publication

16 shall be made only after the date of the publication

17 in such foreign country.

18 ‘‘(2)(A) If the Commissioner determines that a

19 patent application which is filed after the date of the

20 enactment of this paragraph—

21 ‘‘(i) has been pending more than 5 years

22 from the effective filing date of the application,

23 ‘‘(ii) has not been previously published by

24 the Patent and Trademark Office,

25 ‘‘(iii) is not under any appellate review by

26 the Board of Patent Appeals and Interferences,
4

•HR 811 IH

1 ‘‘(iv) is not under interference proceedings

2 in accordance with section 135(a),

3 ‘‘(v) is not under any secrecy order pursu4 ant to section 181,

5 ‘‘(vi) is not being diligently pursued by the

6 applicant in accordance with this title, and

7 ‘‘(vii) is not in abandonment,

8 the Commissioner shall notify the applicant of such

9 determination.

10 ‘‘(B) An applicant which received notice of a

11 determination described in subparagraph (A) may,

12 within 30 days of receiving such notice, petition the

13 Commissioner to review the determination to verify

14 that subclauses (i) through (vii) are all applicable to

15 the applicant’s application. If the applicant makes

16 such a petition, the Commissioner shall not publish

17 the applicant’s application before the Commis18 sioner’s review of the petition is completed. If the

19 applicant does not submit a petition, the Commis20 sioner may publish the applicant’s application no

21 earlier than 90 days after giving such a notice.

22 ‘‘(3) If after the date of the enactment of this

23 paragraph a continuing application has been filed

24 more than 6 months after the date of the initial fil25 ing of an application, the Commissioner shall notify
5

•HR 811 IH

1 the applicant under such application. The Commis2 sioner shall establish a procedure for an applicant

3 which receives such a notice to demonstrate that the

4 purpose of the continuing application was for rea5 sons other than to achieve a delay in the time of

6 publication of the application. If the Commissioner

7 agrees with such a demonstration by the applicant,

8 the Commissioner shall not publish the applicant’s

9 application. If the Commissioner does not agree with

10 such a demonstration by the applicant or if the ap11 plicant does not make an attempt at such a dem12 onstration within a reasonable period of time as de13 termined by the Commissioner, the Commissioner

14 shall publish the applicant’s application.

15 The Commissioner shall ensure that publications under

16 paragraph (1), (2), or (3) will not result in third-party

17 pre-issuance oppositions which will delay or interfere with

18 the issuance of the patents whose applications’ data will

19 be published.’’.

Æ