103D CONGRESS

1ST SESSION H. R. 2632

AMENDMENTS
In the House of Representatives, U. S.,

November 19, 1993.

Resolved, That the House agree to the amendment of

the Senate to the bill (H.R. 2632) entitled ‘‘An Act to authorize appropriations for the Patent and Trademark Office

in the Department of Commerce for fiscal year 1994’’, with

the following

AMENDMENTS:

In lieu of the text proposed to be inserted by the Senate amendment, insert the following:

1 SEC. 5. INTERIM PATENT EXTENSIONS.

2 Section 156 of title 35, United States Code, is amend3 ed—

4 (1) in subsection (c)(4) by striking out ‘‘ex5 tended’’ and inserting ‘‘extended under subsection

6 (e)(1)’’;

7 (2) in the second sentence of subsection (d)(1) by

8 striking ‘‘Such’’ and inserting ‘‘Except as provided in

9 paragraph (5), such’’; and

10 (3) by adding at the end of subsection (d) the fol11 lowing new paragraph:

12 ‘‘(5)(A) If the owner of record of the patent or its agent

13 reasonably expects that the applicable regulatory review pe14 riod described in paragraph (1)(B)(ii), (2)(B)(ii),
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1 (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection (g) that

2 began for a product that is the subject of such patent may

3 extend beyond the expiration of the patent term in effect,

4 the owner or its agent may submit an application to the

5 Commissioner for an interim extension during the period

6 beginning 6 months, and ending 15 days, before such term

7 is due to expire. The application shall contain—

8 ‘‘(i) the identity of the product subject to regu9 latory review and the Federal statute under which

10 such review is occurring;

11 ‘‘(ii) the identity of the patent for which interim

12 extension is being sought and the identity of each

13 claim of such patent which claims the product under

14 regulatory review or a method of using or manufac15 turing the product;

16 ‘‘(iii) information to enable the Commissioner to

17 determine under subsection (a)(1), (2), and (3) the

18 eligibility of a patent for extension;

19 ‘‘(iv) a brief description of the activities under20 taken by the applicant during the applicable regu21 latory review period to date with respect to the prod22 uct under review and the significant dates applicable

23 to such activities; and

24 ‘‘(v) such patent or other information as the

25 Commissioner may require.
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1 ‘‘(B) If the Commissioner determines that, except for

2 permission to market or use the product commercially, the

3 patent would be eligible for an extension of the patent term

4 under this section, the Commissioner shall publish in the

5 Federal Register a notice of such determination, including

6 the identity of the product under regulatory review, and

7 shall issue to the applicant a certificate of interim extension

8 for a period of not more than 1 year.

9 ‘‘(C) The owner of record of a patent, or its agent, for

10 which an interim extension has been granted under sub11 paragraph (B), may apply for not more than 4 subsequent

12 interim extensions under this paragraph, except that, in the

13 case of a patent subject to subsection (g)(6)(C), the owner

14 of record of the patent, or its agent, may apply for only

15 1 subsequent interim extension under this paragraph. Each

16 such subsequent application shall be made during the period

17 beginning 60 days before, and ending 30 days before, the

18 expiration of the preceding interim extension.

19 ‘‘(D) Each certificate of interim extension under this

20 paragraph shall be recorded in the official file of the patent

21 and shall be considered part of the original patent.

22 ‘‘(E) Any interim extension granted under this para23 graph shall terminate at the end of the 60-day period begin24 ning on the date on which the product involved receives per25 mission for commercial marketing or use, except that, if
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1 within that 60-day period the applicant notifies the Com2 missioner of such permission and submits any additional

3 information under paragraph (1) of this subsection not pre4 viously contained in the application for interim extension,

5 the patent shall be further extended, in accordance with the

6 provisions of this section—

7 ‘‘(i) for not to exceed 5 years from the date of ex8 piration of the original patent term; or

9 ‘‘(ii) if the patent is subject to subsection

10 (g)(6)(C), from the date on which the product in11 volved receives approval for commercial marketing or

12 use.

13 ‘‘(F) The rights derived from any patent the term of

14 which is extended under this paragraph shall, during the

15 period of interim extension—

16 ‘‘(i) in the case of a patent which claims a prod17 uct, be limited to any use then under regulatory re18 view;

19 ‘‘(ii) in the case of a patent which claims a

20 method of using a product, be limited to any use

21 claimed by the patent then under regulatory review;

22 and

23 ‘‘(iii) in the case of a patent which claims a

24 method of manufacturing a product, be limited to the
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1 method of manufacturing as used to make the product

2 then under regulatory review.’’.

3 SEC. 6. CONFORMING AMENDMENTS.

4 Section 156 of title 35, United States Code, is amend5 ed—

6 (1) in subsection (a)—

7 (A) in paragraph (1) by striking ‘‘(d)’’ and

8 inserting ‘‘(d)(1)’’; and

9 (B) in paragraph (3) by striking ‘‘sub10 section (d)’’ and inserting ‘‘paragraphs (1)

11 through (4) of subsection (d)’’;

12 (2) in subsection (b) by striking ‘‘The rights’’

13 and inserting ‘‘Except as provided in subsection

14 (d)(5)(F), the rights’’; and

15 (3) in subsection (e)—

16 (A) in paragraph (1) by striking ‘‘sub17 section (d)’’ and inserting ‘‘paragraphs (1)

18 through (4) of subsection (d)’’; and

19 (B) in paragraph (2) by striking ‘‘(d)’’ and

20 inserting ‘‘(d)(1)’’.

21 SEC. 7. PATENT TERM EXTENSIONS FOR AMERICAN LE22 GION.

23 (a) BADGE OF AMERICAN LEGION.—The term of a cer24 tain design patent numbered 54,296 (for the badge of the

25 American Legion) is renewed and extended for a period of
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1 14 years beginning on the date of enactment of this Act,

2 with all the rights and privileges pertaining to such patent.

3 (b) BADGE OF AMERICAN LEGION WOMEN’S AUXIL4 IARY.—The term of a certain design patent numbered

5 55,398 (for the badge of the American Legion Women’s Aux6 iliary) is renewed and extended for a period of 14 years

7 beginning on the date of enactment of this Act, with all

8 the rights and privileges pertaining to such patent.

9 (c) BADGE OF SONS OF THE AMERICAN LEGION.—The

10 term of a certain design patent numbered 92,187 (for the

11 badge of the Sons of the American Legion) is renewed and

12 extended for a period of 14 years beginning on the date of

13 enactment of this Act, with all the rights and privileges per14 taining to such patent.

15 SEC. 8. INTERVENING RIGHTS.

16 The renewals and extensions of the patents under sec17 tion 6 shall not result in infringement of any such patent

18 on account of any use of the subject matter of the patent,

19 or substantial preparation for such use, which began after

20 the patent expired, but before the date of the enactment of

21 this Act.

Amend the title so as to read: ‘‘An Act to authorize

appropriations for the Patent and Trademark Office in
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the Department of Commerce for fiscal year 1994, and

for other purposes.’’.

Attest:

Clerk.