I
103D CONGRESS
2D SESSION
H. R. 4505
To amend title 35, United States Code, to establish a 20-year patent term
from the date of filing and to establish a domestic priority system,
and for other purposes.
IN THE HOUSE OF REPRESENTATIVES
MAY 26, 1994
Mr. HUGHES (by request) introduced the following bill; which was referred to
the Committee on the Judiciary
A BILL
To amend title 35, United States Code, to establish a 20-
year patent term from the date of filing and to establish
a domestic priority system, and for other purposes.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘Patent Term Amend-
ment Act of 1994’’.
SEC. 2. PATENT TERM.
Section 154 of title 35, United States Code, is
amended to read as follows:
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‘‘§ 154 Contents and term of patent
‘‘(a) Every patent shall contain a short title of the
invention and a grant to the patentee, his heirs or assigns,
of the right to exclude others from making, using, or sell-
ing the invention throughout the United States and, if the
invention is a process, of the right to exclude others from
using or selling throughout the United States, or import-
ing into the United States, products made by that process,
referring to the specification for the particulars thereof.
Subject to the payment of fees as provided for in this title,
such grant shall be for a term beginning on the date on
which the patent issues and ending twenty years from the
date on which the application for the patent was filed in
the United States or, if the application contains a specific
reference to an earlier filed application or applications
under sections 120, 121 or 365(c) of this title, from the
date on which the earliest such application was filed. Pri-
ority under sections 119, 365(a) or 365(b) of this title
shall not be taken into account in determining the term
of a patent. A copy of the specification and drawings shall
be annexed to the patent and be a part thereof.
‘‘(b) Where the issuance of an original patent is de-
layed because of a proceeding under section 135(a) of this
title or the application is placed under an order pursuant
to section 181 of this title, the term of the patent shall
be extended for the period of delay up to five years. Any
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public use or on sale in this country more than one year
prior to such filing.
‘‘(b) No application for patent shall be entitled to a
right of priority under subsection (a) unless a claim there-
for and a certified copy of the original foreign application,
specification and drawings upon which it is based are filed
in the Patent and Trademark Office before the patent is
granted, or at such time during the pendency of the appli-
cation as required by the Commissioner not earlier than
six months after the filing of the application in this coun-
try. Such certification shall be made by the patent office
of the foreign country in which filed and show the date
of the application and of the filing of the specification and
other papers. The Commissioner may require a translation
of the papers filed if not in the English language and such
other information as he deems necessary.
‘‘(c) In like manner and subject to the same condi-
tions and requirements, the right provided under sub-
section (a) may be based upon a subsequent regularly filed
application in the same foreign country instead of the first
filed foreign application, provided that any foreign applica-
tion has been withdrawn, abandoned, or otherwise dis-
posed of, without having been laid open to public inspec-
tion and without leaving any rights outstanding, and has
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not served, nor thereafter shall serve, as a basis for claim-
ing a right of priority.
‘‘(d) Applications for inventor’s certificates filed in a
foreign country in which applicants have a right to apply,
at their discretion, either for a patent or for an inventor’s
certificate shall be treated in this country in the same
manner and have the same effect for purpose of the right
of priority under subsection (a) as applications for pat-
ents, subject to the same conditions and requirements of
this section as apply to applications for patents, provided
such applicants are entitled to the benefits of the Stock-
holm Revision of the Paris Convention at the time of such
filing.
‘‘(e) An application for patent filed under sections
111(a) or 363 of this title for an invention disclosed in
the manner provided by the first paragraph of section 112
of this title in a provisional application filed under section
111(b) of this title, by an inventor or inventors named
in the provisional application shall have the same effect,
as to such invention, as though filed on the date of the
provisional application filed under section 111(b) of this
title, if the application for patent filed under sections
111(a) or 363 of this title is filed within twelve months
from the date on which the provisional application was
filed and if it contains or is amended to contain a specific
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reference to the provisional application. A provisional ap-
plication filed under section 111(b) of this title may not
be relied upon in any proceeding in the Patent and Trade-
mark Office unless the fee set forth in subsections
41(a)(1) (A) or (C) has been paid and the provisional ap-
plication was pending on the filing date of the application
for patent under sections 111(a) or 363 of this title.’’.
(b) Section 41(a)(1) of title 35, United States Code,
is amended to include a new subparagraph c, as follows:
‘‘c. On filing each provisional application for an
original patent, $150.00.’’.
(c) Section 111 of title 35, United States Code, is
amended to read as follows:
‘‘§ 111 Application
‘‘(a) Application for patent shall be made, or author-
ized to be made, by the inventor, except as otherwise pro-
vided in this title, in writing to the Commissioner. Such
application shall include (1) a specification as prescribed
by section 112 of this title; (2) a drawing as prescribed
by section 113 of this title; and (3) an oath by the appli-
cant as prescribed by section 115 of this title. The applica-
tion must be accompanied by the fee required by law. The
fee and oath may be submitted after the specification and
any required drawing are submitted, within such period
and under such conditions, including the payment of a
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surcharge, as may be prescribed by the Commissioner.
Upon failure to submit the fee and oath within such pre-
scribed period, the application shall be regarded as aban-
doned, unless it is shown to the satisfaction of the Com-
missioner that the delay in submitting the fee and oath
was unavoidable or unintentional. The filing date of an
application shall be the date on which the specification and
any required drawing are received in the Patent and
Trademark Office.
‘‘(b)(1) A provisional application for patent shall be
made, or authorized to be made, by the inventor, in ac-
cordance with regulations prescribed by the Commissioner.
Such application shall include (A) a specification as pre-
scribed by the first paragraph of section 112 of this title;
and (B) a drawing as prescribed by section 113 of this
title. A claim shall not be required in a provisional applica-
tion. The application must be accompanied by the fee re-
quired by law. The fee may be submitted after the speci-
fication and any required drawing are submitted, within
such period and under such conditions, including the pay-
ment of a surcharge, as may be prescribed by the Commis-
sioner. Upon failure to submit the fee within such pre-
scribed period, the application shall be regarded as aban-
doned, unless it is shown to the satisfaction of the Com-
missioner that the delay in submitting the fee was un-
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avoidable or unintentional. The filing date of a provisional
application shall be the date on which the specification and
any required drawing are received in the Patent and
Trademark Office. The provisional application shall be re-
garded as abandoned twelve months after its filing date
and shall not be subject to revival thereafter. Subject to
all the conditions in this subsection, subsections 111(b)(2)
and 119(e) and as prescribed by the Commissioner, an ap-
plication for patent filed under section 111(a) of this title
may be treated as a provisional application for patent.
‘‘(2) A provisional application shall not be entitled to
the right of priority of any other application under sec-
tions 119 or 365(a) of this title or the benefit of an earlier
filing date in the United States under sections 120, 121
or 365(c) of this title.
‘‘(3) The provisions of this title relating to applica-
tions for patent shall be applicable to provisional applica-
tions for patent, except as otherwise provided and except
that provisional applications for patent shall not be subject
to sections 115, 131, 135 and 157 of this title.’’.
SEC. 4. CONFORMING CHANGES.
(a) The table of sections for chapter 11 of title 35,
United States Code, is amended in the item relating to
section 111 by deleting ‘‘for patent’’ and in the item relat-
ing to section 119 by deleting ‘‘in foreign country.’’
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(b) Section 156 of title 35, United States Code, is
amended by adding ‘‘under subsection (e)(1) of this sec-
tion’’ after ‘‘extended’’ in subsection (a)(2).
(c) Section 172 of title 35, United States Code, is
amended by changing ‘‘section 119’’ to ‘‘subsections
119(a) through 119(d)’’. Further, ‘‘The right of priority
provided for by subsection 119(e) of this title shall not
apply to designs.’’ has been added as a second sentence.
(d) Section 173 of title 35, United States Code, is
amended by adding ‘‘from the date of grant’’ after
‘‘years.’’
(e) Subsection 365(a) of title 35, United States Code,
is amended by changing ‘‘section 119’’ to ‘‘subsections
119(a) through 119(d)’’ and subsection 365(b) of title 35,
United States Code, is amended by changing ‘‘the first
paragraph of section 119’’ to ‘‘subsection 119(a).’’
(f) Subsection 373 of title 35, United States Code,
is amended by changing ‘‘section 119’’ to ‘‘subsections
119(a) through 119(d)’’.
SEC. 5. EFFECTIVE DATE.
Sections 2 through 4 shall take effect six months
from the date of enactment and shall apply to all applica-
tions filed in the United States on or after the effective
date. The term of a patent granted on a plant or utility
application that is filed after the effective date and that
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contains a specific reference to an earlier filed application
under the provisions of sections 120, 121 or 365(c) of title
35 shall be measured from the filing date of the earliest
filed application, a reference to which is made under sec-
tions 120, 121 or 365(c) of this title.