182
HR 400 RS
SEC. 209. EFFECTIVE DATE.
(a) SECTIONS 202 THROUGH 207.—Sections 202
through 207, and the amendments made by such sections,
shall take effect on the date that is 1 year after the date
of enactment of this Act and shall apply to all applications
filed under section 111 of title 35, United States Code, on
or after that date, and all applications complying with sec-
tion 371 of title 35, United States Code, that resulted from
international applications filed on or after that date. The
amendment made by section 204 shall also apply to inter-
national applications designating the United States that
are filed on or after the date that is 1 year after the date
of enactment of this Act.
(b) SECTION 208.—The amendments made by section
208 shall take effect on the date of the enactment of this
Act and, except for a design patent application filed under
chapter 16 of title 35, United States Code, shall apply to
any application filed on or after June 8, 1995.
TITLE III—PATENT TERM
RESTORATION
SEC. 301. PATENT TERM RESTORATION AUTHORITY.
Section 154(b) of title 35, United States Code, is
amended to read as follows:
‘‘(b) ADJUSTMENT OF PATENT TERM.—
‘‘(1) BASIS FOR PATENT TERM RESTORATION.—
183
HR 400 RS
‘‘(A) DELAY.—Subject to the limitations
under paragraph (2), if the issue of an original
patent is delayed due to—
‘‘(i) a proceeding under section 135(a)
of this title;
‘‘(ii) the imposition of an order pursu-
ant to section 181 of this title;
‘‘(iii) appellate review by the Board of
Patent Appeals and Interferences or by a
Federal court where the patent was issued
pursuant to a decision in the review revers-
ing an adverse determination of patentabil-
ity; or
‘‘(iv) an unusual administrative delay
by the Patent Office in issuing the patent,
the term of the patent shall be adjusted for the
period of delay.
‘‘(B) ADMINISTRATIVE
DELAY.—For pur-
poses of subparagraph (A)(iv), an unusual ad-
ministrative delay by the Patent Office is the
failure to—
‘‘(i) make a notification of the rejection
of any claim for a patent or any objection
or argument under section 132 of this title
or give or mail a written notice of allow-
184
HR 400 RS
ance under section 151 of this title not later
than 14 months after the date on which the
application was filed;
‘‘(ii) respond to a reply under section
132 of this title or to an appeal taken under
section 134 of this title not later than 4
months after the date on which the reply
was filed or the appeal was taken;
‘‘(iii) act on an application not later
than 4 months after the date of a decision
by the Board of Patent Appeals and Inter-
ferences under section 134 or 135 of this
title or a decision by a Federal court under
section 141, 145, or 146 of this title where
allowable claims remain in an application;
‘‘(iv) issue a patent not later than 4
months after the date on which the issue fee
was paid under section 151 of this title and
all outstanding requirements were satisfied;
or
‘‘(v) issue a patent within 3 years after
the actual filing date of the application in
the United States, if the applicant—
185
HR 400 RS
‘‘(I) has not obtained further lim-
ited examination of the application
under section 132(b) of this title;
‘‘(II) has not benefited from an
adjustment of patent term under clause
(i), (ii), or (iii) or paragraph (1)(A);
‘‘(III) has not sought or obtained
appellate review by the Board of Pat-
ent Appeals and Interferences or by a
Federal court other than in a case in
which the patent was issued pursuant
to a decision in the review reversing an
adverse determination of patentability;
and
‘‘(IV) has not requested any delay
in the processing of the application by
the Patent Office.
‘‘(2) LIMITATIONS.—
‘‘(A) IN GENERAL.—The total duration of
any adjustments granted pursuant to either sub-
clause (iii) or (iv) of paragraph (1)(A) or both
such subclauses shall not exceed 10 years. To the
extent that periods of delay attributable to
grounds specified in paragraph (1) overlap, the
period of any adjustment granted under this sub-
186
HR 400 RS
section shall not exceed the actual number of
days the issuance of the patent was delayed.
‘‘(B) REDUCTION
OF
ADJUSTMENT.—The
period of adjustment of the term of a patent
under this subsection shall be reduced by a pe-
riod equal to the time in which the applicant
failed to engage in reasonable efforts to conclude
prosecution of the application. The Commis-
sioner shall prescribe regulations establishing the
circumstances that constitute a failure of an ap-
plicant to engage in reasonable efforts to con-
clude processing or examination of an applica-
tion.
‘‘(C) DISCLAIMED
TERM.—No patent the
term of which has been disclaimed beyond a
specified date may be adjusted under this section
beyond the expiration date specified in the dis-
claimer.
‘‘(D) APPLICANT DELAY.—The period of ad-
justment of the term of a patent under clause
(iv) of paragraph (1)(A), which is based on the
failure of the Patent Office to meet the criteria
set forth in clause (v) of paragraph (1)(B), shall
be reduced by the cumulative total of any periods
of time that an applicant takes to respond in ex-
187
HR 400 RS
cess of 3 months after the date on which the Pat-
ent Office makes any rejection, objection, argu-
ment, or other request, except that the Commis-
sioner, upon petition from the applicant in the
case of a nonprofit research laboratory or non-
profit entity such as a university, research cen-
ter, or hospital, shall reinstate all or part of such
time upon a showing of good cause by the appli-
cant, but in no case more than 3 additional
months for each such response beyond 3 months.
‘‘(3) PROCEDURES.—The Commissioner shall
prescribe regulations establishing procedures for the
notification of patent term extensions under this sub-
section and procedures for contesting patent term ex-
tensions under this subsection.
‘‘(4) NOTICE TO COMMISSIONER.—In a case in
which a patent term is adjusted under this subsection,
the Commissioner shall determine the period of any
patent term adjustment available under this section
and shall include a copy of that determination with
the final notice. The Commissioner shall prescribe
regulations establishing procedures for the application
for, and notification of, patent term adjustments
granted by the Commissioner under this subsection.
188
HR 400 RS
‘‘(5) JUDICIAL REVIEW.—Any applicant dissatis-
fied with a determination of the Commissioner under
paragraph (3) may have remedy by civil action in
the United States Court of Federal Claims if com-
menced within 180 days after the mailing of the no-
tice of allowance as the Commissioner appoints. The
initiation of a civil action under this section shall not
delay the issuance of a patent.’’.
SEC. 302. FURTHER EXAMINATION OF PATENT APPLICA-
TIONS.
Section 132 of title 35, United States Code, is amend-
ed—
(1) in the first sentence by striking ‘‘Whenever’’
and inserting ‘‘(a) Whenever’’; and
(2) by adding at the end the following:
‘‘(b) The Commissioner shall prescribe regulations to
provide for the further limited reexamination of applica-
tions for patent at the request of the applicant. The Com-
missioner may establish appropriate fees for such further
limited examination and shall be authorized to provide a
50 percent reduction on such fees for small entities that
qualify for reduced fees under section 41(h)(1) of this title.’’.
SEC. 303. TECHNICAL CLARIFICATION.
Section 156(a) of title 35, United States Code, is
amended—
189
HR 400 RS
(1) in the matter preceding paragraph (1) by in-
serting ‘‘, which shall include any patent term adjust-
ment granted under section 154(b),’’ after ‘‘the origi-
nal expiration date of the patent’’.
SEC. 304. EFFECTIVE DATE.
The amendments made by section 301 shall take effect
on the date of the enactment of this Act and, except for a
design patent application filed under chapter 16 of title 35,
United States Code, shall apply to any application filed
on or after June 8, 1995.
TITLE IV—PRIOR DOMESTIC
COMMERCIAL USE
SEC. 401. SHORT TITLE.
This title may be cited as the ‘‘Prior Domestic Com-
mercial Use Act of 1997’’.
SEC. 402. DEFENSE TO PATENT INFRINGEMENT BASED ON
PRIOR DOMESTIC COMMERCIAL USE.
(a) DEFENSE.—Chapter 28 of title 35, United States
Code, is amended by adding at the end the following new
section:
‘‘§ 273. Prior domestic commercial use; defense to in-
fringement
‘‘(a) DEFINITIONS.—For purposes of this section—
‘‘(1) the terms ‘commercially used’, ‘commer-
cially use’, and ‘commercial use’—
190
HR 400 RS
‘‘(A) mean the use in the United States in
commerce, use by the United States, or the use
in the design, testing, or production in the
United States of a product or service which is
used in commerce or used by the United States,
whether or not the subject matter at issue is ac-
cessible to or otherwise known to the public; and
‘‘(B) includes in the case of activities per-
formed by a nonprofit research laboratory, or
nonprofit entity such as a university, research
center, or hospital, a use for which the public is
the intended beneficiary shall be considered to be
a use described in subparagraph (A) except that
the use—
‘‘(i) may be asserted as a defense under
this section only for continued use by and
in the laboratory or nonprofit entity; and
‘‘(ii) may not be asserted as a defense
with respect to any subsequent commer-
cialization or use outside such laboratory or
nonprofit entity;
‘‘(2) the terms ‘used in commerce’, and ‘use in
commerce’ mean that there has been an actual arms-
length sale or other commercial transfer, or use by the
United States, of the subject matter at issue or that
191
HR 400 RS
there has been an actual arms-length sale or other
commercial transfer, or use by the United States, of
a product or service resulting from the use of the sub-
ject matter at issue; and
‘‘(3) the ‘effective filing date’ of a patent is the
earlier of the actual filing date of the application for
the patent or the filing date of any earlier United
States, foreign, or international application to which
the subject matter at issue is entitled under section
119, 120, or 365 of this title.
‘‘(b) DEFENSE TO INFRINGEMENT.—
‘‘(1) IN GENERAL.—A person shall not be liable
as an infringer under section 271 of this title, nor
shall the United States be held liable under section
1498(a) of title 28, with respect to any subject matter
that would otherwise infringe one or more claims in
the patent being asserted against such person, if such
person had, acting in good faith, commercially used
the subject matter before the effective filing date of
such patent.
‘‘(2) EXHAUSTION OF RIGHT.—The sale or other
disposition of the subject matter of a patent by a per-
son entitled to assert a defense under this section with
respect to that subject matter shall exhaust the patent
owner’s rights under the patent to the extent such
192
HR 400 RS
rights would have been exhausted had such sale or
other disposition been made by the patent owner.
‘‘(c) LIMITATIONS
AND
QUALIFICATIONS
OF
DE-
FENSE.—The defense to infringement under this section is
subject to the following:
‘‘(1) DERIVATION.—A person may not assert the
defense under this section if the subject matter on
which the defense is based was derived from the pat-
entee or persons in privity with the patentee.
‘‘(2) NOT A GENERAL LICENSE.—The defense as-
serted by a person under this section is not a general
license under all claims of the patent at issue, but ex-
tends only to the subject matter claimed in the patent
with respect to which the person can assert a defense
under this chapter, except that the defense shall also
extend to variations in the quantity or volume of use
of the claimed subject matter, and to improvements in
the claimed subject matter that do not infringe addi-
tional specifically claimed subject matter of the pat-
ent.
‘‘(3) EFFECTIVE AND SERIOUS PREPARATION.—
With respect to subject matter that cannot be commer-
cialized without a significant investment of time,
money, and effort, a person shall be deemed to have
commercially used the subject matter if—
193
HR 400 RS
‘‘(A) before the effective filing date of the
patent, the person reduced the subject matter to
practice in the United States, completed a sig-
nificant portion of the total investment necessary
to commercially use the subject matter, and
made an arms-length commercial transaction in
the United States in connection with the prepa-
ration to use the subject matter; and
‘‘(B) thereafter the person diligently com-
pleted the remainder of the activities and invest-
ments necessary to commercially use the subject
matter, and promptly began commercial use of
the subject matter, even if such activities were
conducted after the effective filing date of the
patent.
‘‘(4) BURDEN OF PROOF.—A person asserting the
defense under this section shall have the burden of es-
tablishing the defense.
‘‘(5) ABANDONMENT OF USE.—A person who has
abandoned commercial use of subject matter may not
rely on activities performed before the date of such
abandonment in establishing a defense under sub-
section (b) with respect to actions taken after the date
of such abandonment.
194
HR 400 RS
‘‘(6) PERSONAL
DEFENSE.—The defense under
this section may only be asserted by the person who
performed the acts necessary to establish the defense
and, except for any transfer to the patent owner, the
right to assert the defense shall not be licensed or as-
signed or transferred to another person except in con-
nection with the good faith assignment or transfer of
the entire enterprise or line of business to which the
defense relates.
‘‘(7) ONE-YEAR LIMITATION.—A person may not
assert a defense under this section unless the subject
matter on which the defense is based had been com-
mercially used or actually reduced to practice more
than one year prior to the effective filing date of the
patent by the person asserting the defense or someone
in privity with that person.
‘‘(d) UNSUCCESSFUL ASSERTION OF DEFENSE.—If the
defense under this section is pleaded by a person who is
found to infringe the patent and who subsequently fails to
demonstrate a reasonable basis for asserting the defense, the
court shall find the case exceptional for the purpose of
awarding attorney’s fees under section 285 of this title.
‘‘(e) INVALIDITY.—A patent shall not be deemed to be
invalid under section 102 or 103 of this title solely because
a defense is established under this section.’’.
195
HR 400 RS
(b) CONFORMING AMENDMENT.—The table of sections
at the beginning of chapter 28 of title 35, United States
Code, is amended by adding at the end the following new
item:
‘‘Sec. 273. Prior domestic commercial use; defense to infringement.’’.
SEC. 403. EFFECTIVE DATE AND APPLICABILITY.
This title and the amendments made by this title shall
take effect on the date of the enactment of this Act, but shall
not apply to any action for infringement that is pending
on such date of enactment or with respect to any subject
matter for which an adjudication of infringement, includ-
ing a consent judgment, has been made before such date of
enactment.
TITLE V—PATENT
REEXAMINATION REFORM
SEC. 501. SHORT TITLE.
This title may be cited as the ‘‘Patent Reexamination
Reform Act of 1997’’.
SEC. 502. DEFINITIONS.
Section 100 of title 35, United States Code, is amended
by adding at the end the following new subsection:
‘‘(e) The term ‘third-party requester’ means a person
requesting reexamination under section 302 of this title who
is not the patent owner.’’.
196
HR 400 RS
SEC. 503. REEXAMINATION PROCEDURES.
(a) REQUEST FOR REEXAMINATION.—Section 302 of
title 35, United States Code, is amended to read as follows:
‘‘§ 302. Request for reexamination
‘‘(a) IN GENERAL.—Any person at any time may file
a request for reexamination by the Office of a patent on
the basis of any prior art cited under the provisions of sec-
tion 301 of this title.
‘‘(b) REQUIREMENTS.—The request shall—
‘‘(1) be in writing, include the identity of the
real party in interest, and be accompanied by pay-
ment of a reexamination fee established by the Com-
missioner of Patents pursuant to the provisions of sec-
tion 41 of this title; and
‘‘(2) set forth the pertinency and manner of ap-
plying cited prior art to every claim for which reex-
amination is requested.
‘‘(c) COPY.—Unless the requesting person is the owner
of the patent, the Commissioner promptly shall send a copy
of the request to the owner of record of the patent.’’.
(b) DETERMINATION OF ISSUE BY COMMISSIONER.—
Section 303 of title 35, United States Code, is amended to
read as follows:
‘‘§ 303. Determination of issue by Commissioner
‘‘(a) REEXAMINATION.—Not later than 3 months after
the filing of a request for reexamination under the provi-
197
HR 400 RS
sions of section 302 of this title, the Commissioner shall de-
termine whether a substantial new question of patentability
affecting any claim of the patent concerned is raised by the
request, with or without consideration of other patents or
printed publications. On the Commissioner’s initiative, and
any time, the Commissioner may determine whether a sub-
stantial new question of patentability is raised by patents
and publications.
‘‘(b) RECORD.—A record of the Commissioner’s deter-
mination under subsection (a) shall be placed in the official
file of the patent, and a copy shall be promptly given or
mailed to the owner of record of the patent and to the third-
party requester, if any.
‘‘(c) FINAL DECISION.—A determination by the Com-
missioner pursuant to subsection (a) shall be final and non-
appealable. Upon a determination that no substantial new
question of patentability has been raised, the Commissioner
may refund a portion of the reexamination fee required
under section 302 of this title.’’.
(c) REEXAMINATION ORDER BY COMMISSIONER.—Sec-
tion 304 of title 35, United States Code, is amended to read
as follows:
‘‘§ 304. Reexamination order by Commissioner
‘‘If, in a determination made under the provisions of
section 303(a) of this title, the Commissioner finds that a
198
HR 400 RS
substantial new question of patentability affecting a claim
of a patent is raised, the determination shall include an
order for reexamination of the patent for resolution of the
question. The order may be accompanied by the initial ac-
tion of the Patent Office on the merits of the reexamination
conducted in accordance with section 305 of this title.’’.
(d) CONDUCT OF REEXAMINATION PROCEEDINGS.—
Section 305 of title 35, United States Code, is amended to
read as follows:
‘‘§ 305. Conduct of reexamination proceedings
‘‘(a) IN GENERAL.—Subject to subsection (b), reexam-
ination shall be conducted according to the procedures es-
tablished for initial examination under the provisions of
sections 132 and 133 of this title. In any reexamination
proceeding under this chapter, the patent owner shall be
permitted to propose any amendment to the patent and a
new claim or claims, except that no proposed amended or
new claim enlarging the scope of the claims of the patent
shall be permitted.
‘‘(b) RESPONSE.—(1) This subsection shall apply to
any reexamination proceeding in which the order for reex-
amination is based upon a request by a third-party re-
quester.
199
HR 400 RS
‘‘(2) With the exception of the reexamination request,
any document filed by either the patent owner or the third-
party requester shall be served on the other party.
‘‘(3) If the patent owner files a response to any Patent
Office action on the merits, the third-party requester shall
have 1 opportunity to file written comments within a rea-
sonable period not less than 1 month after the date of service
of the patent owner’s response. Written comments provided
under this paragraph shall be limited to issues covered by
the Patent Office action or the patent owner’s response.
‘‘(c) SPECIAL DISPATCH.—Unless otherwise provided
by the Commissioner for good cause, all reexamination pro-
ceedings under this section, including any appeal to the
Board of Patent Appeals and Interferences, shall be con-
ducted with special dispatch within the Office.’’.
(e) APPEAL.—Section 306 of title 35, United States
Code, is amended to read as follows:
‘‘§ 306. Appeal
‘‘(a) PATENT OWNER.—The patent owner involved in
a reexamination proceeding under this chapter—
‘‘(1) may appeal under the provisions of section
134 of this title, and may appeal under the provisions
of sections 141 through 144 of this title, with respect
to any decision adverse to the patentability of any
200
HR 400 RS
original or proposed amended or new claim of the
patent, and
‘‘(2) may be a party to any appeal taken by a
third-party requester pursuant to subsection (b) of
this section.
‘‘(b) THIRD-PARTY REQUESTER.—A third-party re-
quester may—
‘‘(1) appeal under the provisions of section 134
of this title, and may appeal under the provisions of
sections 141 through 144 of this title, with respect to
any final decision favorable to the patentability of
any original or proposed amended or new claim of
the patent; or
‘‘(2) be a party to any appeal taken by the pat-
ent owner, subject to subsection (c) of this section.
‘‘(c) PARTICIPATION AS PARTY.—
‘‘(1) IN
GENERAL.—A third-party requester
whose request for a reexamination results in an order
under section 304 of this title is estopped from assert-
ing at a later time, in any civil action arising in
whole or in part under section 1338 of title 28, the
invalidity of any claim determined to be patentable
on appeal on any ground which the third-party re-
quester raised or could have raised during the reex-
amination proceedings. This subsection does not pre-
201
HR 400 RS
vent the assertion of invalidity based on newly discov-
ered prior art unavailable to the third-party requester
and the Patent Office at the time of the reexamina-
tion proceedings.
‘‘(2) ELECTION TO PARTICIPATE.—A third-party
requester is deemed not to have participated as a
party to an appeal by the patent owner unless, not
later than 20 days after the patent owner has filed
notice of appeal, the third-party requester files notice
with the Commissioner electing to participate.’’.
(f) REEXAMINATION PROHIBITED.—
(1) IN GENERAL.—Chapter 30 of title 35, United
States Code, is amended by adding at the end the fol-
lowing new section:
‘‘§ 308. Reexamination prohibited
‘‘(a) ORDER FOR REEXAMINATION.—Notwithstanding
any provision of this chapter, once an order for reexamina-
tion of a patent has been issued under section 304 of this
title, neither the patent owner nor the third-party requester,
if any, nor privies of either, may file a subsequent request
for reexamination of the patent until a reexamination cer-
tificate is issued and published under section 307 of this
title, unless authorized by the Commissioner.
‘‘(b) FINAL DECISION.—Once a final decision has been
entered against a party in a civil action arising in whole
202
HR 400 RS
or in part under section 1338 of title 28 that the party
has not sustained its burden of proving the invalidity of
any patent claim in suit or if a final decision in a reexam-
ination proceeding instituted by a third-party requester is
favorable to a patentability of any original or proposed
amended as new claim of the patent and such decision is
not appealed by the third-party requester under section
306(b), then neither that party nor its privies may there-
after request reexamination of any such patent claim on
the basis of issues which that party or its privies raised
or could have raised in such civil action or reexamination
proceeding, and a reexamination requested by that party
or its privies on the basis of such issues may not thereafter
be maintained by the Office, notwithstanding any other
provision of this chapter. This subsection does not prevent
the assertion of invalidity based on newly discovered prior
art unavailable to the third-party requester and the Patent
Office at the time of the reexamination proceedings.’’.
(2) 
TECHNICAL
AND
CONFORMING
AMEND-
MENT.—The table of sections for chapter 30 of title
35, United States Code, is amended by adding at the
end the following:
‘‘308. Reexamination prohibited.’’.
203
HR 400 RS
SEC. 504. CONFORMING AMENDMENTS.
(a) PATENT FEES; PATENT SEARCH SYSTEMS.—Sec-
tion 41(a)(7) of title 35, United States Code, is amended
to read as follows:
‘‘(7) On filing each petition for the revival of an
unintentionally abandoned application for a patent,
for the unintentionally delayed payment of the fee for
issuing each patent, or for an unintentionally delayed
response by the patent owner in a reexamination pro-
ceeding, $1,250, unless the petition is filed under sec-
tions 133 or 151 of this title, in which case the fee
shall be $110.’’.
(b) APPEAL TO THE BOARD OF PATENT APPEALS AND
INTERFERENCES.—Section 134 of title 35, United States
Code, is amended to read as follows:
‘‘§ 134. Appeal to the Board of Patent Appeals and
Interferences
‘‘(a) PATENT APPLICANT.—An applicant for a patent,
any of whose claims has been twice rejected, may appeal
from the decision of the primary examiner to the Board
of Patent Appeals and Interferences, having once paid the
fee for such appeal.
‘‘(b) PATENT OWNER.—A patent owner in a reexam-
ination proceeding may appeal from the final rejection of
any claim by the primary examiner to the Board of Patent
204
HR 400 RS
Appeals and Interferences, having once paid the fee for such
appeal.
‘‘(c) THIRD-PARTY.—A third-party requester may ap-
peal to the Board of Patent Appeals and Interferences from
the final decision of the primary examiner favorable to the
patentability of any original or proposed amended or new
claim of a patent, having once paid the fee for such ap-
peal.’’.
(c) APPEAL TO COURT OF APPEALS FOR THE FEDERAL
CIRCUIT.—Section 141 of title 35, United States Code, is
amended by amending the first sentence to read as follows:
‘‘An applicant, a patent owner, or a third-party requester,
dissatisfied with the final decision in an appeal to the
Board of Patent Appeals and Interferences under section
134 of this title, may appeal the decision to the United
States Court of Appeals for the Federal Circuit.’’.
(d) PROCEEDINGS ON APPEAL.—Section 143 of title
35, United States Code, is amended by amending the third
sentence to read as follows: ‘‘In ex parte and reexamination
cases, the Commissioner shall submit to the court in writing
the grounds for the decision of the Patent Office, addressing
all the issues involved in the appeal.’’.
(e) CIVIL ACTION TO OBTAIN PATENT.—Section 145
of title 35, United States Code, is amended in the first sen-
tence by inserting ‘‘(a)’’ after ‘‘section 134’’.