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 Michi-
gan, Mr. STEARNS, Mr. TIAHRT, Mr. TRAFICANT, Mr. WALSH, Mr.
WAMP, and Ms. WATERS) introduced the following bill; which was re-
ferred to the Committee on the Judiciary
A BILL
To restore the term of patents and to provide for the
publication of patent applications.
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 Restora-
tion Act of 1997’’.
SEC. 2. PATENT TERMS.
(a) AMENDMENT OF TITLE 35.—Effective on the
date of the enactment of this Act, section 154 of title 35,
United States Code, as amended by the Uruguay Round
Agreements Act, is amended—
(1) in paragraph (2) of subsection (a), by strik-
ing ‘‘and ending’’ and all that follows in that para-
graph and inserting ‘‘and ending—
‘‘(A) 17 years from the date of the grant
of the patent, or
‘‘(B) 20 years from the date on which the
application for the patent was filed in the
United States, except that if the application
contains a specific reference to an earlier filed
application or applications under section 120,
121, or 365(c) of this title, 20 years from the
date on which the earliest such patent applica-
tion was filed,
whichever is later.’’.
(2) in subsection (c)(1), by striking ‘‘shall be
the greater of the 20-year term as provided in sub-
section (a), or 17 years from grant’’ and inserting
‘‘shall be the term provided in subsection (a)’’.
(b) TECHNICAL AMENDMENT.—Section 534(b) of the
Uruguay Round Agreements Act is amended by striking
paragraph (3).
SEC. 3. DEFINITION OF SPECIAL CIRCUMSTANCES TO PRO-
TECT THE CONFIDENTIALITY STATUS OF AP-
PLICATIONS.
Section 122 of title 35, United States Code, is
amended by striking ‘‘as may be determined by the Com-
missioner’’ and inserting ‘‘as in any of the following:
‘‘(1) In the case of an application under section
111(a) for a patent for an invention for which the
applicant intends to file or has filed an application
for a patent in a foreign country, the Commissioner
may publish, at the discretion of the Commissioner
and by means determined suitable for the purpose,
no more than that data from such application under
section 111(a) which will be made or has been made
public in such foreign country. Such a publication
shall be made only after the date of the publication
in such foreign country.
‘‘(2)(A) If the Commissioner determines that a
patent application which is filed after the date of the
enactment of this paragraph—
‘‘(i) has been pending more than 5 years
from the effective filing date of the application,
‘‘(ii) has not been previously published by
the Patent and Trademark Office,
‘‘(iii) is not under any appellate review by
the Board of Patent Appeals and Interferences,
‘‘(iv) is not under interference proceedings
in accordance with section 135(a),
‘‘(v) is not under any secrecy order pursu-
ant to section 181,
‘‘(vi) is not being diligently pursued by the
applicant in accordance with this title, and
‘‘(vii) is not in abandonment,
the Commissioner shall notify the applicant of such
determination.
‘‘(B) An applicant which received notice of a
determination described in subparagraph (A) may,
within 30 days of receiving such notice, petition the
Commissioner to review the determination to verify
that subclauses (i) through (vii) are all applicable to
the applicant’s application. If the applicant makes
such a petition, the Commissioner shall not publish
the applicant’s application before the Commis-
sioner’s review of the petition is completed. If the
applicant does not submit a petition, the Commis-
sioner may publish the applicant’s application no
earlier than 90 days after giving such a notice.
‘‘(3) If after the date of the enactment of this
paragraph a continuing application has been filed
more than 6 months after the date of the initial fil-
ing of an application, the Commissioner shall notify
the applicant under such application. The Commis-
sioner shall establish a procedure for an applicant
which receives such a notice to demonstrate that the
purpose of the continuing application was for rea-
sons other than to achieve a delay in the time of
publication of the application. If the Commissioner
agrees with such a demonstration by the applicant,
the Commissioner shall not publish the applicant’s
application. If the Commissioner does not agree with
such a demonstration by the applicant or if the ap-
plicant does not make an attempt at such a dem-
onstration within a reasonable period of time as de-
termined by the Commissioner, the Commissioner
shall publish the applicant’s application.
The Commissioner shall ensure that publications under
paragraph (1), (2), or (3) will not result in third-party
pre-issuance oppositions which will delay or interfere with
the issuance of the patents whose applications’ data will
be published.’’.
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