I
104TH CONGRESS
1ST SESSION
H. R. 1733
To amend title 35, United States Code, to provide for early publication
of patent applications, to provide provisional rights for the period of
time between early publication and patent grant, and to provide a prior
art effect for published applications.
IN THE HOUSE OF REPRESENTATIVES
MAY 25, 1995
Mr. MOORHEAD (for himself and Mrs. SCHROEDER) introduced the following
bill; which was referred to the Committee on the Judiciary
A BILL
To amend title 35, United States Code, to provide for early
publication of patent applications, to provide provisional
rights for the period of time between early publication
and patent grant, and to provide a prior art effect for
published 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 Application
Publication Act of 1995’’.
SEC. 2. EARLY PUBLICATION.
Section 122 of title 35, United States Code, is
amended to read as follows:
‘‘§ 122. Confidential status of applications; publica-
tion of patent applications
‘‘(a) Except as provided in subsection (b), applica-
tions for patents shall be kept in confidence by the Patent
and Trademark Office and no information concerning the
same given without authority of the applicant or owner
unless necessary to carry out the provisions of any Act
of Congress or in such special circumstances as may be
determined by the Commissioner.
‘‘(b)(1) Subject to paragraph (2), each application for
patent, except applications for design patents under chap-
ter 16 of this title and provisional applications filed under
section 111(b) of this title, shall be published, in accord-
ance with procedures as determined by the Commissioner,
as soon as possible after the expiration of a period of 18
months from the earliest filing date for which a benefit
is sought under this title, except that an application that
is no longer pending shall not be published and an applica-
tion that is subject to a secrecy order pursuant to section
181 of this title shall not be published. An application may
be published earlier than the above date at the request
of the applicant. No information concerning published pat-
ent applications shall be made available to the public ex-
cept as the Commissioner shall determine. Notwithstand-
ing any other provision of law, a determination by the
Commissioner to release or not to release information con-
cerning a published patent application shall be final and
nonreviewable.
‘‘(2) Upon request, an application will not be pub-
lished in accordance with paragraph (1) until 3 months
after the Commissioner makes a notification to the appli-
cant under section 132 of this title. Applications filed pur-
suant to section 363 of this title, applications asserting
priority under section 119 or 365(a) of this title, and ap-
plications asserting the benefit of an earlier application
under section 120, 121, or 365(c) of this title shall not
be eligible for a request pursuant to this paragraph. Fur-
thermore, the applicant shall certify that the invention dis-
closed in the application was not or will not be the subject
of an application filed in a foreign country. A request
under this paragraph shall only be available to an inde-
pendent inventor who has been accorded status under sec-
tion 41(h) of this title. The Commissioner may establish
appropriate procedures and fees for a request in accord-
ance with this paragraph.’’.
SEC. 3. TIME FOR CLAIMING BENEFIT OF EARLIER FILING
DATE.
(a) IN A FOREIGN COUNTRY.—Section 119(b) of title
35, United States Code, is amended to read as follows:
‘‘(b) No application for patent shall be entitled to this
right of priority unless a claim therefor 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 at such time during the pendency
of the application as required by the Commissioner. The
Commissioner may consider the failure of the applicant
to file a timely claim for priority as a waiver of any such
claim. The certification of the original foreign application,
specification and drawings 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 trans-
lation of the papers filed if not in the English language
and such other information as he deems necessary.’’.
(b) IN THE UNITED STATES.—Section 120 of title
35, United States Code, is amended by adding at the end
thereof the following:
‘‘The Commissioner may determine the time period during
the pendency of the application within which an amend-
ment containing the specific reference to the earlier filed
application shall be submitted. The Commissioner may
consider the failure to timely submit such an amendment
as a waiver of any benefit under this section.’’.
SEC. 4. PROVISIONAL RIGHTS.
Section 154 of title 35, United States Code, is
amended by adding the following new subsection:
‘‘(d) PROVISIONAL RIGHTS.—In addition to other
rights provided by this section, a patent shall include the
right to obtain a reasonable royalty from any person who,
during the period from publication of the application for
such patent pursuant to section 122(b) of this title or from
international publication of an international application
designating the United States until issue of that patent—
‘‘(1)(A) makes, uses, offers for sale, or sells in
the United States the invention as claimed in the
published patent application or imports such an in-
vention into the United States; or
‘‘(B) if the invention as claimed in the pub-
lished patent application is a process, uses, offers for
sale, or sells in the United States or imports into the
United States products made by that process as
claimed in the published patent application; and
‘‘(2) had actual notice or knowledge of the pub-
lished patent application.
The right to obtain a reasonable royalty shall not be avail-
able under this subsection unless the invention claimed in
the patent is identical to the invention as claimed in the
published patent application. The right to obtain a reason-
able royalty based upon the international publication of
an international application designating the United States
shall commence from the date that the Patent and Trade-
mark Office receives a copy of the international publica-
tion of the international application, unless already com-
municated by the International Bureau, or, if the inter-
national publication of the international application is in
a language other than English, from the date that the Pat-
ent and Trademark Office makes a translation thereof
available to the public. The Commissioner may require the
applicant to provide a copy of the international publication
of the international application and a translation there-
of.’’.
SEC. 5. PRIOR ART EFFECT OF PUBLISHED APPLICATIONS.
Section 102(e) of title 35, United States Code, is
amended to read as follows:
‘‘(e) the invention was described in—
‘‘(1)(A) an application for patent, published
pursuant to section 122(b) of this title, by another
filed in the United States before the invention there-
of by the applicant for patent, or
‘‘(B) an international application, published
pursuant to section 122(b) of this title, by another
who has fulfilled the requirements of paragraphs (1),
(2), and (4) of section 371(c) of this title before the
invention thereof by applicant for patent, or
‘‘(2) a patent granted on an application for pat-
ent by another filed in the United States before the
invention thereof by the applicant for patent, or on
an international application by another who has ful-
filled the requirements of paragraphs (1), (2), and
(4) of section 371(c) of this title before the invention
thereof by the applicant for patent, or’’.
SEC. 6. COST RECOVERY FOR PUBLICATION.
The Commissioner shall recover the cost of early pub-
lication required by the amendment made by section 2 by
adjusting the filing, issue, and maintenance fees, by charg-
ing a separate publication fee, or by any combination of
these methods.
SEC. 7. CONFORMING CHANGES.
The following provisions of title 35, United States
Code, are amended:
(1) Section 11 is amended in subsection (a)(1)
by inserting ‘‘and published applications’’ after
‘‘Patents’’.
(2) Section 12 is amended by inserting ‘‘pub-
lished applications and’’ before ‘‘patents’’.
(3) Section 13 is amended by inserting ‘‘pub-
lished applications and’’ before ‘‘patents’’.
(4) The item relating to section 122 in the table
of sections for chapter 11 is amended by inserting
‘‘; publication of patent applications’’ after ‘‘applica-
tions’’.
(5) The item relating to section 154 in the table
of sections for chapter 14 is amended by inserting
‘‘; provisional rights’’ after ‘‘patent’’.
(6) Section 181 is amended—
(A) in the first paragraph by inserting ‘‘by
the publication of an application or’’ after ‘‘dis-
closure’’, and ‘‘the publication of an application
or’’ after ‘‘withhold’’;
(B) in the second paragraph by inserting
‘‘by the publication of an application or’’ after
‘‘disclosure of an invention’’;
(C) in the third paragraph by inserting
‘‘by the publication of the application or’’ after
‘‘disclosure of the invention’’, and ‘‘the publica-
tion of the application or’’ after ‘‘withhold’’;
and
(D) in the fourth paragraph by inserting
‘‘the publication of an application or’’ after
‘‘and’’ in the first sentence.
SEC. 8. PATENT TERM EXTENSION AUTHORITY.
Section 154(b) of title 35, United States Code, is
amended to read as follows:
‘‘(b) TERM EXTENSION.—
‘‘(1) BASIS FOR PATENT TERM EXTENSION.—
Subject to the limitations of paragraph (2) of this
subsection, if the issue of an original patent is de-
layed due to—
‘‘(A) a proceeding under section 135(a) of
this title,
‘‘(B) the imposition of an order pursuant
to section 181 of this title,
‘‘(C) appellate review by the Board of Pat-
ent Appeals and Interferences or by a Federal
court where the patent was issued pursuant to
a decision in the review reversing an adverse
determination of patentability, or
‘‘(D) an unusual administrative delay by
the Office in issuing the patent,
the term of the patent shall be extended for the pe-
riod of delay. The Commissioner shall prescribe reg-
ulations to govern the determination of the period of
delay and the particular circumstances deemed to be
an unusual administrative delay.
‘‘(2) LIMITATIONS.—
‘‘(A) MAXIMUM PERIOD OF EXTENSION.—
The total duration of all extensions of a patent
under this subsection shall not exceed 10 years.
To the extent that periods of delay attributable
to grounds specified in paragraph (1) overlap,
the period of any extension granted under this
subsection shall not exceed the actual number
of days the issuance of the patent was delayed.
‘‘(B) MINIMUM
PENDENCY
BEFORE
EX-
TENSION AVAILABLE.—No patent shall be ex-
tended under this section that has been issued
before the expiration of 3 years after the filing
date of the application leading to the patent or
the commencement of the national stage under
section 371 of this title, whichever is later, not
taking into account the benefit of any earlier
filed application or applications under section
120, 121, or 365(c) of this title.
‘‘(C) REASONABLE EFFORTS.—The period
of extension of the term of a patent under this
subsection shall be reduced by a period equal to
the time during the processing or examination
of the application leading to the patent in which
the applicant failed to engage in reasonable ef-
forts to conclude processing or examination of
the application. The Commissioner shall pre-
scribe 
regulations 
establishing 
the 
cir-
cumstances that constitute a failure of an appli-
cant to engage in reasonable efforts to conclude
processing or examination of an application.
‘‘(D) TERMINAL DISCLAIMER.—No patent
whose term has been disclaimed beyond a speci-
fied date may be extended under this section
beyond the expiration date specified in the dis-
claimer.’’.
SEC. 9. LAST DAY OF PENDENCY OF PROVISIONAL APPLI-
CATION.
Section 119(e) of title 35, United States Code, is
amended by adding the following at the end: ‘‘If the day
that is 12 months after the filing date of a provisional
application falls on a Saturday, Sunday, or Federal holi-
day within the District of Columbia, the period of pend-
ency of the provisional application shall be extended to the
next succeeding secular or business day.’’.
SEC. 10. EFFECTIVE DATE.
(a) SECTIONS 2 THROUGH 7.—Sections 2 through 7,
and the amendments made by such sections, shall take ef-
fect on January 1, 1996, and shall apply to all applica-
tions filed under section 111 of title 35, United States
Code, on or after that date, and all applications complying
with section 371 of title 35, United States Code, that re-
sulted from international applications filed on or after that
date. The amendment made by section 4 shall also apply
to international applications designating the United States
that are filed on or after January 1, 1996.
(b) SECTIONS 8 AND 9.—The amendments made by
sections 8 and 9 shall take effect on the date of the enact-
ment of this Act and shall apply to any application filed
on or after June 8, 1995.
Æ