The following Senate bill is under consideration. If you want to comment,
write to the Senate Subcommittee on Patents, Copyrights and Trademarks, Senate
Hart Office Building, Room 327, Washington, DC, 20510-6286, 202-224-8178.
Greg Aharonian
Internet Patent New Service
March 15, 1994
SENATE BILL S.1854
To amend the provisions of title 35, United States Code,
to provide for patent simplification.
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IN THE SENATE OF THE UNITED STATES
February 11, 1994
Mr. DeConcini introduced the following bill, which was read twice and
referred to the Committee on the Judiciary
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A BILL
To amend the provisions of title 35, United States Code,
to provide for patent simplification.
Be it enacted by the Senate and House of Representatives of the United
States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the "Patent Term and Publication Reform Act of
1994".
SECTION 2. PATENT SIMPLIFICATION
(a) DEFINITION. -- Section 100 of title 35, United States Code, is
amended by adding at the end thereof the following:
"(c) The term 'filing date' means the earliest of the actual
filing date or any priority date claimed by the applicant
under section 119, 120 or 365."
(b) CONDITIONS FOR PATENTABILITY; NOVELTY AND LOSS OF RIGHT TO PATENT. --
Section 102(e) of title 35, United States Code, is amended to read as
follows:
"(e) the invention was described in --
(1) a published patent application,
(2) a patent granted on an application for patent by
another filed in the United States before the
invention thereof by the applicant for patent, or
(3) in an international application that --
(A) is filed by another before the invention thereof
by the applicant for patent, and
(B) enters the national stage under section 371, or".
(c) BENEFIT OF EARLIER FILING DATE; RIGHT OF PRIORITY. --
(1) Section 119 of title 35, United States Code, is amended --
(A) in the section heading by striking out "in foreign country";
(B) by designating the first, second, third, and fourth undesignated
paragraphs as subsections (a), (c), (d), and (e), respectively; and
(C) by inserting after subsection (a) (as designated by subparagraph
(B) of this paragraph) the following new subsection:
"(b)(1) An application for patent for an invention described in
paragraph (2) that is filed by an inventor named in the previously
filed applications described under paragraph (2), shall have the
same effect, as to such invention, as if such application had been
filed on the filing date of the previously filed application, if
such application --
(A) is filed within one year after the filing date of the
previously filed application (or earlier priority date); and
(B)(i) contains a specific reference to the previously filed
application; or
(ii) within three months after the actual filing date of
such application, is amended to contain --
(I) a specific reference to the previously filed
application; or
(II) such other item as the Commissioner may prescribe.
(b)(2) An invention referred to under paragraph (1) is an
invention that is disclosed --
(A) in the specification as provided under section 112 is an
application filed in the United States before the application
described under paragraph (1) is filed; or
(B) as provided under section 363."
(2) The table of sections for chapter 11 of title 35, United States Code,
is amended in the item relating to section 119 by striking out "in foreign
country".
(d) BENEFIT OF EARLIER FILING DATE IN THE UNITED STATES. -- Section 120
of title 35, United States Code, is amended to read as follows:
"120. Benefit of earlier filing date in the United States
(a) An application for patent for an invention described under
subsection (b) that is filed by an inventor named in the previously
filed application described under subsection (b), shall have the
same effect, as to such invention, as if such application had been
filed on the filing date of the previously filed application, if
such application --
(1) is filed before the patenting, abandonment of, or
termination of proceedings on --
(A) the previously filed application; or
(B) an application similarly entitled to the benefit of
the filing date of the previously filed application;
(2) is not otherwise entitled to a priority right under section
119(b); and
(3)(A) contains a specific reference to the previously filed
application; or
(B) within fifteen months after the actual filing date of
such application, is amended to contain --
(i) a specific reference to the previously filed
application; or
(ii) such other item as the Commissioner may prescribe.
(b) An invention referred to under subsection (a) is an invention
that is disclosed --
(1) in the specification as provided under section 112 in an
application filed in the United States before the application
described under subsection (a) is filed; or
(2) as provided under section 363."
(e) OPENING OF PATENT APPLICATIONS; CONFIDENTIAL STATUS --
(1) Section 122 of title 35, United States Code, is amended to read as
follows:
"122. Opening of patent applications; confidential status.
(a) Except as provided under subsection (b), applications for
patents shall be kept in confidence by the Patent and Trademark
Office and no information concerning such applications may be
disclosed.
(b) On and after the date occurring 18 months after the filing
date of an application for patent (including all priority claims)
each application for patent shall be open to public inspection
and copies shall be made available to the public under such
procedures as may be determined by the Commissioner, except --
(1) an application may be made so available during such
18-month period if confidentiality is waived by the applicant;
and
(2) an application may be maintained in secrecy under any
order under chapter 17.
(c) The Commmissioner shall publish each patent application
promptly when open to public inspection under subsection (b)."
(2) The table of sections for chapter 11 of title 35, United States Code,
is amended by amending the item relating to section 122 to read as
follows:
"122. Opening of patent applications; confidential status."
(f) CONTENTS AND TERMS OF PATENT. -- Section 154 of title 35, United
States Code, is amended to read as follows:
"154. Contents and term of patent
(a)(1) Subject to paragraph (2), every patent shall contain --
(A) a short title of the invention;
(B) a grant to the patentee, and the heirs or assigns of the
patentee--
(i) for a term beginning on the date on which the patent
is issued and ending on a date 20 years from the date on
which the application for patent is filed in the United
States, excluding any claims of priority under section
119 or 365;
(ii) of the right to exclude others from making, using or
selling the invention throughout the United States or
importing the invention into the United States;
(iii) if the invention is a process, of the right to
exclude others from using or selling throughout the
United States, or importing into the United States,
products made by that process; and
(iv) that refers to the specification for the particulars
of the invention; and
(C) a copy of the specification and drawings which shall be
annexed to the patent and be a part of the patent.
(a)(2) The grant of a patent shall be subject to the payment of
fees as provided by this title.
(b)(1) In addition to the contents described under subsection (a),
the grant of a patent described under paragraph (2) shall
additionally include the right to obtain a reasonable royalty
from any other person who, during the period before the grant --
(A)(i) makes, uses, or sells the claimed invention in the
United States, or imports the claimed invention into the
United States; or
(ii) if the claimed invention is a process, uses or sells
throughout the United States or imports into the United States
products made by that process; and
(B) had actual knowledge of the published application.
(b)(2) Paragraph (1) applies to any patent --
(A) that is granted based on an application published under
section 122(c) before such patent is granted; and
(B) to the extent the patent claims in the issued patent are
substantially identical with the claims in such published
application."
(g) TERM OF DESIGN PATENT. - Section 173 of title 35, United States
Code, is amended by striking out "fourteen years." and inserting in lieu
thereof "seventeen years from the filing date, as determined under
section 154(a) of this title.".
SECTION 3. EFFECTIVE DATE AND APPLICABILITY
The provision of this Act and the amendments made by this Act shall take
effect 90 days after the date of the enactment of this Act and shall apply
only to applications filed on and after such effective date.
