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. -------------------- 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 -------------------- 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.