[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[S. 298 Reported in Senate (RS)]
Calendar No. 128
103d CONGRESS
1st Session
S. 298
[Report No. 103-82]
_______________________________________________________________________
A BILL
To amend title 35, United States Code, with respect to patents on
certain processes.
_______________________________________________________________________
July 1 (legislative day, June 30), 1993
Reported without amendment
Calendar No. 128
103d CONGRESS
1st Session
S. 298
[Report No. 103-82]
To amend title 35, United States Code, with respect to patents on
certain processes.
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
February 3 (legislative day, January 5), 1993
Mr. DeConcini (for himself, Mr. Hatch, Mr. Heflin, Mr. Kennedy, Mr.
Kohl, Mr. Lautenberg, Mr. Specter, Mr. Grassley, Mr. Brown, Mr.
Domenici, and Mrs. Feinstein) introduced the following bill; which was
read twice and referred to the Committee on the Judiciary
July 1 (legislative day, June 30), 1993
Reported by Mr. Biden, without amendment
_______________________________________________________________________
A BILL
To amend title 35, United States Code, with respect to patents on
certain processes.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
TITLE I--BIOTECHNOLOGICAL PROCESS PATENTS
SEC. 101. CONDITIONS FOR PATENTABILITY; NONOBVIOUS SUBJECT MATTER.
Section 103 of title 35, United States Code, is amended--
(1) in the first unnumbered paragraph by inserting ``(a)''
before ``A patent'';
(2) in the second unnumbered paragraph by inserting ``(b)''
before ``Subject matter''; and
(3) by adding at the end thereof the following new
subsections:
``(c) Notwithstanding any other provision of this section, a
claimed process of making or using a machine, manufacture, or
composition of matter is not obvious under this section if--
``(1) the machine, manufacture, or composition of matter is
novel under section 102 of this title and nonobvious under this
section;
``(2) the claimed process is a biotechnological process as
defined in subsection (d); and
``(3)(A) the machine, manufacture, or composition of
matter, and the claimed process invention at the time it was
made, were owned by the same person or subject to an obligation
of assignment to the same person; and
``(B) claims to the process and to the machine,
manufacture, or composition of matter--
``(i) are entitled to the same effective filing
date; and
``(ii) appear in the same patent application,
different patent applications, or patent which is owned
by the same person and which expires or is set to
expire on the same date.
``(d) For purposes of this section, the term `biotechnological
process' means any method of making or using living organisms, or parts
thereof, for the purpose of making or modifying products. Such term
includes recombinant DNA, recombinant RNA, cell fusion including
hybridoma techniques, and other processes involving site specific
manipulation of genetic material.''.
SEC. 102. NO PRESUMPTION OF INVALIDITY.
The first unnumbered paragraph of section 282 of title 35, United
States Code, is amended by inserting after the second sentence ``A
claim issued under the provisions of section 103(c) of this title on a
process of making or using a machine, manufacture, or composition of
matter shall not be held invalid under section 103 of this title solely
because the machine, manufacture, or composition of matter is
determined to lack novelty under section 102 of this title or to be
obvious under section 103 of this title.''.
SEC. 103. EFFECTIVE DATE.
The amendments made by this title shall apply to all United States
patents granted on or after the date of the enactment of this Act and
to all applications for United States patents pending on or filed after
such date of enactment, including any application for the reissuance of
a patent.
TITLE II--BIOTECHNOLOGICAL MATERIAL PATENTS
SEC. 201. INFRINGEMENT BY IMPORTATION, SALE OR USE.
(a) Infringement.--Section 271 of title 35, United States Code, is
amended by adding at the end the following new subsection:
``(h) Whoever without authority imports into the United States or
sells or uses within the United States a product which is made by using
a biotechnological material (as defined under section 154(b)) which is
patented in the United States shall be liable as an infringer if the
importation, sale, or use of the product occurs during the term of such
patent.''.
(b) Contents and Term Patent.--Section 154 of title 35, United
States Code, is amended--
(1) by inserting ``(a)'' before ``Every'';
(2) by striking out ``in this title,'' and inserting in
lieu thereof ``in this title (1)'';
(3) by striking out ``and, if the invention'' and inserting
``(2) if the invention'';
(4) by inserting after ``products made by that process,''
the following: ``and (3) if the invention is a biotechnological
material used in making a product, of the right to exclude
others from using or selling throughout the United States, or
importing into the United States the product made or using such
biotechnological material,''; and
(5) by adding at the end thereof the following:
``(b) For purposes of this section, the term `biotechnological
material' is defined as any material (including a host cell, DNA
sequence, or vector) that is used in a biotechnological process as
defined under section 103(d).''.
(c) Effective Date.--
(1) In general.--The amendment made by this section shall
take effect six months after the date of enactment of this Act
and, subject to paragraph (2), shall apply only with respect to
products made or imported after the effective date of the
amendments made by this section.
(2) Exceptions.--The amendments made by this section shall
not abridge or affect the right of any person, or any successor
to the business of such person--
(A) to continue to use, sell, or import products in
substantial and continuous sale or use by such person
in the United States on the date of enactment of this
Act; or
(B) to continue to use, sell, or import products
for which substantial preparation by such person for
such sale or use was made before such date, to the
extent equitable for the protection of commercial
investment made or business commenced in the United
States before such date.