Forward/PATNEWS: Senate Bill 2272 - Prior use rights against infringement (fwd

["Harry S. Hawk" <habs@panix.com>]

a conscious being, Gregory Aharonian wrote:
>     What follows is another Senate Bill, 2272, this one dealing with prior
> rights and reexamination.  Thanks to Keith Stephens for sending it to me.

>     It seems to give people who have used a device before it was patented
> exemption from infringement.  Why a separate bill is needed for such rights
> is puzzling, since anyone sued for infringement can prove such prior use in
> public can therefore undermine the validity of the patent.  This could be part
> of the first-to-file movement.  Any thoughts?

> Greg Aharonian
> Internet Patent News Service

>                               ====================

> 103RD CONGRESS; 2ND SESSION
> IN THE SENATE OF THE UNITED STATES
> AS INTRODUCED IN THE SENATE
> S.  2272

> A BILL
> To amend chapter 28 of title 35, United States Code, to provide a defense
> to patent infringement based on prior use by certain persons, and for
>                              other purposes.

> DATE OF INTRODUCTION: JULY 1, 1994

> DATE OF VERSION: JULY 5, 1994         -- VERSION: 1

> SPONSOR(S):
> Mr. DECONCINI (for himself and Mr. BIDEN) introduced the following bill;
>    which was read twice and referred to the Committee on the Judiciary

> TEXT:
>                                  A BILL
> To amend chapter 28 of title 35, United States Code, to provide a defense
> to patent infringement based on prior use by certain persons, and for
>                              other purposes.

> *  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 Prior User Rights Act of 1994".

> SEC. 2. DEFENSE TO PATENT INFRINGEMENT BASED ON PRIOR USE.
>   (a) IN GENERAL.-CHAPTER 28 OF TITLE 35, UNITED STATES CODE, IS AMENDED
> BY ADDING AT THE END THEREOF THE FOLLOWING NEW SECTION:

> "273. Rights based on prior use; defense to infringement
>   "(a) DEFINITIONS.-FOR PURPOSES OF THIS SECTION, THE TERM-
>       "(1) 'COMMERCIALLY USED' MEANS THE USE IN INTERSTATE OR INTRASTATE
>     COMMERCE, INCLUDING THE USE OF PROCESSES, EQUIPMENT, TOOLING,  AND
>     INTERMEDIATE MATERIALS IN THE DESIGN, TESTING OR PRODUCTION OF
>     COMMERCIAL PRODUCTS WHETHER OR NOT SUCH PROCESSES, EQUIPMENT,
>     TOOLING, AND INTERMEDIATE MATERIALS ARE NORMALLY ACCESSIBLE,
>     AVAILABLE, OR OTHERWISE KNOWN TO THE PUBLIC;
>       "(2) 'EFFECTIVE AND SERIOUS PREPARATION' MEANS THAT A PERSON, IN
>     THE UNITED STATES, HAS-
>           "(A) REDUCED TO PRACTICE THE SUBJECT MATTER FOR WHICH RIGHTS
>         BASED ON PRIOR USE ARE CLAIMED; AND
>           "(B) MADE SERIOUS PLANS, AND A SUBSTANTIAL INVESTMENT OR MUCH
>         OF THE INVESTMENT NECESSARY FOR THE SUBJECT MATTER TO BE
>         COMMERCIALLY USED; AND
>       "(3) 'CRITICAL DATE' MEANS THE FILING DATE OR THE PRIORITY DATE,
>     WHICHEVER OCCURS FIRST, OF THE APPLICATION FOR PATENT.

>   "(B) IN GENERAL.-A PERSON SHALL NOT BE LIABLE AS AN INFRINGER UNDER A
> PATENT GRANTED TO ANOTHER WITH RESPECT TO ANY SUBJECT MATTER CLAIMED IN
> THE PATENT THAT SUCH PERSON HAD, ACTING IN GOOD FAITH, COMMERCIALLY USED
> IN THE UNITED STATES OR MADE EFFECTIVE AND SERIOUS PREPARATION THEREFOR
> IN THE UNITED STATES, BEFORE THE CRITICAL DATE.

>   "(C) LIMITATION OF DEFENSE.-SUBJECT TO SUBSECTION (D), RIGHTS BASED ON
> PRIOR USE UNDER THIS SECTION EXTEND ONLY TO THE CLAIMED INVENTION THAT
> THE PERSON CLAIMING RIGHTS BASED ON PRIOR USE WAS IN POSSESSION OF PRIOR
> TO THE CRITICAL DATE.

>   "(D) CERTAIN VARIATIONS AND IMPROVEMENTS NOT AN INFRINGEMENT.-THE
> RIGHTS BASED ON PRIOR USE UNDER THIS SECTION SHALL INCLUDE THE RIGHT TO
> MAKE AND USE VARIATIONS OR IMPROVEMENTS, INCLUDING VARIATIONS IN THE
> QUANTITY OR VOLUME OF SUCH USE. SUCH VARIATIONS OR IMPROVEMENTS MAY NOT
> INFRINGE ADDITIONAL CLAIMS OF THE PATENT.

>   "(E) QUALIFICATIONS.-(1) THE RIGHTS BASED ON PRIOR USE UNDER THIS
> SECTION ARE PERSONAL AND SHALL NOT BE LICENSED OR ASSIGNED OR TRANSFERRED
> TO ANOTHER EXCEPT IN CONNECTION WITH THE ASSIGNMENT OR TRANSFER OF THE
> ENTIRE BUSINESS OR ENTERPRISE TO WHICH THE RIGHTS RELATE.
>   "(2) A PERSON MAY NOT CLAIM RIGHTS BASED ON PRIOR USE UNDER THIS
> SECTION IF THE ACTIVITY UNDER WHICH SUCH PERSON CLAIMS THE RIGHTS WAS-
>       "(A) BASED ON INFORMATION OBTAINED OR DERIVED FROM THE PATENTEE OR
>     THOSE IN PRIVITY WITH THE PATENTEE; OR
>       "(B) ABANDONED ON OR AFTER THE CRITICAL DATE, EXCEPT THAT FOR
>     ABANDONMENT WHICH OCCURS AFTER THE CRITICAL DATE, RIGHTS BASED ON
>     PRIOR USE MAY BE USED AS A DEFENSE TO INFRINGEMENT FOR THAT PERIOD OF
>     ACTIVITY WHICH OCCURRED PRIOR TO ABANDONMENT IF SUCH ACTIVITY WOULD
>     OTHERWISE, IN THE ABSENCE OF ABANDONMENT, HAVE BEEN ALLOWED UNDER
>     THIS SECTION.
>   "(3) THE RIGHTS BASED ON PRIOR USE UNDER THIS SECTION ARE NOT A GENERAL
> LICENSE UNDER ALL CLAIMS OF THE PATENT, BUT ARE RESTRICTED IN SCOPE TO
> COVER ONLY THAT SUBJECT MATTER CLAIMED IN THE PATENT THAT HAS BEEN
> COMMERCIALLY USED, OR FOR WHICH THERE HAS BEEN EFFECTIVE AND SERIOUS
> PREPARATION, IN THE UNITED STATES, BEFORE THE CRITICAL DATE.

>   "(F) BURDEN OF PROOF.-In any action in which a person claims a defense
> to infringement under this section the burden of proof for establishing
> the defense shall be on the person claiming rights based on prior use.".

>   (b) TECHNICAL AND CONFORMING AMENDMENT.-THE TABLE OF SECTIONS FOR
> CHAPTER 28 OF TITLE 35, UNITED STATES CODE, IS AMENDED BY ADDING AT THE
> END THEREOF THE FOLLOWING:
> "273. Rights based on prior use; defense to infringement.".

> SEC. 3. EFFECTIVE DATE.

>   The provisions of this Act and the amendments made by this Act shall
> take effect on the date of the enactment of this Act.

-- 
Harry S. Hawk  				      habs@extropy.org
Electronic Communications Officer, Extropy Institute Inc. 
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