Patent Reform: Overview and Comparison of S. 507 and H.R. 400

Publication Date: August 1998

Publisher: Library of Congress. Congressional Research Service

Author(s):

Research Area: Law and ethics

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Abstract:

The pending omnibus patent reform bills (S. 507 and H.R. 400) would reorganize the Patent and Trademark Office (PTO) as a government corporation and enact several other patent law reforms including early publication (with exceptions) and patent term restoration. S. 507 consists of six titles; H.R. 400 contains five titles.

As originally introduced, S. 507 and H.R. 400 were nearly identical, except that S. 507 omitted the title concerning regulation of fraudulent practices relating to invention promotion services.

H.R. 400 passed the House of Representatives in amended form on April 23, 1997. The House bill was amended at each stage of legislative consideration. S. 507 was reported by the Senate Judiciary Committee on May 22, 1997.

The principal differences between S. 507 and the House-passed version of H.R. 400 are: 1) the patent re-examination title appears only in the Senate bill; 2) the enhanced protection of inventors’ rights title appears only in the House bill; 3) both bills generally require publication of patent applications at 18 months after filing, except that H.R. 400 generally exempts small businesses, independent inventors, and universities from publication before patent issuance and S. 507 permits any inventor who does not file for foreign patents to request a delay in publication until three months after the first Patent and Trademark Office action on the application; 4) both bills establish the PTO as a government corporation, but H.R. 400 provides that the PTO is subject to the policy direction of the Commerce Department (and the bill creates a new Under Secretary of Commerce for Intellectual Property) whereas S. 507 provides the PTO is "under the policy direction of the Secretary of Commerce" without creating a new policy position in Commerce; and 5) H.R. 400 contains miscellaneous provisions concerning divisional applications and publication of PTO procurement contracts not found in S. 507.

The substantive provisions of S. 507 and H.R. 400 are essentially the same with respect to the prior domestic commercial use defense (except that H.R. 400 expands the scope of the defense to include prior "research" users); patent term extension or restoration for unusual administrative delays and other specified reasons; and the miscellaneous patent changes relating to provisional application priority date, priority date for foreign plant breeder’s rights, elimination of the prohibition against patenting tuber propagated plants, and electronic filing with the PTO. Both bills are also in agreement on early publication at 18 months after filing for larger entities who file for foreign patents, but differ in their treatment of early publication by independent inventors, small business entities, and universities.

This report reviews the background of the major patent reform issues and summarizes and compares the main provisions of S. 507 with H.R. 400 as it passed the House of Representatives. It will be updated as legislative events warrant.