Patent Act

(Reported to Senate from the Committee on the Judiciary with amendment, S. Rept. 94-642)

Patent Act - Continues the Patent and Trademark Office as a quasi-independent agency within the Department of Commerce, whose chief administrative officer shall be the Commissioner of Patents and Trademarks. Establishes a Solicitor in such Office to perform legal functions requested by the Commissioner, and to defend appeals pending before the Board of Examiners-in-Chief. Directs the Commissioner to prescribe regulations governing the participation of present or former employees of the Office in the preparation or prosecution of applications for patent.

Establishes a board of not more than 60 examiners-in-chief, which shall review final rejections by primary examiners.

Requires the Commissioner to publish the specifications and drawings of patents, patent applications, and certificates of trademark registrations.

Provides that any party to a proceeding before the Board of Examiners-in-Chief may apply to the Board or any member for subpenas or discovery orders to provide testimony, depositions, or other information, and the Board or any member shall issue the same ex parte. Permits the Board or any member in carrying out its functions relating to fraud or inequitable conduct, to issue a subpena or order to any applicant, patentee, or person, requiring testimony or other evidence.

States that a patent application or application for trademark registration shall be considered as having been filed in the Office on the date that it would have been received by the Office except for any delay caused by a substantial interruption of the postal service.

Authorizes the Commissioner to prescribe regulations governing the recognition and conduct of attorneys before the Office, and for suspension from practice before the Office.

Defines what services will be included for fees charged by the Office for patent and trademark examination. Limits the combined filing, examination, and insurance fee for the individual inventors and small businesses to $100, and for all other applicants to $200. Sets forth maintenance fee requirements.

Provides that whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or any new and useful improvement thereof, or his successor in title, may obtain a patent therefor.

Provides that the applicant who files earliest is entitled to the patent in cases of competing claims.

Prescribes procedures for application for patent. Requires that a specification be filed which describes the subject matter sought to be patented and the novel properties or results on which the applicant will rely in seeking the patent.

Requires that the inventor, the applicant, any person to whom the inventor or applicant is under any obligation to assign the application, and each of the agents or attorneys who directly or through any agent prepare or prosecute the application have a duty to act with candor and good faith toward the Office, a duty to make reasonable inquiry as to information in their respective possession or control, and a duty to disclose to the Office all information they respectively know, the disclosure of which is necessary to make the application as a whole not misleading.

Requires the Commissioner to examine applications for patents and of the subject matter thereof. Sets forth procedures for examination proceedings. Allows an appeal of a final rejection to the Board of Examiners-in-Chief. Prescribes procedures for proceedings in opposition to the grant of a patent, and for proceedings in cases of competing applicants. Sets forth conditions in which decisions of the Office and of the Board may be appealed to the Court of Customs and Patent Appeals and to the District Court for the District of Columbia.

Provides that every patent shall contain a grant to the applicant, his heirs or assigns, or to the inventor, his heirs or assigns of the right, for a term of 20 years, to exclude others from making, using, or selling the patented subject matter throughout the United States.

Permits grant of a patent to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant, and to anyone who invents any new, original, and ornamental design for an article of manufacture.

States that whenever the publication or disclosure of subject matter described in an application for patent might, in the opinion of the Commissioner, be detrimental to the national security, the Commissioner shall make the application for patent in which subject matter is disclosed available for inspection to the Administrator of the Energy Research and Development Administration and the Secretary of Defense.

Provides that an applicant, or patentee, or his legal representative, whose patent is withheld, shall have the right, where except for such order, his application is otherwise in condition for allowance, to apply to the head of any department or agency who caused the order to be issued for compensation for the damage caused by the order of secrecy and/or for the use of such subject matter by the Government resulting from his disclosure.

Provides that the examination of an application for patent, or a prior art search, shall be deferred unless the applicant requests immediate examination or search and pays the prescribed fee.

Sets forth provisions relating to the amendment, correction, and reissue of patents.

Provides patents shall have the attributes of personal property. States that applications for patent, patents, or any interest therein, shall be assignable in law by any person by an instrument in writing, and that the applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

Provides that whoever without authority makes, uses, or sells any patented subject matter, within the United States after the issuance of the patent therefor and during its term, infringes the patent.

Grants a patentee remedy by civil action for infringement of his patent. Sets forth defenses to infringement actions, and prescribes procedures for such actions. Grants compensatory damages to owners of infringed patents, which shall be no less than a reasonable royalty for the use made of the patent. Requires that patented articles and processes be so marked if the owner is to recover damages for infringement (unless the infringer knowingly continued his infringement).

Permits parties to an existing dispute as to patent validity or infringement to settle such dispute by arbitration. Sets forth conditions under which, and procedures by which, a licensee of a patent may assert the invalidity of a patent.

Directs the Office to act as a Receiving Office for international applications filed by nationals or residents of the United States, and in accordance with any agreement made between the United States and another country, to also act as a Receiving Office for international applications filed by residents or nationals of such country who are entitled to file international applications.

States that receipt, under the Patent Cooperation Treaty, from the International Bureau of copies of international applications with amendments to the claims, if any, and international search reports is required in the case of all international applications designating the United States, except those filed in the Office.

Provides that all questions of substance and, within the scope of the requirements of the treaty and the Regulations, procedure in an international application designating the United States shall be determined as in the case of national applications regularly filed in the Office.

Provides that a patent based on an international application designating the United States, has the force and effect of a patent issued on a regularly filed national application.

Provides, under the Trademark Act of 1946, that the Commissioner shall prescribe trademark fees, and shall make rules and regulations for the conduct of proceedings.

Directs the Secretary of Commerce and the Secretary of Labor to jointly conduct a full and complete study and investigation, and report to Congress thereon, of the extent to which existing practices including customary employment contracts, and existing applicable laws, provide adequate incentive to innovations by, and adequately protect the interests of, professional, scientific and technical personnel, and others employed by private corporations, in connection with their inventions.