H. R. 5120
IN THE HOUSE OF REPRESENTATIVES
April 6, 2006
Mr. Jenkins (for himself, Mr. Delahunt, Mr. Duncan, and Mr. Meehan) introduced the following bill; which was referred to the Committee on the Judiciary
To amend title 35, United States Code, to conform certain filing provisions within the Patent and Trademark Office.
The Congress finds the following:
The Congress historically has provided vigorous support for innovation in the useful arts by establishing a system of patent protection for products and processes.
Through section 156 of title 35, United States Code, the Congress sought to promote the development of innovative drugs by granting patent term restoration to companies to recover a portion of the patent term for such drugs that was consumed during the approval process conducted by the Food and Drug Administration.
Consistent with the historic purpose of promoting innovation, patent legislation, and subsequent rules promulgated by the United States Patent and Trademark Office (PTO), have routinely given the PTO wide discretion to excuse late filings and other mistakes that might otherwise result in the forfeiture of underlying patent rights.
Contrary to this routine practice, however, under section 156 of title 35, United States Code, the PTO has no discretion to excuse a filing that is even one day late.
In order to be consistent with the intent of protecting patent rights and promoting further innovation, the PTO should be granted limited, circumscribed discretion to consider patent term restoration applications filed in an untimely manner.
Filing of applications for extensions of a patent term
Section 156 of title 35, United States Code, is amended by adding at the end the following new subsection:
The Director may accept an application under this section that is filed not later than 5 days after the expiration of the 60-day period provided in subsection (d)(1) if the applicant files a petition showing, to the satisfaction of the Director, that the delay in filing the application was unintentional. Such petition must be filed with the application in the case of an application filed on or after the date of the enactment of this subsection and must be filed not later than 5 days after such date of enactment in the case of an application which, on such date of enactment, is pending, is the subject of a request for reconsideration of a denial of a patent term extension under this section, or has been denied a patent term extension under this section in a case in which the period for seeking reconsideration of such denial has not yet expired. The Director shall make a determination on a petition under this subsection not later than 30 days after the date on which the petition is received. If no determination has been made on the petition within that 30-day period, the petition shall be deemed to be denied.
Section 41(a)(7) of title 35, United States Code, is amended—
or for an and inserting
for an; and
by inserting after
reexamination proceeding, the following:
or for an unintentionally delayed application for patent term extension,.
The amendments made by this section shall take effect on the date of the enactment of this Act, and shall apply to any application for patent term extension under section 156 of title 35, United States Code, which—
is filed on or after the date of the enactment of this Act; or
on such date of enactment—
is the subject of a request for reconsideration of a denial of a patent term extension under section 156; or
has been denied a patent term extension under such section 156 in a case in which the period for seeking reconsideration of such denial has not yet expired.