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

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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. The Extropians Mailing List, Since 1991