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CONGRESSIONAL RECORD— Extensions of Remarks E 1680 E 1680 CONGRESSIONAL RECORD Ð Extensions of Remarks August 5, 1995 The towns of Durham, Newmarket, and Lee ufacturing process used to make a commercial use would be misused and weaken legitimate have all expressed vigorous support for the in- product or software used to control such a patents issued to persons who are undisputed clusion of the river in the program. Although process. For such cases, there is no statutory first inventors. The university community was the portion of the Lamprey in the town of Ep- or case law that makes clear what should hap- particularly concerned that such a law might ping was included in the study and deemed el- pen if the holder of such a patent sues the impair their opportunity to license their inven- igible for inclusion in the program, the town earlier practioner for infringement. Is the pat- tions. This bill introduced today has been has opted not to vote on designation at this ent enforceable against the earlier practi- carefully crafted to prevent such an outcome. time but may seek designation for its portion tioner? Some attorneys predict the patentee As a result of its limitations, this bill will not af- of the river at some point in the future. will prevail because the invention was not pub- fect the vast majority of patents. The only pat- The management of the Lamprey will be licly disclosed. Other predict the patent will be ents that will be affected are those patents based on the locally-developed river manage- found unenforceable against the earlier practi- written on internal software, processes, or ment plan. The plan emphasizes the impor- tioner. tools which were already being used by others tance of both individual responsibility to At present the court's only option is a find- for public benefit. For those questionable pat- ``Tread Lightly'' and of local zoning laws and ing of either infringement or invalidation. One ents, this bill promotes sound public policy by public education. Federal acquisition of land party must lose everything. Yet in these cir- recognizing the public contribution made by by condemnation is prohibited. In essence this cumstances, each party has created some both parties. plan will insure that local concerns and inter- public benefit; the first by bringing the fruits of By providing a specific defense for this lim- ests are the basis for the management of the the invention to the public, the second by dis- ited class of inventions, this bill will make long river. The State of New Hampshire will con- closing the invention to the public. Fairness and expensive infringement or invalidation liti- tinue to be involved in the management of the suggests that neither party deserves to lose gation unnecessary. Moreover, some very river, as it has since the river was included in everything. Thus present law confronts us with strict limitations must be met before the de- the State's River Protection Program in 1988. a quandary. It provides only for a ``winner take fense can be used. First, the earlier use of the Additionally, the National Park Service will all'' outcome and it does not make clear who invention must have been commercial and the continue to offer its assistance to the Lamprey the winner should be. public must have benefited from that commer- River Advisory Committee as it is needed. Earlier attempts to resolve this issue have cial use. Simply making an invention and even In closing, there has been a great deal of met with opposition from those who believe reducing it to practice are insufficient grounds discussion here in Washington on the issue of that inventors have an obligation to disclose or for the defense. Second, the commercial use what the Federal Government's role should be patent every innovation. For inventors who fail and public benefit must have occurred more when it comes to the protection of our natural to do so, these opponents presumably believe than one year prior to the priority date of the resources. The local, State, Federal partner- that their inventions should be taken away patent. Third, the defense will not be available ship that has developed in relation to the Lam- from them by others who come along later where the commercial use has been termi- prey River is a perfect example of the direc- and file patents on the same material. nated and abandoned. Forth, the patentee or tion we must head in; namely, an emphasis on Mr. Speaker, anyone who has worked in in- the patentee's work must not have been the local input and control, with State and Federal dustry or built a manufacturing business source of the user's technology. Fifth, the agencies working to assist and provide infor- knows that there are any number of reasons commercial use must have occurred on Amer- mation and expertise where appropriate. why one might not secure a patent one very ican soil. Sixth, the defense is not a license I am very proud to submit this legislation at invention. Once issued, an American patent under the patent nor is it a defense against the request of my constituents in Lee, tells the whole world how to copy the inven- the entire patent. It is a defense only for the Newmarket, and Durham, NH, as well as for tion. Manufacturers fear that inventions relat- subject matter that can be proved to have the scores of people who use the Lamprey ing to internal processes are almost impos- been used commercially before the filing date. River for the recreational and educational op- sible to police and protect in many other coun- Seventh, the burden of proof falls entirely on portunities it offers. I am also very pleased to tries. Then too, small investors may be unable the prior commercial user. Eighth, the defense see the circle completed, having initiated both to afford the costs of obtaining even a U.S. is personal, it cannot be transferred to an- the legislation to study the river and today's patent on every invention, much less world other. Finally, sanctions are provided to dis- legislation to include the studied portion of the wide protection. It is also true that in many courage a frivolous defense. Lamprey in Lee, Newmarket, and Durham in cases, the inventor does not realize that what This bill will create for American manufactur- the Wild & Scenic program. I am grateful that seemed like just an innovation was indeed a ers the same protection that their overseas the citizens of New Hampshire have given me patentable invention. In any case, a serious competitors already have. It is a domestic bill this opportunity. problem arises when a later inventor, and that that removes some of the incentives now en- f later inventor need not be an American, joyed by offshore manufacturing. In addition, comes along and independently inverts the considerations of fairness, public policy, and THE PRIOR DOMESTIC same process, tool, or software that the earlier the need to make America more competitive in COMMERCIAL USE ACT OF 1995 innovator has been using. This later inventor the international economy all strongly support can apply for a U.S. patent. If the earlier inno- this legislation. HON. CARLOS J. MOORHEAD vator did not publish the innovation, the Patent Mr. Speaker, I am hopeful that all concerns OF CALIFORNIA Office may not know of it and the later inven- about this legislation have been resolved and IN THE HOUSE OF REPRESENTATIVES tor might actually receive a patent on the inno- that this bill can become enacted this year. vation. This situation gives rise to the question Friday, August 4, 1995 f of whether or not that patent is or ought to be Mr. MOORHEAD. Mr. Speaker, I introduce valid and whether or not it may be enforced TIME FOR TOUGH ACTION ON TER- the Prior Domestic Commercial Use Act of against the earlier innovator. RORISMÐTHE UNITED STATES 1995. It is the product of many months of hard We also should not assume that all of these MUST NEVER YIELD TO TERROR- work and represents a compromise that I be- later inventors have been operating in good IST THREATS lieve will be acceptable to all interested par- faith. In these days of growing industrial espio- ties. nage, it is possible that the later inventor sim- HON. TOM LANTOS This bill is about patents. It is about inven- ply patented the product or process by means OF CALIFORNIA tions that have already been in commercial of reverse engineering or by looking through a IN THE HOUSE OF REPRESENTATIVES use and benefiting the public before another factory window. I have seen U.S. patents is- inventor comes later and applies for a patent. sued to foreign companies who appear to Friday, August 4, 1995 Normally inventions already in use are what have reverse engineered American products Mr. LANTOS. Mr. Speaker, earlier this week is called prior art and in most circumstances and patented the method of manufacture. The our Government barred the entry into the Unit- issuing from subsequent applications on such law in those companies' home countries pre- ed States of Musa Mohammed Abu Marzuq, a prior art will be found invalid. A problem vents them from enforcing such patents in senior official of the Islamic Palestinian ex- arises, however, where the invention is not their own land. The bill I am introducing today tremist terrorist organization, Hamas. Abu publicly known and where the process of com- will ensure that American industry has the Marzuq is chief of Hamas' political bureau mercialization did not reveal the invention itself same protection.
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