S 1754 RS

To authorize appropriations for the United States Patent and Trademark Office for fiscal years 2002 through 2007, and for other purposes.

November 30, 2001

Mr. LEAHY (for himself, Mr. HATCH, Mr. REID, Mr. BENNETT, Ms. Cantwell, and Mr. Carper) introduced the following bill; which was read twice and referred to the Committee on the Judiciary

June 20, 2002

Reported by Mr. Leahy, with an amendment and an amendment to the title

[Strike out all after the enacting clause and insert the part printed in italic]

To authorize appropriations for the United States Patent and Trademark Office for fiscal years 2002 through 2007, and for other purposes.

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

[Struck out->] SECTION 1. SHORT TITLE. [<-Struck out]

[Struck out->] This Act may be cited as the `Patent and Trademark Office Authorization Act of 2002'. [<-Struck out]

[Struck out->] SEC. 2. AUTHORIZATION OF AMOUNTS AVAILABLE TO THE PATENT AND TRADEMARK OFFICE. [<-Struck out]

[Struck out->] (a) IN GENERAL- There are authorized to be appropriated to the United States Patent and Trademark Office for salaries and necessary expenses for each of the fiscal years 2002 through 2007 an amount equal to the fees estimated by the Secretary of Commerce to be collected in each such fiscal year, respectively, under-- [<-Struck out]

[Struck out->] (1) title 35, United States Code; and [<-Struck out]

[Struck out->] (2) the Act entitled `An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes', approved July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act of 1946). [<-Struck out]

[Struck out->] (b) ESTIMATES- Not later than February 15, of each fiscal year, the Undersecretary of Commerce for Intellectual Property and the Director of the Patent and Trademark Office (in this Act referred to as the Director) shall submit an estimate of all fees referred to under subsection (a) to be collected in the next fiscal year to the chairman and ranking member of-- [<-Struck out]

[Struck out->] (1) the Committees on Appropriations and Judiciary of the Senate; and [<-Struck out]

[Struck out->] (2) the Committees on Appropriations and Judiciary of the House of Representatives. [<-Struck out]

[Struck out->] SEC. 3. ELECTRONIC FILING AND PROCESSING OF PATENT AND TRADEMARK APPLICATIONS. [<-Struck out]

[Struck out->] (a) ELECTRONIC FILING AND PROCESSING- The Director shall, during the 3-year period beginning December 1, 2001, develop an electronic system for the filing and processing of patent and trademark applications, that-- [<-Struck out]

[Struck out->] (1) is user friendly; and [<-Struck out]

[Struck out->] (2) includes the necessary infrastructure-- [<-Struck out]

[Struck out->] (A) to allow examiners and applicants to send all communications electronically; and [<-Struck out]

[Struck out->] (B) to allow the Office to process, maintain, and search electronically the contents and history of each application. [<-Struck out]

[Struck out->] (b) AUTHORIZATION OF APPROPRIATIONS- Of amounts authorized under section 2, there is authorized to be appropriated to carry out subsection (a) of this section not more than $50,000,000 for each of fiscal years 2002 and 2003. Amounts made available pursuant to this subsection shall remain available until expended. [<-Struck out]

[Struck out->] SEC. 4. STRATEGIC PLAN. [<-Struck out]

[Struck out->] (a) DEVELOPMENT OF PLAN- The Director shall, in close consultation with the Patent Public Advisory Committee and the Trademark Public Advisory Committee, develop a strategic plan that sets forth the goals and methods by which the United States Patent and Trademark Office will, during the 5-year period beginning on October 1, 2002-- [<-Struck out]

[Struck out->] (1) enhance patent and trademark quality; [<-Struck out]

[Struck out->] (2) reduce patent and trademark pendency; and [<-Struck out]

[Struck out->] (3) develop and implement an effective electronic system for use by the Patent and Trademark Office and the public for all aspects of the patent and trademark processes, including, in addition to the elements set forth in section 3, searching, examining, communicating, publishing, and making publicly available, patents and trademark registrations. [<-Struck out]

[Struck out->] The strategic plan shall include milestones and objective and meaningful criteria for evaluating the progress and successful achievement of the plan. The Director shall consult with the Public Advisory Committees with respect to the development of each aspect of the strategic plan. [<-Struck out]

[Struck out->] (b) REPORT TO CONGRESSIONAL COMMITTEES- The Director shall, not later than February 15, 2002, or 4 months after the date of the enactment of this Act, whichever is later, submit the plan developed under subsection (a) to the Committees on the Judiciary of the Senate and the House of Representatives. [<-Struck out]

[Struck out->] SEC. 5. DETERMINATION OF SUBSTANTIAL NEW QUESTION OF PATENTABILITY IN REEXAMINATION PROCEEDINGS. [<-Struck out]

[Struck out->] (a) IN GENERAL- Sections 303(a) and 312(a) of title 35, United States Code, are each amended by adding at the end the following: `The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.'. [<-Struck out]

[Struck out->] (b) EFFECTIVE DATE- The amendments made by this section shall apply with respect to any determination of the Director of the United States Patent and Trademark Office that is made under section 303(a) or 312(a) of title 35, United States Code, on or after the date of the enactment of this Act. [<-Struck out]

[Struck out->] SEC. 6. APPEALS IN INTER PARTES REEXAMINATION PROCEEDINGS. [<-Struck out]

[Struck out->] (a) APPEALS BY THIRD-PARTY REQUESTER IN PROCEEDINGS- Section 315(b) of title 35, United States Code, is amended to read as follows: [<-Struck out]

[Struck out->] `(b) THIRD-PARTY REQUESTER- A third-party requester-- [<-Struck out]

[Struck out->] `(1) may appeal under the provisions of section 134, and may appeal under the provisions of sections 141 through 144, with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent; and [<-Struck out]

[Struck out->] `(2) may, subject to subsection (c), be a party to any appeal taken by the patent owner under the provisions of section 134 or sections 141 through 144.'. [<-Struck out]

[Struck out->] (b) APPEAL TO BOARD OF PATENT APPEALS AND INTERFERENCES- Section 134(c) of title 35, United States Code, is amended by striking the last sentence. [<-Struck out]

[Struck out->] (c) APPEAL TO COURT OF APPEALS FOR THE FEDERAL CIRCUIT- Section 141 of title 35, United States Code, is amended in the third sentence by inserting `, or a third-party requester in an inter partes reexamination proceeding, who is' after `patent owner'. [<-Struck out]

[Struck out->] (d) EFFECTIVE DATE- The amendments made by this section apply with respect to any reexamination proceeding commenced on or after the date of the enactment of this Act. [<-Struck out]

SECTION 1. SHORT TITLE.

This Act may be cited as the `Patent and Trademark Office Authorization Act of 2002'.

SEC. 2. AUTHORIZATION OF AMOUNTS AVAILABLE TO THE PATENT AND TRADEMARK OFFICE.

(a) IN GENERAL- There are authorized to be appropriated to the United States Patent and Trademark Office for salaries and necessary expenses for each of the fiscal years 2003 through 2008 an amount equal to the fees estimated by the Secretary of Commerce to be collected in each such fiscal year, respectively, under--

(1) title 35, United States Code; and

(2) the Act entitled `An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes', approved July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the Trademark Act of 1946).

(b) ESTIMATES- Not later than February 15, of each fiscal year, the Undersecretary of Commerce for Intellectual Property and the Director of the Patent and Trademark Office (in this Act referred to as the Director) shall submit an estimate of all fees referred to under subsection (a) to be collected in the next fiscal year to the chairman and ranking member of--

(1) the Committees on Appropriations and Judiciary of the Senate; and

(2) the Committees on Appropriations and Judiciary of the House of Representatives.

SEC. 3. ELECTRONIC FILING AND PROCESSING OF PATENT AND TRADEMARK APPLICATIONS.

(a) ELECTRONIC FILING AND PROCESSING- Not later than December 1, 2004, the Director shall complete the development of an electronic system for the filing and processing of patent and trademark applications, that--

(1) is user friendly; and

(2) includes the necessary infrastructure to--

(A) allow examiners and applicants to send all communications electronically; and

(B) allow the Office to process, maintain, and search electronically the contents and history of each application.

(b) AUTHORIZATION OF APPROPRIATIONS- Of amounts authorized under section 2, there are authorized to be appropriated to carry out subsection (a) of this section not more than $50,000,000 for each of fiscal years 2003 and 2004. Amounts made available under this subsection shall remain available until expended.

SEC. 4. ANNUAL REPORTS ON STRATEGIC PLAN.

In each of the 5 calendar years following the date of enactment of this Act, the Secretary of Commerce shall

submit a report to the Committees on the Judiciary of the Senate and the House of Representatives on--

(1) the progress made in implementing the 21st Century Strategic Plan issued on June 3, 2002; and

(2) any amendments made to the plan.

SEC. 5. DETERMINATION OF SUBSTANTIAL NEW QUESTION OF PATENTABILITY IN REEXAMINATION PROCEEDINGS.

(a) IN GENERAL- Sections 303(a) and 312(a) of title 35, United States Code, are each amended by adding at the end the following: `The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.'.

(b) EFFECTIVE DATE- The amendments made by this section shall apply with respect to any determination of the Director of the United States Patent and Trademark Office that is made under section 303(a) or 312(a) of title 35, United States Code, on or after the date of the enactment of this Act.

SEC. 6. APPEALS IN INTER PARTES REEXAMINATION PROCEEDINGS.

(a) APPEALS BY THIRD-PARTY REQUESTER IN PROCEEDINGS- Section 315(b) of title 35, United States Code, is amended to read as follows:

`(b) THIRD-PARTY REQUESTER- A third-party requester--

`(1) may appeal under the provisions of section 134, and may appeal under the provisions of sections 141 through 144, with respect to any final decision favorable to the patentability of any original or proposed amended or new claim of the patent; and

`(2) may, subject to subsection (c), be a party to any appeal taken by the patent owner under the provisions of section 134 or sections 141 through 144.'.

(b) APPEAL TO BOARD OF PATENT APPEALS AND INTERFERENCES- Section 134(c) of title 35, United States Code, is amended by striking the last sentence.

(c) APPEAL TO COURT OF APPEALS FOR THE FEDERAL CIRCUIT- Section 141 of title 35, United States Code, is amended in the third sentence by inserting `, or a third-party requester in an inter partes reexamination proceeding, who is' after `patent owner'.

(d) EFFECTIVE DATE- The amendments made by this section apply with respect to any reexamination proceeding commenced on or after the date of the enactment of this Act.

Amend the title so as to read: `A bill to authorize appropriations for the United States Patent and Trademark Office for fiscal years 2003 through 2008, and for other purposes.'.

Calendar No. 426

To authorize appropriations for the United States Patent and Trademark Office for fiscal years 2002 through 2007, and for other purposes.

June 20, 2002