[Congressional Bills 107th Congress]
[From the U.S. Government Publishing Office]
[S. 1754 Reported in Senate (RS)]






                                                       Calendar No. 426
107th CONGRESS
  2d Session
                                S. 1754

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


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                           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]

_______________________________________________________________________

                                 A BILL


 
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,

<DELETED>SECTION 1. SHORT TITLE.</DELETED>

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

<DELETED>SEC. 2. AUTHORIZATION OF AMOUNTS AVAILABLE TO THE PATENT AND 
              TRADEMARK OFFICE.</DELETED>

<DELETED>    (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--</DELETED>
        <DELETED>    (1) title 35, United States Code; and</DELETED>
        <DELETED>    (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).</DELETED>
<DELETED>    (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--</DELETED>
        <DELETED>    (1) the Committees on Appropriations and Judiciary 
        of the Senate; and</DELETED>
        <DELETED>    (2) the Committees on Appropriations and Judiciary 
        of the House of Representatives.</DELETED>

<DELETED>SEC. 3. ELECTRONIC FILING AND PROCESSING OF PATENT AND 
              TRADEMARK APPLICATIONS.</DELETED>

<DELETED>    (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--</DELETED>
        <DELETED>    (1) is user friendly; and</DELETED>
        <DELETED>    (2) includes the necessary infrastructure--
        </DELETED>
                <DELETED>    (A) to allow examiners and applicants to 
                send all communications electronically; and</DELETED>
                <DELETED>    (B) to allow the Office to process, 
                maintain, and search electronically the contents and 
                history of each application.</DELETED>
<DELETED>    (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.</DELETED>

<DELETED>SEC. 4. STRATEGIC PLAN.</DELETED>

<DELETED>    (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--</DELETED>
        <DELETED>    (1) enhance patent and trademark 
        quality;</DELETED>
        <DELETED>    (2) reduce patent and trademark pendency; 
        and</DELETED>
        <DELETED>    (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.</DELETED>
<DELETED>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.</DELETED>
<DELETED>    (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.</DELETED>

<DELETED>SEC. 5. DETERMINATION OF SUBSTANTIAL NEW QUESTION OF 
              PATENTABILITY IN REEXAMINATION PROCEEDINGS.</DELETED>

<DELETED>    (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.''.</DELETED>
<DELETED>    (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.</DELETED>

<DELETED>SEC. 6. APPEALS IN INTER PARTES REEXAMINATION 
              PROCEEDINGS.</DELETED>

<DELETED>    (a) Appeals by Third-Party Requester in Proceedings.--
Section 315(b) of title 35, United States Code, is amended to read as 
follows:</DELETED>
<DELETED>    ``(b) Third-Party Requester.--A third-party requester--
</DELETED>
        <DELETED>    ``(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</DELETED>
        <DELETED>    ``(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.''.</DELETED>
<DELETED>    (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.</DELETED>
<DELETED>    (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''.</DELETED>
<DELETED>    (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.</DELETED>

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

107th CONGRESS

  2d Session

                                S. 1754

_______________________________________________________________________

                                 A BILL

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

_______________________________________________________________________

                             June 20, 2002

        Reported with an amendment and an amendment to the title