[Congressional Record Volume 148, Number 87 (Wednesday, June 26, 2002)]
[Senate]
[Pages S6175-S6176]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




AUTHORIZING APPROPRIATIONS FOR THE U.S. PATENT AND TRADEMARK OFFICE FOR 
                     FISCAL YEARS 2002 THROUGH 2007

  Mr. REID. Mr. President, I ask unanimous consent that the Senate now 
proceed to Calendar No. 426, S. 1754.
  The PRESIDING OFFICER. The clerk will state the bill by title.
  The legislative clerk read as follows:

       A bill (S. 1754) to authorize appropriations for the United 
     States Patent and Trademark Office for fiscal years 2002 
     through 2007, and for other purposes.

  There being no objection, the Senate proceeded to consider the bill 
which was reported from the Committee on the Judiciary with an 
amendment in the nature of a substitute, and an amendment to the title.
  [Strike the part in black brackets and insert in lieu thereof the 
part printed in italic.]

                                S. 1754

       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 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 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--
       [(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.--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--
       [(1) is user friendly; and
       [(2) includes the necessary infrastructure--
       [(A) to allow examiners and applicants to send all 
     communications electronically; and
       [(B) to 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 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.

     [SEC. 4. STRATEGIC PLAN.

       [(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--
       [(1) enhance patent and trademark quality;
       [(2) reduce patent and trademark pendency; and
       [(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.

     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.
       [(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.

     [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.

     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.

[[Page S6176]]

     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.''.

  Mr. REID. Mr. President, I ask unanimous consent that the committee-
reported substitute amendment be agreed to, the motion to reconsider be 
laid upon the table; the bill, as amended, be read a third time and 
passed; the motion to reconsider be laid upon the table; that any title 
amendment be agreed to, and that any statements relating thereto be 
printed in the Record at the appropriate place as if given, without any 
intervening action or debate.
  The PRESIDING OFFICER. Without objection, it is so ordered.
  The committee amendment in the nature of a substitute was agreed to.
  The title amendment was agreed to.
  The bill (S. 1754), as amended, was read the third time and passed.

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