[House Report 109-408]
[From the U.S. Government Publishing Office]



109th Congress                                                   Report
                        HOUSE OF REPRESENTATIVES
 2d Session                                                     109-408

======================================================================



 
WAIVER OF PATENT AND TRADEMARK REQUIREMENTS IN CERTAIN EMERGENCIES

                                _______
                                

 April 5, 2006.--Committed to the Committee of the Whole House on the 
              State of the Union and ordered to be printed

                                _______
                                

 Mr. Sensenbrenner, from the Committee on the Judiciary, submitted the 
                               following

                              R E P O R T

                        [To accompany H.R. 4742]

      [Including cost estimate of the Congressional Budget Office]

  The Committee on the Judiciary, to whom was referred the bill 
(H.R. 4742) to amend title 35, United States Code, to allow the 
Director of the Patent and Trademark Office to waive statutory 
provisions governing patents and trademarks in certain 
emergencies, having considered the same, report favorably 
thereon without amendment and recommend that the bill do pass.

                                CONTENTS

                                                                   Page
Purpose and Summary..............................................     1
Background and Need for the Legislation..........................     2
Hearings.........................................................     2
Committee Consideration..........................................     2
Vote of the Committee............................................     2
Committee Oversight Findings.....................................     3
New Budget Authority and Tax Expenditures........................     3
Congressional Budget Office Cost Estimate........................     3
Performance Goals and Objectives.................................     4
Constitutional Authority Statement...............................     4
Section-by-Section Analysis and Discussion.......................     4
Changes in Existing Law Made by the Bill, as Reported............     5
Markup Transcript................................................     5

                          Purpose and Summary

    The purpose of H.R. 4742 is to authorize the Director of 
the Patent and Trademark Office (PTO) to waive statutory 
provisions governing the filing, processing, renewal, and 
maintenance of patents, trademark registrations, and 
applications in certain emergencies.

                Background and Need for the Legislation

    The devastation caused by Hurricane Katrina in the Gulf 
region affected the ability of the PTO to adequately serve 
applicants, patentees, trademark holders, and other interested 
parties. The agency invoked as much administrative and 
statutory authority as it could to accommodate those affected. 
For example, PTO:

         created a toll-free hotline for victims to 
        call with questions or problems;

         attempted to place calls to all registered 
        practitioners in Alabama, Mississippi, and Louisiana;

         blocked outgoing mail to those living at 
        relevant zip codes in the region;

         vacated all outstanding examiners actions, to 
        be remailed at a later time; and

         accorded ``special consideration'' to all 
        reductions of patent term adjustments where applicant 
        delay was attributable to the Hurricane.

    Despite its best efforts to date, PTO needs additional 
authority to provide individuals and businesses relief from 
certain statutory deadlines, especially those pertaining to the 
maintenance of granted patents and registered trademarks.
    Granting this additional authority is consistent with 
recent action by the Committee and Congress to assist other 
individuals and institutions in the Gulf region. This includes 
enactment of legislation that allows Federal courts during 
emergency conditions to operate outside of their geographic 
domains; \1\ provide transportation and subsistence expenses 
for indigent defendants; \2\ and delay or toll judicial 
proceedings.\3\
---------------------------------------------------------------------------
    \1\ Pub. L. No. 109-63 (H.R. 3650).
    \2\ Pub. L. No. 109-162 (Sec. 1198 of H.R. 3402/Department of 
Justice Authorization Appropriations Act, Fiscal Years 2006-2009; 
originally introduced as H.R. 4496).
    \3\ H.R. 3729/H.R. Rept. No. 109-371.
---------------------------------------------------------------------------

                                Hearings

    No hearings were held on H.R. 4742.

                        Committee Consideration

    On March 1, 2006, the Subcommittee on Courts, the Internet, 
and Intellectual Property met in open session and ordered 
favorably reported the bill H.R. 4742 by voice vote, a quorum 
being present. On March 15, 2006, the Committee met in open 
session and ordered favorably reported the bill H.R. 4742 by 
voice vote, a quorum being present.

                         Vote of the Committee

    In compliance with clause 3(b) of Rule XIII of the Rules of 
the House of Representatives, the Committee notes that there 
were no recorded votes during the committee consideration of 
H.R. 4742.

                      Committee Oversight Findings

    In compliance with clause 3(c)(1) of Rule XIII of the Rules 
of the House of Representatives, the Committee reports that the 
findings and recommendations of the Committee, based on 
oversight activities under clause 2(b)(1) of Rule X of the 
Rules of the House of Representatives, are incorporated in the 
descriptive portions of this report.

               New Budget Authority and Tax Expenditures

    Clause 3(c)(2) of Rule XIII of the Rules of the House of 
Representatives is inapplicable because this legislation does 
not provide new budgetary authority or increased tax 
expenditures.

               Congressional Budget Office Cost Estimate

    In compliance with clause 3(c)(3) of Rule XIII of the Rules 
of the House of Representatives, the Committee sets forth, with 
respect to the bill, H.R. 4742, the following estimate and 
comparison prepared by the Director of the Congressional Budget 
Office under section 402 of the Congressional Budget Act of 
1974:

                                     U.S. Congress,
                               Congressional Budget Office,
                                    Washington, DC, March 27, 2006.
Hon. F. James Sensenbrenner, Jr., Chairman,
Committee on the Judiciary,
House of Representatives, Washington, DC.
    Dear Mr. Chairman: The Congressional Budget Office has 
prepared the enclosed cost estimate for H.R. 4742, a bill to 
amend title 35, United States Code, to allow the Director of 
the Patent and Trademark Office to waive statutory provisions 
governing patents and trademarks in certain emergencies.
    If you wish further details on this estimate, we will be 
pleased to provide them. The CBO staff contact is Melissa Z. 
Petersen, who can be reached at 226-2860.
            Sincerely,
                                       Douglas Holtz-Eakin.

Enclosure

cc:
        Honorable John Conyers, Jr.
        Ranking Member
H.R. 4742--A bill to amend title 35, United States Code, to allow the 
        Director of the Patent and Trademark Office to waive statutory 
        provisions governing patents and trademarks in certain 
        emergencies.
    H.R. 4742 would authorize the Patent and Trademark Office 
(PTO) to waive certain requirements related to the processing 
and filing of patents and trademarks for applicants affected by 
an emergency or major disaster. CBO estimates that implementing 
H.R. 4742 would not have a significant net effect on spending 
subject to appropriation. Enacting the bill could affect direct 
spending in 2006, but CBO estimates that any such effects would 
not be significant. The bill would not affect revenues. For 
this estimate, CBO assumes the bill will be enacted near the 
end of fiscal year 2006.
    H.R. 4742 contains no intergovernmental or private-sector 
mandates as defined in the Unfunded Mandates Reform Act and 
would impose no costs on State, local, or tribal governments.
    Under current law, the PTO is authorized to collect fees 
from the public for specific activities related to processing 
applications for patents and trademarks. The collection and 
spending of those fees are subject to provisions in annual 
appropriation acts, and the fees are recorded in the budget as 
offsets to the discretionary spending of the PTO. To the extent 
that the PTO might waive or delay fee requirements for 
applicants affected by an emergency or major disaster, H.R. 
4742 could decrease the amount of fees collected by the PTO. 
Based on information provided by the PTO, however, we estimate 
that H.R. 4742 would not result in a significant decrease in 
the amount of fees collected because of the small number of 
applicants likely to be affected in any year.
    The CBO staff contact for this estimate is Melissa Z. 
Petersen, who can be reached at 226-2860. This estimate was 
approved by Peter H. Fontaine, Deputy Assistant Director for 
Budget Analysis.

                    Performance Goals and Objectives

    The Committee states that pursuant to clause 3(c)(4) of 
Rule XIII of the Rules of the House of Representatives, the 
objective of H.R. 4742 is to authorize the PTO Director to 
waive statutory provisions governing the filing, processing, 
renewal, and maintenance of patents, trademark registrations, 
and applications in certain emergencies so as to protect the 
rights and privileges of affected parties. Quantifying the 
efficacy of this authority will be difficult, but the Committee 
will monitor the use of the Director's new power during the 
next statutorily defined ``emergency'' or ``major disaster.'' 
The Committee is interested in learning about (1) the internal 
system developed by PTO to identify parties who are deserving 
of waiver treatment and (2) the frequency with which the 
Director finds it necessary to invoke the authority.

                   Constitutional Authority Statement

    Pursuant to clause 3(d)(1) of Rule XIII of the Rules of the 
House of Representatives, the Committee finds the authority for 
this legislation in art. I, Sec. 8, of the Constitution.

               Section-by-Section Analysis and Discussion

    The following discussion describes the bill as reported by 
the Committee.
Sec. 1. Waiver of Patent and Trademark Requirements in Certain 
        Emergencies.
    Section 2 of the Patent Act \4\ enumerates specific 
``powers and duties'' of the agency. Section 1 of H.R. 4742 
creates a new subsection (e) to 35 U.S.C. Sec. 2 which reads as 
follows:
---------------------------------------------------------------------------
    \4\ Title 35, U.S. Code.

        ``Waiver of Requirements in Certain Emergencies.--The 
        Director may waive statutory provisions governing the 
        filing, processing, renewal, and maintenance of 
        patents, trademarks registrations, and applications 
        therefor to the extent the Director deems necessary in 
        order to protect the rights and privileges of 
        applicants and other persons affected by an emergency 
        or a major disaster, as those terms are defined in 
        section 102 of the Robert T. Stafford Disaster Relief 
        and Emergency Assistance Act (42 U.S.C. Sec. 5122). A 
        decision not to exercise, or a failure to exercise, the 
        waiver authority by this subsection shall not be 
        subject to judicial review.''

         Changes in Existing Law Made by the Bill, as Reported

  In compliance with clause 3(e) of rule XIII of the Rules of 
the House of Representatives, changes in existing law made by 
the bill, as reported, are shown as follows (new matter is 
printed in italics and existing law in which no change is 
proposed is shown in roman):

               SECTION 2 OF TITLE 35, UNITED STATES CODE

Sec. 2. Powers and duties

  (a) * * *

           *       *       *       *       *       *       *

  (e) Waiver of Requirements in Certain Emergencies.--The 
Director may waive statutory provisions governing the filing, 
processing, renewal, and maintenance of patents, trademark 
registrations, and applications therefor to the extent the 
Director deems necessary in order to protect the rights and 
privileges of applicants and other persons affected by an 
emergency or a major disaster, as those terms are defined in 
section 102 of the Robert T. Stafford Disaster Relief and 
Emergency Assistance Act (42 U.S.C. 5122). A decision not to 
exercise, or a failure to exercise, the waiver authority 
provided by this subsection shall not be subject to judicial 
review.

                           Markup Transcript



                            BUSINESS MEETING

                       WEDNESDAY, MARCH 15, 2006

                  House of Representatives,
                                Committee on the Judiciary,
                                                    Washington, DC.
    The Committee met, pursuant to notice, at 10:13 a.m., in 
Room 2141, Rayburn House Office Building, the Honorable F. 
James Sensenbrenner, Jr. (Chairman of the Committee) presiding.
    [Intervening business.]
    Chairman Sensenbrenner. The next item on the agenda is the 
adoption of H.R. 4742, to amend Title 35, United States Code, 
to allow the Director of the Patent and Trademark Office to 
waive statutory provisions governing patents and trademarks in 
certain emergencies.
    The Chair recognizes the gentleman from Texas, Mr. Smith, 
the Chairman of the Subcommittee on Courts, the Internet, and 
Intellectual Property, for a motion.
    Mr. Smith. Mr. Chairman, the Subcommittee on Courts, the 
Internet, and Intellectual Property reports favorably the bill 
H.R. 4742 and moves its favorable recommendation to the full 
House.
    Chairman Sensenbrenner. Without objection, H.R. 4742 will 
be considered as read and open for amendment at any point.
    [The bill, H.R. 4742, follows:]
      
      

  


      
      

  


    Chairman Sensenbrenner. The Chair recognizes the gentleman 
from Texas, Mr. Smith, for 5 minutes to explain the bill.
    Mr. Smith. Thank you, Mr. Chairman.
    The devastation caused by Hurricane Katrina in the Gulf 
region affected the ability of applicants, patentees, trademark 
holders, and other interested parties to do business with the 
Patent and Trademark Office. At the time, the agency invoked as 
much administrative and statutory authority as it could to 
accommodate those affected.
    Despite its best efforts to date, the PTO needs additional 
authority to provide individuals and businesses with relief 
from certain statutory deadlines, especially those pertaining 
to the maintenance of patents and trademarks. Granting such 
additional authority is consistent with recent action by the 
Committee and Congress to assist individuals and institutions 
in the Gulf region. This includes enactment of legislation that 
allows Federal courts during emergency conditions to operate 
outside of their geographic domains, to provide transportation 
and subsistence expenses for indigent defendants, and to delay 
judicial proceedings.
    Pursuant to the bill, the PTO may waive statutory 
provisions governing the filing, processing, renewal, and 
maintenance of patents, trademarks, and applications to the 
extent the Director deems necessary to protect the rights and 
privileges of applicants and other persons affected by an 
emergency or a major disaster.
    Mr. Chairman, this is a good bill that will help inventors, 
trademark holders, and other interested parties maintain their 
intellectual property rights under adverse conditions, and I 
urge my colleagues to support this bill.
    Chairman Sensenbrenner. The gentleman from Michigan, Mr. 
Conyers.
    Mr. Conyers. Mr. Chairman, this is a measure that lets the 
Director of the Patent and Trademark Office extend statutory 
deadlines in cases of national emergencies and disasters. I 
think it is a perfectly appropriate measure.
    As we have seen, the devastation caused by Katrina and Rita 
showed we must plan ahead to make sure the Government can 
function in times of natural crises. We already have passed 
legislation to permit Federal courthouses to hold court in 
buildings outside their jurisdictions in such instances, and we 
must ensure that those with business before the Government do 
not lose their rights because of natural disasters.
    A review of the law revealed that the Patent and Trademark 
Office needs specific legislative authority to extend filing 
and payment deadlines for persons seeking patent and trademark 
protection, and that is the goal that this bill accomplishes, 
and I urge its support and return the unused time.
    Chairman Sensenbrenner. Without objection, all Members may 
place opening statements in the record at this time. Are there 
amendments?
    If there are no amendments, a reporting quorum is present. 
The question occurs on the motion to report the bill, H.R. 4742 
favorably. All in favor, say aye.
    Opposed, no.
    The ayes appear to have it. The ayes have it. The motion to 
report favorably is agreed to.
    Without objection, the staff is directed to make any 
technical and conforming changes, and all Members will be given 
2 days, as provided by the House rules, in which to submit 
additional dissenting, supplemental or minority views.
    [Intervening business.]
    Chairman Sensenbrenner. This concludes the items on the 
agenda. The Chair would like to thank everybody for their 
efficient processing of today's business, and without 
objection, the Committee stands adjourned.
    [Whereupon, at 11:16 a.m., the Committee was adjourned.]

                                 
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