[House Report 117-302]
[From the U.S. Government Publishing Office]


117th Congress   }                                   {       Report
                        HOUSE OF REPRESENTATIVES
 2d Session      }                                   {       117-302

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



 
                    PATENTS FOR HUMANITY ACT OF 2021

                                _______
                                

 April 27, 2022.--Committed to the Committee of the Whole House on the 
              State of the Union and ordered to be printed

                                _______
                                

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

                              R E P O R T

                        [To accompany H.R. 5796]

    The Committee on the Judiciary, to whom was referred the 
bill (H.R. 5796) to amend title 35, United States Code, to 
establish a competition to award certificates that can be 
redeemed to accelerate certain matters at the Patent and 
Trademark Office, and for other purposes, having considered the 
same, reports favorably thereon with an amendment and 
recommends that the bill as amended do pass.

                                CONTENTS

                                                                   Page
Purpose and Summary..............................................     2
Background and Need for the Legislation..........................     2
Hearings.........................................................     4
Committee Consideration..........................................     4
Committee Votes..................................................     4
Committee Oversight Findings.....................................     4
Committee Estimate of Budgetary Effects..........................     4
New Budget Authority and Congressional Budget Office Cost 
  Estimate.......................................................     4
Duplication of Federal Programs..................................     5
Performance Goals and Objectives.................................     5
Advisory on Earmarks.............................................     5
Section-by-Section Analysis......................................     5
Changes in Existing Law Made by the Bill, as Reported............     6

    The amendment is as follows:
  Strike all after the enacting clause and insert the 
following:

SECTION 1. SHORT TITLE.

  This Act may be cited as the ``Patents for Humanity Act of 2021''.

SEC. 2. AWARD OF CERTIFICATES TO ACCELERATE CERTAIN MATTERS AT THE 
                    PATENT AND TRADEMARK OFFICE.

  (a) Award.--Chapter 2 of title 35, United States Code, is amended by 
adding at the end the following:

``Sec. 28. Award of certificates to accelerate certain matters at the 
                    Patent and Trademark Office

  ``(a) Establishment.--There is established a competition, to be held 
not less frequently than biennially, to award eligible entities 
certificates that can be redeemed to accelerate one of the following 
matters:
          ``(1) An ex parte reexamination proceeding, including one 
        appeal to the Patent Trial and Appeal Board from that 
        proceeding.
          ``(2) An application for a patent, including one appeal to 
        the Patent Trial and Appeal Board from that application.
          ``(3) An appeal to the Patent Trial and Appeal Board of a 
        claim twice rejected in a patent application or reissue 
        application or finally rejected in an ex parte reexamination, 
        without accelerating the underlying matter which generated the 
        appeal.
          ``(4) A matter identified under subsection (d)(4).
  ``(b) Administration.--The Director shall administer the competition 
established by subsection (a).
  ``(c) Application.--An eligible entity seeking an award under 
subsection (a) shall submit to the Director an application, at such 
time, in such manner, and containing such information as the Director 
may require.
  ``(d) Rulemaking Authority.--With respect to the competition 
established by subsection (a), the Director shall conduct a rulemaking 
proceeding to promulgate rules on the--
          ``(1) entities eligible to receive an award;
          ``(2) process and metrics by which applications are judged, 
        including the criteria for selecting judges for the 
        competition;
          ``(3) factors that will be considered in selecting the 
        eligible entities that receive an award; and
          ``(4) additional matters for which a certificate described 
        under subsection (a) may be awarded.
  ``(e) Promotion of Competition.--The Director shall promote the 
competition through the satellite offices established pursuant to 
section 1.
  ``(f) Treatment as Successor.--The competition established under 
subsection (a) shall be treated as a successor to the Patents for 
Humanity Program (established in the notice entitled `Humanitarian 
Awards Pilot Program', published at 77 Fed. Reg. 6544 (February 8, 
2012)).
  ``(g) Eligible Entity Defined.--In this section, the term `eligible 
entity' means a entity that--
          ``(1) submits an application under subsection (c) for a 
        patent that addresses a humanitarian issue; and
          ``(2) is eligible to receive an award under subsection 
        (d)(1).''.
  (b) Rule of Construction.--Nothing in this section, or the amendments 
made by this section, may be construed as prohibiting the Under 
Secretary of Commerce for Intellectual Property and Director of the 
United States Patent and Trademark Office from administering the 
competition established by section 28 of title 35, United States Code, 
as added by subsection (a), before the date on which all rules are 
promulgated under the rulemaking proceeding required by subsection (d) 
of such section.
  (c) Technical and Conforming Amendment.--The table of sections at the 
beginning of chapter 2 of title 35, United States Code, is amended by 
adding at the end the following:

``28. Award of certificates to accelerate certain matters at the Patent 
and Trademark Office.''.

                          Purpose and Summary

    H.R. 5796, the ``Patents for Humanity Act of 2021,'' 
codifies a program at the United States Patent and Trademark 
Office (USPTO or Office) designed to incentivize patented 
inventions directed at or used to advance humanitarian goals. 
H.R. 5796 establishes a competition that provides this category 
of invention a small award in the form of a certificate 
redeemable to expedite certain matters before the Office.

                Background and Need for the Legislation

    In 2012, the USPTO published a final rule announcing a 
``Humanitarian Awards Pilot Program'' designed to ``incentivize 
the distribution of patented technologies to address 
humanitarian needs'' following a request for comments in 
September 2010.\1\ The final rule established the pilot program 
as an awards competition that allowed patent owners to submit 
program applications (separate from their original application 
for a patent) ``describing what actions they have taken with 
their patented technology to address humanitarian needs among 
an impoverished population or further research by others on 
humanitarian technologies.''\2\ Awardees received additional 
public recognition and a small reward in the form of being able 
to expedite a different matter before the Office.\3\ The pilot 
program was originally set to run for 12 months.\4\
---------------------------------------------------------------------------
    \1\Humanitarian Awards Pilot Program, 77 Fed. Reg. 6544, 6544 (Feb. 
8, 2012).
    \2\Id.
    \3\Id.
    \4\Id.
---------------------------------------------------------------------------
    To enter the competition, applicants submitted a program 
application explaining ``how the applicants'' actions have 
increased the use of patented technology to address 
humanitarian issues.''\5\ The final rule defined ``humanitarian 
issue'' as ``one significantly affecting the public health or 
quality of life of an impoverished population.''\6\ 
Applications were considered by independent judges in four 
separate categories: (1) medical technology; (2) food and 
nutrition; (3) clean technology; and (4) information 
technology.\7\ The final rule further specified details on who 
could apply (patent owners, patent applicants in limited cases, 
and licensees in limited cases), how independent judges would 
be selected, and the criteria for selecting the winner or 
winners in each category.\8\
---------------------------------------------------------------------------
    \5\Id. at 6545.
    \6\Id.
    \7\Id.
    \8\Id. at 6545-46.
---------------------------------------------------------------------------
    The final rule established a public awards ceremony for the 
awardees and specified that each would receive a certificate to 
accelerate certain proceedings before the Office, including the 
examination of an original patent application, an ex parte 
reexamination, or an (ex parte) reissue proceeding, but 
specifically excluding inter partes reviews (IPRs) and post 
grant reviews (PGRs).\9\
---------------------------------------------------------------------------
    \9\Id. at 6546.
---------------------------------------------------------------------------
    After the completion of the pilot program, the USPTO made 
Patents for Humanity an annual award program.\10\ The permanent 
program is essentially the same as the pilot program with a 
slightly different set of award categories: (1) medicine; (2) 
nutrition; (3) sanitation; (4) household energy; and (5)living 
standards.\11\ Information about the upcoming application 
process for the 2022 cycle, as well as information about past 
recipients, can be found at the Patents for Humanity landing 
page on the USPTO website.\12\
---------------------------------------------------------------------------
    \10\Patents for Humanity Program, 79 Fed. Reg. 18670 (Apr. 3, 
2014).
    \11\Id. at 18671.
    \12\U.S. Patent and Trademark Office, Patents for Humanity, https:/
/www.uspto.gov/ip-policy/patent-policy/patents-humanity.
---------------------------------------------------------------------------
    In the 116th Congress, Pub. L. 116-316, the Patents for 
Humanity Program Improvement Act, was signed into law on 
January 5, 2021. This Act allowed the certificates awarded in 
the Patents for Humanity Program to be transferable, thereby 
allowing the recipient to sell the acceleration certification 
if the recipient does not want to use the acceleration 
certificate themselves.
    H.R. 5796 codifies the USPTO's Patents for Humanity program 
by establishing a competition, to be held at least biennially 
and administered by the Office, to award an entity that submits 
an application for a patent that addresses a humanitarian issue 
a certificate that can be redeemed to accelerate one of the 
following matters: (1) an ex parte reexamination proceeding, 
including one appeal to the Patent Trial and Appeal Board from 
that proceeding; (2) a patent application, including one appeal 
to the Patent Trial and Appeal Board from that application; and 
(3) an appeal to the Patent Trial and Appeal Board of a claim 
twice rejected in a patent application or reissue application 
or finally rejected in an ex parte reexamination, without 
accelerating the underlying matter which generated the appeal. 
H.R. 5796 also requires the USPTO to promulgate rules on the 
entities eligible to receive an award and the process and 
metrics by which applications are to be judged.

                                Hearings

    For the purposes of clause 3(c)(6)(A) of House rule XIII, 
the Committee on the Judiciary held no meetings on H.R. 5796 in 
the 117th Congress.

                        Committee Consideration

    On December 8, 2021, the Committee met in open session and 
ordered the bill, H.R. 5796, favorably reported as amended, by 
a voice vote, a quorum being present.

                            Committee Votes

    In compliance with clause 3(b) of House rule XIII, the 
Committee advises that no rollcall votes occurred during the 
Committee's consideration of H.R. 5796.

                      Committee Oversight Findings

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

                Committee Estimate of Budgetary Effects

    Pursuant to clause 3(d)(1) of House rule XIII, the 
Committee adopts as its own the cost estimate prepared by the 
Director of the Congressional Budget Office pursuant to section 
402 of the Congressional Budget Act of 1974.

   New Budget Authority and Congressional Budget Office Cost Estimate

    Pursuant to clause 3(c)(2) of House rule XIII and section 
308(a) of the Congressional Budget Act of 1974, and pursuant to 
clause (3)(c)(3) of House rule XIII and section 402 of the 
Congressional Budget Act of 1974, the Committee has requested 
but not received from the Director of Congressional Budget 
Office a budgetary analysis and a cost estimate of this bill.

                    Duplication of Federal Programs

    Pursuant to clause 3(c)(5) of House rule XIII, no provision 
of H.R. 5796 establishes or reauthorizes a program of the 
federal government known to be duplicative of another federal 
program. H.R. 5796 treats the competition established by the 
Act as a successor to the USPTO's Patents for Humanity Program, 
established in the Humanitarian Awards Pilot Program, 77 Fed. 
Reg. 6544 (Feb. 8, 2012).

                    Performance Goals and Objectives

    The Committee states that pursuant to clause 3(c)(4) of 
House rule XIII, H.R. 5796 would incentivize the creation and 
distribution of patented technologies to address humanitarian 
needs by creating a competition that awards recipients a 
certificate redeemable to accelerate select matters before the 
USPTO.

                          Advisory on Earmarks

    In accordance with clause 9 of House rule XXI, H.R. 5796 
does not contain any congressional earmarks, limited tax 
benefits, or limited tariff benefits as defined in clause 9(d), 
9(e), or 9(f) of House Rule XXI.

                      Section-by-Section Analysis

    The following discussion describes the bill as reported by 
the Committee.
    Sec. 1. Short Title. Section 1 sets forth the short title 
of the bill as the ``Patents for Humanity Act of 2021.''
    Sec. 2. Award of Certificates to Accelerate Certain Matters 
at the Patent and Trademark Office. Section 2(a) amends Title 
35 to add a new section 28:
    New section 28(a) establishes a competition, to be held no 
less frequently than biennially, with an award of an 
examination acceleration certificate redeemable in three 
different contexts (in an ex parte reexamination proceeding, 
including one appeal within the Office, in a patent 
application, including one appeal within the Office, and in an 
appeal within the Office from a patent application or reissue, 
or finally rejected in an ex parte reexamination, without 
accelerating the underlying proceeding), as well as additional 
matters that may be designated by the Director under a new 
rulemaking.
    New section 28(b) provides that the Director shall 
administer this competition.
    New section 28(c) provides that applicants shall submit 
applications in accordance with the Director's requirements 
about timing and contents.
    New section 28(d) provides the Director with rulemaking 
authority to designate eligible entities for an award, the 
judge and award selection criteria, and additional matters for 
which an award might be issued.
    New section 28(e) provides that the Director shall promote 
the competition through the USPTO's satellite offices.
    New section 28(f) provides that the competition established 
by the Act shall be considered a successor to the program 
established under Humanitarian Awards Pilot Program, 77 Fed. 
Reg. 6544 (Feb. 8, 2012).
    New section 28(g) sets forth the definition of ``eligible 
entity'' as an entity that submits an application for a 
patented invention that addresses a humanitarian issue and is 
eligible under the rules promulgated by the Director.
    Section 2(b) provides that the Director may continue to 
administer the awards program established under federal 
regulations until a rulemaking is conducted pursuant to this 
Act.
    Section 2(c) provides for technical and conforming 
amendments.

         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):

                      TITLE 35, UNITED STATES CODE




           *       *       *       *       *       *       *
PART I--UNITED STATES PATENT AND TRADEMARK OFFICE

           *       *       *       *       *       *       *


       CHAPTER 2--PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE


Sec.
     * * * * * * *
28. Award of certificates to accelerate certain matters at the Patent 
          and Trademark Office.

           *       *       *       *       *       *       *


Sec. 28. Award of certificates to accelerate certain matters at the 
                    Patent and Trademark Office

  (a) Establishment.--There is established a competition, to be 
held not less frequently than biennially, to award eligible 
entities certificates that can be redeemed to accelerate one of 
the following matters:
          (1) An ex parte reexamination proceeding, including 
        one appeal to the Patent Trial and Appeal Board from 
        that proceeding.
          (2) An application for a patent, including one appeal 
        to the Patent Trial and Appeal Board from that 
        application.
          (3) An appeal to the Patent Trial and Appeal Board of 
        a claim twice rejected in a patent application or 
        reissue application or finally rejected in an ex parte 
        reexamination, without accelerating the underlying 
        matter which generated the appeal.
          (4) A matter identified under subsection (d)(4).
  (b) Administration.--The Director shall administer the 
competition established by subsection (a).
  (c) Application.--An eligible entity seeking an award under 
subsection (a) shall submit to the Director an application, at 
such time, in such manner, and containing such information as 
the Director may require.
  (d) Rulemaking Authority.--With respect to the competition 
established by subsection (a), the Director shall conduct a 
rulemaking proceeding to promulgate rules on the--
          (1) entities eligible to receive an award;
          (2) process and metrics by which applications are 
        judged, including the criteria for selecting judges for 
        the competition;
          (3) factors that will be considered in selecting the 
        eligible entities that receive an award; and
          (4) additional matters for which a certificate 
        described under subsection (a) may be awarded.
  (e) Promotion of Competition.--The Director shall promote the 
competition through the satellite offices established pursuant 
to section 1.
  (f) Treatment as Successor.--The competition established 
under subsection (a) shall be treated as a successor to the 
Patents for Humanity Program (established in the notice 
entitled ``Humanitarian Awards Pilot Program'', published at 77 
Fed. Reg. 6544 (February 8, 2012)).
  (g) Eligible Entity Defined.--In this section, the term 
``eligible entity'' means a entity that--
          (1) submits an application under subsection (c) for a 
        patent that addresses a humanitarian issue; and
          (2) is eligible to receive an award under subsection 
        (d)(1).

           *       *       *       *       *       *       *


                                  
                                  [all]