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. 


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1Pub. L. No. 109–63 (H.R. 3650). 2Pub. L. No. 109–162 (§ 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. 

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

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. 


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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. 


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4Title 35, U.S. Code. 

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, § 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. § 2 which reads as follows: 

‘‘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 DirecVerDate Aug 31 2005 18:33 Apr 07, 2006 Jkt 049006 PO 00000 Frm 00004 Fmt 6659 Sfmt 6601 E:\HR\OC\HR408.XXX HR408

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tor 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 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 

§ 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. 


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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:] 


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1

I

109TH CONGRESS

2D SESSION 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.

IN THE HOUSE OF REPRESENTATIVES

FEBRUARY 14, 2006

Mr. SMITH of Texas (for himself, Mr. BERMAN, and Mr. GOODLATTE) introduced the following bill; which was referred to the Committee on the Judiciary

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.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,

3 SECTION 1. WAIVER OF PATENT AND TRADEMARK RE4 QUIREMENTS IN CERTAIN EMERGENCIES.

5 Section 2 of title 35, United States Code, is amended

6 by adding at the end the following new subsection:

7 ‘‘(e) WAIVER OF REQUIREMENTS IN CERTAIN EMER8 GENCIES.—The Director may waive statutory provisions

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2

•HR 4742 IH

1 governing the filing, processing, renewal, and maintenance

2 of patents, trademark registrations, and applications

3 therefor to the extent the Director deems necessary in

4 order to protect the rights and privileges of applicants and

5 other persons affected by an emergency or a major dis6 aster, as those terms are defined in section 102 of the

7 Robert T. Stafford Disaster Relief and Emergency Assist8 ance Act (42 U.S.C. 5122). A decision not to exercise, or

9 a failure to exercise, the waiver authority provided by this

10 subsection shall not be subject to judicial review.’’.

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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. 


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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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