39–006 

113TH CONGRESS REPORT " ! HOUSE OF REPRESENTATIVES 2d Session 113–588 

USPTO LAW SCHOOL CLINIC CERTIFICATION PROGRAM 

SEPTEMBER 15, 2014.—Committed to the Committee of the Whole House on the 

State of the Union and ordered to be printed 

Mr. GOODLATTE, from the Committee on the Judiciary, 

submitted the following 

R E P O R T 

[To accompany H.R. 5108] 

[Including cost estimate of the Congressional Budget Office] 

The Committee on the Judiciary, to whom was referred the bill 

(H.R. 5108) to establish the Law School Clinic Certification Program of the United States 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 

The Amendment ...................................................................................................... 1 

Purpose and Summary ............................................................................................ 2 

Background and Need for the Legislation ............................................................. 2 

Hearings ................................................................................................................... 3 

Committee Consideration ........................................................................................ 3 

Committee Votes ...................................................................................................... 3 

Committee Oversight Findings ............................................................................... 3 

New Budget Authority and Tax Expenditures ...................................................... 3 

Congressional Budget Office Cost Estimate .......................................................... 3 

Duplication of Federal Programs ............................................................................ 4 

Disclosure of Directed Rule Makings ..................................................................... 5 

Performance Goals and Objectives ......................................................................... 5 

Advisory on Earmarks ............................................................................................. 5 

Section-by-Section Analysis .................................................................................... 5 

The Amendment 

The amendment is as follows: 

Strike all after the enacting clause and insert the following: 

mstockstill on DSK4VPTVN1PROD with HEARINGS

2 

SECTION 1. USPTO LAW SCHOOL CLINIC CERTIFICATION PROGRAM. 

(a) ESTABLISHMENT.—The Law School Clinic Certification Program of the United 

States Patent and Trademark Office, as implemented by the Office, is established 

as a program entitled the ‘‘Law School Clinic Certification Program’’. The Program 

shall allow students enrolled in a participating law school’s clinic to practice patent 

and trademark law before the Office by drafting, filing, and prosecuting patent or 

trademark applications, or both, on a pro-bono basis for clients that qualify for assistance from the law school’s clinic. The Director shall establish regulations and 

procedures for application to and participation in the Program. All law schools accredited by the American Bar Association are eligible for participation in the Program, and shall be examined for acceptance using identical criteria established by 

the Director. The Program shall be in effect for the 10-year period beginning on the 

date of the enactment of this Act. 

(b) REPORT ON THE PROGRAM.—The Director shall, not later than the last day of 

the 2-year period beginning on the date of the enactment of this Act, submit to the 

Committees on the Judiciary of the House of Representatives and the Senate a report on the Program, describing the number of law schools and law students participating in the Program, the work done through the Program, the benefits of the Program, and any recommendations of the Director for modifications to the Program. 

(c) DEFINITIONS.—In this section: 

(1) OFFICE.—The term ‘‘Office’’ means the United States Patent and Trademark Office. 

(2) PROGRAM.—The term ‘‘Program’’ means the Law School Clinic Certification Program established in subsection (a). 

(3) DIRECTOR.—The term ‘‘Director’’ means the Under Secretary of Commerce 

for Intellectual Property and Director of the United States Patent and Trademark Office. 

Purpose and Summary 

The bill establishes the law school clinic certification program at 

the U.S. Patent and Trademark Office (‘‘USPTO’’). The program 

will be open to all law schools that qualify and meet the rigorous 

standards set by the U.S. Patent and Trademark Office. The 

USPTO will issue regulations specifying procedures for application 

and participation in the program. It is expected that the USPTO 

will set forth rigorous criteria to ensure that the intellectual property clinic programs selected meet the highest standards and that 

the students participating, under the supervision of a faculty supervisor, meet the standard educational and professional criteria 

for practice before the office. 

Background and Need for the Legislation 

Currently the USPTO has a pilot law school clinic certification 

program. This bill would remove the ‘‘pilot’’ status and make it 

available to all accredited law schools that provide a benefit to students, law schools, pro bono clients and the inventor community at 

large. 

The bill authorizes the USPTO Director to issue regulations 

specifying procedures for application to and participation in the 

program. In addition, within 2 years, the USPTO Director would be 

required to submit a report on the program to the House and Senate Judiciary Committees detailing the number of law schools and 

students participating in the program, the work accomplished and 

recommendations for its modification. 

The IP Law School Clinic Certification Program provides law students enrolled in a participating clinic the opportunity to practice 

patent and trademark law before the USPTO under the guidance 

of a faculty supervisor. In this way, these student practitioners 

gain valuable experience drafting and filing patent and trademark 

applications that would otherwise be unavailable. Patents and 

mstockstill on DSK4VPTVN1PROD with HEARINGS

3 

trademarks are highly specialized areas of law. Expanding the pilot 

program will enable additional law schools across the nation to prepare a greater number of practitioners to enter this increasingly 

important field. The program also provides services to small and 

independent trademark and patent filers that lack the financial resources necessary for traditional legal representation. 

Hearings 

The Committee on the Judiciary held no hearings on H.R. 5108. 

Committee Consideration 

On September 10, 2014, the Committee on the Judiciary met in 

open session and ordered the bill H.R. 5108 favorably reported, 

with an amendment, by voice vote, a quorum being present. 

Committee Votes 

In compliance with clause 3(b) of rule XIII of the Rules of the 

House of Representatives, the Committee advises that there were 

no recorded votes during the Committee’s consideration of H.R. 

5108. 

Committee Oversight Findings 

In compliance with clause 3(c)(1) of rule XIII of the Rules of the 

House of Representatives, the Committee advises 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. 5108, 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, September 12, 2014. 

Hon. BOB GOODLATTE, 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. 5108, a bill to establish 

the Law School Clinic Certification Program of the United States 

Patent and Trademark Office, and for other purposes. 

mstockstill on DSK4VPTVN1PROD with HEARINGS

4 

If you wish further details on this estimate, we will be pleased 

to provide them. The CBO staff contact is Susan Willie, who can 

be reached at 226–2860. 

Sincerely, 

DOUGLAS W. ELMENDORF, DIRECTOR. 

Enclosure 

cc: Honorable John Conyers, Jr. 

Ranking Member 

H.R. 5108—A bill to establish the Law School Clinic Certification Program of the United States Patent and Trademark Office, and for other purposes. 

As ordered reported by the House Committee on the Judiciary 

on September 10, 2014. 

CBO estimates that implementing H.R. 5108 would have a negligible effect on net discretionary spending over the 2015–2019 period. Enacting H.R. 5108 would not affect direct spending or revenues; therefore, pay-as-you-go procedures do not apply. 

H.R. 5108 would authorize the Law School Clinic Certification 

Program at the Patent and Trademark Office (PTO) for 10 years 

after enactment of the bill. In 2008, PTO established the Law 

School Clinic Certification Pilot Program, which allows students at 

participating law schools to practice patent or trademark law before the agency under the guidance of a faculty supervisor in the 

school’s law clinic. Currently, 45 schools participate in the program, which costs about $200,000 each year to operate. 

Based on information from PTO, CBO expects that any additional actions the agency would take to implement H.R. 5108 would 

not have a significant effect on the agency’s workload, and thus, its 

spending. In addition, PTO is authorized to collect fees sufficient 

to offset its operating expenses; therefore, CBO estimates that the 

net budgetary effect of implementing H.R. 5108 would be negligible, assuming appropriations actions consistent with the agency’s authorities. 

H.R. 5108 contains no intergovernmental or private-sector mandates as defined in the Unfunded Mandates Reform Act and would 

not affect the budgets of state, local, or tribal governments. 

The CBO staff contact for this estimate is Susan Willie. The estimate was approved by Theresa Gullo, Deputy Assistant Director 

for Budget Analysis. 

Duplication of Federal Programs 

No provision of H.R. 5108 establishes or reauthorizes a program 

of the Federal Government known to be duplicative of another Federal program, a program that was included in any report from the 

Government Accountability Office to Congress pursuant to section 

21 of Public Law 111–139, or a program related to a program identified in the most recent Catalog of Federal Domestic Assistance. 

mstockstill on DSK4VPTVN1PROD with HEARINGS

5 

Disclosure of Directed Rule Makings 

The Committee estimates that H.R. 5108 specifically directs to be 

completed no specific rule makings within the meaning of 5 U.S.C. 

551. The Director of the U.S. Patent and Trademark Office may, 

by regulation, develop additional procedures for implementing the 

program. 

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, H.R. 5108, establishes 

the law school clinic certification program of the U.S. Patent and 

Trademark Office. 

Advisory on Earmarks 

In accordance with clause 9 of rule XXI of the Rules of the House 

of Representatives, H.R. 5108 does not contain any congressional 

earmarks, limited tax benefits, or limited tariff benefits as defined 

in clause 9(e), 9(f), or 9(g) of Rule XXI. 

Section-by-Section Analysis 

The following discussion describes the bill as reported by the 

Committee. 

Sec. 1. USPTO Law School Clinic Certification Program. Section 

1 establishes the ‘‘Law School Clinic Certification Program’’ at the 

U.S. Patent and Trademark Office. The Program allows students 

enrolled in a qualified law school clinic to practice patent and 

trademark law before the office for pro-bono clients that qualify for 

assistance from the law school’s clinic. The USPTO shall submit a 

report to Congress on the program within 2 years of the enactment 

of the Act. 

Æ 

mstockstill on DSK4VPTVN1PROD with HEARINGS