In the Senate of the United States,

June 26, 2002.

Resolved, That the bill from the House of Representatives (H.R. 2047) entitled ‘‘An Act to authorize appropriations for the United States Patent and Trademark Office for

fiscal year 2002, and for other purposes.’’, do pass with the

following

AMENDMENTS:

Strike out all after the enacting clause and insert:

1 SECTION 1. SHORT TITLE.

2 This Act may be cited as the ‘‘Patent and Trademark

3 Office Authorization Act of 2002’’.
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1 SEC. 2. AUTHORIZATION OF AMOUNTS AVAILABLE TO THE

2 PATENT AND TRADEMARK OFFICE.

3 (a) IN GENERAL.—There are authorized to be appro4 priated to the United States Patent and Trademark Office

5 for salaries and necessary expenses for each of the fiscal

6 years 2003 through 2008 an amount equal to the fees esti7 mated by the Secretary of Commerce to be collected in each

8 such fiscal year, respectively, under—

9 (1) title 35, United States Code; and

10 (2) the Act entitled ‘‘An Act to provide for the

11 registration and protection of trademarks used in

12 commerce, to carry out the provisions of certain inter13 national conventions, and for other purposes’’, ap14 proved July 5, 1946 (15 U.S.C. 1051 et seq.) (com15 monly referred to as the Trademark Act of 1946).

16 (b) ESTIMATES.—Not later than February 15, of each

17 fiscal year, the Undersecretary of Commerce for Intellectual

18 Property and the Director of the Patent and Trademark

19 Office (in this Act referred to as the Director) shall submit

20 an estimate of all fees referred to under subsection (a) to

21 be collected in the next fiscal year to the chairman and

22 ranking member of—

23 (1) the Committees on Appropriations and Judi24 ciary of the Senate; and

25 (2) the Committees on Appropriations and Judi26 ciary of the House of Representatives.
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1 SEC. 3. ELECTRONIC FILING AND PROCESSING OF PATENT

2 AND TRADEMARK APPLICATIONS.

3 (a) ELECTRONIC FILING AND PROCESSING.—Not later

4 than December 1, 2004, the Director shall complete the de5 velopment of an electronic system for the filing and proc6 essing of patent and trademark applications, that—

7 (1) is user friendly; and

8 (2) includes the necessary infrastructure to—

9 (A) allow examiners and applicants to send

10 all communications electronically; and

11 (B) allow the Office to process, maintain,

12 and search electronically the contents and his13 tory of each application.

14 (b) AUTHORIZATION OF APPROPRIATIONS.—Of

15 amounts authorized under section 2, there are authorized

16 to be appropriated to carry out subsection (a) of this section

17 not more than $50,000,000 for each of fiscal years 2003 and

18 2004. Amounts made available under this subsection shall

19 remain available until expended.

20 SEC. 4. ANNUAL REPORTS ON STRATEGIC PLAN.

21 In each of the 5 calendar years following the date of

22 enactment of this Act, the Secretary of Commerce shall sub23 mit a report to the Committees on the Judiciary of the Sen24 ate and the House of Representatives on—

25 (1) the progress made in implementing the 21st

26 Century Strategic Plan issued on June 3, 2002; and
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1 (2) any amendments made to the plan.

2 SEC. 5. DETERMINATION OF SUBSTANTIAL NEW QUESTION

3 OF PATENTABILITY IN REEXAMINATION PRO4 CEEDINGS.

5 (a) IN GENERAL.—Sections 303(a) and 312(a) of title

6 35, United States Code, are each amended by adding at

7 the end the following: ‘‘The existence of a substantial new

8 question of patentability is not precluded by the fact that

9 a patent or printed publication was previously cited by or

10 to the Office or considered by the Office.’’.

11 (b) EFFECTIVE DATE.—The amendments made by this

12 section shall apply with respect to any determination of the

13 Director of the United States Patent and Trademark Office

14 that is made under section 303(a) or 312(a) of title 35,

15 United States Code, on or after the date of the enactment

16 of this Act.

17 SEC. 6. APPEALS IN INTER PARTES REEXAMINATION PRO18 CEEDINGS.

19 (a) APPEALS BY THIRD-PARTY REQUESTER IN PRO20 CEEDINGS.—Section 315(b) of title 35, United States Code,

21 is amended to read as follows:

22 ‘‘(b) THIRD-PARTY REQUESTER.—A third-party

23 requester—

24 ‘‘(1) may appeal under the provisions of section

25 134, and may appeal under the provisions of sections
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1 141 through 144, with respect to any final decision

2 favorable to the patentability of any original or pro3 posed amended or new claim of the patent; and

4 ‘‘(2) may, subject to subsection (c), be a party to

5 any appeal taken by the patent owner under the pro6 visions of section 134 or sections 141 through 144.’’.

7 (b) APPEAL TO BOARD OF PATENT APPEALS AND

8 INTERFERENCES.—Section 134(c) of title 35, United States

9 Code, is amended by striking the last sentence.

10 (c) APPEAL TO COURT OF APPEALS FOR THE FEDERAL

11 CIRCUIT.—Section 141 of title 35, United States Code, is

12 amended in the third sentence by inserting ‘‘, or a third13 party requester in an inter partes reexamination pro14 ceeding, who is’’ after ‘‘patent owner’’.

15 (d) EFFECTIVE DATE.—The amendments made by this

16 section apply with respect to any reexamination proceeding

17 commenced on or after the date of the enactment of this

18 Act.

Amend the title so as to read: ‘‘An Act to authorize

appropriations for the United States Patent and Trademark Office for fiscal years 2003 through 2008, and for

other purposes.’’.

Attest:

Secretary.

107TH CONGRESS

2D SESSION H. R. 2047

AMENDMENTS