[Congressional Bills 117th Congress]
[From the U.S. Government Publishing Office]
[S. 2773 Reported in Senate (RS)]
<DOC>
Calendar No. 571
117th CONGRESS
2d Session
S. 2773
To amend the Leahy-Smith America Invents Act to address satellite
offices of the United States Patent and Trademark Office, and for other
purposes.
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
September 21, 2021
Mr. Leahy (for himself, Mr. Tillis, and Ms. Hirono) introduced the
following bill; which was read twice and referred to the Committee on
the Judiciary
December 1, 2022
Reported by Mr. Durbin, with an amendment
[Strike out all after the enacting clause and insert the part printed
in italic]
_______________________________________________________________________
A BILL
To amend the Leahy-Smith America Invents Act to address satellite
offices of the United States Patent and Trademark Office, and for other
purposes.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
<DELETED>SECTION 1. SHORT TITLE.</DELETED>
<DELETED> This Act may be cited as the ``Unleashing American
Innovators Act of 2021''.</DELETED>
<DELETED>SEC. 2. DEFINITIONS.</DELETED>
<DELETED> In this Act:</DELETED>
<DELETED> (1) Director.--The term ``Director'' means the
Under Secretary of Commerce for Intellectual Property and
Director of the Office.</DELETED>
<DELETED> (2) Office.--The term ``Office'' means the United
States Patent and Trademark Office.</DELETED>
<DELETED> (3) Patent pro bono programs.--The term ``patent
pro bono programs'' means the programs established pursuant to
section 32 of the Leahy-Smith America Invents Act (35 U.S.C. 2
note).</DELETED>
<DELETED> (4) Southeast region of the united states.--The
term ``southeast region of the United States'' means the area
of the United States that is comprised of the States of
Virginia, North Carolina, South Carolina, Georgia, Florida,
Tennessee, Alabama, Mississippi, Louisiana, and
Arkansas.</DELETED>
<DELETED>SEC. 3. SATELLITE OFFICES.</DELETED>
<DELETED> (a) Amendments to Purpose and Required Considerations.--
Section 23 of the Leahy-Smith America Invents Act (35 U.S.C. 1 note) is
amended--</DELETED>
<DELETED> (1) in subsection (b)--</DELETED>
<DELETED> (A) in paragraph (1)--</DELETED>
<DELETED> (i) by striking ``increase
outreach activities to''; and</DELETED>
<DELETED> (ii) by inserting after ``Office''
the following: ``, including by increasing
outreach activities, including to individual
innovators, small businesses, veterans, and any
other demographic group or category of
innovators that the Director may determine,
after notice in the Federal Register, to be
underrepresented in patent filings'';
and</DELETED>
<DELETED> (B) by striking paragraph (2) and
inserting the following:</DELETED>
<DELETED> ``(2) enhance patent examiner and administrative
patent judge retention, including patent examiners and
administrative patent judges from economically, geographically,
and demographically diverse backgrounds;''; and</DELETED>
<DELETED> (2) in subsection (c)(1)--</DELETED>
<DELETED> (A) in subparagraph (D), by striking
``and'' at the end;</DELETED>
<DELETED> (B) in subparagraph (E), by striking the
period at the end and inserting ``; and'';
and</DELETED>
<DELETED> (C) by adding at the end the
following:</DELETED>
<DELETED> ``(F) with respect to each office
established after January 1, 2021, shall consider the
proximity of the office to anchor institutions (such as
hospitals primarily serving veterans and institutions
of higher education) and populations that the Director
may determine to be underrepresented in patent filings,
including rural populations.''.</DELETED>
<DELETED> (b) Southeast Regional Office.--</DELETED>
<DELETED> (1) In general.--Not later than 3 years after the
date of enactment of this Act, the Director shall establish a
satellite office of the Office in the southeast region of the
United States.</DELETED>
<DELETED> (2) Considerations.--When establishing the office
required under paragraph (1), the Director shall consider the
following:</DELETED>
<DELETED> (A) The number of patent-intensive
industries located near the selection site.</DELETED>
<DELETED> (B) How many research-intensive
institutions, including institutions of higher
education, are located near the selection
site.</DELETED>
<DELETED> (C) The State and local government legal
and business frameworks that support intellectual
property-intensive industries located near the
selection site.</DELETED>
<DELETED> (c) Study on Additional Satellite Offices.--Not later than
2 years after the date of enactment of this Act, the Director shall
complete a study to determine whether additional satellite offices of
the Office are necessary to--</DELETED>
<DELETED> (1) achieve the purposes described in section
23(b) of the Leahy-Smith America Invents Act (35 U.S.C. 1
note), as amended by this section; and</DELETED>
<DELETED> (2) increase participation in the patent system by
women, people of color, veterans, individual inventors, or
members of any other demographic, geographic, or economic group
that the Director may determine to be underrepresented in
patent filings.</DELETED>
<DELETED>SEC. 4. COMMUNITY OUTREACH OFFICES.</DELETED>
<DELETED> (a) Establishment.--</DELETED>
<DELETED> (1) In general.--Subject to paragraphs (2) and
(3), not later than 5 years after the date of enactment of this
Act, the Director shall establish not fewer than 2 community
outreach offices in each region of the United States that, as
of that date of enactment, is served by--</DELETED>
<DELETED> (A) a satellite office of the Office;
or</DELETED>
<DELETED> (B) the principal office of the
Office.</DELETED>
<DELETED> (2) Restriction.--No community outreach office
established under paragraph (1) may be located in the same
State as--</DELETED>
<DELETED> (A) the principal office of the Office;
or</DELETED>
<DELETED> (B) any satellite office of the
Office.</DELETED>
<DELETED> (3) Requirement for northern new england region.--
</DELETED>
<DELETED> (A) In general.--The Director shall
establish not less than 1 community outreach office
under this subsection in the northern New England
region, which shall serve the States of Vermont, New
Hampshire, and Maine.</DELETED>
<DELETED> (B) Considerations.--In determining the
location for the office required to be established
under subparagraph (A), the Director shall give
preference to a location in which--</DELETED>
<DELETED> (i) as of the date of enactment of
this Act--</DELETED>
<DELETED> (I) there is located not
less than 1 public institution of
higher education and not less than 1
private institution of higher
education; and</DELETED>
<DELETED> (II) there are located not
more than 15 registered patent
attorneys, according to data from the
Office of Enrollment and Discipline of
the Office; and</DELETED>
<DELETED> (ii) according to data from the
2012 Survey of Business Owners conducted by the
Bureau of the Census, less than 45 percent of
the firms are owned by women, minorities, or
veterans.</DELETED>
<DELETED> (b) Purposes.--The purposes of the community outreach
offices established under subsection (a) are to--</DELETED>
<DELETED> (1) further achieve the purposes described in
section 23(b)(1) of the Leahy-Smith America Invents Act (35
U.S.C. 1 note), as amended by this Act;</DELETED>
<DELETED> (2) partner with local community organizations,
institutions of higher education, research institutions, and
businesses to create community-based programs that--</DELETED>
<DELETED> (A) provide education regarding the patent
system; and</DELETED>
<DELETED> (B) promote the career benefits of
innovation and entrepreneurship; and</DELETED>
<DELETED> (3) educate prospective inventors, including
veterans, individual inventors, and individuals from
demographic, geographic, or economic groups that the Director
may determine to be underrepresented in patent filings, about
all public and private resources available to potential patent
applicants, including the patent pro bono programs.</DELETED>
<DELETED> (c) Subordinate to Satellite Offices.--The community
outreach offices established under this section shall be subordinate,
and report directly, to the principal office of the Office or the
satellite office of the Office that corresponds to the region in which
that community outreach office is located, as applicable.</DELETED>
<DELETED>SEC. 5. UPDATES TO THE PATENT PRO BONO PROGRAM.</DELETED>
<DELETED> (a) Study and Updates.--</DELETED>
<DELETED> (1) In general.--Not later than 1 year after the
date of enactment of this Act, the Director shall--</DELETED>
<DELETED> (A) complete a study of the patent pro
bono programs; and</DELETED>
<DELETED> (B) submit the results of the study
required under subparagraph (A) to the Committee on the
Judiciary of the Senate and the Committee on the
Judiciary of the House of Representatives.</DELETED>
<DELETED> (2) Scope of the study.--The study required under
paragraph (1)(A) shall--</DELETED>
<DELETED> (A) assess--</DELETED>
<DELETED> (i) whether the patent pro bono
programs, as in effect on the date on which the
study is commenced, are sufficiently serving
veterans, individual inventors, and members of
demographic, geographic, and economic groups
that the Director may determine to be
underrepresented in patent filings;</DELETED>
<DELETED> (ii) whether the patent pro bono
programs are sufficiently funded to serve
prospective participants;</DELETED>
<DELETED> (iii) whether the participation
requirements of the patent pro bono programs,
including the requirement to demonstrate
knowledge of the patent system, serve as a
deterrent for prospective
participants;</DELETED>
<DELETED> (iv) the degree to which
prospective inventors are aware of the patent
pro bono programs;</DELETED>
<DELETED> (v) the degree to which the length
of prosecution time for pro bono applicants
serves as a deterrent for attorneys to
participate in the patent pro bono programs;
and</DELETED>
<DELETED> (vi) any other issue the Director
determines appropriate; and</DELETED>
<DELETED> (B) make recommendations for such
administrative and legislative action as may be
appropriate.</DELETED>
<DELETED> (b) Use of Results.--Upon completion of the study required
under subsection (a), the Director shall work with the Patent Pro Bono
Advisory Council, existing regional programs, and intellectual property
law associations across the United States to update the patent pro bono
programs in response to the findings of the study.</DELETED>
<DELETED> (c) Expansion of Income Eligibility.--The Director shall
work with and support existing (as of the date of enactment of this
Act) regional programs and intellectual property law associations
across the United States to expand eligibility for the patent pro bono
programs to an individual living in a household, the gross household
income of which is not more than 400 percent of the Federal poverty
line.</DELETED>
<DELETED>SEC. 6. PRE-PROSECUTION PATENTABILITY ASSESSMENT PILOT
PROGRAM.</DELETED>
<DELETED> (a) Pilot Program.--Not later than 1 year after the date
of enactment of this Act, the Director shall establish a pilot program
to assist first-time prospective patent applicants in assessing the
viability of a potential patent application submitted by such a
prospective applicant.</DELETED>
<DELETED> (b) Considerations.--In developing the pilot program
required under subsection (a), the Director shall establish--</DELETED>
<DELETED> (1) a notification process to notify a prospective
patent applicant seeking an assessment described in that
subsection that any assessment so provided may not be
considered an official ruling of patentability from the
Office;</DELETED>
<DELETED> (2) conditions to determine eligibility for the
pilot program, taking into consideration available
resources;</DELETED>
<DELETED> (3) reasonable limitations on the amount of time
to be spent providing assistance to each individual first-time
prospective patent applicant; and</DELETED>
<DELETED> (4) procedures for referring prospective patent
applicants to legal counsel, including through the patent pro
bono programs.</DELETED>
<DELETED>SEC. 7. FEE REDUCTION FOR SMALL AND MICRO ENTITIES.</DELETED>
<DELETED> (a) Title 35.--Section 41(h) of title 35, United States
Code, is amended--</DELETED>
<DELETED> (1) in paragraph (1), by striking ``50 percent''
and inserting ``75 percent or more, at the discretion of the
Director,''; and</DELETED>
<DELETED> (2) in paragraph (3), by striking ``75 percent''
and inserting ``90 percent or more, at the discretion of the
Director,''.</DELETED>
<DELETED> (b) Leahy-Smith America Invents Act.--Section 10(b) of the
Leahy Smith America Invents Act (35 U.S.C. 41 note) is amended by
striking ``75 percent'' and inserting ``90 percent or more, at the
discretion of the Director,''.</DELETED>
SECTION 1. SHORT TITLE.
This Act may be cited as the ``Unleashing American Innovators Act
of 2022''.
SEC. 2. DEFINITIONS.
In this Act:
(1) Director.--The term ``Director'' means the Under
Secretary of Commerce for Intellectual Property and Director of
the Office.
(2) Office.--The term ``Office'' means the United States
Patent and Trademark Office.
(3) Patent pro bono programs.--The term ``patent pro bono
programs'' means the programs established pursuant to section
32 of the Leahy-Smith America Invents Act (35 U.S.C. 2 note).
(4) Southeast region of the united states.--The term
``southeast region of the United States'' means the area of the
United States that is comprised of the States of Virginia,
North Carolina, South Carolina, Georgia, Florida, Tennessee,
Alabama, Mississippi, Louisiana, and Arkansas.
SEC. 3. SATELLITE OFFICES.
(a) Amendments to Purpose and Required Considerations.--Section 23
of the Leahy-Smith America Invents Act (35 U.S.C. 1 note) is amended--
(1) in subsection (b)--
(A) in paragraph (1)--
(i) by striking ``increase outreach
activities to''; and
(ii) by inserting after ``Office'' the
following: ``, including by increasing outreach
activities, including to individual inventors,
small businesses, veterans, low-income
populations, students, rural populations, and
any geographic group of innovators that the
Director may determine to be underrepresented
in patent filings''; and
(B) by striking paragraph (2) and inserting the
following:
``(2) enhance patent examiner and administrative patent
judge retention, including patent examiners and administrative
patent judges from economically, geographically, and
demographically diverse backgrounds;''; and
(2) in subsection (c)(1)--
(A) in subparagraph (D), by striking ``and'' at the
end;
(B) in subparagraph (E), by striking the period at
the end and inserting ``; and''; and
(C) by adding at the end the following:
``(F) with respect to each office established after
January 1, 2023, shall consider the proximity of the
office to anchor institutions (such as hospitals
primarily serving veterans and institutions of higher
education), individual inventors, small businesses,
veterans, low-income populations, students, rural
populations, and any geographic group of innovators
that the Director may determine to be underrepresented
in patent filings.''.
(b) Southeast Regional Office.--
(1) In general.--Not later than 3 years after the date of
enactment of this Act, the Director shall establish a satellite
office of the Office in the southeast region of the United
States.
(2) Considerations.--When selecting a site for the office
required under paragraph (1), the Director shall consider the
following:
(A) The number of patent-intensive industries
located near the site.
(B) How many research-intensive institutions,
including institutions of higher education, are located
near the site.
(C) The State and local government legal and
business frameworks that support intellectual property-
intensive industries located near the site.
(c) Study on Additional Satellite Offices.--Not later than 2 years
after the date of enactment of this Act, the Director shall complete a
study to determine whether additional satellite offices of the Office
are necessary to--
(1) achieve the purposes described in section 23(b) of the
Leahy-Smith America Invents Act (35 U.S.C. 1 note), as amended
by this section; and
(2) increase participation in the patent system by
individual inventors, small businesses, veterans, low-income
populations, students, rural populations, and any geographic
group of innovators that the Director may determine to be
underrepresented in patent filings.
SEC. 4. COMMUNITY OUTREACH OFFICES.
(a) Establishment.--
(1) In general.--Subject to paragraphs (2) and (3), not
later than 5 years after the date of enactment of this Act, the
Director shall establish not fewer than 4 community outreach
offices throughout the United States.
(2) Restriction.--No community outreach office established
under paragraph (1) may be located in the same State as--
(A) the principal office of the Office; or
(B) any satellite office of the Office.
(3) Requirement for northern new england region.--
(A) In general.--The Director shall establish not
less than 1 community outreach office under this
subsection in the northern New England region, which
shall serve the States of Vermont, New Hampshire, and
Maine.
(B) Considerations.--In determining the location
for the office required to be established under
subparagraph (A), the Director shall give preference to
a location in which--
(i) as of the date of enactment of this
Act--
(I) there is located not less than
1 public institution of higher
education and not less than 1 private
institution of higher education; and
(II) there are located not more
than 15 registered patent attorneys,
according to data from the Office of
Enrollment and Discipline of the
Office; and
(ii) according to data from the 2012 Survey
of Business Owners conducted by the Bureau of
the Census, less than 45 percent of the firms
(as that term is defined for the purposes of
that Survey) are owned by women, minorities, or
veterans.
(b) Purposes.--The purposes of the community outreach offices
established under subsection (a) are to--
(1) further achieve the purposes described in section
23(b)(1) of the Leahy-Smith America Invents Act (35 U.S.C. 1
note), as amended by this Act;
(2) partner with local community organizations,
institutions of higher education, research institutions, and
businesses to create community-based programs that--
(A) provide education regarding the patent system;
and
(B) promote the career benefits of innovation and
entrepreneurship; and
(3) educate prospective inventors, including individual
inventors, small businesses, veterans, low-income populations,
students, rural populations, and any geographic group of
innovators that the Director may determine to be
underrepresented in patent filings, about all public and
private resources available to potential patent applicants,
including the patent pro bono programs.
SEC. 5. UPDATES TO THE PATENT PRO BONO PROGRAMS.
(a) Study and Updates.--
(1) In general.--Not later than 1 year after the date of
enactment of this Act, the Director shall--
(A) complete a study of the patent pro bono
programs; and
(B) submit the results of the study required under
subparagraph (A) to the Committee on the Judiciary of
the Senate and the Committee on the Judiciary of the
House of Representatives.
(2) Scope of the study.--The study required under paragraph
(1)(A) shall--
(A) assess--
(i) whether the patent pro bono programs,
as in effect on the date on which the study is
commenced, are sufficiently serving prospective
and existing participants;
(ii) whether the patent pro bono programs
are sufficiently funded to serve prospective
participants;
(iii) whether any participation requirement
of the patent pro bono programs, including any
requirement to demonstrate knowledge of the
patent system, serves as a deterrent for
prospective participants;
(iv) the degree to which prospective
inventors are aware of the patent pro bono
programs;
(v) what factors, if any, deter attorneys
from participating in the patent pro bono
programs;
(vi) whether the patent pro bono programs
would be improved by expanding those programs
to include non-attorney advocates; and
(vii) any other issue the Director
determines appropriate; and
(B) make recommendations for such administrative
and legislative action as may be appropriate.
(b) Use of Results.--Upon completion of the study required under
subsection (a), the Director shall work with the Pro Bono Advisory
Council, the operators of the patent pro bono programs, and
intellectual property law associations across the United States to
update the patent pro bono programs in response to the findings of the
study.
(c) Expansion of Income Eligibility.--
(1) In general.--The Director shall work with and support,
including by providing financial support to, existing patent
pro bono programs and intellectual property law associations
across the United States to expand eligibility for the patent
pro bono programs to an individual living in a household, the
gross household income of which is not more than 400 percent of
the Federal poverty line.
(2) Rule of construction.--Nothing in paragraph (1) may be
construed to prevent a patent pro bono program from electing to
establish a higher eligibility level, as compared to the level
described in that paragraph.
SEC. 6. PRE-PROSECUTION ASSESSMENT PILOT PROGRAM.
(a) Pilot Program.--Not later than 1 year after the date of
enactment of this Act, the Director shall establish a pilot program to
assist first-time prospective patent applicants in assessing the
strengths and weaknesses of a potential patent application submitted by
such a prospective applicant.
(b) Considerations.--In developing the pilot program required under
subsection (a), the Director shall establish--
(1) a notification process to notify a prospective patent
applicant seeking an assessment described in that subsection
that any assessment so provided may not be considered an
official ruling of patentability from the Office;
(2) conditions to determine eligibility for the pilot
program, taking into consideration available resources;
(3) reasonable limitations on the amount of time to be
spent providing assistance to each individual first-time
prospective patent applicant;
(4) procedures for referring prospective patent applicants
to legal counsel, including through the patent pro bono
programs; and
(5) procedures to protect the confidentiality of the
information disclosed by prospective patent applicants.
SEC. 7. FEE REDUCTION FOR SMALL AND MICRO ENTITIES.
(a) Title 35.--Section 41(h) of title 35, United States Code, is
amended--
(1) in paragraph (1), by striking ``50 percent'' and
inserting ``60 percent''; and
(2) in paragraph (3), by striking ``75 percent'' and
inserting ``80 percent''.
(b) False Certifications.--Title 35, United States Code, is
amended--
(1) in section 41, by adding at the end the following:
``(j) Penalty for False Assertions.--In addition to any other
penalty available under law, an entity that is found to have falsely
asserted entitlement to a fee reduction under this section shall be
subject to a fine, to be determined by the Director, the amount of
which shall be not less than 3 times the amount that the entity failed
to pay as a result of the false assertion, whether the Director
discovers the false assertion before or after the date on which a
patent has been issued.''; and
(2) in section 123, by adding at the end the following:
``(f) Penalty for False Certifications.--In addition to any other
penalty available under law, an entity that is found to have falsely
made a certification under this section shall be subject to a fine, to
be determined by the Director, the amount of which shall be not less
than 3 times the amount that the entity failed to pay as a result of
the false certification, whether the Director discovers the false
certification before or after the date on which a patent has been
issued.''.
(c) Leahy-Smith America Invents Act.--Section 10(b) of the Leahy
Smith America Invents Act (35 U.S.C. 41 note) is amended--
(1) by striking ``50 percent'' and inserting ``60
percent''; and
(2) by striking ``75 percent'' and inserting ``80
percent''.
(d) Study on Fees.--
(1) In general.--Not later than 2 years after the date of
enactment of this Act, the Director shall--
(A) complete a study of the fees charged by the
Office; and
(B) submit the results of the study required under
subparagraph (A) to the Committee on the Judiciary of
the Senate and the Committee on the Judiciary of the
House of Representatives.
(2) Scope of study.--The study required under paragraph
(1)(A) shall--
(A) assess whether--
(i) fees for small and micro entities are
inhibiting the filing of patent applications by
those entities;
(ii) fees for examination should
approximately match the costs of examination
and what incentives are created by using
maintenance fees to cover the costs of
examination; and
(iii) the results of the assessments
performed under clauses (i) and (ii) counsel in
favor of changes to the fee structure of the
Office, such as--
(I) raising standard application
and examination fees;
(II) reducing standard maintenance
fees; and
(III) reducing the fees for small
and micro entities as a percentage of
standard application fees; and
(B) make recommendations for such administrative
and legislative action as may be appropriate.
Calendar No. 571
117th CONGRESS
2d Session
S. 2773
_______________________________________________________________________
A BILL
To amend the Leahy-Smith America Invents Act to address satellite
offices of the United States Patent and Trademark Office, and for other
purposes.
_______________________________________________________________________
December 1, 2022
Reported with an amendment