SIMPLIFYING THE PROCEDURE IN RESPECT TO PAYING FINAL FEES ON ALLOWED APPLICATIONS FOR PATENTS

JUNE 28, 1939.-Committed to the Committee of the Whole House on the state of the Union and ordered to be printed

Mr. SIROVICH, from the Committee on Patents, submitted the following

REPORT

[To accompany H. R. 6874]

The Committee on Patents, to whom was referred the bill (H. R. 6874) to repeal section 4896 of the Revised Statutes (U. S. C., title 35, sec. 8), and amend sections 4885 and 4934 of the Revised Statutes (U. S. C., title 35, secs. 41 and 78), having considered the same, report favorably thereon with amendments and recommend that the bill as amended do pass.

The amendments are as follows:

In the title, "4896" is changed to "4897" and "Sec. 8" to "Sec. 38". On page 1, line 3, "4896" is changed to "4897".

On page 1, line 10, after "Patents", insert "filed at any time after the application is allowed".

The amendment to page 1, line 3, of the text of the bill merely corrects a typographical error in designating the Revised Statute section number, the corresponding United States Code section number being correctly stated.

The amendment to the title is merely to make it agree with the text and corrects the same, and an additional typographical error. The amendment to page 1, line 10, of the text of the bill clarifies the time at which the showing of justifiable delay in paying the final fee may be made.

Under the present law two fees are required in obtaining a patent; a fee when an application for patent is filed in the Patent Office, and a fee for issuing the patent when the application has been examined and found allowable (called the final fee). The purpose of this measure is to simplify considerably the procedure in the payment of the second, or final, fee.

When an application has been examined and found allowable a notice is sent to the applicant, and the final fee of $30 is due within 6 months. If the fee is not paid within this time, the patent is withheld. However, within a further 6 months, a so-called renewal application with a filing fee of $30, may be filed. (The old papers can be used, however.) This renewal, if additional matters have been introduced, must be reexamined and the prosecution before the Patent Office started all over again. A second notice of allowance is sent when the renewal application is found ready for issue and the final fee of $30 is due within 6 months after this second notice.

The original intent of this procedure was to provide for issuing the patent when the time for payment of the final fee has been permitted to lapse through accident or unavoidable delay. Considered as a means for permitting the payment of a fee 6 months late, the procedure is remarkably involved. It readily permits the deliberate postponement of the issuance of a patent and is resorted to mainly for this purpose. Aside from the delays in going through the involved routine necessitated by the statute, additional matters may be deliberately introduced to cause further delays.

The proposed change eliminates renewals, consequently simplifying the practice and abolishing causes and opportunities for delays. In place thereof the bill provides simply that the fee may be accepted late, and the patent issued, merely by request to the Commissioner with the payment of a small additional fee and a showing that the delay is justifiable. The original intent of the statute is preserved and the procedure simplified, yet at the same time the opportunities for abuse are removed.

In addition to the above change the bill reduces the time for the payment of the final fee from 6 months to 3 months after the notice is sent. Payment of the fee is purely a mechanical act and 6 months is wholly unnecessary merely to make up one's mind to take the last step in obtaining the patent.

Earlier issuance of the patent is assured by this bill which merely eliminates entirely unnecessary wastage of time and forecloses opportunities for deliberate delay. The simplification of the procedure is shown by the following tabulation:

PRESENT PROCEDURE

1. Within 6 months of the date of the notice that an application is allowed, a final fee must be paid.

2. If the final fee is not paid within this time, the application is called forfeited, and if the subsequent steps are not taken, the application is considered abandoned.

3. Within 6 months after the final fee became due, a renewal application, with a fee, must be filed.

4. The renewal application is examined, and, if any additional matters have been introduced, the prosecution of the application before the Office starts all over again.

5. A second notice of allowance is set.

6. A final fee must be paid within 6 months after this second notice.

PROCEDURE UNDER BILL

1. The final fee must be paid within 3 months after the notice of allowance is sent.

2. If the fee is not paid within this time, the patent is not granted and the application is abandoned.

3. The fee may be accepted at a later time in cases of unavoidable delay.

The bill has the approval of the Commissioner of Patents, and is in substance one of the recommendations made by him when he was called upon by the Temporary National Economic Committee for suggestions to improve the patent laws. It also has the approval of the Department of Commerce and the Patent Office Advisory Committee to the Secretary of Commerce. Various patent-law organizations have endorsed it and it has likewise been approved by the National Advisory Council to the House Committee on Patents. This council has a membership of 24, selected from inventors, scientists, engineers, industrialists, economists, labor people, lawyers (both general and patent-law specialists), judges and others, to give a representative cross section of the country.

CHANGES IN EXISTING LAW

In compliance with paragraph 2a of rule XIII of the Rules of the House of Representatives, sections 4885 and 4934 of the Revised Statutes are set forth below with the words proposed to be omitted set forth in black brackets and the amendments shown in italics, and section 4897 of the Revised States which is proposed to be omitted is also set forth enclosed in heavy brackets.

SEC. 4885 (U. S. C., title 35, sec. 41). Every patent shall issue within a period of three months from the date of the payment of the final fee, which fee shall be paid not later than [six] three months from the time at which the application was passed and allowed and notice thereof was sent to the applicant or his agent; and if the final fee is not paid within that period the patent shall be withheld. Provided, however, That upon proof satisfactory to the Commissioner of Patents that the delay is or was justifiable the final fee may be paid within one year after the three months' period for payment has passed and the patent shall issue.

[SEC. 4897 (U. S. C., title 35, sec. 38). Any person who has an interest in an invention or discovery, whether as inventor, discoverer, or assignee, for which a patent was ordered to issue upon the payment of the final fee, but who fails to make payment thereof within six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant or his agent, shall have a right to make an application for a patent for such invention or discovery the same as in the case of an original application. But such second application must be made within one year after the allowance of the original application. But no person shall be held responsible in damages for the manufacture or use of any article or thing for which a patent was ordered to issue under such renewed application prior to the issue of the patent.]

SEC. 4934 (U. S. C., title 35, sec. 78). The following shall be the rates for patent fees:

On filing each original application for a patent, except in design cases, $30, and $1 for each claim in excess of twenty.

On issuing each original patent, except in design cases, $30, and $1 for each claim in excess of twenty.

In design cases: For three years and six months, $10; for seven years, $15; for fourteen years, $30.

On every application for the reissue of a patent, $30.

On filing each disclaimer, $10.

On an appeal for the first time from the primary examiners to the Board of Appeals, $15.

On every appeal from the examiner of interferences to the Board of Appeals, $25.

For uncertified printed copies of specifications and drawings of patents, 10 cents per copy: Provided, That the Commissioner of Patents may supply public libraries of the United States with such copies as published, for $50 per annum: Provided further, That the Commissioner of Patents may exchange copies of United States patents for those of foreign countries.

For copies of records made by the Patent Office, excluding printed copies, 10 cents per hundred words.

For each certificate, 50 cents.

For recording every assignment, agreement, power of attorney, or other paper not exceeding six pages, $3; for each additional two pages or less, $1; for each additional patent or application included or involved in one writing, where more than one is so included or involved, 50 cents additional.

For copies of drawings, the reasonable cost of making them.

On filing each petition for the revival of an abandoned application for a patent or for the delayed payment of the fee for issuing each patent, $10.