Unleashing American Innovators Act of 2022

117TH CONGRESS
2D SESSION

S. 2773
AN ACT

To amend the Leahy-Smith America Invents Act to address
satellite offices of the United States Patent and Trademark Office, and for other purposes.
1

Be it enacted by the Senate and House of Representa-

2 tives of the United States of America in Congress assembled,

2
1
2

SECTION 1. SHORT TITLE.

This Act may be cited as the ‘‘Unleashing American

3 Innovators Act of 2022’’.
4

SEC. 2. DEFINITIONS.

5

In this Act:

6

(1) DIRECTOR.—The term ‘‘Director’’ means

7

the Under Secretary of Commerce for Intellectual

8

Property and Director of the Office.

9
10
11

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

PRO BONO PROGRAMS.—The

term

12

‘‘patent pro bono programs’’ means the programs

13

established pursuant to section 32 of the Leahy-

14

Smith America Invents Act (35 U.S.C. 2 note).

15

(4) SOUTHEAST

REGION

OF

THE

UNITED

16

STATES.—The

17

States’’ means the area of the United States that is

18

comprised of the States of Virginia, North Carolina,

19

South Carolina, Georgia, Florida, Tennessee, Ala-

20

bama, Mississippi, Louisiana, and Arkansas.

21
22
23

term ‘‘southeast region of the United

SEC. 3. SATELLITE OFFICES.

(a) AMENDMENTS TO PURPOSE AND REQUIRED CONSIDERATIONS.—Section

23 of the Leahy-Smith America

24 Invents Act (35 U.S.C. 1 note) is amended—
25

(1) in subsection (b)—

26

(A) in paragraph (1)—
† S 2773 ES

3
1

(i) by striking ‘‘increase outreach ac-

2

tivities to’’; and

3

(ii) by inserting after ‘‘Office’’ the fol-

4

lowing: ‘‘, including by increasing outreach

5

activities, including to individual inventors,

6

small businesses, veterans, low-income pop-

7

ulations, students, rural populations, and

8

any geographic group of innovators that

9

the Director may determine to be under-

10

represented in patent filings’’; and

11

(B) by striking paragraph (2) and insert-

12

ing the following:

13

‘‘(2) enhance patent examiner and administra-

14

tive patent judge retention, including patent exam-

15

iners and administrative patent judges from eco-

16

nomically, geographically, and demographically di-

17

verse backgrounds;’’; and

18

(2) in subsection (c)(1)—

19
20

(A) in subparagraph (D), by striking
‘‘and’’ at the end;

21
22

(B) in subparagraph (E), by striking the
period at the end and inserting ‘‘; and’’; and

23

(C) by adding at the end the following:

24

‘‘(F) with respect to each office established

25

after January 1, 2023, shall consider the prox-

† S 2773 ES

4
1

imity of the office to anchor institutions (such

2

as hospitals primarily serving veterans and in-

3

stitutions of higher education), individual inven-

4

tors, small businesses, veterans, low-income

5

populations, students, rural populations, and

6

any geographic group of innovators that the Di-

7

rector may determine to be underrepresented in

8

patent filings.’’.

9
10

(b) SOUTHEAST REGIONAL OFFICE.—
(1) IN

GENERAL.—Not

later than 3 years after

11

the date of enactment of this Act, the Director shall

12

establish a satellite office of the Office in the south-

13

east region of the United States.

14

(2) CONSIDERATIONS.—When selecting a site

15

for the office required under paragraph (1), the Di-

16

rector shall consider the following:

17
18

(A) The number of patent-intensive industries located near the site.

19

(B) How many research-intensive institu-

20

tions, including institutions of higher education,

21

are located near the site.

22

(C) The State and local government legal

23

and business frameworks that support intellec-

24

tual property-intensive industries located near

25

the site.

† S 2773 ES

5
1

(c) STUDY

ON

ADDITIONAL SATELLITE OFFICES.—

2 Not later than 2 years after the date of enactment of this
3 Act, the Director shall complete a study to determine
4 whether additional satellite offices of the Office are nec5 essary to—
6

(1) achieve the purposes described in section

7

23(b) of the Leahy-Smith America Invents Act (35

8

U.S.C. 1 note), as amended by this section; and

9

(2) increase participation in the patent system

10

by individual inventors, small businesses, veterans,

11

low-income populations, students, rural populations,

12

and any geographic group of innovators that the Di-

13

rector may determine to be underrepresented in pat-

14

ent filings.

15
16
17

SEC. 4. COMMUNITY OUTREACH OFFICES.

(a) ESTABLISHMENT.—
(1) IN

GENERAL.—Subject

to paragraphs (2)

18

and (3), not later than 5 years after the date of en-

19

actment of this Act, the Director shall establish not

20

fewer than 4 community outreach offices throughout

21

the United States.

22

(2) RESTRICTION.—No community outreach of-

23

fice established under paragraph (1) may be located

24

in the same State as—

25

(A) the principal office of the Office; or

† S 2773 ES

6
1
2

(B) any satellite office of the Office.
(3) REQUIREMENT

3

LAND REGION.—

4

(A) IN

FOR NORTHERN NEW ENG-

GENERAL.—The

Director shall es-

5

tablish not less than 1 community outreach of-

6

fice under this subsection in the northern New

7

England region, which shall serve the States of

8

Vermont, New Hampshire, and Maine.

9

(B)

CONSIDERATIONS.—In

determining

10

the location for the office required to be estab-

11

lished under subparagraph (A), the Director

12

shall give preference to a location in which—

13

(i) as of the date of enactment of this

14

Act—

15

(I) there is located not less than

16

1 public institution of higher edu-

17

cation and not less than 1 private in-

18

stitution of higher education; and

19

(II) there are located not more

20

than 15 registered patent attorneys,

21

according to data from the Office of

22

Enrollment and Discipline of the Of-

23

fice; and

24

(ii) according to data from the 2012

25

Survey of Business Owners conducted by

† S 2773 ES

7
1

the Bureau of the Census, less than 45

2

percent of the firms (as that term is de-

3

fined for the purposes of that Survey) are

4

owned by women, minorities, or veterans.

5

(b) PURPOSES.—The purposes of the community out-

6 reach offices established under subsection (a) are to—
7

(1) further achieve the purposes described in

8

section 23(b)(1) of the Leahy-Smith America In-

9

vents Act (35 U.S.C. 1 note), as amended by this

10

Act;

11

(2) partner with local community organizations,

12

institutions of higher education, research institu-

13

tions, and businesses to create community-based

14

programs that—

15
16

(A) provide education regarding the patent
system; and

17

(B) promote the career benefits of innova-

18

tion and entrepreneurship; and

19

(3) educate prospective inventors, including in-

20

dividual inventors, small businesses, veterans, low-in-

21

come populations, students, rural populations, and

22

any geographic group of innovators that the Director

23

may determine to be underrepresented in patent fil-

24

ings, about all public and private resources available

† S 2773 ES

8
1

to potential patent applicants, including the patent

2

pro bono programs.

3
4
5

SEC. 5. UPDATES TO THE PATENT PRO BONO PROGRAMS.

(a) STUDY AND UPDATES.—
(1) IN

GENERAL.—Not

later than 1 year after

6

the date of enactment of this Act, the Director

7

shall—

8
9

(A) complete a study of the patent pro
bono programs; and

10

(B) submit the results of the study re-

11

quired under subparagraph (A) to the Com-

12

mittee on the Judiciary of the Senate and the

13

Committee on the Judiciary of the House of

14

Representatives.

15

(2) SCOPE

OF THE STUDY.—The

16

under paragraph (1)(A) shall—

17

(A) assess—

study required

18

(i) whether the patent pro bono pro-

19

grams, as in effect on the date on which

20

the study is commenced, are sufficiently

21

serving prospective and existing partici-

22

pants;

23

(ii) whether the patent pro bono pro-

24

grams are sufficiently funded to serve pro-

25

spective participants;

† S 2773 ES

9
1

(iii) whether any participation require-

2

ment of the patent pro bono programs, in-

3

cluding any requirement to demonstrate

4

knowledge of the patent system, serves as

5

a deterrent for prospective participants;

6

(iv) the degree to which prospective

7

inventors are aware of the patent pro bono

8

programs;

9

(v) what factors, if any, deter attor-

10

neys from participating in the patent pro

11

bono programs;

12

(vi) whether the patent pro bono pro-

13

grams would be improved by expanding

14

those programs to include non-attorney ad-

15

vocates; and

16

(vii) any other issue the Director de-

17

termines appropriate; and

18

(B) make recommendations for such ad-

19

ministrative and legislative action as may be ap-

20

propriate.

21

(b) USE OF RESULTS.—Upon completion of the study

22 required under subsection (a), the Director shall work
23 with the Pro Bono Advisory Council, the operators of the
24 patent pro bono programs, and intellectual property law
25 associations across the United States to update the patent

† S 2773 ES

10
1 pro bono programs in response to the findings of the
2 study.
3
4

(c) EXPANSION OF INCOME ELIGIBILITY.—
(1) IN

GENERAL.—The

Director shall work with

5

and support, including by providing financial sup-

6

port to, existing patent pro bono programs and intel-

7

lectual property law associations across the United

8

States to expand eligibility for the patent pro bono

9

programs to an individual living in a household, the

10

gross household income of which is not more than

11

400 percent of the Federal poverty line.

12

(2) RULE

OF

CONSTRUCTION.—Nothing

in

13

paragraph (1) may be construed to prevent a patent

14

pro bono program from electing to establish a higher

15

eligibility level, as compared to the level described in

16

that paragraph.

17

SEC. 6. PRE-PROSECUTION ASSESSMENT PILOT PROGRAM.

18

(a) PILOT PROGRAM.—Not later than 1 year after

19 the date of enactment of this Act, the Director shall estab20 lish a pilot program to assist first-time prospective patent
21 applicants in assessing the strengths and weaknesses of
22 a potential patent application submitted by such a pro23 spective applicant.

† S 2773 ES

11
1

(b) CONSIDERATIONS.—In developing the pilot pro-

2 gram required under subsection (a), the Director shall es3 tablish—
4

(1) a notification process to notify a prospective

5

patent applicant seeking an assessment described in

6

that subsection that any assessment so provided may

7

not be considered an official ruling of patentability

8

from the Office;

9

(2) conditions to determine eligibility for the

10

pilot program, taking into consideration available re-

11

sources;

12

(3) reasonable limitations on the amount of

13

time to be spent providing assistance to each indi-

14

vidual first-time prospective patent applicant;

15

(4) procedures for referring prospective patent

16

applicants to legal counsel, including through the

17

patent pro bono programs; and

18

(5) procedures to protect the confidentiality of

19

the information disclosed by prospective patent ap-

20

plicants.

21

SEC. 7. FEE REDUCTION FOR SMALL AND MICRO ENTITIES.

22

(a) TITLE 35.—Section 41(h) of title 35, United

23 States Code, is amended—
24
25

(1) in paragraph (1), by striking ‘‘50 percent’’
and inserting ‘‘60 percent’’; and

† S 2773 ES

12
1

(2) in paragraph (3), by striking ‘‘75 percent’’

2

and inserting ‘‘80 percent’’.

3

(b) FALSE CERTIFICATIONS.—Title 35, United

4 States Code, is amended—
5

(1) in section 41, by adding at the end the fol-

6

lowing:

7

‘‘(j) PENALTY

FOR

FALSE ASSERTIONS.—In addition

8 to any other penalty available under law, an entity that
9 is found to have falsely asserted entitlement to a fee reduc10 tion under this section shall be subject to a fine, to be
11 determined by the Director, the amount of which shall be
12 not less than 3 times the amount that the entity failed
13 to pay as a result of the false assertion, whether the Direc14 tor discovers the false assertion before or after the date
15 on which a patent has been issued.’’; and
16

(2) in section 123, by adding at the end the fol-

17

lowing:

18

‘‘(f) PENALTY

FOR

FALSE CERTIFICATIONS.—In ad-

19 dition to any other penalty available under law, an entity
20 that is found to have falsely made a certification under
21 this section shall be subject to a fine, to be determined
22 by the Director, the amount of which shall be not less than
23 3 times the amount that the entity failed to pay as a result
24 of the false certification, whether the Director discovers

† S 2773 ES

13
1 the false certification before or after the date on which
2 a patent has been issued.’’.
3

(c) LEAHY-SMITH AMERICA INVENTS ACT.—Section

4 10(b) of the Leahy Smith America Invents Act (35 U.S.C.
5 41 note) is amended—
6
7
8
9
10
11

(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

12

the date of enactment of this Act, the Director

13

shall—

14
15

(A) complete a study of the fees charged
by the Office; and

16

(B) submit the results of the study re-

17

quired under subparagraph (A) to the Com-

18

mittee on the Judiciary of the Senate and the

19

Committee on the Judiciary of the House of

20

Representatives.

21

(2) SCOPE

22

OF STUDY.—The

under paragraph (1)(A) shall—

23

(A) assess whether—

† S 2773 ES

study required

14
1

(i) fees for small and micro entities

2

are inhibiting the filing of patent applica-

3

tions by those entities;

4

(ii) fees for examination should ap-

5

proximately match the costs of examina-

6

tion and what incentives are created by

7

using maintenance fees to cover the costs

8

of examination; and

9

(iii) the results of the assessments

10

performed under clauses (i) and (ii) coun-

11

sel in favor of changes to the fee structure

12

of the Office, such as—

13

(I) raising standard application

14

and examination fees;

15

(II) reducing standard mainte-

16

nance fees; and

17

(III) reducing the fees for small

18

and micro entities as a percentage of

19

standard application fees; and

† S 2773 ES

15
1

(B) make recommendations for such ad-

2

ministrative and legislative action as may be ap-

3

propriate.
Passed the Senate December 6, 2022.
Attest:

Secretary.

† S 2773 ES

117TH CONGRESS
2D SESSION

S. 2773

AN ACT
To amend the Leahy-Smith America Invents Act to
address satellite offices of the United States Patent and Trademark Office, and for other purposes.