B-111648, MARCH 11, 1953, 32 COMP. GEN. 392

B-111648, MARCH 11, 1953, 32 COMP. GEN. 392

PATENT OFFICE FEES - PAYMENT BY GOVERNMENT AGENCIES WHILE 35 U.S.C. 41 AUTHORIZES AND DIRECTS THE PATENT OFFICE TO CHARGE AND COLLECT FEES FOR FURNISHING COPIES OF DOCUMENTS, RECORDING AND OTHER SERVICES, IT DOES NOT AUTHORIZE OR REQUIRE THE COLLECTION OF SUCH FEES FROM AGENCIES OF THE FEDERAL GOVERNMENT; NEITHER MAY THE PATENT OFFICE BE REIMBURSED BY THE AGENCIES FOR SUCH SERVICES UNDER SECTION 601 OF THE ECONOMY ACT OF 1932, AS AMENDED, WHICH CONTEMPLATES REIMBURSEMENT ONLY FOR SERVICES THAT ARE THE NORMAL FUNCTION OF BOTH THE PROCURING AND PERFORMING AGENCY.

COMPTROLLER GENERAL WARREN TO THE SECRETARY OF THE ARMY, MARCH 11, 1953:

REFERENCE IS MADE TO LETTER DATED AUGUST 26, 1952, FROM THE ACTING SECRETARY OF THE ARMY, QUESTIONING THE PROPRIETY OF THE APPLICATION, BY THE COMMISSIONER OF PATENTS, TO AGENCIES OF THE FEDERAL GOVERNMENT OF FEES AND CHARGES PRESCRIBED BY RULE 21 OF THE RULES OF PRACTICE IN PATENT CASES AND RULE 2.1 OF THE RULES OF PRACTICE IN TRADE-MARK CASES FOR THE FURNISHING BY THE PATENT OFFICE OR COPIES OF DOCUMENTS, RECORDING OF ASSIGNMENTS AND OTHER SERVICES. THE PRACTICE WAS QUESTIONED PARTICULARLY IN VIEW OF THE PROVISIONS OF THE ACT OF DECEMBER 19, 1942, 56 STAT. 1067, 5 U.S.C. 606, WHICH AUTHORIZES THE SECRETARY OF COMMERCE TO ESTABLISH REASONABLE FEES FOR PUBLICATIONS FURNISHED AND SERVICES RENDERED BUT EXCEPTS FROM SUCH AUTHORITY THE RIGHT TO FIX FEES FOR "THOSE SERVICES PERFORMED FOR OR PUBLICATIONS FURNISHED TO THE GOVERNMENT OF THE UNITED ATES.' AS STATED IN OFFICE LETTER OF OCTOBER 29, 1952, B-111648, TO YOUR PREDECESSOR, THE VIEWS OF THE SECRETARY OF COMMERCE WAS REQUESTED ON THE MATTER AND THEY NOW HAVE BEEN RECEIVED.

IT IS STATED IN THE LETTER OF THE SECRETARY OF COMMERCE THAT THE DEPARTMENT OF THE ARMY DOES NOT HAVE ANY TRADE-MARK BUSINESS WITH THE PATENT OFFICE OR SUCH BUSINESS IS SO TRIFLING AS TO BE INCONSEQUENTIAL. IN VIEW THEREOF, IT WILL BE CONSIDERED THAT THE LETTER OF THE ACTING SECRETARY OF THE ARMY REFERRED TO AND QUESTIONED ONLY THE EXTENSION OF RULE 21 OF THE RULES OF PRACTICE IN PATENT CASES TO AGENCIES OF THE FEDERAL GOVERNMENT.

IT IS POINTED OUT IN THE LETTER OF THE SECRETARY OF COMMERCE THAT THE PATENT LAWS ALWAYS HAVE CONTAINED A SCHEDULE OF SPECIFIC FEES, SUCH FEES PREVIOUSLY BEING ENUMERATED IN 35 U.S.C. (1946 EDITION) 78, AND NOW ARE INCORPORATED IN SECTION 41 OF THE REENACTMENT OF TITLE 35 OF THE CODE INTO POSITIVE LAW BY THE ACT OF JULY 19, 1952, 66 STAT. 792, 796. ALSO, IT IS STATED THEREIN THAT OTHER FEES WERE FIXED ADMINISTRATIVELY UNDER AUTHORITY OF LAWS OTHER THAN 5 U.S.C. 606, SUPRA, SUCH LAWS NOW BEING CODIFIED IN SECTION 41 (B) OF THE AFORESAID ACT OF JULY 19, 1952. SINCE IT THUS APPEARS THAT NONE OF THE FEES INVOLVED WERE ESTABLISHED PURSUANT TO THE ACT OF DECEMBER 19, 1942, SUPRA, AND AS SUCH ACT SPECIFICALLY PROVIDES THAT NOTHING THEREIN "SHALL ALTER, AMEND, MODIFY, OR REPEAL ANY EXISTING LAW PRESCRIBING FEES OR CHARGES OR AUTHORIZING THE PRESCRIBING OF FEES OR CHARGES FOR SERVICES PERFORMED OR FOR ANY PUBLICATIONS FURNISHED BY THE DEPARTMENT OF COMMERCE OR ANY OF ITS SEVERAL AGENCIES" THE FEES PRESCRIBED BY OR FIXED UNDER OTHER AUTHORITY OF LAW ARE NOT THEREBY AFFECTED. THEREFORE, THE PROVISION OF THE ACT OF DECEMBER 19, 1942, EXEMPTING FROM ITS TERMS ,SERVICES PERFORMED FOR OR PUBLICATIONS FURNISHED TO THE GOVERNMENT OF THE UNITED STATES" IS NOT APPLICABLE.

HOWEVER, ON THE OTHER HAND, THE STATUTES AUTHORIZING AND DIRECTING THE COLLECTION OF PATENT FEES HERE INVOLVED MAY NOT BE REGARDED AS AUTHORIZING OR REQUIRING THAT SUCH FEES BE COLLECTED FROM THE UNITED STATES OR ITS AGENCIES. AS AGAINST SUCH A CONSTRUCTION STANDS THE FAMILIAR CANON OF STATUTORY INTERPRETATION THAT THE SOVEREIGN IS NOT AFFECTED BY STATUTORY PROVISIONS UNLESS INCLUDED THEREIN BY NECESSARY IMPLICATION. IN RE TIDEWATER COAL EXCHANGE, 280 FED. 648, 31 COMP. GEN. 14. NONE OF THE SAID STATUTES SPECIFY EXPRESSLY OR APPEAR TO REQUIRE BY NECESSARY IMPLICATION THAT THE FEES BE COLLECTED FROM ANOTHER AGENCY OF THE GOVERNMENT. ACCORDINGLY, I HAVE TO ADVISE THAT THERE IS NO AUTHORITY OF LAW FOR THE IMPOSITION AND COLLECTION OF THE FEES INVOLVED FROM THE DEPARTMENT OF THE ARMY.

WHILE IT HAS BEEN SUGGESTED BY THE DEPARTMENT OF COMMERCE THAT THE CHARGES INVOLVED--- AT LEAST TO THE EXTENT THAT THEY REPRESENT THE COST OF RENDITION OF THE SERVICE--- ARE AUTHORIZED TO BE MADE UNDER SECTION 601 OF THE ECONOMY ACT OF 1932, AS AMENDED, 31 U.S.C. 686, THE SERVICES FOR THE MOST PART ARE REPORTED TO CONSIST OF FURNISHING PRINTED COPIES OF PATENTS, PHOTOSTATIC AND MANUSCRIPT COPIES OF RECORDS, THE FURNISHING OF CERTIFICATIONS AND THE RECORDATION OF PATENT ASSIGNMENTS. MANIFESTLY, THE FURNISHING OF CERTIFICATES AND THE RECORDATION OF ASSIGNMENTS PROPERLY CAN ONLY BE DONE BY THE PATENT OFFICE. ALSO, IT HAS BEEN HELD THAT COPIES OF PAPERS OF THAT OFFICE MAY NOT BE MADE OTHER THAN BY ITS EMPLOYEES. 2 OP. ATTY. GEN. 454. IT WAS FURTHER HELD BY THE ATTORNEY GENERAL IN THE SAID OPINION THAT THE RECEIPTS FROM CHARGES FOR SERVICES OF THE PATENT OFFICE PROPERLY MAY NOT BE USED FOR THE PURPOSE OF EMPLOYING AND PAYING OTHER PERSONS TO BE ENGAGED IN THE DUTIES OF THAT OFFICE. IT IS THEREFORE CLEAR THAT THE SERVICES HERE INVOLVED ARE THOSE WHICH NO OTHER GOVERNMENT AGENCY IS AUTHORIZED TO PERFORM. SINCE SECTION 601 OF THE ECONOMY ACT, 47 STAT. 417, CONTEMPLATES REIMBURSEMENT ONLY FOR THE PERFORMANCE OF SERVICE BY ONE AGENCY OF THE GOVERNMENT FOR ANOTHER WHERE THE PERFORMANCE IS A NORMAL FUNCTION OF BOTH THE PROCURING AND PERFORMING AGENCY, THE PROVISIONS THEREOF MAY NOT PROPERLY BE INVOKED IN THE INSTANT MATTER. SEE 17 COMP. GEN. 728.

THE CONGRESS ANNUALLY PROVIDES FUNDS TO THE PATENT OFFICE TO CARRY OUT ITS DUTIES AND RESPONSIBILITIES. UNDER SUCH CONDITIONS, THE EXPENSES APPEAR CLEARLY TO BE REQUIRED TO BE BORNE OUT OF THE APPROPRIATIONS OF THE PATENT OFFICE AND THE FUNDS OF THE DEPARTMENT OF THE ARMY ARE UNAVAILABLE FOR SUCH USE BY TRANSFER UNDER THE AUTHORITY OF SECTION 601 OF THE ECONOMY ACT OR OTHERWISE. SEE, IN THIS CONNECTION, B-81389 APRIL 7, 1949.