B-111648, JULY 13, 1953, 33 COMP. GEN. 27

B-111648, JULY 13, 1953, 33 COMP. GEN. 27

PATENT OFFICE FEES - PAYMENT BY GOVERNMENT AGENCIES AGENCIES OF THE FEDERAL GOVERNMENT MAY NOT PAY PATENT OFFICE FEES PRESCRIBED IN RULES OF PRACTICE IN PATENT CASES FOR SERVICES PERFORMED BY THE PATENT OFFICE IN CONNECTION WITH THE ADMINISTRATION OF THE PATENT AND TRADE-MARK LAWS. 32 COMP. GEN. 392 AMPLIFIED.

ACTING COMPTROLLER GENERAL FISHER TO THE SECRETARY OF COMMERCE, JULY 13, 1953:

REFERENCE IS MADE TO YOUR LETTER OF MAY 13, 1953, REQUESTING RECONSIDERATION OF DECISION OF THIS OFFICE DATED MARCH 11, 1953, B 111648, 32 COMP. GEN. 392, WHEREIN IT WAS HELD GENERALLY THAT NONE OF THE STATUTES PRESCRIBING SCHEDULES OF PATENT FEES REQUIRE EXPRESSLY OR BY NECESSARY IMPLICATION THE COLLECTION OF FEES FROM OTHER AGENCIES OF THE GOVERNMENT. AS SUPPORT FOR THIS CONCLUSION REFERENCE WAS MADE TO THE CANON OF STATUTORY INTERPRETATION THAT THE SOVEREIGN IS NOT AFFECTED BY STATUTORY PROVISIONS UNLESS EXPRESSLY NAMED THEREIN OR INCLUDED BY NECESSARY IMPLICATION.

IT IS URGED IN YOUR LETTER THAT THE CITED RULE OF STATUTORY INTERPRETATION SHOULD NOT BE APPLIED TO THE INSTANT SITUATION SINCE THE STATUTE EXPLICITLY PROVIDES FOR FEES, MAKING NO EXCEPTIONS THERETO; THAT "WHERE THE LANGUAGE OF THE STATUTE IS CLEAR AND UNAMBIGUOUS, IT MUST BE HELD TO MEAN WHAT IT CLEARLY EXPRESSES; " AND THAT THE SPECIFIC EXEMPTION OF THE TENNESSEE VALLEY AUTHORITY FROM THE PAYMENT OF FEES FOR COPIES OF DOCUMENTS FURNISHED BY THE PATENT OFFICE, UNDER THE MAXIM " EXPRESSIO UNIUS EST EXCLUSIO ALTERIUS," MUST LOGICALLY MEAN THAT THE FEES ARE APPLICABLE TO ALL OTHER GOVERNMENT AGENCIES. IT IS FURTHER URGED THAT TO HOLD THAT SUCH AGENCIES MAY AVAIL THEMSELVES OF THE GENERAL PROVISIONS OF THE STATUTES PROVIDING FOR THE SUPPLYING OF SERVICES AND DOCUMENTS BY THE PATENT OFFICE BUT ARE NOT BOUND BY THE PROVISIONS REQUIRING PAYMENT WOULD CONTRAVENE THE PRINCIPLE THAT WHERE THE SOVEREIGN CLAIMS THE BENEFITS OF A STATUTE, IT IS BOUND BY THE INCIDENTAL CONDITIONS ATTACHED THERETO, INCLUDING THE PAYMENT OF COSTS FOR SUCH SERVICES. ALSO, IT IS STATED THAT THE TRADE-MARK STATUTE (15 U.S.C. 1051-1127) IS ON A PAR WITH THE PATENT STATUTE SO FAR AS CONCERNS THE PAYMENT OF FEES; THAT NO EXCEPTION IS STATED THEREIN IN FAVOR OF THE GOVERNMENT OR ANY GOVERNMENT AGENCY, OTHER THAN THE FEDERAL TRADE COMMISSION, TO THE PAYMENT OF FEES FOR ALL SERVICES RENDERED AND THE GOVERNMENT DEPARTMENTS AND AGENCIES CUSTOMARILY PAY THE REQUIRED FEES WHEN THEY HAVE OCCASION TO TAKE RECOURSE IN THE PATENT OFFICE TO THE TRADE-MARK STATUTE. AS FURTHER BEARING ON THE MATTER OF STATUTORY CONSTRUCTION, YOU DIRECT ATTENTION TO VARIOUS OTHER STATUTES AUTHORIZING OR PRESCRIBING THE COLLECTION OF FEES FOR SERVICES RENDERED BY CERTAIN GOVERNMENT AGENCIES WHICH SPECIFICALLY EXCEPT THE GOVERNMENT FROM THE PAYMENT OF SUCH FEES, CONTENDING THAT IF THE CANON OF STATUTORY CONSTRUCTION THAT THE SOVEREIGN IS NOT AFFECTED BY STATUTORY PROVISIONS UNLESS EXPRESSLY NAMED THEREIN OR INCLUDED BY NECESSARY IMPLICATION, WERE APPLICABLE, THERE WOULD BE NO REASON FOR SPECIFICALLY EXCEPTING THE GOVERNMENT. ALSO, IT IS ARGUED THAT THE PRESENCE OF EXCEPTIONS IN FAVOR OF THE GOVERNMENT IN SOME FEE STATUTES WOULD INDICATE THAT GOVERNMENT AGENCIES ARE NOT EXCEPTED FROM STATUTES NOT SO PROVIDING. FINALLY, IN VIEW OF DOUBT AS TO WHETHER THE DECISION OF MARCH 11 RULED ON THE PROPRIETY OF PAYMENT OF PATENT FEES OTHER THAN THOSE SPECIFICALLY QUESTIONED BY THE DEPARTMENT OF THE ARMY, IT IS REQUESTED THAT THE SCOPE OF THE RULING BE CLARIFIED.

THE CANON OF CONSTRUCTION CITED IN THE DECISION OF MARCH 11, AS WELL AS THOSE URGED FOR CONSIDERATION IN YOUR LETTER, IS MERELY AN AID IN ARRIVING AT THE MEANING OF THE STATUTE. IT IS THE LEGISLATIVE INTENT WHICH MUST CONTROL; AND, IN ARRIVING AT THE LEGISLATIVE INTENT, THE ENTIRE STATUTE, ITS FORMS, ITS SEVERAL PARTS, ITS PURPOSE, ITS RELATION TO OTHER STATUTES, AND THE EFFECT OF CONSTRUING IT ONE WAY OR ANOTHER, MUST BE CONSIDERED.

THE BASIC PURPOSE OF PRESCRIBING FEES FOR SERVICES RENDERED BY THE PATENT OFFICE MUST BE TO REIMBURSE THE UNITED STATES, AT LEAST IN PART, FOR THE COST OF SUCH SERVICES. OBVIOUSLY, SUCH COSTS CAN BE RECOVERED, IN REALITY, ONLY BY THE COLLECTION OF CHARGES OR FEES FROM PRIVATE INDIVIDUALS OR INTERESTS, SINCE PAYMENTS BY OTHER FEDERAL AGENCIES CONSTITUTE, IN EFFECT, MERELY A TRANSFER OF FUNDS FROM ONE POCKET TO ANOTHER, AND DO NOT RESULT IN THE NET RECOVERY OF ANY COSTS BY THE GOVERNMENT. IN FACT, PAYMENT AND COLLECTION PROCEDURES WOULD ENTAIL BOOKKEEPING AND OTHER EXPENSES WHICH IN THE FINAL ANALYSIS WOULD INVOLVE AN ECONOMICAL WASTE OF FEDERAL FUNDS. THIS FACTOR ALONE IS PERSUASIVE IN RESOLVING THE QUESTION.

SUCH IS THE UNDERLYING PHILOSOPHY OF THE ACT OF DECEMBER 19, 1942, 56 STAT. 1067, 5 U.S.C. 606, AND OF THE OTHER STATUTES REFERRED TO IN YOUR LETTER, WHICH, WHILE AUTHORIZING OR PRESCRIBING THE ASSESSMENT OF FEES FOR SERVICES RENDERED, SPECIFICALLY EXCEPT OTHER BRANCHES OF THE GOVERNMENT FROM THE PAYMENT OF SUCH FEES. THE PRESENCE IN CERTAIN STATUTES OF AN EXCEPTION IN FAVOR OF THE GOVERNMENT AS TO THE PAYMENT OF FEES DOES NOT NECESSARILY IMPLY THAT FEES ARE TO BE COLLECTED FROM GOVERNMENT AGENCIES UNDER STATUTES CONTAINING NO SUCH SPECIFIC EXCEPTION. IT IS AN ELEMENT TO BE CONSIDERED, BUT IT MAY ONLY SIGNIFY THAT THE CONGRESS IN THOSE INSTANCES WAS CONSCIOUSLY AWARE OF THE MATTER AND DECIDED TO EMPHASIZE THE EXCLUSION OF THE GOVERNMENT FROM THE PAYMENT OF FEES. ON THE SAME THEORY, I CANNOT AGREE THAT BECAUSE SOME PROVISIONS OF THE PATENT LAWS MAY APPLY TO THE GOVERNMENT WITHOUT EXPRESS INCLUSION ALL SECTIONS TO WHICH NO SUCH EXCEPTION IS SPECIFIED APPLY WITH EQUAL FORCE. THE VERY STATUTE WHICH YOU PRESENT IN SUPPORT OF THAT VIEW--- THE SECTION OF THE TENNESSEE VALLEY AUTHORITY ACT, 55 STAT. 775, WHICH SPECIFICALLY EXCEPTS THE AUTHORITY FROM THE PAYMENT OF PATENT OFFICE FEES FOR THE FURNISHING OF COPIES OF DOCUMENTS, SECTION 19 OF THE ACT OF MAY 18, 1933, 48 STAT. 58, 68; 16 U.S.C. 831R--- REFUTES THE PROPOSITION. THAT SECTION PROVIDES THAT " THE CORPORATION, AS AN INSTRUMENTALITY AND AGENCY OF THE GOVERNMENT OF THE UNITED STATES * * *," SHALL BE FURNISHED BY THE COMMISSIONER OF PATENTS WITH COPIES OF DOCUMENTS ON FILE IN THE PATENT OFFICE WITHOUT PAYMENT OF FEES. RATHER THAN INDICATING AN INTENT THAT ONLY THE TENNESSEE VALLEY AUTHORITY SHOULD BE EXCEPTED FROM THE PAYMENT OF PATENT OFFICE FEES, IT APPEARS THAT THE STATUTORY LANGUAGE WAS DESIGNED PRIMARILY TO REQUIRE THAT THE AUTHORITY, AS A GOVERNMENT CORPORATION, SHOULD BE ACCORDED THE SAME PREFERENTIAL TREATMENT AND EXEMPTION FROM THE PAYMENT OF FEES AS ANY OTHER "INSTRUMENTALITY AND AGENCY OF THE GOVERNMENT.' HOUSE REPORT NO. 48, 73D CONGRESS, EXPLAINS THIS SECTION AS "MERELY A DECLARATION THAT THE AUTHORITY IS THE AGENT OF THE UNITED STATES IN CARRYING OUT ITS CONSTITUTIONAL POWERS.' LIKEWISE, WITH RESPECT TO THE SPECIFIC EXEMPTION OF THE FEDERAL TRADE COMMISSION (15 U.S.C. 1064) FROM THE PAYMENT OF THE FEE PRESCRIBED IN THE TRADE-MARK STATUTE UPON APPLICATION FOR CANCELLATION OF A REGISTERED MARK, A REVIEW OF THE CONGRESSIONAL HEARINGS IN THE MATTER ESTABLISHES THAT THE INVOLVED BILL, AS ORIGINALLY PROPOSED, WAS AMENDED TO INCLUDE THE CITED PROVISION FOR THE PURPOSE OF CONFERRING ON THE GOVERNMENT, IN GENERAL, THE SAME RIGHT TO APPLY FOR CANCELLATION OF A REGISTERED MARK AS THAT ACCORDED TO PRIVATE INDIVIDUALS AND FIRMS. ALSO, IT APPEARS THAT THE FEDERAL TRADE COMMISSION WAS SPECIFICALLY MENTIONED MERELY BECAUSE IT IS THE AGENCY, ACTING ON BEHALF OF THE GOVERNMENT, MOST LIKELY TO BE CONCERNED AND INVOLVED IN MATTERS OF THIS NATURE. SEE THE CONGRESSIONAL RECORD OF JUNE 28, 1946, PAGE 7890, WHEREIN, IN EXPLANATION OF THIS PROVISION OF THE BILL, IT IS STATED BY SENATOR O MAHONEY THAT---

THE INTENT OF CONGRESS TO PROTECT THE PUBLIC FROM THE ABUSE OF TRADE- MARKS AND TRADE NAMES WAS DEMONSTRATED BY THE ADOPTION OF AN AMENDMENT PERMITTING THE FEDERAL TRADE COMMISSION TO APPLY TO CANCEL A MARK.

IN CONCLUSION, IT IS THE STATUTORY DUTY OF THE PATENT OFFICE TO FURNISH SERVICES BOTH TO THE GOVERNMENT AND TO THE PUBLIC IN CONNECTION WITH THE ADMINISTRATION OF THE PATENT AND TRADE-MARK LAWS. THE CONGRESS ANNUALLY PROVIDES FUNDS TO CARRY OUT THESE DUTIES AND RESPONSIBILITIES. REPEATEDLY, IN ITS ANNUAL REPORTS TO THE CONGRESS, YOUR DEPARTMENT HAS COMMENTED ON THE EXTENT OF THE FREE SERVICES FURNISHED BY THE PATENT OFFICE TO OTHER BRANCHES OF THE GOVERNMENT. IN THE HEARINGS BEFORE THE SUBCOMMITTEE OF THE COMMITTEE ON APPROPRIATIONS, HOUSE OF REPRESENTATIVES, IN SUPPORT OF THE BUDGET REQUEST OF $12,200,000 FOR THE PATENT OFFICE FOR THE FISCAL YEAR 1953, IT IS STATED ON PAGE 375 BY THE FORMER COMMISSIONER OF PATENTS THAT " WE ARE DOING OUR UTMOST * * * TO MAINTAIN AT A LEVEL OF MINIMUM ADEQUACY THE PATENT AND TRADE-MARK SERVICES WHICH THE OFFICE IS CHARGED WITH PERFORMING FOR OTHER GOVERNMENT AGENCIES AND THE PUBLIC.' AGAIN, ON PAGE 377 OF THE " HEARINGS," IT IS STATED THAT "OUR BUDGET HAS TO SUPPORT SERVICES VALUED AT ABOUT THREE-FOURTHS OF $1,000,000 A YEAR FOR OTHER GOVERNMENT DEPARTMENTS, FOREIGN GOVERNMENTS, AND PUBLIC LIBRARIES * * *. THAT IS QUITE A MATERIAL ITEM THAT WE HAVE TO ABSORB IN OUR BUDGET.' AGAIN, ON PAGE 378, THERE IS INCLUDED A TABLE SHOWING THE ITEMS OR SERVICES FURNISHED FREE OF CHARGE TO OTHER GOVERNMENT DEPARTMENTS AND THE ESTIMATED REVENUE IF FEES WERE CHARGED. ONLY A PART OF THESE SERVICES CAN BE IDENTIFIED AS COVERED BY THE SPECIFIC EXEMPTION TO THE PAYMENT OF PATENT FEES WHERE THE APPLICANT FOR A PATENT IS AN EMPLOYEE OF THE GOVERNMENT (35 U.S.C., 1946 ED., 45). HENCE, I AM INCLINED TO VIEW THIS SITUATION AS FALLING UNDER THE GENERAL RULE THAT PAYMENT FOR SERVICES RENDERED BY ONE AGENCY OF THE GOVERNMENT FOR ANOTHER IS NOT AUTHORIZED WHERE THE SERVICES ARE REQUIRED BY LAW IN CARRYING OUT THE NORMAL FUNCTIONS OF THE PERFORMING AGENCY AND FOR WHICH APPROPRIATIONS ARE SPECIFICALLY PROVIDED. SEE 16 COMP. GEN. 333; 17 ID. 728; 31 ID. 14.

ACCORDINGLY, ON THE BASIS OF THE PRESENT RECORD, SINCE THERE IS NOTHING IN THE LEGISLATIVE HISTORY OF THE STATUTES HERE INVOLVED OR OTHERWISE MANIFESTING AN INTENT TO AUTHORIZE OR REQUIRE THAT FEES BE COLLECTED FROM THE UNITED STATES OR ITS AGENCIES FOR SERVICES PERFORMED BY THE PATENT OFFICE, THE DECISION OF MARCH 11, 1953, IS AFFIRMED. AND, AS TO THE SCOPE OF THAT DECISION, YOU ARE ADVISED THAT THE PAYMENT BY OTHER AGENCIES OF THE FEDERAL GOVERNMENT OF ANY OF THE FEES AND CHARGES PRESCRIBED BY RULE 21 OF THE RULES OF PRACTICE IN PATENT CASES IS NOT AUTHORIZED.