[Congressional Bills 108th Congress]
[From the U.S. Government Publishing Office]
[H.R. 1561 Referred in Senate (RFS)]

  2d Session
                                H. R. 1561


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                             March 4, 2004

  Received; read twice and referred to the Committee on the Judiciary

_______________________________________________________________________

                                 AN ACT


 
To amend title 35, United States Code, with respect to patent fees, and 
                          for other purposes.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``United States Patent and Trademark 
Fee Modernization Act of 2004''.

SEC. 2. FEES FOR PATENT SERVICES.

    (a) General Patent Fees.--Section 41(a) of title 35, United States 
Code, is amended to read as follows:
    ``(a) General Fees.--The Director shall charge the following fees:
            ``(1) Filing and basic national fees.--
                    ``(A) On filing each application for an original 
                patent, except for design, plant, or provisional 
                applications, $300.
                    ``(B) On filing each application for an original 
                design patent, $200.
                    ``(C) On filing each application for an original 
                plant patent, $200.
                    ``(D) On filing each provisional application for an 
                original patent, $200.
                    ``(E) On filing each application for the reissue of 
                a patent, $300.
                    ``(F) The basic national fee for each international 
                application filed under the treaty defined in section 
                351(a) of this title entering the national stage under 
                section 371 of this title, $300.
                    ``(G) In addition, excluding any sequence listing 
                or computer program listing filed in an electronic 
                medium as prescribed by the Director, for any 
                application the specification and drawings of which 
                exceed 100 sheets of paper (or equivalent as prescribed 
                by the Director if filed in an electronic medium), $250 
                for each additional 50 sheets of paper (or equivalent 
                as prescribed by the Director if filed in an electronic 
                medium) or fraction thereof.
            ``(2) Excess claims fees.--In addition to the fee specified 
        in paragraph (1)--
                    ``(A) on filing or on presentation at any other 
                time, $200 for each claim in independent form in excess 
                of 3;
                    ``(B) on filing or on presentation at any other 
                time, $50 for each claim (whether dependent or 
                independent) in excess of 20; and
                    ``(C) for each application containing a multiple 
                dependent claim, $360.
        For the purpose of computing fees under this paragraph, a 
        multiple dependent claim referred to in section 112 of this 
        title or any claim depending therefrom shall be considered as 
        separate dependent claims in accordance with the number of 
        claims to which reference is made. The Director may by 
        regulation provide for a refund of any part of the fee 
        specified in this paragraph for any claim that is canceled 
        before an examination on the merits, as prescribed by the 
        Director, has been made of the application under section 131 of 
        this title. Errors in payment of the additional fees under this 
        paragraph may be rectified in accordance with regulations 
        prescribed by the Director.
            ``(3) Examination fees.--
                    ``(A) For examination of each application for an 
                original patent, except for design, plant, provisional, 
                or international applications, $200.
                    ``(B) For examination of each application for an 
                original design patent, $130.
                    ``(C) For examination of each application for an 
                original plant patent, $160.
                    ``(D) For examination of the national stage of each 
                international application, $200.
                    ``(E) For examination of each application for the 
                reissue of a patent, $600.
        The provisions of section 111(a)(3) of this title relating to 
        the payment of the fee for filing the application shall apply 
        to the payment of the fee specified in this paragraph with 
        respect to an application filed under section 111(a) of this 
        title. The provisions of section 371(d) of this title relating 
        to the payment of the national fee shall apply to the payment 
        of the fee specified in this paragraph with respect to an 
        international application. The Director may by regulation 
        provide for a refund of any part of the fee specified in this 
        paragraph for any applicant who files a written declaration of 
        express abandonment as prescribed by the Director before an 
        examination has been made of the application under section 131 
        of this title, and for any applicant who provides a search 
        report that meets the conditions prescribed by the Director.
            ``(4) Issue fees.--
                    ``(A) For issuing each original patent, except for 
                design or plant patents, $1,400.
                    ``(B) For issuing each original design patent, 
                $800.
                    ``(C) For issuing each original plant patent, 
                $1,100.
                    ``(D) For issuing each reissue patent, $1,400.
            ``(5) Disclaimer fee.--On filing each disclaimer, $130.
            ``(6) Appeal fees.--
                    ``(A) On filing an appeal from the examiner to the 
                Board of Patent Appeals and Interferences, $500.
                    ``(B) In addition, on filing a brief in support of 
                the appeal, $500, and on requesting an oral hearing in 
                the appeal before the Board of Patent Appeals and 
                Interferences, $1,000.
            ``(7) Revival fees.--On filing each petition for the 
        revival of an unintentionally abandoned application for a 
        patent, for the unintentionally delayed payment of the fee for 
        issuing each patent, or for an unintentionally delayed response 
        by the patent owner in any reexamination proceeding, $1,500, 
        unless the petition is filed under section 133 or 151 of this 
        title, in which case the fee shall be $500.
            ``(8) Extension fees.--For petitions for 1-month extensions 
        of time to take actions required by the Director in an 
        application--
                    ``(A) on filing a first petition, $120;
                    ``(B) on filing a second petition, $330; and
                    ``(C) on filing a third or subsequent petition, 
                $570.''.
    (b) Patent Maintenance Fees.--Section 41(b) of title 35, United 
States Code, is amended to read as follows:
    ``(b) Maintenance Fees.--The Director shall charge the following 
fees for maintaining in force all patents based on applications filed 
on or after December 12, 1980:
            ``(1) 3 years and 6 months after grant, $900.
            ``(2) 7 years and 6 months after grant, $2,300.
            ``(3) 11 years and 6 months after grant, $3,800.
Unless payment of the applicable maintenance fee is received in the 
United States Patent and Trademark Office on or before the date the fee 
is due or within a grace period of 6 months thereafter, the patent will 
expire as of the end of such grace period. The Director may require the 
payment of a surcharge as a condition of accepting within such 6-month 
grace period the payment of an applicable maintenance fee. No fee may 
be established for maintaining a design or plant patent in force.''.
    (c) Patent Search Fees.--Section 41(d) of title 35, United States 
Code, is amended to read as follows:
    ``(d) Patent Search and Other Fees.--
            ``(1) Patent search fees.--(A) The Director shall charge a 
        fee for the search of each application for a patent, except for 
        provisional applications. The Director shall establish the fees 
        charged under this paragraph to recover an amount not to exceed 
        the estimated average cost to the Office of searching 
        applications for patent either by acquiring a search report 
        from a qualified search authority, or by causing a search by 
        Office personnel to be made, of each application for patent. 
        For the 3-year period beginning on October 1, 2004, the fee for 
        a search by a qualified search authority of a patent 
        application described in clause (i), (iv), or (v) of 
        subparagraph (B) may not exceed $500, of a patent application 
        described in clause (ii) of subparagraph (B) may not exceed 
        $100, and of a patent application described in clause (iii) of 
        subparagraph (B) may not exceed $300. The Director may not 
        increase any such fee by more than 20 percent in each of the 
        next 3 1-year periods, and the Director may not increase any 
        such fee thereafter.
            ``(B) For purposes of determining the fees to be 
        established under this paragraph, the cost to the Office of 
        causing a search of an application to be made by Office 
        personnel shall be deemed to be--
                    ``(i) $500 for each application for an original 
                patent, except for design, plant, provisional, or 
                international applications;
                    ``(ii) $100 for each application for an original 
                design patent;
                    ``(iii) $300 for each application for an original 
                plant patent;
                    ``(iv) $500 for the national stage of each 
                international application; and
                    ``(v) $500 for each application for the reissue of 
                a patent.
            ``(C) The provisions of section 111(a)(3) of this title 
        relating to the payment of the fee for filing the application 
        shall apply to the payment of the fee specified in this 
        paragraph with respect to an application filed under section 
        111(a) of this title. The provisions of section 371(d) of this 
        title relating to the payment of the national fee shall apply 
        to the payment of the fee specified in this paragraph with 
        respect to an international application.
            ``(D) The Director may by regulation provide for a refund 
        of any part of the fee specified in this paragraph for any 
        applicant who files a written declaration of express 
        abandonment as prescribed by the Director before an examination 
        has been made of the application under section 131 of this 
        title, and for any applicant who provides a search report that 
        meets the conditions prescribed by the Director.
            ``(E) For purposes of subparagraph (A), a `qualified search 
        authority' may not include a commercial entity unless--
                    ``(i) the Director conducts a pilot program of 
                limited scope, conducted over a period of not more than 
                18 months, which demonstrates that searches by 
                commercial entities of the available prior art relating 
                to the subject matter of inventions claimed in patent 
                applications--
                            ``(I) are accurate; and
                            ``(II) meet or exceed the standards of 
                        searches conducted by and used by the Patent 
                        and Trademark Office during the patent 
                        examination process;
                    ``(ii) the Director submits a report on the results 
                of the pilot program to the Congress and the Patent 
                Public Advisory Committee that includes--
                            ``(I) a description of the scope and 
                        duration of the pilot program;
                            ``(II) the identity of each commercial 
                        entity participating in the pilot program;
                            ``(III) an explanation of the methodology 
                        used to evaluate the accuracy and quality of 
                        the search reports; and
                            ``(IV) an assessment of the effects that 
                        the pilot program, as compared to searches 
                        conducted by the Patent and Trademark Office, 
                        had and will have on--
                                    ``(aa) patentability 
                                determinations;
                                    ``(bb) productivity of the Patent 
                                and Trademark Office;
                                    ``(cc) costs to the Patent and 
                                Trademark Office;
                                    ``(dd) costs to patent applicants; 
                                and
                                    ``(ee) other relevant factors;
                    ``(iii) the Patent Public Advisory Committee 
                reviews and analyzes the Director's report under clause 
                (ii) and the results of the pilot program and submits a 
                separate report on its analysis to the Director and the 
                Congress that includes--
                            ``(I) an independent evaluation of the 
                        effects that the pilot program, as compared to 
                        searches conducted by the Patent and Trademark 
                        Office, had and will have on the factors set 
                        forth in clause (ii)(IV); and
                            ``(II) an analysis of the reasonableness, 
                        appropriateness, and effectiveness of the 
                        methods used in the pilot program to make the 
                        evaluations required under clause (ii)(IV); and
                    ``(iv) the Congress does not, during the 1-year 
                period beginning on the date on which the Patent Public 
                Advisory Committee submits its report to the Congress 
                under clause (iii), enact a law prohibiting searches by 
                commercial entities of the available prior art relating 
                to the subject matter of inventions claimed in patent 
                applications.
            ``(F) The Director shall require that any search by a 
        qualified search authority that is a commercial entity is 
        conducted in the United States by persons that--
                    ``(i) if individuals, are United States citizens; 
                and
                    ``(ii) if business concerns, are organized under 
                the laws of the United States or any State and employ 
                United States citizens to perform the searches.
            ``(G) A search of an application that is the subject of a 
        secrecy order under section 181 or otherwise involves 
        classified information may only be conducted by Office 
        personnel.
            ``(H) A qualified search authority that is a commercial 
        entity may not conduct a search of a patent application if the 
        entity has any direct or indirect financial interest in any 
        patent or in any pending or imminent application for patent 
        filed or to be filed in the Patent and Trademark Office.
            ``(2) Other fees.--The Director shall establish fees for 
        all other processing, services, or materials relating to 
        patents not specified in this section to recover the estimated 
        average cost to the Office of such processing, services, or 
        materials, except that the Director shall charge the following 
        fees for the following services:
                    ``(A) For recording a document affecting title, $40 
                per property.
                    ``(B) For each photocopy, $.25 per page.
                    ``(C) For each black and white copy of a patent, 
                $3.
        The yearly fee for providing a library specified in section 12 
        of this title with uncertified printed copies of the 
        specifications and drawings for all patents in that year shall 
        be $50.''.
    (d) Adjustments.--
            (1) In general.--Section 41(f) of title 35, United States 
        Code, shall apply to the fees established under the amendments 
        made by this section, beginning in fiscal year 2005.
            (2) Conforming amendment.--Effective October 1, 2004, 
        section 41(f) of title 35, United States Code, is amended by 
        striking ``(a) and (b)'' and inserting ``(a), (b), and (d)''.
    (e) Fees for Small Entities.--Section 41(h) of title 35, United 
States Code, is amended--
            (1) in paragraph (1), by striking ``Fees charged under 
        subsection (a) or (b)'' and inserting ``Subject to paragraph 
        (3), fees charged under subsections (a), (b), and (d)(1)''; and
            (2) by adding at the end the following new paragraph:
    ``(3) The fee charged under subsection (a)(1)(A) shall be reduced 
by 75 percent with respect to its application to any entity to which 
paragraph (1) applies, if the application is filed by electronic means 
as prescribed by the Director.''.
    (f) Size Standards for Small Entities.--
            (1) Study.--The Director, in conjunction with the 
        Administrator of the Small Business Administration and the 
        Chief Counsel for Advocacy of the Small Business 
        Administration, shall conduct a study on the effect of patent 
        fees on the ability of small entity inventors to file patent 
        applications. Such study shall examine whether a separate 
        category of reduced patent fees is necessary to ensure adequate 
        development of new technology by small entity inventors.
            (2) Report.--The Director shall, not later than 6 months 
        after the date of the enactment of this Act, submit a report on 
        the results of the study under paragraph (1) to the Committee 
        on the Judiciary and the Committee on Small Business of the 
        House of Representatives and the Committee on the Judiciary and 
        the Committee on Small Business and Entrepreneurship of the 
        Senate.
    (g) Conforming Amendments.--
            (1) Section 41 of title 35, United States Code, is 
        amended--
                    (A) in subsection (c), by striking ``(c)(1)'' and 
                inserting ``(c) Late Payment of Fees.--(1)'';
                    (B) in subsection (e), by striking ``(e)'' and 
                inserting ``(e) Waivers of Certain Fees.--'';
                    (C) in subsection (f), by striking ``(f)'' and 
                inserting ``(f) Adjustments in Fees.--'';
                    (D) in subsection (g), by striking ``(g)'' and 
                inserting ``(g) Effective Dates of Fees.--'';
                    (E) in subsection (h), by striking ``(h)(1)'' and 
                inserting ``(h) Reductions in Fees for Certain 
                Entities.--(1)''; and
                    (F) in subsection (i), by striking ``(i)(1)'' and 
                inserting ``(i) Search Systems.--(1)''.
            (2) Section 119(e)(2) of title 35, United States Code, is 
        amended by striking ``subparagraph (A) or (C) of''.

SEC. 3. ADJUSTMENT OF TRADEMARK FEES.

    (a) Fee for Filing Application.--The fee under section 31(a) of the 
Trademark Act of 1946 (15 U.S.C. 1113(a)) for filing an electronic 
application for the registration of a trademark shall be $325. If the 
trademark application is filed on paper, the fee shall be $375. The 
Director may reduce the fee for filing an electronic application for 
the registration of a trademark to $275 for any applicant who 
prosecutes the application through electronic means under such 
conditions as may be prescribed by the Director. Beginning in fiscal 
year 2005, the provisions of the second and third sentences of section 
31(a) of the Trademark Act of 1946 shall apply to the fees established 
under this section.
    (b) Reference to Trademark Act of 1946.--For purposes of this 
section, the ``Trademark Act of 1946'' refers to the Act entitled ``An 
Act to provide for the registration and protection of trademarks used 
in commerce, to carry out the provisions of certain international 
conventions, and for other purposes.'', approved July 5, 1946 (15 
U.S.C. 1051 et seq.).

SEC. 4. CORRECTION OF ERRONEOUS NAMING OF OFFICER.

    (a) Correction.--Section 13203(a) of the 21st Century Department of 
Justice Appropriations Authorization Act (Public Law 107-273; 116 Stat. 
1902) is amended--
            (1) in the subsection heading, by striking ``Commissioner'' 
        and inserting ``Director''; and
            (2) in paragraphs (1) and (2), by striking ``Commissioner'' 
        each place it appears and inserting ``Director''.
    (b) Effective Date.--The amendments made by subsection (a) shall be 
effective as of the date of the enactment of Public Law 107-273.

SEC. 5. PATENT AND TRADEMARK FUNDING.

    Section 42(c) of title 35, United States Code, is amended--
            (1) by striking ``(c)'' and inserting ``(c)(1)''; and
            (2) by adding at the end the following new paragraph:
    ``(2) There is established in the Treasury a Patent and Trademark 
Fee Reserve Fund. If fee collections by the Patent and Trademark Office 
for a fiscal year exceed the amount appropriated to the Office for that 
fiscal year, fees collected in excess of the appropriated amount shall 
be deposited in the Patent and Trademark Fee Reserve Fund. After the 
end of each fiscal year, the Director shall make a finding as to 
whether the fees collected for that fiscal year exceed the amount 
appropriated to the Patent and Trademark Office for that fiscal year. 
If the amount collected exceeds the amount appropriated, the Director 
shall, if the Director determines that there are sufficient funds in 
the Reserve Fund, make payments from the Reserve Fund to persons who 
paid patent or trademark fees during that fiscal year. The Director 
shall by regulation determine which persons receive such payments and 
the amount of such payments, except that such payments in the aggregate 
shall equal the amount of funds deposited in the Reserve Fund during 
that fiscal year, less the cost of administering the provisions of this 
paragraph.

SEC. 6. EFFECTIVE DATE, APPLICABILITY, AND TRANSITIONAL PROVISION.

    (a) Effective Date.--Except as otherwise provided in this Act and 
this section, this Act and the amendments made by this Act shall take 
effect on October 1, 2004, or on the date of the enactment of this Act, 
whichever occurs later.
    (b) Applicability.--
            (1)(A) Except as provided in subparagraphs (B) and (C), the 
        amendments made by section 2 shall apply to all patents, 
        whenever granted, and to all patent applications pending on or 
        filed after the effective date set forth in subsection (a) of 
        this section.
            (B)(i) Except as provided in clause (ii), sections 
        41(a)(1), 41(a)(3), and 41(d)(1) of title 35, United States 
Code, as amended by this Act, shall apply only to--
                    (I) applications for patents filed under section 
                111(a) of title 35, United States Code, on or after the 
                effective date set forth in subsection (a) of this 
                section, and
                    (II) international applications entering the 
                national stage under section 371 of title 35, United 
                States Code, for which the basic national fee specified 
                in section 41 of title 35, United States Code, was not 
                paid before the effective date set forth in subsection 
                (a) of this section.
            (ii) Section 41(a)(1)(D) of title 35, United States Code as 
        amended by this Act, shall apply only to applications for 
        patent filed under section 111(b) of title 35, United States 
        Code, before, on, or after the effective date set forth in 
        subsection (a) of this section in which the filing fee 
        specified in section 41 of title 35, United States Code, was 
        not paid before the effective date set forth in subsection (a) 
        of this section.
            (C) Section 41(a)(2) of title 35, United States Code, as 
        amended by this Act, shall apply only to the extent that the 
        number of excess claims, after giving effect to any 
        cancellation of claims, is in excess of the number of claims 
        for which the excess claims fee specified in section 41 of 
        title 35, United States Code, was paid before the effective 
        date set forth in subsection (a) of this section.
            (2) The amendments made by section 3 shall apply to all 
        applications for the registration of a trademark filed or 
        amended on or after the effective date set forth in subsection 
        (a) of this section.
    (c) Transitional Provisions.--
            (1) Search fees.--During the period beginning on the 
        effective date set forth in subsection (a) of this section and 
        ending on the date on which the Director establishes search 
        fees under the authority provided in section 41(d)(1) of title 
        35, United States Code, the Director shall charge--
                    (A) for the search of each application for an 
                original patent, except for design, plant, provisional, 
                or international application, $500;
                    (B) for the search of each application for an 
                original design patent, $100;
                    (C) for the search of each application for an 
                original plant patent, $300;
                    (D) for the search of the national stage of each 
                international application, $500; and
                    (E) for the search of each application for the 
                reissue of a patent, $500.
            (2) Timing of fees.--The provisions of section 111(a)(3) of 
        title 35, United States Code, relating to the payment of the 
        fee for filing the application shall apply to the payment of 
        the fee specified in paragraph (1) with respect to an 
        application filed under section 111(a) of title 35, United 
        States Code. The provisions of section 371(d) of title 35, 
        United States Code, relating to the payment of the national fee 
        shall apply to the payment of the fee specified in paragraph 
        (1) with respect to an international application.
            (3) Refunds.--The Director may by regulation provide for a 
        refund of any part of the fee specified in paragraph (1) for 
        any applicant who files a written declaration of express 
        abandonment as prescribed by the Director before an examination 
        has been made of the application under section 131 of title 35, 
        United States Code, and for any applicant who provides a search 
        report that meets the conditions prescribed by the Director.
    (d) Existing Appropriations.--The provisions of any appropriation 
Act that make amounts available pursuant to section 42(c) of title 35, 
United States Code, and are in effect on the effective date set forth 
in subsection (a) shall cease to be effective on that effective date.

SEC. 7. DEFINITION.

    In this Act, the term ``Director'' means the Under Secretary of 
Commerce for Intellectual Property and Director of the United States 
Patent and Trademark Office.

SEC. 8. CLERICAL AMENDMENT.

    Subsection (c) of section 311 of title 35, United States Code, is 
amended by aligning the text with the text of subsection (a) of such 
section.

            Passed the House of Representatives March 3, 2004.

            Attest:

                                                 JEFF TRANDAHL,

                                                                 Clerk.