[Congressional Bills 109th Congress]
[From the U.S. Government Publishing Office]
[H.R. 2791 Introduced in House (IH)]
109th CONGRESS
1st Session
H. R. 2791
To amend title 35, United States Code, with respect to patent fees, and
for other purposes.
_______________________________________________________________________
IN THE HOUSE OF REPRESENTATIVES
June 8, 2005
Mr. Sensenbrenner (for himself, Mr. Smith of Texas, Mr. Goodlatte, Mr.
Berman, Mr. Boucher, Mr. Conyers, Mr. Chabot, Mr. Jenkins, Ms. Zoe
Lofgren of California, Mr. Coble, and Mr. Wexler) introduced the
following bill; which was referred to the Committee on the Judiciary
_______________________________________________________________________
A BILL
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 2005''.
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 December 8, 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 2006.
(2) Conforming amendment.--Effective December 8, 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 2006, 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. REPEAL OF PATENT AND TRADEMARK FEE PROVISIONS OF THE
CONSOLIDATED APPROPRIATIONS ACT, 2005.
Title VIII of division B of the Consolidated Appropriations Act,
2005 (35 U.S.C. 41 note; Public Law 108-447; 118 Stat. 2924) is
repealed.
SEC. 7. 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 as of December 8, 2004.
(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.
SEC. 8. 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. 9. 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.
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