[Congressional Record Volume 149, Number 147 (Monday, October 20, 2003)]
[Senate]
[Pages S12889-S12891]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

      By Mr. COLEMAN:
  S. 1760. A bill to amend title 35, United States Code, with respect 
to patent fees, and for other purposes; to the Committee on the 
Judiciary.
  Mr. COLEMAN. Mr. President, I ask unanimous consent that the bill I 
introduce today to amend title 35, U.S. Code, to modernize patent and 
trademark fees, be printed in the Record.
  There being no objection, the bill was ordered to be printed in the 
Record, as follows:

[[Page S12890]]

                                S. 1760

       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 2003''.

     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.
       ``(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

[[Page S12891]]

       ``(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.
       ``(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.--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.
       (e) 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 OFFICE FUNDING.

       Section 42 of title 35, United States Code, is amended--
       (1) in subsection (b), by striking ``Appropriation''; and
       (2) in subsection (c), in the first sentence--
       (A) by striking ``To the extent'' and all that follows 
     through ``fees'' and inserting ``Fees''; and
       (B) by striking ``shall be collected by and shall be 
     available to the Director'' and inserting ``shall be 
     collected by the Director and shall be available until 
     expended''.

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

       (a) Effective Date.--Except as provided in section 4 and 
     this section, this Act and the amendments made by this Act 
     shall take effect on October 1, 2003, or the date of the 
     enactment of this Act, whichever is 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.
                                 ______