**A BILL**

To Restructure the Patent Fees and Adjust Trademark Fees for the Patent
and Trademark Office (USPTO), and for other purposes.

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

**SEC. 1. SHORT TITLE.**

This Act may be cited as the "United States Patent and Trademark Office
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) 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---

> "(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.
>
> "(C) For each application containing a multiple dependent claim,
> \$360.
>
> "For the purpose of computing fees under this paragraph, a multiple
> dependent claim as 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 for 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 for 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, as well as 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) 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
U.S. Patent and Trademark Office on or before the date the fee is due or
within a grace period of six 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)(1) 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.
>
> "(A) 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.
>
> "(B) The provisions of section 111(a)(3) of this title for 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 for payment of the national fee shall apply to the
> payment of the fee specified in this paragraph with respect to an
> international application.
>
> "(C) 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, as well as for any applicant who provides a
> search report that meets the conditions prescribed by the Director.
>
> "(2) 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 13 of this
title with uncertified printed copies of the specifications and drawings
for all patents in that year shall be \$50.".

\(d\) CONFORMING AMENDMENT.---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.

\(a\) 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 2004, the provisions of the
second and third sentence of section 31(a) of the Trademark Act of 1946
shall apply to the fee established under this section.

\(b\) 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, as amended (15 U.S.C. § 1051 et seq.).

**SEC. 4. CORRECTION OF ERRONEOUS NAMING OF OFFICER.**

Effective on the date of its enactment, section 13203(a) of Public Law
107-273 (116 Stat. 1902) is amended by striking "COMMISSIONER" and
inserting "DIRECTOR", and by striking each occurrence of "Commissioner"
and inserting "Director".

**SEC. 5. EFFECTIVE DATE, APPLICABILITY, AND TRANSITIONAL PROVISION.**

\(a\) EFFECTIVE DATE.---Except as otherwise provided, this Act and the
amendments made by this Act shall take effect on March 30, 2003, or the
date of enactment of this Act, whichever is later.

\(b\) APPLICABILITY.---

> \(1\) Except as otherwise provided in subparagraphs (A) and (B), 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 of this Act.
>
> \(A\) Except as otherwise provided in this subparagraph, 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 all applications for patents
> filed under section 111(a) of
>
> title 35, United States Code, on or after the effective date of this
> Act, and all international applications entering the national stage
> after compliance with section 371 of title 35, United States Code, on
> or after the effective date of this Act. Section 41(a)(1)(D) of title
> 35, United States Code, as amended by this Act shall apply only to all
> applications for patent filed under section 111(b) of title 35, United
> States Code, before, on, or after the effective date of this Act in
> which the filing fee specified in section 41 of title 35, United
> States Code, was not paid before the effective date of this Act.
>
> \(B\) 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 of this Act.
>
> \(2\) The amendments made by section 3 shall apply to all applications
> for the registration of a trademark filed or amended after the
> effective date of this Act.

\(c\) TRANSITIONAL PROVISION.---

> \(1\) Between the effective date of this Act and 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 applications,
> \$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.
>
> \(E\) For the search of each application for the reissue of a patent,
> \$500.
>
> \(2\) The provisions of section 111(a)(3) of this title for 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 this title. The provisions of section 371(d)
> of this title for payment of the national fee shall apply to the
> payment of the fee specified in paragraph (1) with respect to an
> international application. 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 this title, as well as for any
> applicant who provides a search report that meets the conditions
> prescribed by the Director.

STATEMENT OF PURPOSE AND NEED

This legislative proposal revises section 41 of title 35, United States
Code, to establish a new schedule of patent fees and trademark
application fees. The proposal complements the U.S. Patent and Trademark
Office's (USPTO) revised 21^st^ Century Strategic Plan announced on
February 3, 2003, in realigning fees so they better reflect the needs of
customers and better correlate fees with the extra effort required to
meet the demands of certain kinds of patent requests. This proposal
would generate the levels of patent and trademark fee income needed to
implement the goals and objectives of the strategic plan.

The President's 2004 budget proposes a fee increase to fund the USPTO's
long-term quality, e-Government, and pendency initiatives. The proposed
fee changes in this legislation reflect more accurately the costs of the
services provided and produce income levels consistent with the 2004
budget proposal, taking into account changing expectations about patent
and trademark application filings. The resulting revenues will ensure
that there is no delay in the implementation of the USPTO's new
initiatives aimed at improving the quality of granted patents and
trademark registrations, increasing efficiency through e-Government
programs, and reducing pendency in processing applications for patents
and for the registration of trademarks.

The proposed changes to section 41 also will initiate a restructuring of
patent fees by, among other things, providing refundable search and
examination fees rather than the composite fee currently charged. This
change will provide patent applicants with a reduced filing fee and give
them an opportunity to evaluate the commercial value of their invention
and recover the cost of patent search and examination when the situation
warrants.

Enactment of this bill at the earliest possible date may provide the
USPTO with additional income and funding to support initiatives in the
President's fiscal year 2003 budget request.

**SECTION-BY-SECTION ANALYSIS**

**SECTION ONE**

Section one sets forth the short title of the bill, the "United States
Patent and Trademark Office Fee Modernization Act of 2003."

**SECTION TWO**

Section two prescribes the dollar amounts for certain corresponding
"general" patent and patent application fees set forth in 35 U.S.C.
§ 41(a) and (b). Section two also provides for the establishment of a
search fee under § 41(d). Section 41 now specifies a search fee
(subsection (d)(1)) and an examination fee (subsection (a)(3)) that are
separate from the filing fee (subsection (a)(1)).

Section 41(a)(1) sets out the filing fees for applications filed under
§ 111 of the patent code (original or reissue) and the basic national
fee for Patent Cooperation Treaty (PCT) international applications
(filed under the treaty defined in § 351(a) of the patent code) entering
the national stage under § 371 of the patent code. Under § 41(a)(1), the
filing fees for applications filed under § 111 are as follows: (1) the
filing fee for an application for an original patent, except for design,
plant, or provisional applications, is \$300; (2) the filing fee for an
application for an original plant patent is \$200; (3) the filing fee
for an application for an original design patent is \$200; (4) the
filing fee for a provisional application is \$200; and (5) the filing
fee for an application for the reissue of a patent is \$300. Under
§ 41(a)(1), the basic national fee for any PCT international application
entering the national stage under § 371 is \$300.

Under § 41(a)(1)(G), there is an additional fee for any application
whose specification and drawings, excluding any sequence listing or
computer program listing filed in an electronic medium as prescribed by
the Director, exceed 100 sheets of paper (or equivalent as prescribed by
the Director if filed in an electronic medium). The additional fee under
§ 41(a)(1)(G) is \$250 for each additional 50 sheets of paper (or
equivalent as prescribed by the Director if filed in an electronic
medium, excluding any sequence listing or computer program listing) or
fraction thereof. Sequence listings or computer program listings filed
in an electronic medium as prescribed by the Director are excluded to
encourage applicants to file any sequence listing or computer program
listing in the appropriate electronic medium.

Section 41(a)(2) sets out the excess claims fees for each independent
claim in excess of 3 and for each claim (whether dependent or
independent) in excess of 20, and the fee for an application containing
a multiple dependent claim. The excess claims fees required by
§ 41(a)(2) are due at the time of presentation of the claim for which
payment is required (whether on filing or at a later time) in the
application or reexamination proceeding.

Under § 41(a)(2)(A), the excess claims fee for each claim in independent
form in excess of 3 is \$200. Under § 41(a)(2)(B), the excess claims fee
for each claim (whether dependent or independent) in excess of 20 is
\$50. Under § 41(a)(2)(C), the fee for each application containing a
multiple dependent claim is \$360.

Section 41(a)(2) provides that for the purpose of computing fees under §
41(a)(2), a multiple dependent claim as referred to in section 112 of
the patent code or any claim depending therefrom is considered as
separate dependent claims in accordance with the number of claims to
which reference is made. Section 41(a)(2) also provides that the
Director may prescribe regulations to provide a refund of any part of
the excess claims fees specified in § 41(a)(2) for any claim that is
canceled before an examination on the merits as prescribed by the
Director has been made of the application under § 131. The language "an
examination on the merits, as prescribed by the Director," was chosen to
give the Director greater latitude in determining the point in the
examination process (*e.g.*, after a requirement for restriction under §
121 of the patent code but before an examination on the merits of the
elected invention) by which a claim must be canceled for the applicant
to obtain a refund of a portion of the excess claims fee. Finally,
section 41(a)(2) provides that errors in payment of the additional fees
under § 41(a)(2) may be rectified in accordance with regulations
prescribed by the Director.

Section 41(a)(3) sets out the examination fees for all applications
(except for provisional applications), including PCT international
applications entering the national stage under § 371. The examination
fee for each application for an original patent, except for a design,
plant, or international application, is \$200. The examination fee for
each original design patent is \$130. The examination fee for each
original plant patent is \$160. The examination fee for the national
stage of an international application is \$200. And, the examination fee
for each reissue application is \$600. The examination fees for patent
applications are set at amounts that do not recover the USPTO's costs of
examining patent applications. The USPTO's costs of examining
applications are subsidized by issue and maintenance fees under §§
41(a)(4) and 41(b)).

Under § 41(a)(3), the provisions of § 111(a)(3) for payment of the fee
for filing the application apply to the payment of the examination fee
specified in § 41(a)(3) with respect to an application filed under §
111(a), and the provisions of § 371(d) for the payment of the national
fee apply to the payment of the examination fee specified in § 41(a)(3)
with respect to a PCT international application entering the national
stage under § 371. Thus, the examination fee is due on filing for an
application filed under § 111(a) or on commencement of the national
stage for a PCT international application. The examination fee, however,
may be paid at a later time if paid within such period and under such
conditions (including payment of a surcharge) as may be prescribed by
the Director.

Section 41(a)(3) provides that the Director may prescribe regulations to
provide a refund of any part of the examination fee specified in §
41(a)(3) 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 § 131. Under the former patent fee
structure, an applicant who after paying the filing fee had determined
that it was not worthwhile to proceed with the application had no
motivation to terminate the application process prior to receiving a
first Office action by the USPTO because the entire filing fee was a
sunk cost under that fee structure. Under the revised patent fee
structure, such an applicant will be motivated to terminate the
application process before an examination of the application under § 131
because the applicant may obtain a refund of the examination fee under §
41(a)(3) (as well as the search fee under § 41(d)(1)), less any portion
retained by the USPTO, if the applicant terminates the application
process by filing a written declaration of express abandonment as
prescribed by the Director before an examination (including any search)
has been made of the application under § 131. This provision authorizes
the USPTO to fix (based upon when an application is expected to be taken
up for search and examination) a time by which a written declaration of
express abandonment must be filed for an application to obtain such a
refund, and develop procedures for informing applicants of when this
time will occur.

The revised patent fee structure will permit the applicant to use the
period between the filing date of an application and when the
application is about to be taken up for action by the examiner to
determine whether the invention claimed in the application has
sufficient commercial viability to make it worthwhile to proceed with
search and examination. The applicant may decide to terminate the
application process because the invention does not have sufficient
commercial viability by filing a written declaration of express
abandonment as prescribed by the Director before an examination
(including any search) has been made of the application under § 131 (to
obtain any refund provided for by the regulations prescribed by the
Director). This would abandon the application and obviate the need for
the USPTO to proceed with the examination of the patent application.

###  Section 41(a)(3) also provides that the Director may prescribe regulations to provide a refund of any part of the examination fee specified in § 41(a)(3) (as well as the search fee specified in § 41(d)(1)) for any applicant who provides a search report that meets the conditions prescribed by the Director. It is envisioned that the USPTO will seek bilateral search exchange agreements with foreign and international patent authorities, and this provision authorizes the Director to prescribe regulations to provide a refund of any part of the examination fee specified in § 41(a)(3) (as well as the search fee specified in § 41(d)(1)) for any applicant who provides a search report from a foreign or international patent authority under such a bilateral search exchange agreement that meets the conditions prescribed by the Director. It is expected that exploitation of search reports from foreign and international patent authorities will be tested and piloted in a step-by-step process to ensure proof of concept prior to any full implementation of such a practice. 

### 

### The provisions allowing for refunds in situations in which the applicant files a written declaration of express abandonment as prescribed by the Director before an examination has been made of the application under § 131, or provides a search report that meets the conditions prescribed by the Director, do not authorize the Director to refund fees on an ad hoc basis, but only authorize the Director to provide a fee refund for applicants who meet the conditions specified in the regulations. 

Section 41(a)(4) sets out the fees for issuing a patent. Under
§ 41(a)(4), the fee for issuing each original patent, except for design
or plant patents, is \$1,400; the fee for issuing each original design
patent is \$800; the fee for issuing each original plant patent is
\$1,100; and the fee for issuing each reissue patent is \$1,400.

Section 41(a)(5) sets out the fee due upon filing a disclaimer under
section 253 of the patent code in a patent or a patent application,
which is \$130.

Section 41(a)(6) sets out the appeal fees. Under § 41(a)(6), the fee due
upon filing an appeal from the examiner to the Board of Patent Appeals
and Interferences is \$500, the fee due upon filing a brief in support
of the appeal is an additional \$500, and the fee due for requesting an
oral hearing in the appeal before the Board of Patent Appeals and
Interferences is an additional \$1,000.

Section 41(a)(7) sets out the fees due upon filing a petition to revive
an abandoned application or to accept a delayed response by the patent
owner in a reexamination proceeding, which is \$1,500, unless the
petition is filed under § 133 or § 151 of the patent code, in which case
the fee is \$500.

Section 41(a)(8) sets out the fees due upon filing a petition for
one-month extensions of time. Under § 41(a)(8), the fee for filing the
first one-month petition is \$120; the fee for filing the second
one-month petition is \$330; and the fee for filing the third or each
subsequent one-month petition is \$570.

Section 41(b) sets out the fee for maintaining in force a patent based
on applications filed on or after December 12, 1980. Under § 41(b), the
maintenance fee due at 3 years and 6 months after grant is \$900; the
maintenance fee due 7 years and 6 months after grant is \$2,300; and the
maintenance fee due 11 years and 6 months after grant is \$3,800.
Section 41(b) also provides that unless payment of the applicable
maintenance fee is received in the USPTO on or before the date on which
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, that 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, and that no fee may be established for maintaining a
design or plant patent in force.

Section 41(d)(1) provides that the Director will establish fees for
requesting a search of an application for a patent (except for
provisional applications), including PCT international applications
entering the national stage under § 371. The search fees established
under § 41(d)(1) are to be set so as to recover an amount not to exceed
the estimated average cost to the USPTO 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 a patent. The USPTO is expected to test the concept
of exploitation of search reports obtained from qualified search
contractors during examination to determine whether such a procedure is
a feasible means of addressing the USPTO increasing patent workload. It
is expected that exploitation of search reports obtained from qualified
search contractors during examination will be tested and piloted in a
step-by-step process to ensure proof of concept prior to any full
implementation of such a practice.

Section 41(d)(1)(A) provides that for purposes of determining the fees
to be established under § 41(d)(1), the cost to the USPTO of causing a
search to be made of an application by USPTO personnel is deemed to be
the transitional search fee set forth in section five of this Act: (1)
\$500 for each application for an original patent, except for a design,
plant, or international application; (2) \$100 for each application for
an original design patent; (3) \$300 for each application for an
original plant patent; (4) \$500 for each national stage of an
international application; and (5) \$500 for each application for the
reissue of a patent. This provision is designed to simplify the process
of determining the search fee under § 41(d)(1).

Under § 41(d)(1)(B), the provisions of § 111(a)(3) for payment of the
fee for filing the application apply to the payment of the search fee
specified in § 41(d)(1) with respect to an application filed under §
111(a), and the provisions of § 371(d) for the payment of the national
fee apply to the payment of the search fee specified in § 41(d)(1) with
respect to a PCT international application entering the national stage
under § 371.

Under § 41(d)(1)(C), the Director may, by regulation, provide for a
refund of any part of the search fee specified in § 41(d)(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 § 131, as well as for any applicant who provides a
search report that meets the conditions prescribed by the Director (as
discussed above).

### SECTION THREE

Section three provides that 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 filing is done on paper the fee shall be \$375. Section
three also provides that the Director may reduce the \$325 fee for
filing an application for the registration of a trademark in an
electronic form prescribed by the Director to \$275 for any applicant
who also prosecutes the application through electronic means under such
conditions as may be prescribed by the Director. Section three also
provides that beginning in fiscal year 2004, the provisions of the
second and third sentence of section 31(a) of the Trademark Act of 1946
shall apply to the fees for filing an application for the registration
of a trademark established under section three. Thus, the fees for
filing an application for the registration of a trademark established
under section three may be adjusted once each year (beginning on October
1, 2003) to reflect, in the aggregate, any fluctuations occurring during
the preceding twelve months in the Consumer Price Index, as determined
by the Secretary of Labor.

## SECTION FOUR

Section four corrects a clerical error in the Intellectual Property and
High Technology Technical Amendments Act of 2002 (Title III, Subtitle B,
of Public Law 107-273 (116 Stat. 1758)). Specifically, section four
amends § 13203 of Public Law 107-273 to make the Deputy Director (and
not the "Deputy Commissioner") of the USPTO a member of the Board of
Patent Appeals and Interferences and the Trademark Trial and Appeal
Board, as was the intended result of § 13203(a) of Public Law 107-273
(see H.R. Conf. Rep. No. 107-685, at 220 (2002)).

## SECTION FIVE

Section five sets forth the effective date of this bill: the later of
March 30, 2003, or the date of enactment of this Act, except that
section four takes effect as of November 2, 2002, (the effective date of
Public Law 107-273).

Section five also provides that the amendments made by section two apply
to all patents, whenever granted, and to all patent applications pending
on or filed after the effective date of this Act. Since applications
pending before the effective date of this Act paid filing or basic
national fees based upon former § 41(a), section five also provides that
the filing, examination, and search fees specified in §§ 41(a)(1),
41(a)(3), and 41(d)(1), respectively (and the refund provisions of §§
41(a)(3), and 41(d)(1)), apply only to all applications for patent filed
under § 111(a) on or after the effective date of this Act, and to all
PCT international applications entering the national stage after
compliance with § 371 on or after the effective date of this Act, except
that the provisional application filing fee specified in § 41(a)(1)(D)
applies to all provisional applications for which the filing fee
specified in § 41 was not paid before the effective date of this Act.
Section five also provides that the excess claims fees specified in §
41(a)(2) (and its refund provisions) apply only to the extent that the
number of claims in independent form, after giving effect to any
cancellation of claims, is in excess of the number of claims in
independent form for which the excess claims fee specified in § 41 was
paid before the effective date of this Act, and that the number of total
claims (whether independent or dependent), again after giving effect to
any cancellation of claims, is in excess of the number of total claims
(whether independent or dependent) for which the excess claims fee
specified in § 41 was paid before the effective date of this Act.

Section five also provides that the amendments made by section three
shall apply to all applications for the registration of a trademark and
classes added to an existing trademark application filed after the
effective date of this Act. The last sentence of § 31(a) will pertain to
the trademark fees established herein. That sentence states that: \"No
fee established under this section shall take effect until at least 30
days after the notice of the fee has been published in the *Federal
Register* and in the *Official Gazette* of the United States Patent and
Trademark Office.\"

Section five also provides a transitional provision concerning the
search fees established under § 41(d). Section five establishes a
transitional search fee of: (1) \$500 for the search of each application
for an original patent, except for a design, plant, provisional, or
international application; (2) \$160 for the search of each application
for an original design patent; (3) \$300 for the search of each
application for an original plant patent; (4) \$500 for the national
stage of an international application; and (5) \$500 for the search of
each application for the reissue of a patent. Section five also provides
that the provisions of § 111(a)(3) for payment of the fee for filing the
application apply to the payment of the transitional search fees
specified in section five with respect to an application filed under §
111(a), and that the provisions of § 371(d) for payment of the national
fee apply to the payment of the transitional search fees specified in
section five with respect to a PCT international application. Section
five also provides that the Director may, by regulation, provide for a
refund of any part of the transitional search fees specified in section
five 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 the patent code, as well as
for any applicant who provides a search report that meets the conditions
prescribed by the Director (as discussed above).

  --------------- -------------------------------------------- ------------- ------- ------- ----------------- --
  **USPTO                                                                                                      
  Legislative Fee                                                                                              
  Adjustment                                                                                                   
  Proposals**                                                                                                  

                                                                                                               

  ** **           ** **                                        **USPTO       ** **   ** **   **Proposed**      
                                                               Fees**                                          

  ** **                                                        **1/1/03**    ** **   ** **   **Fees**          

  **Patent Filing                                                                                              
  Fees**                                                                                                       

  ** **           **Filing Original Patent Application**       **\$750**                     **\$300**         

  ** **           **Search Fee**                               **N.A.**                      **\$500**         

  ** **           **Examination Fee**                          **N.A.**      ** **           **\$200**         

  ** **           **Total due at filing**                      **\$750**                     **\$1,000\***     

  **PCT National                                               ** **                         ** **             
  Stage Fees                                                                                                   
  (example)**                                                                                                  

  ** **           **USPTO is neither International Preliminary **\$1,060**                   **\$1,000\*\***   
                  Examination Authority nor International                                                      
                  Search Authority**                                                                           

  **Claims Fees**                                              ** **                         ** **             

  ** **           **Independent claims in excess of 3**        **\$84**                      **\$200**         

  ** **           **Claims in Excess of 20**                   **\$18**                      **\$50**          

  **Patent                                                     ** **                         ** **             
  Extension Fees                                                                                               
  (example)**                                                                                                  

  ** **           **Extension for response within second       **\$410**                     **\$450**         
                  month**                                                                                      

  **Patent Appeal                                              ** **                         ** **             
  Fees**                                                                                                       

  ** **           **Notice of Appeal to Board of Appeals**     **\$320**                     **\$500**         

  ** **           **Filing a Brief in Support of an Appeal**   **\$320**                     **\$500**         

  ** **           **Request an Oral Hearing**                  **\$280**                     **\$1,000**       

  **Pre Grant                                                  ** **                         ** **             
  Publication**                                                                                                

  ** **           **Publication fee**                          **\$300**                     **\$300**         

  **Patent Issue                                               ** **                         ** **             
  Fees**                                                                                                       

  ** **           **Issue of Original or Reissue Patent**      **\$1,300**                   **\$1,400**       

  **Patent                                                     ** **                         ** **             
  Maintenance                                                                                                  
  Fees**                                                                                                       

  ** **           **First Stage Maintenance**                  **\$890**                     **\$900**         

  ** **           **Second Stage Maintenance**                 **\$2,050**                   **\$2,300**       

  ** **           **Third Stage Maintenance**                  **\$3,150**                   **\$3,800**       

  **Total Patent                                               ** **                         ** **             
  Life-Cycle                                                                                                   
  Costs**                                                                                                      

  ** **           **Filing, Issue and Maintenance Fees**       **\$8,140**                   **\$9,400**       

  **Trademark                                                  ** **                         ** **             
  Application                                                                                                  
  Fees, per                                                                                                    
  class**                                                                                                      

  ** **           **Paper Correspondence**                     **\$335**                     **\$375**         

  ** **           **Electronic Correspondence**                **N.A.**                      **\$325**         

                  **Expedited Examination**                    **N.A.**                      **\$275**         

                                                                                                               

  \* Refundable                                                                                                
  in part                                                                                                      
  depending upon                                                                                               
  stage of                                                                                                     
  express                                                                                                      
  abandonment                                                                                                  

  \*\* Refundable                                                                                              
  in part                                                                                                      
  depending upon                                                                                               
  standing of                                                                                                  
  prior search                                                                                                 

                                                                                                               
  --------------- -------------------------------------------- ------------- ------- ------- ----------------- --