IB 

Union Calendar No. 132

108TH CONGRESS 

1ST SESSION H. R. 1561

[Report No. 108–241] 

To amend title 35, United States Code, with respect to patent fees, and 

for other purposes. 

IN THE HOUSE OF REPRESENTATIVES 

APRIL 2, 2003

Mr. SMITH of Texas (for himself and Mr. BERMAN) (both by request) introduced the following bill; which was referred to the Committee on the Judiciary 

JULY 25, 2003

Reported with an amendment, committed to the Committee of the Whole 

House on the State of the Union, and ordered to be printed 

[Strike out all after the enacting clause and insert the part printed in italic] 

[For text of introduced bill, see copy of bill as introduced on April 2, 2003] 

A BILL

To amend title 35, United States Code, with respect to 

patent fees, and for other purposes.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,
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1 SECTION 1. SHORT TITLE. 

2 This Act may be cited as the ‘‘United States Patent 

3 and Trademark Fee Modernization Act of 2003’’. 

4 SEC. 2. FEES FOR PATENT SERVICES. 

5 (a) GENERAL PATENT FEES.—Section 41(a) of title 

6 35, United States Code, is amended to read as follows: 

7 ‘‘(a) GENERAL FEES.—The Director shall charge the 

8 following fees: 

9 ‘‘(1) FILING AND BASIC NATIONAL FEES.—

10 ‘‘(A) On filing each application for an 

11 original patent, except for design, plant, or pro12 visional applications, $300. 

13 ‘‘(B) On filing each application for an 

14 original design patent, $200. 

15 ‘‘(C) On filing each application for an 

16 original plant patent, $200. 

17 ‘‘(D) On filing each provisional application 

18 for an original patent, $200. 

19 ‘‘(E) On filing each application for the re20 issue of a patent, $300. 

21 ‘‘(F) The basic national fee for each inter22 national application filed under the treaty de23 fined in section 351(a) of this title entering the 

24 national stage under section 371 of this title, 

25 $300. 
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1 ‘‘(G) In addition, excluding any sequence 

2 listing or computer program listing filed in an 

3 electronic medium as prescribed by the Director, 

4 for any application the specification and draw5 ings of which exceed 100 sheets of paper (or 

6 equivalent as prescribed by the Director if filed 

7 in an electronic medium), $250 for each addi8 tional 50 sheets of paper (or equivalent as pre9 scribed by the Director if filed in an electronic 

10 medium) or fraction thereof. 

11 ‘‘(2) EXCESS CLAIMS FEES.—In addition to the 

12 fee specified in paragraph (1)—

13 ‘‘(A) on filing or on presentation at any 

14 other time, $200 for each claim in independent 

15 form in excess of 3; 

16 ‘‘(B) on filing or on presentation at any 

17 other time, $50 for each claim (whether depend18 ent or independent) in excess of 20; and 

19 ‘‘(C) for each application containing a mul20 tiple dependent claim, $360. 

21 For the purpose of computing fees under this para22 graph, a multiple dependent claim referred to in sec23 tion 112 of this title or any claim depending there24 from shall be considered as separate dependent claims 

25 in accordance with the number of claims to which ref-
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1 erence is made. The Director may by regulation pro2 vide for a refund of any part of the fee specified in 

3 this paragraph for any claim that is canceled before 

4 an examination on the merits, as prescribed by the 

5 Director, has been made of the application under sec6 tion 131 of this title. Errors in payment of the addi7 tional fees under this paragraph may be rectified in 

8 accordance with regulations prescribed by the Direc9 tor. 

10 ‘‘(3) EXAMINATION FEES.—

11 ‘‘(A) For examination of each application 

12 for an original patent, except for design, plant, 

13 provisional, or international applications, $200. 

14 ‘‘(B) For examination of each application 

15 for an original design patent, $130. 

16 ‘‘(C) For examination of each application 

17 for an original plant patent, $160. 

18 ‘‘(D) For examination of the national stage 

19 of each international application, $200. 

20 ‘‘(E) For examination of each application 

21 for the reissue of a patent, $600. 

22 The provisions of section 111(a)(3) of this title relat23 ing to the payment of the fee for filing the application 

24 shall apply to the payment of the fee specified in this 

25 paragraph with respect to an application filed under 
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1 section 111(a) of this title. The provisions of section 

2 371(d) of this title relating to the payment of the na3 tional fee shall apply to the payment of the fee speci4 fied in this paragraph with respect to an inter5 national application. The Director may by regulation 

6 provide for a refund of any part of the fee specified 

7 in this paragraph for any applicant who files a writ8 ten declaration of express abandonment as prescribed 

9 by the Director before an examination has been made 

10 of the application under section 131 of this title, and 

11 for any applicant who provides a search report that 

12 meets the conditions prescribed by the Director. 

13 ‘‘(4) ISSUE FEES.—

14 ‘‘(A) For issuing each original patent, ex15 cept for design or plant patents, $1,400. 

16 ‘‘(B) For issuing each original design pat17 ent, $800. 

18 ‘‘(C) For issuing each original plant patent, 

19 $1,100. 

20 ‘‘(D) For issuing each reissue patent, 

21 $1,400. 

22 ‘‘(5) DISCLAIMER FEE.—On filing each dis23 claimer, $130. 

24 ‘‘(6) APPEAL FEES.—
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1 ‘‘(A) On filing an appeal from the examiner 

2 to the Board of Patent Appeals and Inter3 ferences, $500. 

4 ‘‘(B) In addition, on filing a brief in sup5 port of the appeal, $500, and on requesting an 

6 oral hearing in the appeal before the Board of 

7 Patent Appeals and Interferences, $1,000. 

8 ‘‘(7) REVIVAL FEES.—On filing each petition for 

9 the revival of an unintentionally abandoned applica10 tion for a patent, for the unintentionally delayed 

11 payment of the fee for issuing each patent, or for an 

12 unintentionally delayed response by the patent owner 

13 in any reexamination proceeding, $1,500, unless the 

14 petition is filed under section 133 or 151 of this title, 

15 in which case the fee shall be $500. 

16 ‘‘(8) EXTENSION FEES.—For petitions for 1-

17 month extensions of time to take actions required by 

18 the Director in an application—

19 ‘‘(A) on filing a first petition, $120; 

20 ‘‘(B) on filing a second petition, $330; and 

21 ‘‘(C) on filing a third or subsequent peti22 tion, $570.’’. 

23 (b) PATENT MAINTENANCE FEES.—Section 41(b) of 

24 title 35, United States Code, is amended to read as follows: 
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1 ‘‘(b) MAINTENANCE FEES.—The Director shall charge 

2 the following fees for maintaining in force all patents based 

3 on applications filed on or after December 12, 1980: 

4 ‘‘(1) 3 years and 6 months after grant, $900. 

5 ‘‘(2) 7 years and 6 months after grant, $2,300. 

6 ‘‘(3) 11 years and 6 months after grant, $3,800. 

7 Unless payment of the applicable maintenance fee is re8 ceived in the United States Patent and Trademark Office 

9 on or before the date the fee is due or within a grace period 

10 of 6 months thereafter, the patent will expire as of the end 

11 of such grace period. The Director may require the payment 

12 of a surcharge as a condition of accepting within such 6-

13 month grace period the payment of an applicable mainte14 nance fee. No fee may be established for maintaining a de15 sign or plant patent in force.’’. 

16 (c) PATENT SEARCH FEES.—Section 41(d) of title 35, 

17 United States Code, is amended to read as follows: 

18 ‘‘(d) PATENT SEARCH AND OTHER FEES.—

19 ‘‘(1) PATENT SEARCH FEES.—(A) The Director 

20 shall charge a fee for the search of each application 

21 for a patent, except for provisional applications. The 

22 Director shall establish the fees charged under this 

23 paragraph to recover an amount not to exceed the es24 timated average cost to the Office of searching appli25 cations for patent either by acquiring a search report 
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1 from a qualified search authority, or by causing a 

2 search by Office personnel to be made, of each appli3 cation for patent. 

4 ‘‘(B) For purposes of determining the fees to be 

5 established under this paragraph, the cost to the Of6 fice of causing a search of an application to be made 

7 by Office personnel shall be deemed to be—

8 ‘‘(i) $500 for each application for an origi9 nal patent, except for design, plant, provisional, 

10 or international applications; 

11 ‘‘(ii) $100 for each application for an origi12 nal design patent; 

13 ‘‘(iii) $300 for each application for an 

14 original plant patent; 

15 ‘‘(iv) $500 for the national stage of each 

16 international application; and 

17 ‘‘(v) $500 for each application for the re18 issue of a patent. 

19 ‘‘(C) The provisions of section 111(a)(3) of this 

20 title relating to the payment of the fee for filing the 

21 application shall apply to the payment of the fee 

22 specified in this paragraph with respect to an appli23 cation filed under section 111(a) of this title. The pro24 visions of section 371(d) of this title relating to the 

25 payment of the national fee shall apply to the pay-
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1 ment of the fee specified in this paragraph with re2 spect to an international application. 

3 ‘‘(D) The Director may by regulation provide for 

4 a refund of any part of the fee specified in this para5 graph for any applicant who files a written declara6 tion of express abandonment as prescribed by the Di7 rector before an examination has been made of the ap8 plication under section 131 of this title, and for any 

9 applicant who provides a search report that meets the 

10 conditions prescribed by the Director.

11 ‘‘(E) For purposes of subparagraph (A), a 

12 ‘qualified search authority’ may not include a com13 mercial entity unless—

14 ‘‘(i) the Director conducts a pilot program 

15 of limited scope, conducted over a period of not 

16 more than 18 months, which demonstrates that 

17 searches by commercial entities of the available 

18 prior art relating to the subject matter of inven19 tions claimed in patent applications—

20 ‘‘(I) are accurate; and 

21 ‘‘(II) meet or exceed the standards of 

22 searches conducted by and used by the Pat23 ent and Trademark Office during the patent 

24 examination process; 
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1 ‘‘(ii) the Director submits a report on the 

2 results of the pilot program to the Congress and 

3 the Patent Public Advisory Committee that in4 cludes—

5 ‘‘(I) a description of the scope and du6 ration of the pilot program; 

7 ‘‘(II) the identity of each commercial 

8 entity participating in the pilot program; 

9 ‘‘(III) an explanation of the method10 ology used to evaluate the accuracy and 

11 quality of the search reports; and 

12 ‘‘(IV) an assessment of the effects that 

13 the pilot program, as compared to searches 

14 conducted by the Patent and Trademark Of15 fice, had and will have on—

16 ‘‘(aa) patentability determina17 tions; 

18 ‘‘(bb) productivity of the Patent 

19 and Trademark Office; 

20 ‘‘(cc) costs to the Patent and 

21 Trademark Office; 

22 ‘‘(dd) costs to patent applicants; 

23 and 

24 ‘‘(ee) other relevant factors;
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1 ‘‘(iii) the Patent Public Advisory Com2 mittee reviews and analyzes the Director’s report 

3 under clause (ii) and the results of the pilot pro4 gram and submits a separate report on its anal5 ysis to the Director and the Congress that in6 cludes—

7 ‘‘(I) an independent evaluation of the 

8 effects that the pilot program, as compared 

9 to searches conducted by the Patent and 

10 Trademark Office, had and will have on the 

11 factors set forth in clause (ii)(IV); and 

12 ‘‘(II) an analysis of the reasonableness, 

13 appropriateness, and effectiveness of the 

14 methods used in the pilot program to make 

15 the evaluations required under clause 

16 (ii)(IV); and 

17 ‘‘(iv) the Congress does not, during the 1-

18 year period beginning on the date on which the 

19 Patent Public Advisory Committee submits its 

20 report to the Congress under clause (iii), enact a 

21 law prohibiting searches by commercial entities 

22 of the available prior art relating to the subject 

23 matter of inventions claimed in patent applica24 tions. 
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1 ‘‘(2) OTHER FEES.—The Director shall establish 

2 fees for all other processing, services, or materials re3 lating to patents not specified in this section to re4 cover the estimated average cost to the Office of such 

5 processing, services, or materials, except that the Di6 rector shall charge the following fees for the following 

7 services: 

8 ‘‘(A) For recording a document affecting 

9 title, $40 per property. 

10 ‘‘(B) For each photocopy, $.25 per page. 

11 ‘‘(C) For each black and white copy of a 

12 patent, $3. 

13 The yearly fee for providing a library specified in sec14 tion 12 of this title with uncertified printed copies of 

15 the specifications and drawings for all patents in that 

16 year shall be $50.’’. 

17 (d) ADJUSTMENTS.—Section 41(f) of title 35, United 

18 States Code, shall apply to the fees established under the 

19 amendments made by this section, beginning in fiscal year 

20 2005. 

21 (e) CONFORMING AMENDMENTS.—

22 (1) Section 41 of title 35, United States Code, is 

23 amended—
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1 (A) in subsection (c), by striking ‘‘(c)(1)’’ 

2 and inserting ‘‘(c) LATE PAYMENT OF FEES.—

3 (1)’’; 

4 (B) in subsection (e), by striking ‘‘(e)’’ and 

5 inserting ‘‘(e) WAIVERS OF CERTAIN FEES.—’’; 

6 (C) in subsection (f), by striking ‘‘(f)’’ and 

7 inserting ‘‘(f) ADJUSTMENTS IN FEES.—’’; 

8 (D) in subsection (g), by striking ‘‘(g)’’ and 

9 inserting ‘‘(g) EFFECTIVE DATES OF FEES.—’’; 

10 (E) in subsection (h), by striking ‘‘(h)(1)’’ 

11 and inserting ‘‘(h) REDUCTIONS IN FEES FOR

12 CERTAIN ENTITIES.—(1)’’; and 

13 (F) in subsection (i), by striking ‘‘(i)(1)’’ 

14 and inserting ‘‘(i) SEARCH SYSTEMS.—(1)’’. 

15 (2) Section 119(e)(2) of title 35, United States 

16 Code, is amended by striking ‘‘subparagraph (A) or 

17 (C) of’’. 

18 SEC. 3. ADJUSTMENT OF TRADEMARK FEES. 

19 (a) FEE FOR FILING APPLICATION.—The fee under sec20 tion 31(a) of the Trademark Act of 1946 (15 U.S.C. 

21 1113(a)) for filing an electronic application for the reg22 istration of a trademark shall be $325. If the trademark 

23 application is filed on paper, the fee shall be $375. The Di24 rector may reduce the fee for filing an electronic application 

25 for the registration of a trademark to $275 for any appli-
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1 cant who prosecutes the application through electronic 

2 means under such conditions as may be prescribed by the 

3 Director. Beginning in fiscal year 2005, the provisions of 

4 the second and third sentences of section 31(a) of the Trade5 mark Act of 1946 shall apply to the fees established under 

6 this section. 

7 (b) REFERENCE TO TRADEMARK ACT OF 1946.—For 

8 purposes of this section, the ‘‘Trademark Act of 1946’’ refers 

9 to the Act entitled ‘‘An Act to provide for the registration 

10 and protection of trademarks used in commerce, to carry 

11 out the provisions of certain international conventions, and 

12 for other purposes.’’, approved July 5, 1946 (15 U.S.C. 1051 

13 et seq.). 

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

15 (a) CORRECTION.—Section 13203(a) of the 21st Cen16 tury Department of Justice Appropriations Authorization 

17 Act (Public Law 107–273; 116 Stat. 1902) is amended—

18 (1) in the subsection heading, by striking ‘‘COM19 MISSIONER’’ and inserting ‘‘DIRECTOR’’; and 

20 (2) in paragraphs (1) and (2), by striking 

21 ‘‘Commissioner’’ each place it appears and inserting 

22 ‘‘Director’’. 

23 (b) EFFECTIVE DATE.—The amendments made by sub24 section (a) shall be effective as of the date of the enactment 

25 of Public Law 107–273. 
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1 SEC. 5. PATENT AND TRADEMARK OFFICE FUNDING. 

2 Section 42 of title 35, United States Code, is amend3 ed—

4 (1) in subsection (b), by striking ‘‘Appropria5 tion’’; and 

6 (2) in subsection (c), in the first sentence—

7 (A) by striking ‘‘To the extent’’ and all that 

8 follows through ‘‘fees’’ and inserting ‘‘Fees’’; and 

9 (B) by striking ‘‘shall be collected by and 

10 shall be available to the Director’’ and inserting 

11 ‘‘shall be collected by the Director and shall be 

12 available until expended’’. 

13 SEC. 6. EFFECTIVE DATE, APPLICABILITY, AND TRANSI14 TIONAL PROVISION. 

15 (a) EFFECTIVE DATE.—Except as provided in section 

16 4 and this section, this Act and the amendments made by 

17 this Act shall take effect on October 1, 2003, or the date 

18 of the enactment of this Act, whichever is later. 

19 (b) APPLICABILITY.—

20 (1)(A) Except as provided in subparagraphs (B) 

21 and (C), the amendments made by section 2 shall 

22 apply to all patents, whenever granted, and to all 

23 patent applications pending on or filed after the effec24 tive date set forth in subsection (a) of this section. 

25 (B)(i) Except as provided in clause (ii), sections 

26 41(a)(1), 41(a)(3), and 41(d)(1) of title 35, United
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1 States Code, as amended by this Act, shall apply only 

2 to—

3 (I) applications for patents filed under sec4 tion 111(a) of title 35, United States Code, on or 

5 after the effective date set forth in subsection (a) 

6 of this section, and 

7 (II) international applications entering the 

8 national stage under section 371 of title 35, 

9 United States Code, for which the basic national 

10 fee specified in section 41 of title 35, United 

11 States Code, was not paid before the effective 

12 date set forth in subsection (a) of this section. 

13 (ii) Section 41(a)(1)(D) of title 35, United 

14 States Code as amended by this Act, shall apply only 

15 to applications for patent filed under section 111(b) 

16 of title 35, United States Code, before, on, or after the 

17 effective date set forth in subsection (a) of this section 

18 in which the filing fee specified in section 41 of title 

19 35, United States Code, was not paid before the effec20 tive date set forth in subsection (a) of this section. 

21 (C) Section 41(a)(2) of title 35, United States 

22 Code, as amended by this Act, shall apply only to the 

23 extent that the number of excess claims, after giving 

24 effect to any cancellation of claims, is in excess of the 

25 number of claims for which the excess claims fee spec-
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1 ified in section 41 of title 35, United States Code, was 

2 paid before the effective date set forth in subsection 

3 (a) of this section. 

4 (2) The amendments made by section 3 shall 

5 apply to all applications for the registration of a 

6 trademark filed or amended on or after the effective 

7 date set forth in subsection (a) of this section. 

8 (c) TRANSITIONAL PROVISIONS.—

9 (1) SEARCH FEES.—During the period begin10 ning on the effective date set forth in subsection (a) 

11 of this section and ending on the date on which the 

12 Director establishes search fees under the authority 

13 provided in section 41(d)(1) of title 35, United States 

14 Code, the Director shall charge—

15 (A) for the search of each application for an 

16 original patent, except for design, plant, provi17 sional, or international application, $500; 

18 (B) for the search of each application for an 

19 original design patent, $100; 

20 (C) for the search of each application for an 

21 original plant patent, $300; 

22 (D) for the search of the national stage of 

23 each international application, $500; and 

24 (E) for the search of each application for 

25 the reissue of a patent, $500. 
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1 (2) TIMING OF FEES.—The provisions of section 

2 111(a)(3) of title 35, United States Code, relating to 

3 the payment of the fee for filing the application shall 

4 apply to the payment of the fee specified in para5 graph (1) with respect to an application filed under 

6 section 111(a) of title 35, United States Code. The 

7 provisions of section 371(d) of title 35, United States 

8 Code, relating to the payment of the national fee shall 

9 apply to the payment of the fee specified in para10 graph (1) with respect to an international applica11 tion. 

12 (3) REFUNDS.—The Director may by regulation 

13 provide for a refund of any part of the fee specified 

14 in paragraph (1) for any applicant who files a writ15 ten declaration of express abandonment as prescribed 

16 by the Director before an examination has been made 

17 of the application under section 131 of title 35, 

18 United States Code, and for any applicant who pro19 vides a search report that meets the conditions pre20 scribed by the Director. 

21 (d) EXISTING APPROPRIATIONS.—The provisions of 

22 any appropriation Act that make amounts available pursu23 ant to section 42(c) of title 35, United States Code, and 

24 are in effect on the effective date set forth in subsection (a) 

25 shall cease to be effective on that effective date. 
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1 SEC. 7. DEFINITION. 

2 In this Act, the term ‘‘Director’’ means the Under Sec3 retary of Commerce for Intellectual Property and Director 

4 of the United States Patent and Trademark Office. 

5 SEC. 8. CLERICAL AMENDMENT. 

6 Subsection (c) of section 311 of title 35, United States 

7 Code, is amended by aligning the text with the text of sub8 section (a) of such section.
Union Calendar No. 132

108TH CONGRESS 

1ST SESSION H. R. 1561

[Report No. 108–241] 

A BILL

To amend title 35, United States Code, with 

respect to patent fees, and for other purposes. 

JULY 25, 2003

Reported with an amendment, committed to the Committee of the Whole House on the State of the Union, 

and ordered to be printed