108TH CONGRESS

2D SESSION H. R. 1561

AN ACT

To amend title 35, United States Code, with

respect to patent fees, and for other purposes.

108TH CONGRESS

2D SESSION H. R. 1561

AN ACT

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 2004’’.

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 Direc4 tor, for any application the specification and

5 drawings of which exceed 100 sheets of paper

6 (or equivalent as prescribed by the Director if

7 filed in an electronic medium), $250 for each

8 additional 50 sheets of paper (or equivalent as

9 prescribed by the Director if filed in an elec10 tronic 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 de18 pendent 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

25 claims in accordance with the number of claims to
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1 which reference is made. The Director may by regu2 lation provide for a refund of any part of the fee

3 specified in this paragraph for any claim that is can4 celed before an examination on the merits, as pre5 scribed by the Director, has been made of the appli6 cation under section 131 of this title. Errors in pay7 ment of the additional fees under this paragraph

8 may be rectified in accordance with regulations pre9 scribed by the Director.

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 re23 lating to the payment of the fee for filing the appli24 cation shall apply to the payment of the fee specified

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

2 section 371(d) of this title relating to the payment

3 of the national fee shall apply to the payment of the

4 fee specified in this paragraph with respect to an

5 international application. The Director may by regu6 lation provide for a refund of any part of the fee

7 specified in this paragraph for any applicant who

8 files a written declaration of express abandonment

9 as prescribed by the Director before an examination

10 has been made of the application under section 131

11 of this title, and for any applicant who provides a

12 search report that meets the conditions prescribed

13 by the Director.

14 ‘‘(4) ISSUE FEES.—

15 ‘‘(A) For issuing each original patent, ex16 cept for design or plant patents, $1,400.

17 ‘‘(B) For issuing each original design pat18 ent, $800.

19 ‘‘(C) For issuing each original plant pat20 ent, $1,100.

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

22 $1,400.

23 ‘‘(5) DISCLAIMER FEE.—On filing each dis24 claimer, $130.

25 ‘‘(6) APPEAL FEES.—
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1 ‘‘(A) On filing an appeal from the exam2 iner 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

9 for the revival of an unintentionally abandoned ap10 plication 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

15 title, 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 fol25 lows:
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1 ‘‘(b) MAINTENANCE FEES.—The Director shall

2 charge the following fees for maintaining in force all pat3 ents based on applications filed on or after December 12,

4 1980:

5 ‘‘(1) 3 years and 6 months after grant, $900.

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

7 ‘‘(3) 11 years and 6 months after grant,

8 $3,800.

9 Unless payment of the applicable maintenance fee is re10 ceived in the United States Patent and Trademark Office

11 on or before the date the fee is due or within a grace pe12 riod of 6 months thereafter, the patent will expire as of

13 the end of such grace period. The Director may require

14 the payment of a surcharge as a condition of accepting

15 within such 6-month grace period the payment of an appli16 cable maintenance fee. No fee may be established for

17 maintaining a design or plant patent in force.’’.

18 (c) PATENT SEARCH FEES.—Section 41(d) of title

19 35, United States Code, is amended to read as follows:

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

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

22 shall charge a fee for the search of each application

23 for a patent, except for provisional applications. The

24 Director shall establish the fees charged under this

25 paragraph to recover an amount not to exceed the
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1 estimated average cost to the Office of searching ap2 plications for patent either by acquiring a search re3 port from a qualified search authority, or by causing

4 a search by Office personnel to be made, of each ap5 plication for patent. For the 3-year period beginning

6 on October 1, 2004, the fee for a search by a quali7 fied search authority of a patent application de8 scribed in clause (i), (iv), or (v) of subparagraph (B)

9 may not exceed $500, of a patent application de10 scribed in clause (ii) of subparagraph (B) may not

11 exceed $100, and of a patent application described

12 in clause (iii) of subparagraph (B) may not exceed

13 $300. The Director may not increase any such fee

14 by more than 20 percent in each of the next 3 1-

15 year periods, and the Director may not increase any

16 such fee thereafter.

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

18 established under this paragraph, the cost to the Of19 fice of causing a search of an application to be made

20 by Office personnel shall be deemed to be—

21 ‘‘(i) $500 for each application for an origi22 nal patent, except for design, plant, provisional,

23 or international applications;

24 ‘‘(ii) $100 for each application for an origi25 nal design patent;
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1 ‘‘(iii) $300 for each application for an

2 original plant patent;

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

4 international application; and

5 ‘‘(v) $500 for each application for the re6 issue of a patent.

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

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

9 application shall apply to the payment of the fee

10 specified in this paragraph with respect to an appli11 cation filed under section 111(a) of this title. The

12 provisions of section 371(d) of this title relating to

13 the payment of the national fee shall apply to the

14 payment of the fee specified in this paragraph with

15 respect to an international application.

16 ‘‘(D) The Director may by regulation provide

17 for a refund of any part of the fee specified in this

18 paragraph for any applicant who files a written dec19 laration of express abandonment as prescribed by

20 the Director before an examination has been made

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

22 for any applicant who provides a search report that

23 meets the conditions prescribed by the Director.
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1 ‘‘(E) For purposes of subparagraph (A), a

2 ‘qualified search authority’ may not include a com3 mercial entity unless—

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

5 of limited scope, conducted over a period of not

6 more than 18 months, which demonstrates that

7 searches by commercial entities of the available

8 prior art relating to the subject matter of inven9 tions claimed in patent applications—

10 ‘‘(I) are accurate; and

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

12 searches conducted by and used by the

13 Patent and Trademark Office during the

14 patent examination process;

15 ‘‘(ii) the Director submits a report on the

16 results of the pilot program to the Congress

17 and the Patent Public Advisory Committee that

18 includes—

19 ‘‘(I) a description of the scope and du20 ration of the pilot program;

21 ‘‘(II) the identity of each commercial

22 entity participating in the pilot program;

23 ‘‘(III) an explanation of the method24 ology used to evaluate the accuracy and

25 quality of the search reports; and
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1 ‘‘(IV) an assessment of the effects

2 that the pilot program, as compared to

3 searches conducted by the Patent and

4 Trademark Office, had and will have on—

5 ‘‘(aa) patentability determina6 tions;

7 ‘‘(bb) productivity of the Patent

8 and Trademark Office;

9 ‘‘(cc) costs to the Patent and

10 Trademark Office;

11 ‘‘(dd) costs to patent applicants;

12 and

13 ‘‘(ee) other relevant factors;

14 ‘‘(iii) the Patent Public Advisory Com15 mittee reviews and analyzes the Director’s re16 port under clause (ii) and the results of the

17 pilot program and submits a separate report on

18 its analysis to the Director and the Congress

19 that includes—

20 ‘‘(I) an independent evaluation of the

21 effects that the pilot program, as compared

22 to searches conducted by the Patent and

23 Trademark Office, had and will have on

24 the factors set forth in clause (ii)(IV); and
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1 ‘‘(II) an analysis of the reasonable2 ness, appropriateness, and effectiveness of

3 the methods used in the pilot program to

4 make the evaluations required under clause

5 (ii)(IV); and

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

7 year period beginning on the date on which the

8 Patent Public Advisory Committee submits its

9 report to the Congress under clause (iii), enact

10 a law prohibiting searches by commercial enti11 ties of the available prior art relating to the

12 subject matter of inventions claimed in patent

13 applications.

14 ‘‘(F) The Director shall require that any search

15 by a qualified search authority that is a commercial

16 entity is conducted in the United States by persons

17 that—

18 ‘‘(i) if individuals, are United States citi19 zens; and

20 ‘‘(ii) if business concerns, are organized

21 under the laws of the United States or any

22 State and employ United States citizens to per23 form the searches.

24 ‘‘(G) A search of an application that is the sub25 ject of a secrecy order under section 181 or other-
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1 wise involves classified information may only be con2 ducted by Office personnel.

3 ‘‘(H) A qualified search authority that is a

4 commercial entity may not conduct a search of a

5 patent application if the entity has any direct or in6 direct financial interest in any patent or in any

7 pending or imminent application for patent filed or

8 to be filed in the Patent and Trademark Office.

9 ‘‘(2) OTHER FEES.—The Director shall estab10 lish fees for all other processing, services, or mate11 rials relating to patents not specified in this section

12 to recover the estimated average cost to the Office

13 of such processing, services, or materials, except that

14 the Director shall charge the following fees for the

15 following services:

16 ‘‘(A) For recording a document affecting

17 title, $40 per property.

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

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

20 patent, $3.

21 The yearly fee for providing a library specified in

22 section 12 of this title with uncertified printed copies

23 of the specifications and drawings for all patents in

24 that year shall be $50.’’.

25 (d) ADJUSTMENTS.—
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1 (1) IN GENERAL.—Section 41(f) of title 35,

2 United States Code, shall apply to the fees estab3 lished under the amendments made by this section,

4 beginning in fiscal year 2005.

5 (2) CONFORMING AMENDMENT.—Effective Oc6 tober 1, 2004, section 41(f) of title 35, United

7 States Code, is amended by striking ‘‘(a) and (b)’’

8 and inserting ‘‘(a), (b), and (d)’’.

9 (e) FEES FOR SMALL ENTITIES.—Section 41(h) of

10 title 35, United States Code, is amended—

11 (1) in paragraph (1), by striking ‘‘Fees charged

12 under subsection (a) or (b)’’ and inserting ‘‘Subject

13 to paragraph (3), fees charged under subsections

14 (a), (b), and (d)(1)’’; and

15 (2) by adding at the end the following new

16 paragraph:

17 ‘‘(3) The fee charged under subsection (a)(1)(A) shall

18 be reduced by 75 percent with respect to its application

19 to any entity to which paragraph (1) applies, if the appli20 cation is filed by electronic means as prescribed by the

21 Director.’’.

22 (f) SIZE STANDARDS FOR SMALL ENTITIES.—

23 (1) STUDY.—The Director, in conjunction with

24 the Administrator of the Small Business Administra25 tion and the Chief Counsel for Advocacy of the
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1 Small Business Administration, shall conduct a

2 study on the effect of patent fees on the ability of

3 small entity inventors to file patent applications.

4 Such study shall examine whether a separate cat5 egory of reduced patent fees is necessary to ensure

6 adequate development of new technology by small

7 entity inventors.

8 (2) REPORT.—The Director shall, not later

9 than 6 months after the date of the enactment of

10 this Act, submit a report on the results of the study

11 under paragraph (1) to the Committee on the Judi12 ciary and the Committee on Small Business of the

13 House of Representatives and the Committee on the

14 Judiciary and the Committee on Small Business and

15 Entrepreneurship of the Senate.

16 (g) CONFORMING AMENDMENTS.—

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

18 is amended—

19 (A) in subsection (c), by striking ‘‘(c)(1)’’

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

21 (1)’’;

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

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

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

25 inserting ‘‘(f) ADJUSTMENTS IN FEES.—’’;
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1 (D) in subsection (g), by striking ‘‘(g)’’

2 and inserting ‘‘(g) EFFECTIVE DATES OF

3 FEES.—’’;

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

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

6 CERTAIN ENTITIES.—(1)’’; and

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

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

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

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

11 (C) of’’.

12 SEC. 3. ADJUSTMENT OF TRADEMARK FEES.

13 (a) FEE FOR FILING APPLICATION.—The fee under

14 section 31(a) of the Trademark Act of 1946 (15 U.S.C.

15 1113(a)) for filing an electronic application for the reg16 istration of a trademark shall be $325. If the trademark

17 application is filed on paper, the fee shall be $375. The

18 Director may reduce the fee for filing an electronic appli19 cation for the registration of a trademark to $275 for any

20 applicant who prosecutes the application through elec21 tronic means under such conditions as may be prescribed

22 by the Director. Beginning in fiscal year 2005, the provi23 sions of the second and third sentences of section 31(a)

24 of the Trademark Act of 1946 shall apply to the fees es25 tablished under this section.
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1 (b) REFERENCE TO TRADEMARK ACT OF 1946.—For

2 purposes of this section, the ‘‘Trademark Act of 1946’’

3 refers to the Act entitled ‘‘An Act to provide for the reg4 istration and protection of trademarks used in commerce,

5 to carry out the provisions of certain international conven6 tions, and for other purposes.’’, approved July 5, 1946 (15

7 U.S.C. 1051 et seq.).

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

9 (a) CORRECTION.—Section 13203(a) of the 21st Cen10 tury Department of Justice Appropriations Authorization

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

12 (1) in the subsection heading, by striking

13 ‘‘COMMISSIONER’’ and inserting ‘‘DIRECTOR’’; and

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

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

16 ‘‘Director’’.

17 (b) EFFECTIVE DATE.—The amendments made by

18 subsection (a) shall be effective as of the date of the enact19 ment of Public Law 107–273.

20 SEC. 5. PATENT AND TRADEMARK FUNDING.

21 Section 42(c) of title 35, United States Code, is

22 amended—

23 (1) by striking ‘‘(c)’’ and inserting ‘‘(c)(1)’’;

24 and
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1 (2) by adding at the end the following new

2 paragraph:

3 ‘‘(2) There is established in the Treasury a Patent

4 and Trademark Fee Reserve Fund. If fee collections by

5 the Patent and Trademark Office for a fiscal year exceed

6 the amount appropriated to the Office for that fiscal year,

7 fees collected in excess of the appropriated amount shall

8 be deposited in the Patent and Trademark Fee Reserve

9 Fund. After the end of each fiscal year, the Director shall

10 make a finding as to whether the fees collected for that

11 fiscal year exceed the amount appropriated to the Patent

12 and Trademark Office for that fiscal year. If the amount

13 collected exceeds the amount appropriated, the Director

14 shall, if the Director determines that there are sufficient

15 funds in the Reserve Fund, make payments from the Re16 serve Fund to persons who paid patent or trademark fees

17 during that fiscal year. The Director shall by regulation

18 determine which persons receive such payments and the

19 amount of such payments, except that such payments in

20 the aggregate shall equal the amount of funds deposited

21 in the Reserve Fund during that fiscal year, less the cost

22 of administering the provisions of this paragraph.
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1 SEC. 6. EFFECTIVE DATE, APPLICABILITY, AND TRANSI2 TIONAL PROVISION.

3 (a) EFFECTIVE DATE.—Except as otherwise provided

4 in this Act and this section, this Act and the amendments

5 made by this Act shall take effect on October 1, 2004,

6 or on the date of the enactment of this Act, whichever

7 occurs later.

8 (b) APPLICABILITY.—

9 (1)(A) Except as provided in subparagraphs

10 (B) and (C), the amendments made by section 2

11 shall apply to all patents, whenever granted, and to

12 all patent applications pending on or filed after the

13 effective date set forth in subsection (a) of this sec14 tion.

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

16 41(a)(1), 41(a)(3), and 41(d)(1) of title 35, United

17 States Code, as amended by this Act, shall apply

18 only to—

19 (I) applications for patents filed under sec20 tion 111(a) of title 35, United States Code, on

21 or after the effective date set forth in sub22 section (a) of this section, and

23 (II) international applications entering the

24 national stage under section 371 of title 35,

25 United States Code, for which the basic na26 tional fee specified in section 41 of title 35,
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1 United States Code, was not paid before the ef2 fective date set forth in subsection (a) of this

3 section.

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

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

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

7 of title 35, United States Code, before, on, or after

8 the effective date set forth in subsection (a) of this

9 section in which the filing fee specified in section 41

10 of title 35, United States Code, was not paid before

11 the effective date set forth in subsection (a) of this

12 section.

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

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

15 the extent that the number of excess claims, after

16 giving effect to any cancellation of claims, is in ex17 cess of the number of claims for which the excess

18 claims fee specified in section 41 of title 35, United

19 States Code, was paid before the effective date set

20 forth in subsection (a) of this section.

21 (2) The amendments made by section 3 shall

22 apply to all applications for the registration of a

23 trademark filed or amended on or after the effective

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

25 (c) TRANSITIONAL PROVISIONS.—
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1 (1) SEARCH FEES.—During the period begin2 ning on the effective date set forth in subsection (a)

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

4 Director establishes search fees under the authority

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

6 States Code, the Director shall charge—

7 (A) for the search of each application for

8 an original patent, except for design, plant, pro9 visional, or international application, $500;

10 (B) for the search of each application for

11 an original design patent, $100;

12 (C) for the search of each application for

13 an original plant patent, $300;

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

15 each international application, $500; and

16 (E) for the search of each application for

17 the reissue of a patent, $500.

18 (2) TIMING OF FEES.—The provisions of sec19 tion 111(a)(3) of title 35, United States Code, relat20 ing to the payment of the fee for filing the applica21 tion shall apply to the payment of the fee specified

22 in paragraph (1) with respect to an application filed

23 under section 111(a) of title 35, United States Code.

24 The provisions of section 371(d) of title 35, United

25 States Code, relating to the payment of the national
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1 fee shall apply to the payment of the fee specified

2 in paragraph (1) with respect to an international ap3 plication.

4 (3) REFUNDS.—The Director may by regula5 tion provide for a refund of any part of the fee spec6 ified in paragraph (1) for any applicant who files a

7 written declaration of express abandonment as pre8 scribed by the Director before an examination has

9 been made of the application under section 131 of

10 title 35, United States Code, and for any applicant

11 who provides a search report that meets the condi12 tions prescribed by the Director.

13 (d) EXISTING APPROPRIATIONS.—The provisions of

14 any appropriation Act that make amounts available pursu15 ant to section 42(c) of title 35, United States Code, and

16 are in effect on the effective date set forth in subsection

17 (a) shall cease to be effective on that effective date.

18 SEC. 7. DEFINITION.

19 In this Act, the term ‘‘Director’’ means the Under

20 Secretary of Commerce for Intellectual Property and Di21 rector of the United States Patent and Trademark Office.
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1 SEC. 8. CLERICAL AMENDMENT.

2 Subsection (c) of section 311 of title 35, United

3 States Code, is amended by aligning the text with the text

4 of subsection (a) of such section.

Passed the House of Representatives March 3,

2004.

Attest:

Clerk.