II 

108TH CONGRESS 

1ST SESSION S. 1760

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

for other purposes. 

IN THE SENATE OF THE UNITED STATES 

OCTOBER 20, 2003

Mr. COLEMAN introduced the following bill; which was read twice and referred 

to the Committee on the Judiciary 

A BILL

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

patent fees, and for other purposes.

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

3 SECTION 1. SHORT TITLE. 

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

5 and Trademark Fee Modernization Act of 2003’’. 

6 SEC. 2. FEES FOR PATENT SERVICES. 

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

8 35, United States Code, is amended to read as follows: 

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

10 following fees: 
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1 ‘‘(1) FILING AND BASIC NATIONAL FEES.—

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

3 original patent, except for design, plant, or pro4 visional applications, $300. 

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

6 original design patent, $200. 

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

8 original plant patent, $200. 

9 ‘‘(D) On filing each provisional application 

10 for an original patent, $200. 

11 ‘‘(E) On filing each application for the re12 issue of a patent, $300. 

13 ‘‘(F) The basic national fee for each inter14 national application filed under the treaty de15 fined in section 351(a) of this title entering the 

16 national stage under section 371 of this title, 

17 $300. 

18 ‘‘(G) In addition, excluding any sequence 

19 listing or computer program listing filed in an 

20 electronic medium as prescribed by the Direc21 tor, for any application the specification and 

22 drawings of which exceed 100 sheets of paper 

23 (or equivalent as prescribed by the Director if 

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

25 additional 50 sheets of paper (or equivalent as 
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1 prescribed by the Director if filed in an elec2 tronic medium) or fraction thereof. 

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

4 fee specified in paragraph (1)—

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

6 other time, $200 for each claim in independent 

7 form in excess of 3; 

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

9 other time, $50 for each claim (whether de10 pendent or independent) in excess of 20; and 

11 ‘‘(C) for each application containing a mul12 tiple dependent claim, $360. 

13 For the purpose of computing fees under this para14 graph, a multiple dependent claim referred to in sec15 tion 112 of this title or any claim depending there16 from shall be considered as separate dependent 

17 claims in accordance with the number of claims to 

18 which reference is made. The Director may by regu19 lation provide for a refund of any part of the fee 

20 specified in this paragraph for any claim that is can21 celed before an examination on the merits, as pre22 scribed by the Director, has been made of the appli23 cation under section 131 of this title. Errors in pay24 ment of the additional fees under this paragraph 
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1 may be rectified in accordance with regulations pre2 scribed by the Director. 

3 ‘‘(3) EXAMINATION FEES.—

4 ‘‘(A) For examination of each application 

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

6 provisional, or international applications, $200. 

7 ‘‘(B) For examination of each application 

8 for an original design patent, $130. 

9 ‘‘(C) For examination of each application 

10 for an original plant patent, $160. 

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

12 of each international application, $200. 

13 ‘‘(E) For examination of each application 

14 for the reissue of a patent, $600. 

15 The provisions of section 111(a)(3) of this title re16 lating to the payment of the fee for filing the appli17 cation shall apply to the payment of the fee specified 

18 in this paragraph with respect to an application filed 

19 under section 111(a) of this title. The provisions of 

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

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

22 fee specified in this paragraph with respect to an 

23 international application. The Director may by regu24 lation provide for a refund of any part of the fee 

25 specified in this paragraph for any applicant who 
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1 files a written declaration of express abandonment 

2 as prescribed by the Director before an examination 

3 has been made of the application under section 131 

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

5 search report that meets the conditions prescribed 

6 by the Director. 

7 ‘‘(4) ISSUE FEES.—

8 ‘‘(A) For issuing each original patent, ex9 cept for design or plant patents, $1,400. 

10 ‘‘(B) For issuing each original design pat11 ent, $800. 

12 ‘‘(C) For issuing each original plant pat13 ent, $1,100. 

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

15 $1,400. 

16 ‘‘(5) DISCLAIMER FEE.—On filing each dis17 claimer, $130. 

18 ‘‘(6) APPEAL FEES.—

19 ‘‘(A) On filing an appeal from the exam20 iner to the Board of Patent Appeals and Inter21 ferences, $500. 

22 ‘‘(B) In addition, on filing a brief in sup23 port of the appeal, $500, and on requesting an 

24 oral hearing in the appeal before the Board of 

25 Patent Appeals and Interferences, $1,000.
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1 ‘‘(7) REVIVAL FEES.—On filing each petition 

2 for the revival of an unintentionally abandoned ap3 plication for a patent, for the unintentionally delayed 

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

5 unintentionally delayed response by the patent owner 

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

7 petition is filed under section 133 or 151 of this 

8 title, in which case the fee shall be $500. 

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

10 month extensions of time to take actions required by 

11 the Director in an application—

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

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

14 ‘‘(C) on filing a third or subsequent peti15 tion, $570.’’. 

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

17 title 35, United States Code, is amended to read as fol18 lows: 

19 ‘‘(b) MAINTENANCE FEES.—The Director shall 

20 charge the following fees for maintaining in force all pat21 ents based on applications filed on or after December 12, 

22 1980: 

23 ‘‘(1) 3 years and 6 months after grant, $900. 

24 ‘‘(2) 7 years and 6 months after grant, $2,300. 
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1 ‘‘(3) 11 years and 6 months after grant, 

2 $3,800. 

3 Unless payment of the applicable maintenance fee is re4 ceived in the United States Patent and Trademark Office 

5 on or before the date the fee is due or within a grace pe6 riod of 6 months thereafter, the patent will expire as of 

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

8 the payment of a surcharge as a condition of accepting 

9 within such 6-month grace period the payment of an appli10 cable maintenance fee. No fee may be established for 

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

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

13 35, United States Code, is amended to read as follows: 

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

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

16 shall charge a fee for the search of each application 

17 for a patent, except for provisional applications. The 

18 Director shall establish the fees charged under this 

19 paragraph to recover an amount not to exceed the 

20 estimated average cost to the Office of searching ap21 plications for patent either by acquiring a search re22 port from a qualified search authority, or by causing 

23 a search by Office personnel to be made, of each ap24 plication for patent. 
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1 ‘‘(B) For purposes of determining the fees to be 

2 established under this paragraph, the cost to the Of3 fice of causing a search of an application to be made 

4 by Office personnel shall be deemed to be—

5 ‘‘(i) $500 for each application for an origi6 nal patent, except for design, plant, provisional, 

7 or international applications; 

8 ‘‘(ii) $100 for each application for an origi9 nal design patent; 

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

11 original plant patent; 

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

13 international application; and 

14 ‘‘(v) $500 for each application for the re15 issue of a patent. 

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

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

18 application shall apply to the payment of the fee 

19 specified in this paragraph with respect to an appli20 cation filed under section 111(a) of this title. The 

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

22 the payment of the national fee shall apply to the 

23 payment of the fee specified in this paragraph with 

24 respect to an international application. 
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1 ‘‘(D) The Director may by regulation provide 

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

3 paragraph for any applicant who files a written dec4 laration of express abandonment as prescribed by 

5 the Director before an examination has been made 

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

7 for any applicant who provides a search report that 

8 meets the conditions prescribed by the Director. 

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

10 ‘qualified search authority’ may not include a com11 mercial entity unless—

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

13 of limited scope, conducted over a period of not 

14 more than 18 months, which demonstrates that 

15 searches by commercial entities of the available 

16 prior art relating to the subject matter of inven17 tions claimed in patent applications—

18 ‘‘(I) are accurate; and 

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

20 searches conducted by and used by the 

21 Patent and Trademark Office during the 

22 patent examination process; 

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

24 results of the pilot program to the Congress 
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1 and the Patent Public Advisory Committee that 

2 includes—

3 ‘‘(I) a description of the scope and du4 ration of the pilot program; 

5 ‘‘(II) the identity of each commercial 

6 entity participating in the pilot program; 

7 ‘‘(III) an explanation of the method8 ology used to evaluate the accuracy and 

9 quality of the search reports; and 

10 ‘‘(IV) an assessment of the effects 

11 that the pilot program, as compared to 

12 searches conducted by the Patent and 

13 Trademark Office, had and will have on—

14 ‘‘(aa) patentability determina15 tions; 

16 ‘‘(bb) productivity of the Patent 

17 and Trademark Office; 

18 ‘‘(cc) costs to the Patent and 

19 Trademark Office; 

20 ‘‘(dd) costs to patent applicants; 

21 and 

22 ‘‘(ee) other relevant factors; 

23 ‘‘(iii) the Patent Public Advisory Com24 mittee reviews and analyzes the Director’s re25 port under clause (ii) and the results of the
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1 pilot program and submits a separate report on 

2 its analysis to the Director and the Congress 

3 that includes—

4 ‘‘(I) an independent evaluation of the 

5 effects that the pilot program, as compared 

6 to searches conducted by the Patent and 

7 Trademark Office, had and will have on 

8 the factors set forth in clause (ii)(IV); and 

9 ‘‘(II) an analysis of the reasonable10 ness, appropriateness, and effectiveness of 

11 the methods used in the pilot program to 

12 make the evaluations required under clause 

13 (ii)(IV); and 

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

15 year period beginning on the date on which the 

16 Patent Public Advisory Committee submits its 

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

18 a law prohibiting searches by commercial enti19 ties of the available prior art relating to the 

20 subject matter of inventions claimed in patent 

21 applications. 

22 ‘‘(2) OTHER FEES.—The Director shall estab23 lish fees for all other processing, services, or mate24 rials relating to patents not specified in this section 

25 to recover the estimated average cost to the Office 
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1 of such processing, services, or materials, except that 

2 the Director shall charge the following fees for the 

3 following services: 

4 ‘‘(A) For recording a document affecting 

5 title, $40 per property. 

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

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

8 patent, $3. 

9 The yearly fee for providing a library specified in 

10 section 12 of this title with uncertified printed copies 

11 of the specifications and drawings for all patents in 

12 that year shall be $50.’’. 

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

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

15 amendments made by this section, beginning in fiscal year 

16 2005. 

17 (e) CONFORMING AMENDMENTS.—

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

19 is amended—

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

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

22 (1)’’; 

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

24 inserting ‘‘(e) WAIVERS OF CERTAIN FEES.—’’; 
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1 (C) in subsection (f), by striking ‘‘(f)’’ and 

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

3 (D) in subsection (g), by striking ‘‘(g)’’ 

4 and inserting ‘‘(g) EFFECTIVE DATES OF

5 FEES.—’’; 

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

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

8 CERTAIN ENTITIES.—(1)’’; and 

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

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

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

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

13 (C) of’’. 

14 SEC. 3. ADJUSTMENT OF TRADEMARK FEES. 

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

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

17 1113(a)) for filing an electronic application for the reg18 istration of a trademark shall be $325. If the trademark 

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

20 Director may reduce the fee for filing an electronic appli21 cation for the registration of a trademark to $275 for any 

22 applicant who prosecutes the application through elec23 tronic means under such conditions as may be prescribed 

24 by the Director. Beginning in fiscal year 2005, the provi25 sions of the second and third sentences of section 31(a) 
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1 of the Trademark Act of 1946 shall apply to the fees es2 tablished under this section. 

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

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

5 refers to the Act entitled ‘‘An Act to provide for the reg6 istration and protection of trademarks used in commerce, 

7 to carry out the provisions of certain international conven8 tions, and for other purposes.’’, approved July 5, 1946 (15 

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

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

11 (a) CORRECTION.—Section 13203(a) of the 21st Cen12 tury Department of Justice Appropriations Authorization 

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

14 (1) in the subsection heading, by striking 

15 ‘‘COMMISSIONER’’ and inserting ‘‘DIRECTOR’’; and 

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

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

18 ‘‘Director’’. 

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

20 subsection (a) shall be effective as of the date of the enact21 ment of Public Law 107–273. 

22 SEC. 5. PATENT AND TRADEMARK OFFICE FUNDING. 

23 Section 42 of title 35, United States Code, is amend24 ed—
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1 (1) in subsection (b), by striking ‘‘Appropria2 tion’’; and 

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

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

5 that follows through ‘‘fees’’ and inserting 

6 ‘‘Fees’’; and 

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

8 shall be available to the Director’’ and inserting 

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

10 available until expended’’. 

11 SEC. 6. EFFECTIVE DATE, APPLICABILITY, AND TRANSI12 TIONAL PROVISION. 

13 (a) EFFECTIVE DATE.—Except as provided in sec14 tion 4 and this section, this Act and the amendments 

15 made by this Act shall take effect on October 1, 2003, 

16 or the date of the enactment of this Act, whichever is later. 

17 (b) APPLICABILITY.—

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

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

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

21 all patent applications pending on or filed after the 

22 effective date set forth in subsection (a) of this sec23 tion. 

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

25 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 

2 only to—

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

5 or after the effective date set forth in sub6 section (a) 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 na10 tional fee specified in section 41 of title 35, 

11 United States Code, was not paid before the ef12 fective date set forth in subsection (a) of this 

13 section. 

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

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

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

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

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

19 section in which the filing fee specified in section 41 

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

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

22 section. 

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

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

25 the extent that the number of excess claims, after 
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1 giving effect to any cancellation of claims, is in ex2 cess of the number of claims for which the excess 

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

4 States Code, was paid before the effective date set 

5 forth in subsection (a) of this section. 

6 (2) The amendments made by section 3 shall 

7 apply to all applications for the registration of a 

8 trademark filed or amended on or after the effective 

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

10 (c) TRANSITIONAL PROVISIONS.—

11 (1) SEARCH FEES.—During the period begin12 ning on the effective date set forth in subsection (a) 

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

14 Director establishes search fees under the authority 

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

16 States Code, the Director shall charge—

17 (A) for the search of each application for 

18 an original patent, except for design, plant, pro19 visional, or international application, $500; 

20 (B) for the search of each application for 

21 an original design patent, $100; 

22 (C) for the search of each application for 

23 an original plant patent, $300; 

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

25 each international application, $500; and 
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1 (E) for the search of each application for 

2 the reissue of a patent, $500. 

3 (2) TIMING OF FEES.—The provisions of sec4 tion 111(a)(3) of title 35, United States Code, relat5 ing to the payment of the fee for filing the applica6 tion shall apply to the payment of the fee specified 

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

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

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

10 States Code, relating to the payment of the national 

11 fee shall apply to the payment of the fee specified 

12 in paragraph (1) with respect to an international ap13 plication. 

14 (3) REFUNDS.—The Director may by regula15 tion provide for a refund of any part of the fee spec16 ified in paragraph (1) for any applicant who files a 

17 written declaration of express abandonment as pre18 scribed by the Director before an examination has 

19 been made of the application under section 131 of 

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

21 who provides a search report that meets the condi22 tions prescribed by the Director. 

23 (d) EXISTING APPROPRIATIONS.—The provisions of 

24 any appropriation Act that make amounts available pursu25 ant to section 42(c) of title 35, United States Code, and 
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1 are in effect on the effective date set forth in subsection 

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

3 SEC. 7. DEFINITION. 

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

5 Secretary of Commerce for Intellectual Property and Di6 rector of the United States Patent and Trademark Office. 

7 SEC. 8. CLERICAL AMENDMENT. 

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

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

10 of subsection (a) of such section.

Æ