II 
Calendar No. 487
108TH CONGRESS 
2D SESSION 
H. R. 1561
IN THE SENATE OF THE UNITED STATES 
MARCH 4, 2004
Received; read twice and referred to the Committee on the Judiciary 
APRIL 29, 2004
Reported by Mr. HATCH, without amendment 
AN ACT 
To amend title 35, United States Code, with respect to 
patent fees, and for other purposes.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
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SECTION 1. SHORT TITLE. 
This Act may be cited as the ‘‘United States Patent 
and Trademark Fee Modernization Act of 2004’’. 
SEC. 2. FEES FOR PATENT SERVICES. 
(a) GENERAL PATENT FEES.—Section 41(a) of title 
35, United States Code, is amended to read as follows: 
‘‘(a) GENERAL FEES.—The Director shall charge the 
following fees: 
‘‘(1) FILING AND BASIC NATIONAL FEES.—
‘‘(A) On filing each application for an 
original patent, except for design, plant, or pro-
visional 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 re-
issue of a patent, $300. 
‘‘(F) The basic national fee for each inter-
national application filed under the treaty de-
fined in section 351(a) of this title entering the 
national stage under section 371 of this title, 
$300.
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which reference is made. The Director may by regu-
lation provide for a refund of any part of the fee 
specified in this paragraph for any claim that is can-
celed before an examination on the merits, as pre-
scribed by the Director, has been made of the appli-
cation under section 131 of this title. Errors in pay-
ment of the additional fees under this paragraph 
may be rectified in accordance with regulations pre-
scribed 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 re-
lating to the payment of the fee for filing the appli-
cation shall apply to the payment of the fee specified 
in this paragraph with respect to an application filed
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under section 111(a) of this title. The provisions of 
section 371(d) of this title relating to the payment 
of the national fee shall apply to the payment of the 
fee specified in this paragraph with respect to an 
international application. The Director may by regu-
lation provide for a refund of any part of the fee 
specified in this paragraph for any applicant who 
files a written declaration of express abandonment 
as prescribed by the Director before an examination 
has been made of the application under section 131 
of this title, and for any applicant who provides a 
search report that meets the conditions prescribed 
by the Director. 
‘‘(4) ISSUE FEES.—
‘‘(A) For issuing each original patent, ex-
cept for design or plant patents, $1,400. 
‘‘(B) For issuing each original design pat-
ent, $800. 
‘‘(C) For issuing each original plant pat-
ent, $1,100. 
‘‘(D) For issuing each reissue patent, 
$1,400. 
‘‘(5) DISCLAIMER
FEE.—On filing each dis-
claimer, $130. 
‘‘(6) APPEAL FEES.—
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‘‘(A) On filing an appeal from the exam-
iner to the Board of Patent Appeals and Inter-
ferences, $500. 
‘‘(B) In addition, on filing a brief in sup-
port 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 ap-
plication 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 peti-
tion, $570.’’. 
(b) PATENT MAINTENANCE FEES.—Section 41(b) of 
title 35, United States Code, is amended to read as fol-
lows:
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‘‘(b) MAINTENANCE
FEES.—The Director shall 
charge the following fees for maintaining in force all pat-
ents 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 re-
ceived in the United States Patent and Trademark Office 
on or before the date the fee is due or within a grace pe-
riod of 6 months thereafter, the patent will expire as of 
the end of such grace period. The Director may require 
the payment of a surcharge as a condition of accepting 
within such 6-month grace period the payment of an appli-
cable maintenance fee. No fee may be established for 
maintaining a design or plant patent in force.’’. 
(c) PATENT SEARCH FEES.—Section 41(d) of title 
35, United States Code, is amended to read as follows: 
‘‘(d) PATENT SEARCH AND OTHER FEES.—
‘‘(1) PATENT SEARCH FEES.—(A) The Director 
shall charge a fee for the search of each application 
for a patent, except for provisional applications. The 
Director shall establish the fees charged under this 
paragraph to recover an amount not to exceed the
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estimated average cost to the Office of searching ap-
plications for patent either by acquiring a search re-
port from a qualified search authority, or by causing 
a search by Office personnel to be made, of each ap-
plication for patent. For the 3-year period beginning 
on October 1, 2004, the fee for a search by a quali-
fied search authority of a patent application de-
scribed in clause (i), (iv), or (v) of subparagraph (B) 
may not exceed $500, of a patent application de-
scribed in clause (ii) of subparagraph (B) may not 
exceed $100, and of a patent application described 
in clause (iii) of subparagraph (B) may not exceed 
$300. The Director may not increase any such fee 
by more than 20 percent in each of the next 3 1-
year periods, and the Director may not increase any 
such fee thereafter. 
‘‘(B) For purposes of determining the fees to be 
established under this paragraph, the cost to the Of-
fice 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 origi-
nal patent, except for design, plant, provisional, 
or international applications; 
‘‘(ii) $100 for each application for an origi-
nal design patent;
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‘‘(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 re-
issue of a patent. 
‘‘(C) The provisions of section 111(a)(3) of this 
title relating to the payment of the fee for filing the 
application shall apply to the payment of the fee 
specified in this paragraph with respect to an appli-
cation filed under section 111(a) of this title. The 
provisions of section 371(d) of this title relating to 
the payment of the national fee shall apply to the 
payment of the fee specified in this paragraph with 
respect to an international application. 
‘‘(D) The Director may by regulation provide 
for a refund of any part of the fee specified in this 
paragraph for any applicant who files a written dec-
laration of express abandonment as prescribed by 
the Director before an examination has been made 
of the application under section 131 of this title, and 
for any applicant who provides a search report that 
meets the conditions prescribed by the Director.
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‘‘(E) For purposes of subparagraph (A), a 
‘qualified search authority’ may not include a com-
mercial entity unless—
‘‘(i) the Director conducts a pilot program 
of limited scope, conducted over a period of not 
more than 18 months, which demonstrates that 
searches by commercial entities of the available 
prior art relating to the subject matter of inven-
tions claimed in patent applications—
‘‘(I) are accurate; and 
‘‘(II) meet or exceed the standards of 
searches conducted by and used by the 
Patent and Trademark Office during the 
patent examination process; 
‘‘(ii) the Director submits a report on the 
results of the pilot program to the Congress 
and the Patent Public Advisory Committee that 
includes—
‘‘(I) a description of the scope and du-
ration of the pilot program; 
‘‘(II) the identity of each commercial 
entity participating in the pilot program; 
‘‘(III) an explanation of the method-
ology used to evaluate the accuracy and 
quality of the search reports; and
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‘‘(IV) an assessment of the effects 
that the pilot program, as compared to 
searches conducted by the Patent and 
Trademark Office, had and will have on—
‘‘(aa) 
patentability 
determina-
tions; 
‘‘(bb) productivity of the Patent 
and Trademark Office; 
‘‘(cc) costs to the Patent and 
Trademark Office; 
‘‘(dd) costs to patent applicants; 
and 
‘‘(ee) other relevant factors;
‘‘(iii) the Patent Public Advisory Com-
mittee reviews and analyzes the Director’s re-
port under clause (ii) and the results of the 
pilot program and submits a separate report on 
its analysis to the Director and the Congress 
that includes—
‘‘(I) an independent evaluation of the 
effects that the pilot program, as compared 
to searches conducted by the Patent and 
Trademark Office, had and will have on 
the factors set forth in clause (ii)(IV); and
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‘‘(II) an analysis of the reasonable-
ness, appropriateness, and effectiveness of 
the methods used in the pilot program to 
make the evaluations required under clause 
(ii)(IV); and 
‘‘(iv) the Congress does not, during the 1-
year period beginning on the date on which the 
Patent Public Advisory Committee submits its 
report to the Congress under clause (iii), enact 
a law prohibiting searches by commercial enti-
ties of the available prior art relating to the 
subject matter of inventions claimed in patent 
applications. 
‘‘(F) The Director shall require that any search 
by a qualified search authority that is a commercial 
entity is conducted in the United States by persons 
that—
‘‘(i) if individuals, are United States citi-
zens; and 
‘‘(ii) if business concerns, are organized 
under the laws of the United States or any 
State and employ United States citizens to per-
form the searches. 
‘‘(G) A search of an application that is the sub-
ject of a secrecy order under section 181 or other-
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wise involves classified information may only be con-
ducted by Office personnel. 
‘‘(H) A qualified search authority that is a 
commercial entity may not conduct a search of a 
patent application if the entity has any direct or in-
direct financial interest in any patent or in any 
pending or imminent application for patent filed or 
to be filed in the Patent and Trademark Office. 
‘‘(2) OTHER FEES.—The Director shall estab-
lish fees for all other processing, services, or mate-
rials relating to patents not specified in this section 
to recover the estimated average cost to the Office 
of such processing, services, or materials, except that 
the Director shall charge the following fees for the 
following services: 
‘‘(A) For recording a document affecting 
title, $40 per property. 
‘‘(B) For each photocopy, $.25 per page. 
‘‘(C) For each black and white copy of a 
patent, $3. 
The yearly fee for providing a library specified in 
section 12 of this title with uncertified printed copies 
of the specifications and drawings for all patents in 
that year shall be $50.’’. 
(d) ADJUSTMENTS.—
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(1) IN
GENERAL.—Section 41(f) of title 35, 
United States Code, shall apply to the fees estab-
lished under the amendments made by this section, 
beginning in fiscal year 2005. 
(2) CONFORMING AMENDMENT.—Effective Oc-
tober 1, 2004, section 41(f) of title 35, United 
States Code, is amended by striking ‘‘(a) and (b)’’ 
and inserting ‘‘(a), (b), and (d)’’. 
(e) FEES FOR SMALL ENTITIES.—Section 41(h) of 
title 35, United States Code, is amended—
(1) in paragraph (1), by striking ‘‘Fees charged 
under subsection (a) or (b)’’ and inserting ‘‘Subject 
to paragraph (3), fees charged under subsections 
(a), (b), and (d)(1)’’; and 
(2) by adding at the end the following new 
paragraph: 
‘‘(3) The fee charged under subsection (a)(1)(A) shall 
be reduced by 75 percent with respect to its application 
to any entity to which paragraph (1) applies, if the appli-
cation is filed by electronic means as prescribed by the 
Director.’’. 
(f) SIZE STANDARDS FOR SMALL ENTITIES.—
(1) STUDY.—The Director, in conjunction with 
the Administrator of the Small Business Administra-
tion and the Chief Counsel for Advocacy of the
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Small Business Administration, shall conduct a 
study on the effect of patent fees on the ability of 
small entity inventors to file patent applications. 
Such study shall examine whether a separate cat-
egory of reduced patent fees is necessary to ensure 
adequate development of new technology by small 
entity inventors. 
(2) REPORT.—The Director shall, not later 
than 6 months after the date of the enactment of 
this Act, submit a report on the results of the study 
under paragraph (1) to the Committee on the Judi-
ciary and the Committee on Small Business of the 
House of Representatives and the Committee on the 
Judiciary and the Committee on Small Business and 
Entrepreneurship of the Senate. 
(g) CONFORMING AMENDMENTS.—
(1) Section 41 of title 35, United States Code, 
is amended—
(A) in subsection (c), by striking ‘‘(c)(1)’’ 
and inserting ‘‘(c) LATE PAYMENT OF FEES.—
(1)’’; 
(B) in subsection (e), by striking ‘‘(e)’’ and 
inserting ‘‘(e) WAIVERS OF CERTAIN FEES.—’’; 
(C) in subsection (f), by striking ‘‘(f)’’ and 
inserting ‘‘(f) ADJUSTMENTS IN FEES.—’’;
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(b) REFERENCE TO TRADEMARK ACT OF 1946.—For 
purposes of this section, the ‘‘Trademark Act of 1946’’ 
refers to the Act entitled ‘‘An Act to provide for the reg-
istration and protection of trademarks used in commerce, 
to carry out the provisions of certain international conven-
tions, and for other purposes.’’, approved July 5, 1946 (15 
U.S.C. 1051 et seq.). 
SEC. 4. CORRECTION OF ERRONEOUS NAMING OF OFFICER. 
(a) CORRECTION.—Section 13203(a) of the 21st Cen-
tury Department of Justice Appropriations Authorization 
Act (Public Law 107–273; 116 Stat. 1902) is amended—
(1) in the subsection heading, by striking 
‘‘COMMISSIONER’’ and inserting ‘‘DIRECTOR’’; and 
(2) in paragraphs (1) and (2), by striking 
‘‘Commissioner’’ each place it appears and inserting 
‘‘Director’’. 
(b) EFFECTIVE DATE.—The amendments made by 
subsection (a) shall be effective as of the date of the enact-
ment of Public Law 107–273. 
SEC. 5. PATENT AND TRADEMARK FUNDING. 
Section 42(c) of title 35, United States Code, is 
amended—
(1) by striking ‘‘(c)’’ and inserting ‘‘(c)(1)’’; 
and
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(2) by adding at the end the following new 
paragraph: 
‘‘(2) There is established in the Treasury a Patent 
and Trademark Fee Reserve Fund. If fee collections by 
the Patent and Trademark Office for a fiscal year exceed 
the amount appropriated to the Office for that fiscal year, 
fees collected in excess of the appropriated amount shall 
be deposited in the Patent and Trademark Fee Reserve 
Fund. After the end of each fiscal year, the Director shall 
make a finding as to whether the fees collected for that 
fiscal year exceed the amount appropriated to the Patent 
and Trademark Office for that fiscal year. If the amount 
collected exceeds the amount appropriated, the Director 
shall, if the Director determines that there are sufficient 
funds in the Reserve Fund, make payments from the Re-
serve Fund to persons who paid patent or trademark fees 
during that fiscal year. The Director shall by regulation 
determine which persons receive such payments and the 
amount of such payments, except that such payments in 
the aggregate shall equal the amount of funds deposited 
in the Reserve Fund during that fiscal year, less the cost 
of administering the provisions of this paragraph.
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SEC. 6. EFFECTIVE DATE, APPLICABILITY, AND TRANSI-
TIONAL PROVISION. 
(a) EFFECTIVE DATE.—Except as otherwise provided 
in this Act and this section, this Act and the amendments 
made by this Act shall take effect on October 1, 2004, 
or on the date of the enactment of this Act, whichever 
occurs later. 
(b) APPLICABILITY.—
(1)(A) Except as provided in subparagraphs 
(B) and (C), the amendments made by section 2 
shall apply to all patents, whenever granted, and to 
all patent applications pending on or filed after the 
effective date set forth in subsection (a) of this sec-
tion. 
(B)(i) Except as provided in clause (ii), sections 
41(a)(1), 41(a)(3), and 41(d)(1) of title 35, United
States Code, as amended by this Act, shall apply 
only to—
(I) applications for patents filed under sec-
tion 111(a) of title 35, United States Code, on 
or after the effective date set forth in sub-
section (a) of this section, and 
(II) international applications entering the 
national stage under section 371 of title 35, 
United States Code, for which the basic na-
tional fee specified in section 41 of title 35,
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United States Code, was not paid before the ef-
fective date set forth in subsection (a) of this 
section. 
(ii) Section 41(a)(1)(D) of title 35, United 
States Code as amended by this Act, shall apply only 
to applications for patent filed under section 111(b) 
of title 35, United States Code, before, on, or after 
the effective date set forth in subsection (a) of this 
section in which the filing fee specified in section 41 
of title 35, United States Code, was not paid before 
the effective date set forth in subsection (a) of this 
section. 
(C) Section 41(a)(2) of title 35, United States 
Code, as amended by this Act, shall apply only to 
the extent that the number of excess claims, after 
giving effect to any cancellation of claims, is in ex-
cess of the number of claims for which the excess 
claims fee specified in section 41 of title 35, United 
States Code, was paid before the effective date set 
forth in subsection (a) of this section. 
(2) The amendments made by section 3 shall 
apply to all applications for the registration of a 
trademark filed or amended on or after the effective 
date set forth in subsection (a) of this section. 
(c) TRANSITIONAL PROVISIONS.—
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(1) SEARCH FEES.—During the period begin-
ning on the effective date set forth in subsection (a) 
of this section and ending on the date on which the 
Director establishes search fees under the authority 
provided in section 41(d)(1) of title 35, United 
States Code, the Director shall charge—
(A) for the search of each application for 
an original patent, except for design, plant, pro-
visional, or international application, $500; 
(B) for the search of each application for 
an original design patent, $100; 
(C) for the search of each application for 
an original plant patent, $300; 
(D) for the search of the national stage of 
each international application, $500; and 
(E) for the search of each application for 
the reissue of a patent, $500. 
(2) TIMING OF FEES.—The provisions of sec-
tion 111(a)(3) of title 35, United States Code, relat-
ing to the payment of the fee for filing the applica-
tion shall apply to the payment of the fee specified 
in paragraph (1) with respect to an application filed 
under section 111(a) of title 35, United States Code. 
The provisions of section 371(d) of title 35, United 
States Code, relating to the payment of the national
HR 1561 RS 
fee shall apply to the payment of the fee specified 
in paragraph (1) with respect to an international ap-
plication. 
(3) REFUNDS.—The Director may by regula-
tion provide for a refund of any part of the fee spec-
ified in paragraph (1) for any applicant who files a 
written declaration of express abandonment as pre-
scribed by the Director before an examination has 
been made of the application under section 131 of 
title 35, United States Code, and for any applicant 
who provides a search report that meets the condi-
tions prescribed by the Director. 
(d) EXISTING APPROPRIATIONS.—The provisions of 
any appropriation Act that make amounts available pursu-
ant to section 42(c) of title 35, United States Code, and 
are in effect on the effective date set forth in subsection 
(a) shall cease to be effective on that effective date. 
SEC. 7. DEFINITION. 
In this Act, the term ‘‘Director’’ means the Under 
Secretary of Commerce for Intellectual Property and Di-
rector of the United States Patent and Trademark Office.
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SEC. 8. CLERICAL AMENDMENT. 
Subsection (c) of section 311 of title 35, United 
States Code, is amended by aligning the text with the text 
of subsection (a) of such section.
Passed the House of Representatives March 3, 
2004. 
Attest: 
JEFF TRANDAHL, 
Clerk.
Calendar No. 487
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. 
APRIL 29, 2004
Reported without amendment