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.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
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.
‘‘(G) In addition, excluding any sequence
listing or computer program listing filed in an
electronic medium as prescribed by the Direc-
tor, for any application the specification and
drawings of which exceed 100 sheets of paper
(or equivalent as prescribed by the Director if
filed in an electronic medium), $250 for each
additional 50 sheets of paper (or equivalent as
prescribed by the Director if filed in an elec-
tronic medium) or fraction thereof.
‘‘(2) EXCESS CLAIMS FEES.—In addition to the
fee specified in paragraph (1)—
‘‘(A) on filing or on presentation at any
other time, $200 for each claim in independent
form in excess of 3;
‘‘(B) on filing or on presentation at any
other time, $50 for each claim (whether de-
pendent or independent) in excess of 20; and
‘‘(C) for each application containing a mul-
tiple dependent claim, $360.
For the purpose of computing fees under this para-
graph, a multiple dependent claim referred to in sec-
tion 112 of this title or any claim depending there-
from shall be considered as separate dependent
claims in accordance with the number of claims to
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
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.—
‘‘(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:
‘‘(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
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;
‘‘(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.
‘‘(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
‘‘(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
‘‘(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-
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.—
(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
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.—’’;
(D) in subsection (g), by striking ‘‘(g)’’
and inserting ‘‘(g) EFFECTIVE
DATES
OF
FEES.—’’;
(E) in subsection (h), by striking ‘‘(h)(1)’’
and inserting ‘‘(h) REDUCTIONS IN FEES FOR
CERTAIN ENTITIES.—(1)’’; and
(F) in subsection (i), by striking ‘‘(i)(1)’’
and inserting ‘‘(i) SEARCH SYSTEMS.—(1)’’.
(2) Section 119(e)(2) of title 35, United States
Code, is amended by striking ‘‘subparagraph (A) or
(C) of’’.
SEC. 3. ADJUSTMENT OF TRADEMARK FEES.
(a) FEE FOR FILING APPLICATION.—The fee under
section 31(a) of the Trademark Act of 1946 (15 U.S.C.
1113(a)) for filing an electronic application for the reg-
istration of a trademark shall be $325. If the trademark
application is filed on paper, the fee shall be $375. The
Director may reduce the fee for filing an electronic appli-
cation for the registration of a trademark to $275 for any
applicant who prosecutes the application through elec-
tronic means under such conditions as may be prescribed
by the Director. Beginning in fiscal year 2005, the provi-
sions of the second and third sentences of section 31(a)
of the Trademark Act of 1946 shall apply to the fees es-
tablished under this section.
(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
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:
Clerk.