CHAPTER 4 - PATENT FEES; FUNDING; SEARCH SYSTEMS
Title 35 > CHAPTER 4
Sections (6)
§ 41 Patent fees; patent and trademark search systems
(a) General Fees.— The Director shall charge the following fees: On filing each application for an original patent, except for design, plant, or provisional applications, 220. On filing each application for an original plant patent, 220. On filing each application for the reissue of a patent, 330. In addition, excluding any sequence listing or computer program listing filed in an electronic medium as prescribed by the Director, 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), 220 for each claim in independent form in excess of 3; on filing or on presentation at any other time, 390. For the purpose of computing fees under subparagraph (A), a multiple dependent claim referred to in section 112 or any claim depending therefrom shall be considered as separate dependent claims in accordance with the number of claims to which reference is made. The Director may by regulation provide for a refund of any part of the fee specified in subparagraph (A) for any claim that is canceled before an examination on the merits, as prescribed by the Director, has been made of the application under section 131. Errors in payment of the additional fees under this paragraph may be rectified in accordance with regulations prescribed by the Director. For examination of each application for an original patent, except for design, plant, provisional, or international applications, 140. For examination of each application for an original plant patent, 220. For examination of each application for the reissue of a patent, 1,510. For issuing each original design patent, 1,190. For issuing each reissue patent, 140. On filing an appeal from the examiner to the Patent Trial and Appeal Board, 540, and on requesting an oral hearing in the appeal before the Patent Trial and Appeal Board, 1,700.00. The Director may refund any part of the fee specified in this paragraph, in exceptional circumstances as determined by the Director 1 For petitions for 1-month extensions of time to take actions required by the Director in an application— on filing a first petition, 360; and on filing a third or subsequent petition, $620.
(b) Maintenance Fees.— The Director shall charge the following fees for maintaining in force all patents based on applications filed on or after December 12, 1980 : Three years and 6 months after grant, 2,480. Eleven years and 6 months after grant, $4,110. Unless payment of the applicable maintenance fee under paragraph (1) is received in the Office on or before the date the fee is due or within a grace period of 6 months thereafter, the patent shall 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 applicable maintenance fee. No fee may be established for maintaining a design or plant patent in force.
(c) Delays in Payment of Maintenance Fees.— The Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional. The Director may require the payment of the fee specified in subsection (a)(7) as a condition of accepting payment of any maintenance fee after the 6-month grace period. If the Director accepts payment of a maintenance fee after the 6-month grace period, the patent shall be considered as not having expired at the end of the grace period. A patent, the term of which has been maintained as a result of the acceptance of a payment of a maintenance fee under this subsection, shall not abridge or affect the right of any person or that person’s successors in business who made, purchased, offered to sell, or used anything protected by the patent within the United States, or imported anything protected by the patent into the United States after the 6-month grace period but prior to the acceptance of a maintenance fee under this subsection, to continue the use of, to offer for sale, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, or used within the United States, or imported into the United States, as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made after the 6-month grace period but before the acceptance of a maintenance fee under this subsection, and the court may also provide for the continued practice of any process that is practiced, or for the practice of which substantial preparation was made, after the 6-month grace period but before the acceptance of a maintenance fee under this subsection, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced after the 6-month grace period but before the acceptance of a maintenance fee under this subsection.
(d) Patent Search and Other Fees.— The Director shall charge the fees specified under subparagraph (B) for the search of each application for a patent, except for provisional applications. The Director shall adjust the fees charged under this paragraph to ensure that the fees recover an amount not to exceed the estimated average cost to the Office of searching applications for patent by Office personnel. The fees referred to in subparagraph (A) are— 100 for each application for an original design patent; 540 for the national stage of each international application; and 40 per property. For each photocopy, 3. The yearly fee for providing a library specified in section 12 with uncertified printed copies of the specifications and drawings for all patents in that year shall be $50.
(e) Waiver of Fees; Copies Regarding Notice.— The Director may waive the payment of any fee for any service or material related to patents in connection with an occasional or incidental request made by a department or agency of the Government, or any officer thereof. The Director may provide any applicant issued a notice under section 132 with a copy of the specifications and drawings for all patents referred to in that notice without charge.
(f) Adjustment of Fees.— The fees established in subsections (a) and (b) of this section may be adjusted by the Director on October 1, 1992 , and every year thereafter, to reflect any fluctuations occurring during the previous 12 months in the Consumer Price Index, as determined by the Secretary of Labor. Changes of less than 1 per centum may be ignored.
([(g) Repealed. Pub. L. 112–29, § 11(e)(3) , Sept. 16, 2011 , 125 Stat. 323 .]
(h) Fees for Small Entities.— Subject to paragraph (3), fees charged under subsections (a), (b), and (d)(1) shall be reduced by 60 percent with respect to their application to any small business concern as defined under section 3 of the Small Business Act, and to any independent inventor or nonprofit organization as defined in regulations issued by the Director. With respect to its application to any entity described in paragraph (1), any surcharge or fee charged under subsection (c) or (d) shall not be higher than the surcharge or fee required of any other entity under the same or substantially similar circumstances. The fee charged under subsection (a)(1)(A) shall be reduced by 80 percent with respect to its application to any entity to which paragraph (1) applies, if the application is filed by electronic means as prescribed by the Director.
(i) Electronic Patent and Trademark Data.— The Director shall maintain, for use by the public, paper, microform, or electronic collections of United States patents, foreign patent documents, and United States trademark registrations arranged to permit search for and retrieval of information. The Director may not impose fees directly for the use of such collections, or for the use of the public patent or trademark search rooms or libraries. The Director shall provide for the full deployment of the automated search systems of the Patent and Trademark Office so that such systems are available for use by the public, and shall assure full access by the public to, and dissemination of, patent and trademark information, using a variety of automated methods, including electronic bulletin boards and remote access by users to mass storage and retrieval systems. The Director may establish reasonable fees for access by the public to the automated search systems of the Patent and Trademark Office. If such fees are established, a limited amount of free access shall be made available to users of the systems for purposes of education and training. The Director may waive the payment by an individual of fees authorized by this subsection upon a showing of need or hardship, and if such a waiver is in the public interest. The Director shall submit to the Congress an annual report on the automated search systems of the Patent and Trademark Office and the access by the public to such systems. The Director shall also publish such report in the Federal Register. The Director shall provide an opportunity for the submission of comments by interested persons on each such report.
(j) Penalty for False Assertions.— In addition to any other penalty available under law, an entity that is found to have falsely asserted entitlement to a fee reduction under this section shall, unless the entity shows that the assertion was made in good faith, be subject to a fine, to be determined by the Director, the amount of which shall be not less than 3 times the amount that the entity failed to pay as a result of the false assertion, whether the Director discovers the false assertion before or after the date on which a patent has been issued.
“SEC. 801 FEES FOR PATENT SERVICES.
(“(a) General Patent Fees.— During fiscal years 2005, 2006, and 2007, subsection (a) of section 41 of title 35 , United States Code, shall be administered as though that subsection reads 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 provisional applications, 200. “ ‘(C) On filing each application for an original plant patent, 200. “ ‘(E) On filing each application for the reissue of a patent, 300. “ ‘(G) In addition, excluding any sequence listing or computer program listing filed in an electronic medium as prescribed by the Director, 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), 200 for each claim in independent form in excess of 3; “ ‘(B) on filing or on presentation at any other time, 360. For the purpose of computing fees under this paragraph, a multiple dependent claim referred to in section 112 of this title or any claim depending therefrom shall be considered as separate dependent claims in accordance with the number of claims to which reference is made. The Director may by regulation provide for a refund of any part of the fee specified in this paragraph for any claim that is canceled before an examination on the merits, as prescribed by the Director, has been made of the application under section 131 of this title . Errors in payment of the additional fees under this paragraph may be rectified in accordance with regulations prescribed by the Director. “ ‘(3) Examination fees.— “ ‘(A) For examination of each application for an original patent, except for design, plant, provisional, or international applications, 130. “ ‘(C) For examination of each application for an original plant patent, 200. “ ‘(E) For examination of each application for the reissue of a patent, 1,400. “ ‘(B) For issuing each original design patent, 1,100. “ ‘(D) For issuing each reissue patent, 130. “ ‘(6) Appeal fees.— “ ‘(A) On filing an appeal from the examiner to the Board of Patent Appeals and Interferences, 500, and on requesting an oral hearing in the appeal before the Board of Patent Appeals and Interferences, 1,500, unless the petition is filed under section 133 or 151 of this title, in which case the fee shall be 120; “ ‘(B) on filing a second petition, 570.’
(“(b) Patent Maintenance Fees.— During fiscal years 2005, 2006, and 2007, subsection (b) of section 41 of title 35 , United States Code, shall be administered as though that subsection reads as follows: “ ‘(b) Maintenance Fees .—The Director shall charge the following fees for maintaining in force all patents based on applications filed on or after December 12, 1980 : “ ‘(1) 3 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 received in the United States Patent and Trademark Office on or before the date the fee is due or within a grace period 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 applicable maintenance fee. No fee may be established for maintaining a design or plant patent in force.’
(“(c) Patent Search Fees.— During fiscal years 2005, 2006, and 2007, subsection (d) of section 41 of title 35 , United States Code, shall be administered as though that subsection reads 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 applications for patent either by acquiring a search report from a qualified search authority, or by causing a search by Office personnel to be made, of each application for patent. For the 3-year period beginning on the date of enactment of this Act, the fee for a search by a qualified search authority of a patent application described in clause (i), (iv), or (v) of subparagraph (B) may not exceed 100, and of a patent application described in clause (iii) of subparagraph (B) may not exceed 500 for each application for an original patent, except for design, plant, provisional, or international applications; “ ‘(ii) 300 for each application for an original plant patent; “ ‘(iv) 500 for each application for the reissue 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 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. “ ‘(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 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. “ ‘(E) For purposes of subparagraph (A), a “qualified search authority” may not include a commercial 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 inventions 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 Congress and the Patent Public Advisory Committee that includes— “ ‘(I) a description of the scope and duration of the pilot program; “ ‘(II) the identity of each commercial entity participating in the pilot program; “ ‘(III) an explanation of the methodology 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 determinations; “ ‘(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 Committee reviews and analyzes the Director’s report 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 reasonableness, appropriateness, and effectiveness of the methods used in the pilot program to make the evaluations required under clause (ii)(IV); and “ ‘(iv) 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 entities 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 citizens; and “ ‘(ii) if business concerns, are organized under the laws of the United States or any State and employ United States citizens to perform the searches. “ ‘(G) A search of an application that is the subject of a secrecy order under section 181 or otherwise involves classified information may only be conducted 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 indirect 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 establish fees for all other processing, services, or materials 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, .25 per page. “ ‘(C) For each black and white copy of a patent, 50.’
(“(d) Adjustments.— During fiscal years 2005, 2006, and 2007, subsection (f) of section 41 of title 35 , United States Code, shall apply to the fees established under this section.
(“(e) Fees For Small Entities.— During fiscal years 2005, 2006, and 2007, subsection (h) of section 41 of title 35 , United States Code, shall be administered as though that subsection is amended— 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 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 application is filed by electronic means as prescribed by the Director.’
“SEC. 802 ADJUSTMENT OF TRADEMARK FEES.
(“(a) Fee For Filing Application.— Until such time as the Director sets or adjusts the fees otherwise, under such conditions as may be prescribed by the Director, the fee under section 31(a) of the Trademark Act of 1946 ( 15 U.S.C. 1113(a) ) for: (1) the filing of a paper application for the registration of a trademark shall be 325; and (3) the filing of an electronic application meeting certain additional requirements prescribed by the Director shall be $275. The provisions of the second and third sentences of section 31(a) of the Trademark Act of 1946 shall apply to the fees established 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 registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes.’, approved July 5, 1946 ( 15 U.S.C. 1051 et seq.).
“SEC. 803 EFFECTIVE DATE, APPLICABILITY, AND TRANSITIONAL PROVISION.
(“(a) Effective Date.— Except as otherwise provided in this title (including this section), the provisions of this title shall take effect on the date of the enactment of this Act [ Dec. 8, 2004 ].
(“(b) Applicability.— Except as provided in subparagraphs (B) and (C), the provisions of section 801 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 section. Except as provided in clause (ii), subsections (a)(1) and (3) and (d)(1) of section 41 of title 35 , United States Code, as administered as provided in this title, shall apply only to— applications for patents filed under section 111 of title 35 , United States Code, on or after the effective date set forth in subsection (a) of this section, and international applications entering the national stage under section 371 of title 35 , United States Code, for which the basic national 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. Section 41(a)(1)(D) of title 35 , United States Code, as administered as provided in this title, 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. Section 41(a)(2) of title 35 , United States Code, as administered as provided in this title, shall apply only to the extent that the number of excess claims, after giving effect to any cancellation of claims, is in excess 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. The provisions of section 802 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.— During fiscal years 2005, 2006, and 2007, the Director shall charge— for the search of each application for an original patent, except for design, plant, provisional, or international application, 100; for the search of each application for an original plant patent, 500; and for the search of each application for the reissue of a patent, $500. The provisions of section 111(a)(3) of title 35 , United States Code, relating to the payment of the fee for filing the application 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 fee shall apply to the payment of the fee specified in paragraph (1) with respect to an international application.
“SEC. 804 DEFINITION.
“In this title, the term ‘Director’ means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.”
§ 42 Patent and Trademark Office funding
(a) All fees for services performed by or materials furnished by the Patent and Trademark Office will be payable to the Director.
(b) All fees paid to the Director and all appropriations for defraying the costs of the activities of the Patent and Trademark Office will be credited to the Patent and Trademark Office Appropriation Account in the Treasury of the United States.
(c) To the extent and in the amounts provided in advance in appropriations Acts, fees authorized in this title or any other Act to be charged or established by the Director shall be collected by and shall, subject to paragraph (3), be available to the Director to carry out the activities of the Patent and Trademark Office. 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. To the extent and in the amounts provided in appropriations Acts, amounts in the Fund shall be made available until expended only for obligation and expenditure by the Office in accordance with paragraph (3). Any fees that are collected under this title, and any surcharges on such fees, may only be used for expenses of the Office relating to the processing of patent applications and for other activities, services, and materials relating to patents and to cover a proportionate share of the administrative costs of the Office. Any fees that are collected under section 31 of the Trademark Act of 1946, and any surcharges on such fees, may only be used for expenses of the Office relating to the processing of trademark registrations and for other activities, services, and materials relating to trademarks and to cover a proportionate share of the administrative costs of the Office.
(d) The Director may refund any fee paid by mistake or any amount paid in excess of that required.
(e) The Secretary of Commerce shall, on the day each year on which the President submits the annual budget to the Congress, provide to the Committees on the Judiciary of the Senate and the House of Representatives— a list of patent and trademark fee collections by the Patent and Trademark Office during the preceding fiscal year; a list of activities of the Patent and Trademark Office during the preceding fiscal year which were supported by patent fee expenditures, trademark fee expenditures, and appropriations; budget plans for significant programs, projects, and activities of the Office, including out-year funding estimates; any proposed disposition of surplus fees by the Office; and such other information as the committees consider necessary.