[Congressional Bills 111th Congress]
[From the U.S. Government Publishing Office]
[H.R. 5322 Introduced in House (IH)]
111th CONGRESS
2d Session
H. R. 5322
To provide authority to the Director of the United States Patent and
Trademark Office to set or adjust patent and trademark fees, and for
other purposes.
_______________________________________________________________________
IN THE HOUSE OF REPRESENTATIVES
May 18, 2010
Mr. Conyers (for himself and Mr. Smith of Texas) introduced the
following bill; which was referred to the Committee on the Judiciary
_______________________________________________________________________
A BILL
To provide authority to the Director of the United States Patent and
Trademark Office to set or adjust patent and trademark fees, and for
other purposes.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ``Patent and Trademark Office Funding
Stabilization Act of 2010''.
SEC. 2. DEFINITIONS.
In this Act:
(1) Director.--The term ``Director'' means the Under
Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
(2) Fund.--The term ``Fund'' means the United States Patent
and Trademark Office Public Enterprise Fund established under
section 4(b).
(3) Office.--The term ``Office'' means the United States
Patent and Trademark Office.
(4) Patent public advisory committee.--The term ``Patent
Public Advisory Committee'' means the Patent Public Advisory
Committee established under section 5(a)(1) of title 35, United
States Code.
(5) Trademark act of 1946.--The term ``Trademark Act of
1946'' means the Act entitled ``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.) (commonly referred to as the ``Trademark Act of 1946''
or the ``Lanham Act'').
(6) Trademark public advisory committee.--The term
``Trademark Public Advisory Committee'' means the Trademark
Public Advisory Committee established under section 5(a)(1) of
title 35, United States Code.
SEC. 3. FEE SETTING AUTHORITY.
(a) In General.--
(1) Authority.--The Director may set or adjust by rule any
fee established or charged by the Office under section 41 or
376 of title 35, United States Code, or under section 31 of the
Trademark Act of 1946 (15 U.S.C. 1113), or any other fee
established or charged by the Office under any other provision
of law, for the filing or processing of any submission to the
Office, or for any other service performed by or materials
furnished by the Office, subject to paragraph (2).
(2) Fees to recover costs.--Fees may be set or adjusted
under paragraph (1) only to recover the aggregate estimated
costs to the Office for processing, activities, services, and
materials relating to patents (in the case of patent fees) and
trademarks (in the case of trademark fees), including
administrative costs of the Office with respect to such patent
or trademark fees (as the case may be).
(b) Small and Micro Entities.--The fees set or adjusted under
subsection (a) for filing, processing, issuing, and maintaining patent
applications and patents shall be reduced by 50 percent with respect to
the application of such fees to any small entity that qualifies for
reduced fees under section 41(h)(1) of title 35, United States Code,
and shall be reduced by 75 percent with respect to the application of
such fees to any micro entity as defined in section 123 of that title
(as added by subsection (f) of this section).
(c) Reduction of Fees in Certain Fiscal Years.--In each fiscal
year, the Director--
(1) shall consult with the Patent Public Advisory Committee
and the Trademark Public Advisory Committee on the advisability
of reducing any fees described in subsection (a); and
(2) after the consultation required under paragraph (1),
may reduce such fees.
(d) Role of the Public Advisory Committee.--The Director shall--
(1) not less than 45 days before publishing any proposed
fee under subsection (a) in the Federal Register, submit the
proposed fee to the Patent Public Advisory Committee or the
Trademark Public Advisory Committee, or both, as appropriate;
(2)(A) provide the relevant advisory committee described in
paragraph (1) a 30-day period following the submission of any
proposed fee, on which to deliberate, consider, and comment on
such proposal;
(B) require that, during such 30-day period, the relevant
advisory committee hold a public hearing relating to such
proposal; and
(C) assist the relevant advisory committee in carrying out
such public hearing, including by offering the use of the
resources of the Office to notify and promote the hearing to
the public and interested stakeholders;
(3) require the relevant advisory committee to make
available to the public a written report setting forth in
detail the comments, advice, and recommendations of the
committee regarding the proposed fee; and
(4) consider and analyze any comments, advice, or
recommendations received from the relevant advisory committee
before setting or adjusting (as the case may be) the fee.
(e) Publication in the Federal Register.--
(1) Publication and rationale.--The Director shall--
(A) publish any proposed fee change under this
section in the Federal Register;
(B) include, in such publication, the specific
rationale and purpose for the proposal, including the
possible expectations or benefits resulting from the
proposed change; and
(C) notify, through the Chair and Ranking Member of
the Committees on the Judiciary of the Senate and the
House of Representatives, the Congress of the proposed
change not later than the date on which the proposed
change is published under subparagraph (A).
(2) Public comment period.--The Director shall, in the
publication under paragraph (1), provide the public a period of
not less than 45 days in which to submit comments on the
proposed change in fees.
(3) Publication of final rule.--The final rule setting or
adjusting a fee under this section shall be published in the
Federal Register and in the Official Gazette of the Patent and
Trademark Office.
(4) Congressional comment period.--A fee set or adjusted
under subsection (a) may not become effective before the end of
the 45-day period beginning on the day after the date on which
the Director publishes the final rule adjusting or setting the
fee under paragraph (3).
(5) Rule of construction.--Rules prescribed under this
section shall not diminish--
(A) the rights of an applicant for a patent under
title 35, United States Code, or for a trademark under
the Trademark Act of 1946; or
(B) any rights under a ratified treaty.
(f) Micro Entity Defined.--
(1) In general.--Chapter 11 of title 35, United States
Code, is amended by adding at the end the following new
section:
``Sec. 123. Micro entity defined.
``(a) In General.--For purposes of this title, the term `micro
entity' means an applicant who makes a certification that the
applicant--
``(1) qualifies as a small entity, as defined in
regulations issued by the Director;
``(2) has not been named as an inventor on more than 4
previously filed patent applications, other than applications
filed in another country, provisional applications under
section 111(b), or international applications filed under the
treaty defined in section 351(a) for which the basic national
fee under section 41(a) was not paid;
``(3) did not, in the calendar year preceding the calendar
year in which the examination fee for the application is being
paid, have a gross income, as defined in section 61(a) of the
Internal Revenue Code of 1986, exceeding 3 times the median
household income for that preceding calendar year, as reported
by the Bureau of the Census; and
``(4) has not assigned, granted, or conveyed, and is not
under an obligation by contract or law to assign, grant, or
convey, a license or other ownership interest in the
application concerned to an entity that, in the calendar year
preceding the calendar year in which the examination fee for
the application is being paid, had a gross income, as defined
in section 61(a) of the Internal Revenue Code of 1986,
exceeding 3 times the median household income for that
preceding calendar year, as reported by the Bureau of the
Census.
``(b) Applications Resulting From Prior Employment.--An applicant
is not considered to be named on a previously filed application for
purposes of subsection (a)(2) if the applicant has assigned, or is
under an obligation by contract or law to assign, all ownership rights
in the application as the result of the applicant's previous
employment.
``(c) Foreign Currency Exchange Rate.--If the gross income of an
applicant or entity for a calendar year, for purposes of paragraph (3)
or (4) of subsection (a), is reported in a currency other than United
States dollars, the average exchange rate for that currency, as
reported by the Internal Revenue Service, during that calendar year
shall be used to determine whether the gross income exceeds the
threshold specified in paragraph (3) or (4) of subsection (a).''.
(2) Conforming amendment.--Chapter 11 of title 35, United
States Code, is amended by adding at the end the following new
item:
``123. Micro entity defined.''.
(g) Effective Date; Sunset.--
(1) Effective date.--This section and the amendments made
by this section shall take effect on the date of the enactment
of this Act.
(2) Sunset.--
(A) In general.--The authority to establish and
adjust fees under subsection (a) shall terminate upon
the expiration of the 10-year period beginning on the
date of the enactment of this Act.
(B) Clarification.--The termination of authority
under subparagraph (A) does not apply to the
requirement and authority under subsection (c).
SEC. 4. PATENT AND TRADEMARK OFFICE FUNDING.
(a) Funding.--
(1) In general.--Section 42 of title 35, United States
Code, is amended--
(A) in subsection (b), by striking ``Patent and
Trademark Office Appropriation Account'' and inserting
``United States Patent and Trademark Office Public
Enterprise Fund''; and
(B) in subsection (c), in the first sentence--
(i) by striking ``To the extent'' and all
that follows through ``fees'' and inserting
``Fees''; and
(ii) by striking ``shall be collected by
and shall be available to the Director'' and
inserting ``shall be collected by the Director
and shall be available until expended''.
(2) Effective date.--
(A) In general.--The amendments made by paragraph
(1) shall take effect on October 1, 2011.
(B) Termination of appropriation.--The provisions
of any appropriation Act that--
(i) are enacted before the effective date
set forth in subparagraph (A),
(ii) make amounts available pursuant to
section 42(c) of title 35, United States Code,
and
(iii) are in effect on the effective date
set forth in subparagraph (A),
shall cease to be effective on that effective date, and
any unexpended amounts made available pursuant to such
section shall be transferred in accordance with
subsection (b)(5).
(b) USPTO Revolving Fund.--
(1) Establishment.--There is established in the Treasury of
the United States a revolving fund to be known as the ``United
States Patent and Trademark Office Public Enterprise Fund''.
Any amounts in the Fund shall be available for use by the
Director without fiscal year limitation.
(2) Derivation of resources.--There shall be deposited into
the Fund the following:
(A) Any fees collected under sections 41, 42, and
376 of title 35, United States Code. If such fees are
collected by, and payable to, the Director, the
Director shall transfer such amounts to the Fund.
(B) Any fees collected under section 31 of the
Trademark Act of 1946 (15 U.S.C. 1113).
(3) Expenses.--Amounts deposited into the Fund under
paragraph (2) shall be available, without fiscal year
limitation, to cover--
(A) all expenses, to the extent consistent with the
limitation on the use of fees set forth in section
42(c) of title 35, United States Code (including all
administrative and operating expenses), that are
determined in the discretion of the Director to be
ordinary and reasonable and are incurred by the
Director for the continued operation of all services,
programs, activities, and duties of the Office, as such
services, programs, activities, and duties are
described under--
(i) title 35, United States Code; and
(ii) the Trademark Act of 1946; and
(B) all expenses incurred pursuant to any
obligation, representation, or other commitment of the
Office.
(4) Custodians of money.--Notwithstanding section 3302 of
title 31, United States Code, any funds received by the
Director and transferred to Fund, or any amounts directly
deposited into the Fund, may be used--
(A) to cover the expenses described in paragraph
(3); and
(B) to purchase obligations of the United States,
or any obligations guaranteed by the United States.
(5) Unexpended balances.--Any unexpended balances in any
accounts held on behalf of the Director, or the Office,
including in the Patent and Trademark Office Appropriation
Account in the Treasury of the United States, shall be
transferred to the Fund and shall remain available until
expended.
(c) Annual Report.--Not later than 60 days after the end of each
fiscal year, the Director shall submit a report to Congress that--
(1) summarizes the operations of the Office for the
preceding fiscal year, including financial details and staff
levels broken down by each major activity of the Office;
(2) details the operating plan of the Office, including
specific expense and staff needs for the upcoming fiscal year;
(3) describes the long-term modernization plans of the
Office;
(4) sets forth details of any progress towards such
modernization plans made in the previous fiscal year; and
(5) includes the results of the most recent audit carried
out under subsection (e).
(d) Annual Spending Plan.--
(1) In general.--Not later than 30 days after the beginning
of each fiscal year, the Director shall notify the Committees
on Appropriations of both Houses of Congress of the plan for
the obligation and expenditure of the total amount of the funds
for that fiscal year in a manner consistent with section 605 of
the Science, State, Justice, Commerce, and Related Agencies
Appropriations Act, 2006 (Public Law 109-108; 119 Stat. 2334).
(2) Contents.--Each plan under paragraph (1) shall--
(A) summarize the operations of the Office for the
current fiscal year, including financial details and
staff levels with respect to major activities; and
(B) detail the operating plan of the Office,
including specific expense and staff needs, for the
current fiscal year.
(e) Audit.--The Director shall, on an annual basis, provide for an
independent audit of the financial statements of the Office. Such audit
shall be conducted in accordance with generally acceptable accounting
procedures.
(f) Budget.--In accordance with section 9301 of title 31, United
States Code, the Fund shall prepare and submit each year to the
President a business-type budget in such manner, and before such date,
as the President prescribes by regulation for the budget program.
(g) Effective Date.--Subsections (b) through (f) and this
subsection shall take effect on October 1, 2011.
SEC. 5. FEES FOR PATENT SERVICES.
(a) General Patent Services.--Subsections (a) and (b) of section 41
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 provisional
applications, $330.
``(B) On filing each application for an original
design patent, $220.
``(C) On filing each application for an original
plant patent, $220.
``(D) On filing each provisional application for an
original patent, $220.
``(E) On filing each application for the reissue of
a patent, $330.
``(F) The basic national fee for each international
application filed under the treaty defined in section
351(a) entering the national stage under section 371,
$330.
``(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), $270
for each additional 50 sheets of paper (or equivalent
as prescribed by the Director if filed in an electronic
medium) or fraction thereof.
``(2) Excess claims fees.--
``(A) In general.--In addition to the fee specified
in paragraph (1)--
``(i) on filing or on presentation at any
other time, $220 for each claim in independent
form in excess of 3;
``(ii) on filing or on presentation at any
other time, $52 for each claim (whether
dependent or independent) in excess of 20; and
``(iii) for each application containing a
multiple dependent claim, $390.
``(B) Multiple dependent claims.--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.
``(C) Refunds; errors in payment.--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.
``(3) Examination fees.--
``(A) In general.--
``(i) For examination of each application
for an original patent, except for design,
plant, provisional, or international
applications, $220.
``(ii) For examination of each application
for an original design patent, $140.
``(iii) For examination of each application
for an original plant patent, $170.
``(iv) For examination of the national
stage of each international application, $220.
``(v) For examination of each application
for the reissue of a patent, $650.
``(B) Applicability of other fee provisions.--The
provisions of paragraphs (3) and (4) of section 111(a)
relating to the payment of the fee for filing the
application shall apply to the payment of the fee
specified in subparagraph (A) with respect to an
application filed under section 111(a). The provisions
of section 371(d) relating to the payment of the
national fee shall apply to the payment of the fee
specified in subparagraph (A) with respect to an
international application.
``(4) Issue fees.--
``(A) For issuing each original patent, except for
design or plant patents, $1,510.
``(B) For issuing each original design patent,
$860.
``(C) For issuing each original plant patent,
$1,190.
``(D) For issuing each reissue patent, $1,510.
``(5) Disclaimer fee.--On filing each disclaimer, $140.
``(6) Appeal fees.--
``(A) On filing an appeal from the examiner to the
Board of Patent Appeals and Interferences, $540.
``(B) In addition, on filing a brief in support of
the appeal, $540, and on requesting an oral hearing in
the appeal before the Board of Patent Appeals and
Interferences, $1,080.
``(7) Revival fees.--On filing each petition for the
revival of an unintentionally abandoned application 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, $1,620,
unless the petition is filed under section 133 or 151, in which
case the fee shall be $540.
``(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, $130;
``(B) on filing a second petition, $360; and
``(C) on filing a third or subsequent petition,
$620.
``(b) Maintenance Fees.--
``(1) In general.--The Director shall charge the following
fees for maintaining in force all patents based on applications
filed on or after December 12, 1980:
``(A) 3 years and 6 months after grant, $980.
``(B) 7 years and 6 months after grant, $2,480.
``(C) 11 years and 6 months after grant, $4,110.
``(2) Grace period; surcharge.--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.
``(3) No maintenance fee for design or plant patent.--No
fee may be established for maintaining a design or plant patent
in force.''.
(b) Delays in Payment.--Subsection (c) of section 41 of title 35,
United States Code, is amended--
(1) by striking ``(c)(1) The Director'' and inserting:
``(c) Delays in Payment of Maintenance Fees.--
``(1) Acceptance.--The Director''.
(2) by striking ``(2) A patent'' and inserting ``(2) Effect
on rights of others.--A patent''; and
(3) by moving the remaining text of paragraphs (1) and (2)
2 ems to the right.
(c) Patent Search Fees.--Subsection (d) of section 41 of title 35,
United States Code, is amended to read as follows:
``(d) Patent Search and Other Fees.--
``(1) Patent search fees.--
``(A) In general.--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.
``(B) Specific fees.--For purposes of determining
the fees to be established under this paragraph, the
cost to the Office of causing a search of an
application to be made by Office personnel shall be
deemed to be--
``(i) $540 for each application for an
original patent, except for design, plant,
provisional, or international applications;
``(ii) $100 for each application for an
original design patent;
``(iii) $330 for each application for an
original plant patent;
``(iv) $540 for the national stage of each
international application; and
``(v) $540 for each application for the
reissue of a patent.
``(C) Applicability of other provisions.--The
provisions of paragraphs (3) and (4) of section 111(a)
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). The provisions
of section 371(d) 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) Refunds.--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, and for any applicant
who provides a search report that meets the conditions
prescribed by the Director.
``(E) Requirements for searches.--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.
``(F) Applications subject to secrecy order.--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.
``(G) Conflicts of interest.--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 Office.
``(2) Other fees.--
``(A) In general.--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:
``(i) For recording a document affecting
title, $40 per property.
``(ii) For each photocopy, $.25 per page.
``(iii) For each black and white copy of a
patent, $3.
``(B) Copies for libraries.--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.''.
(d) Fees for Small Entities.--Subsection (h) of section 41 of title
35, United States Code, is amended to read as follows:
``(h) Fees for Small Entities.--
``(1) Reductions in fees.--Subject to paragraph (3), fees
charged under subsections (a), (b), and (d)(1) shall be reduced
by 50 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.
``(2) Surcharges and other fees.--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.
``(3) Reduction for electronic filing.--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.''.
(e) Technical Amendments.--Section 41 of title 35, United States
Code, is amended--
(1) in subsection (e), in the first sentence, by striking
``The Director'' and inserting ``Waiver of Fees; Copies
Regarding Notice.--The Director'';
(2) in subsection (f), by striking ``The fees'' and
inserting ``Adjustment of Fees.--The fees'';
(3) by repealing subsection (g); and
(4) in subsection (i)--
(A) by striking ``(i)(1) The Director'' and
inserting the following:
``(i) Electronic Patent and Trademark Data.--
``(1) Maintenance of collections.--The Director'';
(B) by striking ``(2) The Director'' and inserting
the following:
``(2) Availability of automated search systems.--The
Director'';
(C) by striking ``(3) The Director'' and inserting
the following:
``(3) Access fees.--The Director''; and
(D) by striking ``(4) The Director'' and inserting
the following:
``(4) Annual report to congress.--The Director''.
(f) Adjustment of Trademark Fees.--Section 802(a) of division B of
the Consolidated Appropriations Act, 2005 (Public Law 108-447)) is
amended--
(1) in the first sentence, by striking ``During fiscal
years 2005, 2006 and 2007'', and inserting ``Until such time as
the Director sets or adjusts the fees otherwise,''; and
(2) in the second sentence, by striking ``During fiscal
years 2005, 2006, and 2007, the'' and inserting ``The''.
(g) Effective Date.--The amendments made by this section shall take
effect on the date of the enactment of this Act.
SEC. 6. TEMPORARY SURCHARGE.
(a) Surcharge.--There shall be a surcharge of 15 percent, rounded
by standard arithmetic rules, on fees charged or authorized by sections
41(a), (b), (d)(1), and 132(b) of title 35, United States Code, subject
to the following:
(1) The surcharge shall be separate from, and in addition
to, any other surcharge that may be required pursuant to any
provision of title 35, United States Code, or other provision
of law.
(2) The surcharge under this subsection shall take effect
on the 10th day after the date of the enactment of this Act,
and shall remain in effect through September 30, 2011.
(3) The receipts collected as a result of the surcharge
under this subsection shall be available to the Office without
fiscal year limitation, for all authorized activities and
operations of the Office.
(b) Electronic Filing Incentive.--
(1) In general.--Notwithstanding any other provision of
this section, the fee charged for each application for an
original patent, except for a design, plant, or provisional
application, shall be increased by $400 for an application that
is not filed by electronic means as prescribed by the Director.
The fee established by this subsection shall be reduced 50
percent for small entities that quality for reduced fees under
section 41(h)(1) of title 35, United States Code.
(2) Effective date.--This subsection shall take effect upon
the expiration of the 60-day period beginning on the date of
the enactment of this Act.
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