§ 41. Patent fees; patent and trademark search systems

Pub. L. 108–447, div. B, title VIII, Dec. 8, 2004, 118 Stat. 2924, as amended by Pub. L. 109–289, div. B, title II, § 20933, as added by Pub. L. 110–5, § 2, Feb. 15, 2007, 121 Stat. 45; Pub. L. 112–29, § 11(f), (g), Sept. 16, 2011, 125 Stat. 324, provided that: “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, $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 reissue of a patent, $300. “ ‘(F) The basic national fee for each international application filed under the treaty defined 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 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), $250 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.—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 dependent or independent) in excess of 20; and “ ‘(C) for each application containing a multiple dependent claim, $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, $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) 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. “ ‘(4) Issue fees.— “ ‘(A) For issuing each original patent, except for design or plant patents, $1,400. “ ‘(B) For issuing each original design patent, $800. “ ‘(C) For issuing each original plant patent, $1,100. “ ‘(D) For issuing each reissue patent, $1,400. “ ‘(5) Disclaimer fee.—On filing each disclaimer, $130. “ ‘(6) Appeal fees.— “ ‘(A) On filing an appeal from the examiner to the Board of Patent Appeals and Interferences, $500. “ ‘(B) In addition, on filing a brief in support 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 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, $1,500, 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 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, $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 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 $500, of a patent application described 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 three 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 Office 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 original patent, except for design, plant, provisional, or international applications; “ ‘(ii) $100 for each application for an original 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 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, $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.—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—“(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 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 $375; (2) the filing of an electronic application 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.—“(1)(A) 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. “(B)(i) 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—“(I) 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 “(II) 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. “(ii) 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. “(C) 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. “(2) 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.—“(1) Search fees.—During fiscal years 2005, 2006, and 2007, the Director shall charge—“(A) for the search of each application for an original patent, except for design, plant, provisional, 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 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.”

[Pub. L. 111–117, div. B, title I, Dec. 16, 2009, 123 Stat. 3116, provided in part: “That sections 801, 802, and 803 of division B, Public Law 108–447 [set out above] shall remain in effect during fiscal year 2010” .]

[Pub. L. 111–8, div. B, title I, Mar. 11, 2009, 123 Stat. 564, provided in part: “That sections 801, 802, and 803 of division B, Public Law 108–447 [set out above] shall remain in effect during fiscal year 2009” .]

[Pub. L. 110–161, div. B, title I, Dec. 26, 2007, 121 Stat. 1888, provided in part: “That sections 801, 802, and 803 of division B, Public Law 108–447 [set out above] shall remain in effect during fiscal year 2008” .]

Study on Alternative Fee Structures

Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4204], Nov. 29, 1999, 113 Stat. 1536, 1501A–555, provided that: “The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office shall conduct a study of alternative fee structures that could be adopted by the United States Patent and Trademark Office to encourage maximum participation by the inventor community in the United States. The Director shall submit such study to the Committees on the Judiciary of the House of Representatives and the Senate not later than 1 year after the date of the enactment of this Act [Nov. 29, 1999].”

Cost Recovery for Publication

Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4506], Nov. 29, 1999, 113 Stat. 1536, 1501A–565, provided that: “The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office shall recover the cost of early publication required by the amendment made by section 4502 [amending section 122 of this title] by charging a separate publication fee after notice of allowance is given under section 151 of title 35, United States Code.”

Continuation of Maintenance

Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4804(d)(2)], Nov. 29, 1999, 113 Stat. 1536, 1501A–590, provided that: “The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office shall not, pursuant to the amendment made by paragraph (1) [amending this section], cease to maintain, for use by the public, paper or microform collections of United States patents, foreign patent documents, and United States trademark registrations, except pursuant to notice and opportunity for public comment and except that the Director shall first submit a report to the Committees on the Judiciary of the Senate and the House of Representatives detailing such plan, including a description of the mechanisms in place to ensure the integrity of such collections and the data contained therein, as well as to ensure prompt public access to the most current available information, and certifying that the implementation of such plan will not negatively impact the public.”

Access to Electronic Patent Information

Pub. L. 105–289, § 4, Oct. 27, 1998, 112 Stat. 2781, provided that: “(a) In General.—The United States Patent and Trademark Office shall develop and implement statewide computer networks with remote library sites in requesting rural States such that citizens in those States will have enhanced access to information in their State’s patent and trademark depository library. “(b) Definition.—In this section, the term ‘rural States’ means the States that qualified on January 1, 1997, as rural States under section 1501(b) of the Omnibus Crime Control and Safe Streets Act of 1968 (42 U.S.C. 379bb(b) [former 42 U.S.C. 3796bb(b), now 34 U.S.C. 10351(b)]).”

Waiver of Certain Restrictions

Pub. L. 102–204, § 2(c), Dec. 10, 1991, 105 Stat. 1636, provided that: “Surcharges established for fiscal year 1992 under section 10101(c) of the Omnibus Budget Reconciliation Act of 1990 [Pub. L. 101–508, set out below] may take effect on or after 1 day after such surcharges are published in the Federal Register. Section 553 of title 5, United States Code, shall not apply to the establishment of such surcharges for fiscal year 1992.”

Unspecified Patent Fees for Fiscal Year 1992; Effective Date Contingent Upon Publication in Federal Register

Pub. L. 102–204, § 5(c)(2), Dec. 10, 1991, 105 Stat. 1639, provided that fees established by the Commissioner of Patents and Trademarks under subsec. (d) of this section during fiscal year 1992 could take effect on or after 1 day after being published in the Federal Register, and that former subsec. (g) of this section and section 553 of title 5 were not to apply to the establishment of such fees during fiscal year 1992.

Patent Information Dissemination

Pub. L. 102–204, § 11, Dec. 10, 1991, 105 Stat. 1641, set out definitions, established a patent information demonstration program, stipulated the information to be disseminated, provided for fees for CD-ROM purchase, and required a report to Congress one year after Dec. 10, 1991.

Surcharges on Patent Fees

Pub. L. 101–508, title X, § 10101(a)–(c), Nov. 5, 1990, 104 Stat. 1388–391, as amended by Pub. L. 102–204, § 2(b), Dec. 10, 1991, 105 Stat. 1636; Pub. L. 103–66, title VIII, § 8001, Aug. 10, 1993, 107 Stat. 402, provided for surcharges for fees under this section during fiscal years 1991 through 1998, and stipulated how surcharges would be used and credited in those fiscal years.

Effect on Other Laws

Pub. L. 101–508, title X, § 10103, Nov. 5, 1990, 104 Stat. 1388–392, provided that: “Except for section 10101(d) [not classified to the Code], nothing in this subtitle [subtitle B (§§ 10101–10103) of title X of Pub. L. 101–508, enacting provisions set out as notes under this section and section 1 of this title] affects the provisions of Public Law 100–703 (102 Stat. 4674 and following) [see Tables for classification].”

Public Access to Patent and Trademark Office Information

Pub. L. 100–703, title I, § 104(b), (c), Nov. 19, 1988, 102 Stat. 4675, provided that the Commissioner of Patents and Trademarks maintain patent and trademark collections, search rooms, and libraries for use by the public without fees and authorized establishment of fees for access by the public to automated search systems of the Patent and Trademark Office, prior to repeal by Pub. L. 102–204, § 9, Dec. 10, 1991, 105 Stat. 1641. See section 41(i) of this title.

Pub. L. 99–607, § 4, Nov. 6, 1986, 100 Stat. 3471, provided that the Commissioner of Patents and Trademarks could not impose a fee for use of public patent or trademark search rooms and libraries and that costs of such rooms and libraries should come from amounts appropriated by Congress, prior to repeal by Pub. L. 100–703, title I, § 104(a), Nov. 19, 1988, 102 Stat. 4675.

Patent Fees

Pub. L. 100–703, title I, § 103(b), Nov. 19, 1988, 102 Stat. 4674, prohibited Commissioner of Patents and Trademarks, during fiscal years 1989, 1990, and 1991, from increasing fees established under subsec. (d) of this section, except for purposes of making adjustments which in the aggregate did not exceed fluctuations during the previous three years in the Consumer Price Index, and from establishing additional fees under such section during such fiscal years. Similar provisions were contained in Pub. L. 99–607, § 3(b), Nov. 6, 1986, 100 Stat. 3471.

Pub. L. 98–622, title IV, § 404, Nov. 8, 1984, 98 Stat. 3392, provided that: “(a) Notwithstanding section 41 of title 35, United States Code, as in effect before the enactment of Public Law 97–247 (96 Stat. 317) [Aug. 27, 1982], no fee shall be collected for maintaining a plant patent in force. “(b) Notwithstanding section 41(c) of title 35, United States Code, as in effect before the enactment of Public Law 97–247 (96 Stat. 317) [Aug. 27, 1982], the Commissioner of Patents and Trademarks [now Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office] may accept, after the six-month grace period referred to in such section 41(c), the payment of any maintenance fee due on any patent based on an application filed in the Patent and Trademark Office on or after December 12, 1980, and before August 27, 1982, to the same extent as in the case of patents based on applications filed in the Patent and Trademark Office on or after August 27, 1982.”