35 U.S.C. § 42

Patent and Trademark Office funding

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(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)(1) 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.(2) There is established in the Treasury a Patent and Trademark Fee Reserve Fund. If fee collections by the Patent and Trademark Office for a fiscal year exceed the amount appropriated to the Office for that fiscal year, fees collected in excess of the appropriated amount shall be deposited in the Patent and Trademark Fee Reserve Fund. 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).(3)(A) 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.(B) 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—(1) a list of patent and trademark fee collections by the Patent and Trademark Office during the preceding fiscal year;(2) 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;(3) budget plans for significant programs, projects, and activities of the Office, including out-year funding estimates;(4) any proposed disposition of surplus fees by the Office; and(5) such other information as the committees consider necessary.(July 19, 1952, ch. 950, 66 Stat. 796; Pub. L. 94–131, § 4, Nov. 14, 1975, 89 Stat. 690; Pub. L. 96–517, § 3, Dec. 12, 1980, 94 Stat. 3018; Pub. L. 97–247, § 3(g), Aug. 27, 1982, 96 Stat. 319; Pub. L. 97–258, § 3(i), Sept. 13, 1982, 96 Stat. 1065; Pub. L. 102–204, §§ 4, 5(e), Dec. 10, 1991, 105 Stat. 1637, 1640; Pub. L. 105–358, § 4, Nov. 10, 1998, 112 Stat. 3274; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4205, 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–555, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, § 22(a), Sept. 16, 2011, 125 Stat. 336; Pub. L. 112–274, § 1(j), Jan. 14, 2013, 126 Stat. 2457.)Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., § 79 (Mar. 6, 1920, ch. 94, § 1 (part), 41 Stat. 503, 512).

Language has been changed.

Editorial NotesReferences in Text

Section 31 of the Trademark Act of 1946, referred to in subsec. (c)(3)(B), is classified to section 1113 of Title 15, Commerce and Trade.

Amendments

2013—Subsec. (c)(3)(A). Pub. L. 112–274, § 1(j)(1), substituted “this title,” for “sections 41, 42, and 376,” and “a proportionate share of the administrative costs of the Office” for “a share of the administrative costs of the Office relating to patents”.

Subsec. (c)(3)(B). Pub. L. 112–274, § 1(j)(2), substituted “a proportionate share of the administrative costs of the Office” for “a share of the administrative costs of the Office relating to trademarks”.

2011—Subsec. (c). Pub. L. 112–29 designated existing provisions as par. (1), substituted “shall, subject to paragraph (3), be available” for “shall be available”, struck out at end “All fees available to the Director under section 31 of the Trademark Act of 1946 shall be used only for 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 Patent and Trademark Office.”, and added pars. (2) and (3).

2002—Subsecs. (a), (b). Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below.

1999—Subsecs. (a), (b). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, substituted “Director” for “Commissioner”.

Subsec. (c). Pub. L. 106–113 substituted “Director” for “Commissioner” wherever appearing and, in second sentence, substituted “All fees available” for “Fees available” and “shall be used” for “may be used”.

Subsec. (d). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], substituted “Director” for “Commissioner”.

1998—Subsec. (c). Pub. L. 105–358 substituted first sentence for former first sentence which read as follows: “Revenues from fees shall be available to the Commissioner to carry out, to the extent provided in appropriation Acts, the activities of the Patent and Trademark Office.”

1991—Subsec. (c). Pub. L. 102–204, § 5(e), amended subsec. (c) generally. Prior to amendment, subsec. (c) read as follows: “Revenues from fees will be available to the Commissioner of Patents to carry out, to the extent provided for in appropriation Acts, the activities of the Patent and Trademark Office. Fees available to the Commissioner under section 31 of the Trademark Act of 1946, as amended (15 U.S.C. 1113), shall be used exclusively for the processing of trademark registrations and for other services and materials related to trademarks.”

Subsec. (e). Pub. L. 102–204, § 4, added subsec. (e).

1982—Subsec. (b). Pub. L. 97–258 struck out “, the provisions of section 725e of title 31, United States Code, notwithstanding” after “United States”.

Subsec. (c). Pub. L. 97–247 inserted provision that fees available to the Commissioner under section 31 of the Trademark Act of 1946, as amended (15 U.S.C. 1113), be used exclusively for the processing of trademark registrations and for other services and materials related to trademarks.

1980—Pub. L. 96–517 designated existing provision relating to payment of patent fees as subsec. (a) and struck out provision that, except as provided in sections 361(b) and 376(b) of this title, the Commissioner deposit fees paid in the Treasury of the United States in such manner as directed by the Secretary of the Treasury, designated existing provision relating to return of excess amounts paid as subsec. (d), and added subsecs. (b) and (c).

1975—Pub. L. 94–131 inserted “, except as provided in sections 361(b) and 376(b) of this title,”.

Statutory Notes and Related SubsidiariesEffective Date of 2013 Amendment

Amendment by Pub. L. 112–274 effective Jan. 14, 2013, and applicable to proceedings commenced on or after such date, see section 1(n) of Pub. L. 112–274, set out as a note under section 5 of this title.

Effective Date of 2011 Amendment

Pub. L. 112–29, § 22(b), Sept. 16, 2011, 125 Stat. 336, provided that: “The amendments made by this section [amending this section] shall take effect on October 1, 2011.”

Effective Date of 1999 Amendment

Amendment by section 1000(a)(9) [title IV, § 4732(a)(10)(A)] of Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Effective Date of 1998 Amendment

Amendment by Pub. L. 105–358 effective Oct. 1, 1998, see section 5 of Pub. L. 105–358, set out as a note under section 41 of this title.

Effective Date of 1982 Amendment

Amendment by Pub. L. 97–247 effective Oct. 1, 1982, see section 17(a) of Pub. L. 97–247, set out as a note under section 41 of this title.

Effective Date of 1980 Amendment

Amendment by Pub. L. 96–517 effective on first day of first fiscal year beginning on or after one calendar year after Dec. 12, 1980, subject to authorization of appropriation account credits from collected reexamination fees prior to the effective date, made available for payment of reexamination proceedings costs, see section 8(c) of Pub. L. 96–517, set out as a note under section 41 of this title.

Effective Date of 1975 Amendment

Amendment by Pub. L. 94–131 effective Jan. 24, 1978, and applicable on and after that date to patent applications filed in the United States and to international applications, where applicable, see section 11 of Pub. L. 94–131, set out as an Effective Date note under section 351 of this title.

Authorization of Amounts Available to the Patent and Trademark Office

Pub. L. 107–273, div. C, title III, § 13102, Nov. 2, 2002, 116 Stat. 1899, provided that:“(a)In General.—There are authorized to be appropriated to the United States Patent and Trademark Office for salaries and necessary expenses for each of the fiscal years 2003 through 2008 an amount equal to the fees estimated by the Secretary of Commerce to be collected in each such fiscal year, respectively, under—“(1) title 35, United States Code; and“(2) 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.) (commonly referred to as the Trademark Act of 1946).“(b)Estimates.—Not later than February 15, of each fiscal year, the Undersecretary of Commerce for Intellectual Property and the Director of the Patent and Trademark Office (in this subtitle [subtitle A (§§ 13101–13106) of title III of div. C of Pub. L. 107–273, amending sections 134, 141, 303, 312, and 315 of this title and enacting provisions set out as notes under sections 2, 134, and 303 of this title] referred to as the Director) shall submit an estimate of all fees referred to under subsection (a) to be collected in the next fiscal year to the chairman and ranking member of—“(1) the Committees on Appropriations and Judiciary of the Senate; and“(2) the Committees on Appropriations and Judiciary of the House of Representatives.”

Appropriations Authorized To Be Carried Over

Pub. L. 100–703, title I, § 102, Nov. 19, 1988, 102 Stat. 4674, provided that: “Amounts appropriated under this Act and such fees as may be collected under title 35, United States Code, and the Trademark Act of 1946 (15 U.S.C. 1051 and following) may remain available until expended.”

Similar provisions were contained in the following prior authorization act:

Pub. L. 99–607, § 2, Nov. 6, 1986, 100 Stat. 3470.

Notes of Decisions

Cited in 19 cases (2 in the last 5 years), 1948–2021 · leading case: Figueroa v. United States, 466 F.3d 1023 (Fed. Cir. 2006).

Sort: Relevance Newest Treatment

Figueroa v. United States, 466 F.3d 1023 (Fed. Cir. 2006). · cites it 3× “Though deposited into the same special treasury account as patent fee revenue, 35 U.S.C. § 42 (b) (2000), trademark fee revenue may be used only to fund the PTO’s trademark operations.”

In RE:TAM en Banc, 808 F.3d 1321 (Fed. Cir. 2015). · cites it 4× “29–30 (citing 35 U.S.C. § 42 (c)(1)–(2)). Trademark registration fees are collected and, “[t]o the extent and in the amounts provided in advance in appropriations Acts,” made avail- able “to carry out the activities of the [PTO].”

Mobility Workx, LLC v. Unified Patents, LLC, 15 F.4th 1146 (Fed. Cir. 2021). · cites it 2× “16–17 (citing 35 U.S.C. § 42 (c)(2)). Mobility’s challenge cannot succeed.”

In Re: Erik Brunetti, 877 F.3d 1330 (Fed. Cir. 2017). · cites it 2× “” 35 U.S.C. § 42 (c)(1). As explained in our en banc opinion in Tam, since 1991, trademark registration fees—not appropria- tions from taxpayers—have entirely funded the direct operating expenses associated with trademark registra- tion.”

Figueroa v. United States, 57 Fed. Cl. 488 (Fed. Cl. 2003). · cites it 2× “” 35 U.S.C. § 42 (b) (emphasis added). The court, therefore, rejects defendant’s argument that plaintiff lacked standing because it received a small-entity subsidy.”

Evideo Owners v. United States, 126 Fed. Cl. 95 (Fed. Cl. 2016). · cites it 3× “On November 10, 2015, the Court ordered the parties to provide supplemental briefing on whether the Court possesses jurisdiction to consider plaintiffs’ illegal exaction claim and whether the Court’s Tucker Act jurisdiction with respect to plaintiffs’ illegal exaction claim is…”

Christy, Inc. v. United States, 971 F.3d 1332 (Fed. Cir. 2020). “at 667–68; see 35 U.S.C. § 42 (d). The court addressed the merits of the illegal exaction claim in the al- ternative, however, finding that Christy’s issuance and maintenance fees paid for the ’640 patent “were owed at the time they were paid, and as such, were not fees paid by…”

Marion B. Robinson v. United States, 236 F.2d 24 (2d Cir. 1956). · cites it 2× “Prior to February 1, 1952 the applicable provision was 35 U.S.C.A. § 42 which derived from an act of October 6, 1917, 40 Stat.”

Fulmer v. United States, 83 F. Supp. 137 (N.D. Ala. 1949). · cites it 2× “Whether this Court has jurisdiction under Title 35 U.S.C.A. § 42 , the Secrecy or Voluntary Tender Act, to award “compensation” thereunder, and if so whether the complaint states, or the other matters of record show, facts which, if proved, *141 would constitute a cause of…”

Gerald Glen Boyden v. Comm'r of Patents, 441 F.2d 1041 (D.C. Cir. 1971). “2 Note also that 35 U.S.C. § 42 provides that all “patent fees shall be paid to the Commissioner who shall deposit the same in the Treasury of the United States * * *.”

Am. Tel. & Tel. Co v. United States, 231 Ct. Cl. 360 (Ct. Cl. 1982). “2 On April 14,1949, the Armed Services Patent Advisory Board recommended that the patent application be placed in secrecy pursuant to 35 U.S.C. § 42 (now 35 U.S.C. § 181 ). On May 18, 1949, the Commissioner of Patents mailed an order of secrecy, dated May 13,1949.”

Otto Halpern v. United States, 258 F.2d 36 (2d Cir. 1958). “On May 3, 1945, the Commissioner of Patents found that the disclosure of the contents of the patent application would be detrimental to the public safety and defense and entered a secrecy order pursuant to former 35 U.S.C. § 42 (1942 ed.). As a result of this order no patent was…”

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