Appendix L - Patent Laws
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Appendix L - Patent Laws
Appendix L - Patent Laws
United States Code Title 35 - Patents
[Editor Note: Current as of January 31, 2024. The Public Laws are the
authoritative source and should be consulted if a need arises to verify the authenticity
of the language reproduced below.]
United States Code Title 35 - Patents
PART PART I - UNITED STATES PATENT AND TRADEMARK OFFICE
PART I
CHAPTER CHAPTER 1 - ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS
1 Establishment.
2 Powers and duties.
3 Officers and employees.
4 Restrictions on officers and employees as to interest in
patents.
5 Patent and Trademark Office Public Advisory Committees.
6 Patent Trial and Appeal Board.
6 (pre‑AIA) Board of Patent Appeals and Interferences.
7 Library.
8 Classification of patents.
9 Certified copies of records.
10 Publications.
11 Exchange of copies of patents and applications with foreign
countries.
12 Copies of patents and applications for public libraries.
13 Annual report to Congress.
35 U.S.C. 1
Establishment.
(a) ESTABLISHMENT.— The United States Patent and Trademark
Office is established as an agency of the United States, within the
Department of Commerce. In carrying out its functions, the United States
Patent and Trademark Office shall be subject to the policy direction of the
Secretary of Commerce, but otherwise shall retain responsibility for
decisions regarding the management and administration of its operations and
shall exercise independent control of its budget allocations and
expenditures, personnel decisions and processes, procurements, and other
administrative and management functions in accordance with this title and
applicable provisions of law. Those operations designed to grant and issue
patents and those operations which are designed to facilitate the
registration of trademarks shall be treated as separate operating units
within the Office.
(b) OFFICES.— The United States Patent and Trademark Office
shall maintain its principal office in the metropolitan Washington, D.C.,
area, for the service of process and papers and for the purpose of carrying
out its functions. The United States Patent and Trademark Office shall be
deemed, for purposes of venue in civil actions, to be a resident of the
district in which its principal office is located, except where jurisdiction
is otherwise provided by law. The United States Patent and Trademark Office
may establish satellite offices in such other places in the United States as
it considers necessary and appropriate in the conduct of its business.
(c) REFERENCE.— For purposes of this title, the United States
Patent and Trademark Office shall also be referred to as the “Office” and
the “Patent and Trademark Office”.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-572 (S. 1948 sec. 4711).)
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35 U.S.C. 2
Powers and duties.
(a) IN GENERAL.— The United States Patent and Trademark Office,
subject to the policy direction of the Secretary of Commerce—
(1) shall be responsible for the granting and issuing of
patents and the registration of trademarks; and
(2) shall be responsible for disseminating to the public
information with respect to patents and trademarks.
(b) SPECIFIC POWERS.— The Office—
(1) shall adopt and use a seal of the Office, which shall
be judicially noticed and with which letters patent, certificates of
trademark registrations, and papers issued by the Office shall be
authenticated;
(2) may establish regulations, not inconsistent with law,
which—
(A) shall govern the conduct of proceedings in the
Office;
(B) shall be made in accordance with section 553 of
title 5;
(C) shall facilitate and expedite the processing of
patent applications, particularly those which can be filed,
stored, processed, searched, and retrieved electronically,
subject to the provisions of
section 122
relating to the confidential status of applications;
(D) may govern the recognition and conduct of
agents, attorneys, or other persons representing applicants or
other parties before the Office, and may require them, before
being recognized as representatives of applicants or other
persons, to show that they are of good moral character and
reputation and are possessed of the necessary qualifications to
render to applicants or other persons valuable service, advice,
and assistance in the presentation or prosecution of their
applications or other business before the Office;
(E) shall recognize the public interest in
continuing to safeguard broad access to the United States patent
system through the reduced fee structure for small entities
under
section
41(h)(1)
(F) provide for the development of a
performance-based process that includes quantitative and
qualitative measures and standards for evaluating
cost-effectiveness and is consistent with the principles of
impartiality and competitiveness; and
(G) may, subject to any conditions
prescribed by the Director and at the request of the patent
applicant, provide for prioritization of examination of
applications for products, processes, or technologies that are
important to the national economy or national competitiveness
without recovering the aggregate extra cost of providing such
prioritization, notwithstanding section
41
or any other provision of law;
(3) may acquire, construct, purchase, lease, hold,
manage, operate, improve, alter, and renovate any real, personal, or
mixed property, or any interest therein, as it considers necessary to
carry out its functions;
(4)
(A) may make such purchases, contracts for the
construction, or management and operation of facilities, and
contracts for supplies or services, without regard to the
provisions of subtitle I and chapter 33 of title 40, division C
(except sections 3302, 3501(b), 3509, 3906, 4710, and 4711) of
subtitle I of title 41, and the McKinney-Vento Homeless
Assistance Act (42 U.S.C. 11301 et seq.);
(B) may enter into and perform such purchases and
contracts for printing services, including the process of
composition, platemaking, presswork, silk screen processes,
binding, microform, and the products of such processes, as it
considers necessary to carry out the functions of the Office,
without regard to sections 501 through 517 and 1101 through 1123
of title 44;
(5) may use, with their consent, services, equipment,
personnel, and facilities of other departments, agencies, and
instrumentalities of the Federal Government, on a reimbursable basis,
and cooperate with such other departments, agencies, and
instrumentalities in the establishment and use of services, equipment,
and facilities of the Office;
(6) may, when the Director determines that it is
practicable, efficient, and cost-effective to do so, use, with the
consent of the United States and the agency, instrumentality, Patent
and Trademark Office, or international organization concerned, the
services, records, facilities, or personnel of any State or local
government agency or instrumentality or foreign patent and trademark
office or international organization to perform functions on its
behalf;
(7) may retain and use all of its revenues and receipts,
including revenues from the sale, lease, or disposal of any real,
personal, or mixed property, or any interest therein, of the Office;
(8) shall advise the President, through the Secretary of
Commerce, on national and certain international intellectual property
policy issues;
(9) shall advise Federal departments and agencies on
matters of intellectual property policy in the United States and
intellectual property protection in other countries;
(10) shall provide guidance, as appropriate, with respect
to proposals by agencies to assist foreign governments and
international intergovernmental organizations on matters of
intellectual property protection;
(11) may conduct programs, studies, or exchanges
of items or services regarding domestic and international intellectual
property law and the effectiveness of intellectual property protection
domestically and throughout the world, and the Office is authorized to
expend funds to cover the subsistence expenses and travel-related
expenses, including per diem, lodging costs, and transportation costs,
of persons attending such programs who are not Federal employees;
(12)
(A) shall advise the Secretary of Commerce on
programs and studies relating to intellectual property policy
that are conducted, or authorized to be conducted, cooperatively
with foreign intellectual property offices and international
intergovernmental organizations; and
(B) may conduct programs and studies described in
subparagraph (A); and
(13)
(A) in coordination with the Department of State,
may conduct programs and studies cooperatively with foreign
intellectual property offices and international
intergovernmental organizations; and
(B) with the concurrence of the Secretary of State,
may authorize the transfer of not to exceed $100,000 in any year
to the Department of State for the purpose of making special
payments to international intergovernmental organizations for
studies and programs for advancing international cooperation
concerning patents, trademarks, and other matters.
(c) CLARIFICATION OF SPECIFIC POWERS.—
(1) The special payments under subsection (b)(13)(B)
shall be in addition to any other payments or contributions to
international organizations described in subsection (b)(13)(B) and
shall not be subject to any limitations imposed by law on the amounts
of such other payments or contributions by the United States
Government.
(2) Nothing in subsection (b) shall derogate from the
duties of the Secretary of State or from the duties of the United
States Trade Representative as set forth in section 141 of the Trade
Act of 1974 (19 U.S.C. 2171).
(3) Nothing in subsection (b) shall derogate from the
duties and functions of the Register of Copyrights or otherwise alter
current authorities relating to copyright matters.
(4) In exercising the Director’s powers under paragraphs
(3) and (4)(A) of subsection (b), the Director shall consult with the
Administrator of General Services.
(5) In exercising the Director’s powers and duties under
this section, the Director shall consult with the Register of
Copyrights on all copyright and related matters.
(d) CONSTRUCTION.— Nothing in this section shall be construed
to nullify, void, cancel, or interrupt any pending request-for-proposal let
or contract issued by the General Services Administration for the specific
purpose of relocating or leasing space to the United States Patent and
Trademark Office.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-572 (S. 1948 sec. 4712); subsection (b)(4)(A) amended Oct. 30,
2000, Public Law 106-400, sec. 2, 114 Stat. 1675; subsections (b)(2)(B) and
(b)(4)(B) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904;
subsection (b)(4)(A) amended Dec. 15, 2003, Public Law 108-178, sec. 4(g), 117
Stat. 2641; subsection (b)(4)(A) amended January 4, 2011, Public Law 111-350,
sec. 5(i)(1), 124 Stat. 3849; subsection (b)(2)(G) added and subsections
(b)(2)(E) and (b)(11) amended Sept. 16, 2011, Public Law 112-29, secs. 20(j),
21(a), and 25 (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 3
Officers and employees.
(a) UNDER SECRETARY AND DIRECTOR.—
(1) IN GENERAL.— The powers and duties of the United
States Patent and Trademark Office shall be vested in an Under
Secretary of Commerce for Intellectual Property and Director of the
United States Patent and Trademark Office (in this title referred to
as the “Director”), who shall be a citizen of the United States and
who shall be appointed by the President, by and with the advice and
consent of the Senate. The Director shall be a person who has a
professional background and experience in patent or trademark law.
(2) DUTIES.—
(A) IN GENERAL.— The Director shall be responsible
for providing policy direction and management supervision for
the Office and for the issuance of patents and the registration
of trademarks. The Director shall perform these duties in a
fair, impartial, and equitable manner.
(B) CONSULTING WITH THE PUBLIC ADVISORY
COMMITTEES.— The Director shall consult with the Patent Public
Advisory Committee established in
section
on a regular basis on matters relating
to the patent operations of the Office, shall consult with the
Trademark Public Advisory Committee established in
section 5
on
a regular basis on matters relating to the trademark operations
of the Office, and shall consult with the respective Public
Advisory Committee before submitting budgetary proposals to the
Office of Management and Budget or changing or proposing to
change patent or trademark user fees or patent or trademark
regulations which are subject to the requirement to provide
notice and opportunity for public comment under section 553 of
title 5, as the case may be.
(3) OATH.— The Director shall, before taking office, take
an oath to discharge faithfully the duties of the Office.
(4) REMOVAL.— The Director may be removed from office by
the President. The President shall provide notification of any such
removal to both Houses of Congress.
(b) OFFICERS AND EMPLOYEES OF THE OFFICE.—
(1) DEPUTY UNDER SECRETARY AND DEPUTY DIRECTOR.— The
Secretary of Commerce, upon nomination by the Director, shall appoint
a Deputy Under Secretary of Commerce for Intellectual Property and
Deputy Director of the United States Patent and Trademark Office who
shall be vested with the authority to act in the capacity of the
Director in the event of the absence or incapacity of the Director.
The Deputy Director shall be a citizen of the United States who has a
professional background and experience in patent or trademark law.
(2) COMMISSIONERS.—
(A) APPOINTMENT AND DUTIES.— The Secretary of
Commerce shall appoint a Commissioner for Patents and a
Commissioner for Trademarks, without regard to chapter 33, 51,
or 53 of title 5. The Commissioner for Patents shall be a
citizen of the United States with demonstrated management
ability and professional background and experience in patent law
and serve for a term of 5 years. The Commissioner for Trademarks
shall be a citizen of the United States with demonstrated
management ability and professional background and experience in
trademark law and serve for a term of 5 years. The Commissioner
for Patents and the Commissioner for Trademarks shall serve as
the chief operating officers for the operations of the Office
relating to patents and trademarks, respectively, and shall be
responsible for the management and direction of all aspects of
the activities of the Office that affect the administration of
patent and trademark operations, respectively. The Secretary may
reappoint a Commissioner to subsequent terms of 5 years as long
as the performance of the Commissioner as set forth in the
performance agreement in subparagraph (B) is satisfactory.
(B) SALARY AND PERFORMANCE AGREEMENT.— The
Commissioners shall be paid an annual rate of basic pay not to
exceed the maximum rate of basic pay for the Senior Executive
Service established under section 5382 of title 5, including any
applicable locality-based comparability payment that may be
authorized under section 5304(h)(2)(C) of title 5. The
compensation of the Commissioners shall be considered, for
purposes of section 207(c)(2)(A) of title 18, to be the
equivalent of that described under clause (ii) of section
207(c)(2)(A) of title 18. In addition, the Commissioners may
receive a bonus in an amount of up to, but not in excess of, 50
percent of the Commissioners’ annual rate of basic pay, based
upon an evaluation by the Secretary of Commerce, acting through
the Director, of the Commissioners’ performance as defined in an
annual performance agreement between the Commissioners and the
Secretary. The annual performance agreements shall incorporate
measurable organization and individual goals in key operational
areas as delineated in an annual performance plan agreed to by
the Commissioners and the Secretary. Payment of a bonus under
this subparagraph may be made to the Commissioners only to the
extent that such payment does not cause the Commissioners’ total
aggregate compensation in a calendar year to equal or exceed the
amount of the salary of the Vice President under section 104 of
title 3.
(C) REMOVAL.— The Commissioners may be removed from
office by the Secretary for misconduct or nonsatisfactory
performance under the performance agreement described in
subparagraph (B), without regard to the provisions of title 5.
The Secretary shall provide notification of any such removal to
both Houses of Congress.
(3) OTHER OFFICERS AND EMPLOYEES.— The Director shall—
(A) appoint such officers, employees (including
attorneys), and agents of the Office as the Director considers
necessary to carry out the functions of the Office; and
(B) define the title, authority, and duties of such
officers and employees and delegate to them such of the powers
vested in the Office as the Director may determine.
The Office shall not be subject to any
administratively or statutorily imposed limitation on positions or
personnel, and no positions or personnel of the Office shall be taken
into account for purposes of applying any such limitation.
(4) TRAINING OF EXAMINERS.— The Office shall submit to
the Congress a proposal to provide an incentive program to retain as
employees patent and trademark examiners of the primary examiner grade
or higher who are eligible for retirement, for the sole purpose of
training patent and trademark examiners.
(5) NATIONAL SECURITY POSITIONS.— The Director, in
consultation with the Director of the Office of Personnel Management,
shall maintain a program for identifying national security positions
and providing for appropriate security clearances, in order to
maintain the secrecy of certain inventions, as described in
section 181
, and to prevent disclosure of
sensitive and strategic information in the interest of national
security.
(6) ADMINISTRATIVE PATENT JUDGES AND
ADMINISTRATIVE TRADEMARK JUDGES.—The Director may fix the rate of
basic pay for the administrative patent judges appointed pursuant to
section 6
and the administrative trademark
judges appointed pursuant to section 17 of the Trademark Act of 1946
(15 U.S.C. 1067) at not greater than the rate of basic pay payable for
level III of the Executive Schedule under section 5314 of title 5. The
payment of a rate of basic pay under this paragraph shall not be
subject to the pay limitation under section 5306(e) or 5373 of title
5.
(c) CONTINUED APPLICABILITY OF TITLE 5. — Officers and
employees of the Office shall be subject to the provisions of title 5,
relating to Federal employees.
(d) ADOPTION OF EXISTING LABOR AGREEMENTS.— The Office shall
adopt all labor agreements which are in effect, as of the day before the
effective date of the Patent and Trademark Office Efficiency Act, with
respect to such Office (as then in effect).
(e) CARRYOVER OF PERSONNEL.—
(1) FROM PTO.— Effective as of the effective date of the
Patent and Trademark Office Efficiency Act, all officers and employees
of the Patent and Trademark Office on the day before such effective
date shall become officers and employees of the Office, without a
break in service.
(2) OTHER PERSONNEL.— Any individual who, on the day
before the effective date of the Patent and Trademark Office
Efficiency Act, is an officer or employee of the Department of
Commerce (other than an officer or employee under paragraph (1)) shall
be transferred to the Office, as necessary to carry out the purposes
of that Act, if—
(A) such individual serves in a position for which
a major function is the performance of work reimbursed by the
Patent and Trademark Office, as determined by the Secretary of
Commerce;
(B) such individual serves in a position that
performed work in support of the Patent and Trademark Office
during at least half of the incumbent’s work time, as determined
by the Secretary of Commerce; or
(C) such transfer would be in the interest of the
Office, as determined by the Secretary of Commerce in
consultation with the Director.
Any transfer under this paragraph shall be effective as of
the same effective date as referred to in paragraph (1), and shall be made
without a break in service.
(f) TRANSITION PROVISIONS.—
(1) INTERIM APPOINTMENT OF DIRECTOR.— On or after the
effective date of the Patent and Trademark Office Efficiency Act, the
President shall appoint an individual to serve as the Director until
the date on which a Director qualifies under subsection (a). The
President shall not make more than one such appointment under this
subsection.
(2) CONTINUATION IN OFFICE OF CERTAIN OFFICERS.—
(A) The individual serving as the Assistant
Commissioner for Patents on the day before the effective date of
the Patent and Trademark Office Efficiency Act may serve as the
Commissioner for Patents until the date on which a Commissioner
for Patents is appointed under subsection (b).
(B) The individual serving as the Assistant
Commissioner for Trademarks on the day before the effective date
of the Patent and Trademark Office Efficiency Act may serve as
the Commissioner for Trademarks until the date on which a
Commissioner for Trademarks is appointed under subsection
(b).
(Amended Sept. 6, 1958, Public Law 85-933, sec. 1,
72 Stat. 1793; Sept. 23, 1959, Public Law 86-370, sec. 1(a), 73 Stat. 650; Aug.
14, 1964, Public Law 88-426, sec. 305(26), 78 Stat. 425; Jan. 2, 1975, Public
Law 93-596, sec. 1, 88 Stat. 1949; Jan. 2, 1975, Public Law 93-601, sec. 1, 88
Stat. 1956; Aug. 27, 1982, Public Law 97-247, sec. 4, 96 Stat. 319; Oct. 25,
1982, Public Law 97-366, sec. 4, 96 Stat. 1760; Nov. 8, 1984, Public Law
98-622, sec. 405, 98 Stat. 3392; Oct. 28, 1998, Public Law 105-304, sec.
401(a)(1), 112 Stat. 2887; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-575 (S. 1948 sec. 4713); subsections (a)(2)(B), (b)(2), and (c)
amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904;
subsection (b)(6) added and (e)(2) amended Sept. 16, 2011, Public Law 112-29,
secs. 20(i) and 21(b) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 4
Restrictions on officers and employees as to
interest in patents.
Officers and employees of the Patent and Trademark Office shall
be incapable, during the period of their appointments and for one year thereafter,
of applying for a patent and of acquiring, directly or indirectly, except by
inheritance or bequest, any patent or any right or interest in any patent, issued
or to be issued by the Office. In patents applied for thereafter they shall not be
entitled to any priority date earlier than one year after the termination of their
appointment.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949.)
[top]
35 U.S.C. 5
Patent and Trademark Office Public Advisory
Committees.
(a) ESTABLISHMENT OF PUBLIC ADVISORY COMMITTEES.—
(1) APPOINTMENT.— The United States Patent and Trademark
Office shall have a Patent Public Advisory Committee and a Trademark
Public Advisory Committee, each of which shall have nine voting
members who shall be appointed by the Secretary of Commerce and serve
at the pleasure of the Secretary of Commerce. In each year, 3 members
shall be appointed to each Advisory Committee for 3-year terms that
shall begin on December 1 of that year. Any vacancy on an Advisory
Committee shall be filled within 90 days after it occurs. A new member
who is appointed to fill a vacancy shall be appointed to serve for the
remainder of the predecessor’s term.
(2) CHAIR.— The Secretary of Commerce, in consultation
with the Director, shall designate a Chair and Vice Chair of each
Advisory Committee from among the members appointed under paragraph
(1). If the Chair resigns before the completion of his or her term, or
is otherwise unable to exercise the functions of the Chair, the Vice
Chair shall exercise the functions of the Chair.
(b) BASIS FOR APPOINTMENTS.— Members of each Advisory
Committee—
(1) shall be citizens of the United States who shall be
chosen so as to represent the interests of diverse users of the United
States Patent and Trademark Office with respect to patents, in the
case of the Patent Public Advisory Committee, and with respect to
trademarks, in the case of the Trademark Public Advisory
Committee;
(2) shall include members who represent small and large
entity applicants located in the United States in proportion to the
number of applications filed by such applicants, but in no case shall
members who represent small entity patent applicants, including small
business concerns, independent inventors, and nonprofit organizations,
constitute less than 25 percent of the members of the Patent Public
Advisory Committee, and such members shall include at least one
independent inventor; and
(3) shall include individuals with substantial background
and achievement in finance, management, labor relations, science,
technology, and office automation. In addition to the voting members,
each Advisory Committee shall include a representative of each labor
organization recognized by the United States Patent and Trademark
Office. Such representatives shall be nonvoting members of the
Advisory Committee to which they are appointed.
(c) MEETINGS.— Each Advisory Committee shall meet at the call
of the chair to consider an agenda set by the chair.
(d) DUTIES.— Each Advisory Committee shall—
(1) review the policies, goals, performance, budget, and
user fees of the United States Patent and Trademark Office with
respect to patents, in the case of the Patent Public Advisory
Committee, and with respect to Trademarks, in the case of the
Trademark Public Advisory Committee, and advise the Director on these
matters;
(2) within 60 days after the end of each fiscal year—
(A) prepare an annual report on the matters
referred to in paragraph (1);
(B) transmit the report to the Secretary of
Commerce, the President, and the Committees on the Judiciary of
the Senate and the House of Representatives; and
(C) publish the report in the Official Gazette of
the United States Patent and Trademark Office.
(e) COMPENSATION.— Each member of each Advisory Committee shall
be compensated for each day (including travel time) during which such member
is attending meetings or conferences of that Advisory Committee or otherwise
engaged in the business of that Advisory Committee, at the rate which is the
daily equivalent of the annual rate of basic pay in effect for level III of
the Executive Schedule under section 5314 of title 5. While away from such
member’s home or regular place of business such member shall be allowed
travel expenses, including per diem in lieu of subsistence, as authorized by
section 5703 of title 5.
(f) ACCESS TO INFORMATION.— Members of each Advisory Committee
shall be provided access to records and information in the United States
Patent and Trademark Office, except for personnel or other privileged
information and information concerning patent applications required to be
kept in confidence by
section 122
(g) APPLICABILITY OF CERTAIN ETHICS LAWS.— Members of each
Advisory Committee shall be special Government employees within the meaning
of section 202 of title 18.
(h) INAPPLICABILITY OF FEDERAL ADVISORY COMMITTEE ACT.— The
Federal Advisory Committee Act (5 U.S.C. App.) shall not apply to each
Advisory Committee.
(i) OPEN MEETINGS.— The meetings of each Advisory Committee
shall be open to the public, except that each Advisory Committee may by
majority vote meet in executive session when considering personnel,
privileged, or other confidential information.
(j) INAPPLICABILITY OF PATENT PROHIBITION.—
Section
shall not apply to voting members of the Advisory
Committees.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-578 (S. 1948 sec. 4714); subsections (e) and (g) amended Nov.
2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904; subsection (i) amended
and subsection (j) added Nov. 2, 2002, Public Law 107-273, sec. 13203, 116
Stat. 1902; subsection (a) amended Jan. 14, 2013, Public Law 112-274, sec.
1(l), 126 Stat. 2456.)
[top]
35 U.S.C. 6
Patent Trial and Appeal Board.
[Editor Note: Applicable to proceedings commenced on or after September
16, 2012.* See
35 U.S.C. 6 (pre‑AIA)
for
the law otherwise applicable.]
(a) IN GENERAL.—There shall be in the Office a Patent
Trial and Appeal Board. The Director, the Deputy Director, the Commissioner
for Patents, the Commissioner for Trademarks, and the administrative patent
judges shall constitute the Patent Trial and Appeal Board. The
administrative patent judges shall be persons of competent legal knowledge
and scientific ability who are appointed by the Secretary, in consultation
with the Director. Any reference in any Federal law, Executive order, rule,
regulation, or delegation of authority, or any document of or pertaining to
the Board of Patent Appeals and Interferences is deemed to refer to the
Patent Trial and Appeal Board.
(b) DUTIES.—The Patent Trial and Appeal Board
shall—
(1) on written appeal of an applicant, review
adverse decisions of examiners upon applications for patents pursuant
to section
134(a)
(2) review appeals of reexaminations pursuant
to section
134(b)
(3) conduct derivation proceedings pursuant to
section
135
; and
(4) conduct inter partes reviews and post-grant
reviews pursuant to chapters
31
and
32
(c) 3-MEMBER PANELS.—Each appeal, derivation
proceeding, post-grant review, and inter partes review shall be heard by at
least 3 members of the Patent Trial and Appeal Board, who shall be
designated by the Director. Only the Patent Trial and Appeal Board may grant
rehearings.
(d) TREATMENT OF PRIOR APPOINTMENTS.—The Secretary of
Commerce may, in the Secretary’s discretion, deem the appointment of an
administrative patent judge who, before the date of the enactment of this
subsection, held office pursuant to an appointment by the Director to take
effect on the date on which the Director initially appointed the
administrative patent judge. It shall be a defense to a challenge to the
appointment of an administrative patent judge on the basis of the judge’s
having been originally appointed by the Director that the administrative
patent judge so appointed was acting as a de facto officer.
(Repealed by Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-580 (S. 1948 sec. 4715(a).)
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(2)); subsection (a) amended
Nov. 2, 2002, Public Law 107-273, sec. 13203, 116 Stat. 1902; subsection(a)
amended and subsections (c) and (d) added Aug. 12, 2008, Public Law 110-313,
sec. 1(a)(1), 122 Stat. 3014; amended Sept. 16, 2011, Public Law 112-29, sec.
7(a) (effective Sept. 16, 2012), 125 Stat. 284.*)
*NOTE:
The provisions of this section as in effect on Sept. 15,
2012 (
35
U.S.C. 6 (pre‑AIA)
) apply to interference proceedings
that are declared after September 15, 2012 under
35 U.S.C. 135
(pre‑AIA)
. See Public Law 112-274, sec. 1(k)(3), 126
Stat. 2456 (Jan. 14, 2013).
[top]
35 U.S.C. 6 (pre‑AIA)
Board of Patent Appeals and
Interferences.
[Editor Note:
Not applicable
to proceedings commenced on or
after September 16, 2012.* See
35 U.S.C. 6
for the law
otherwise applicable.]
(a) ESTABLISHMENT AND COMPOSITION.— There shall be in the
United States Patent and Trademark Office a Board of Patent Appeals and
Interferences. The Director, the Deputy Director, the Commissioner for
Patents, the Commissioner for Trademarks, and the administrative patent
judges shall constitute the Board. The administrative patent judges shall be
persons of competent legal knowledge and scientific ability who are
appointed by the Secretary of Commerce, in consultation with the
Director.
(b) DUTIES.— The Board of Patent Appeals and Interferences
shall, on written appeal of an applicant, review adverse decisions of
examiners upon applications for patents and shall determine priority and
patentability of invention in interferences declared under
section
135(a)
. Each appeal and interference shall be heard by
at least three members of the Board, who shall be designated by the
Director. Only the Board of Patent Appeals and Interferences may grant
rehearings.
(c) AUTHORITY OF THE SECRETARY.— The Secretary of
Commerce may, in his or her discretion, deem the appointment of an
administrative patent judge who, before the date of the enactment of this
subsection, held office pursuant to an appointment by the Director to take
effect on the date on which the Director initially appointed the
administrative patent judge.
(d) DEFENSE TO CHALLENGE OF APPOINTMENT.— It shall be
a defense to a challenge to the appointment of an administrative patent
judge on the basis of the judge's having been originally appointed by the
Director that the administrative patent judge so appointed was acting as a
de facto officer.
(Repealed by Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-580 (S. 1948 sec. 4715(a).)
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-580 (S. 1948 sec. 4717(2)); subsection (a) amended Nov. 2, 2002,
Public Law 107-273, sec. 13203, 116 Stat. 1902; subsection(a) amended and
subsections (c) and (d) added Aug. 12, 2008, Public Law 110-313, sec. 1(a)(1),
122 Stat. 3014.)
*NOTE:
The provisions of this section as in effect on Sept. 15,
2012 apply to interference proceedings that are declared after September 15,
2012 under
35
U.S.C. 135 (pre‑AIA)
. See Public Law 112-274, sec.
1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
[top]
35 U.S.C. 7
Library.
The Director shall maintain a library of scientific and other
works and periodicals, both foreign and domestic, in the Patent and Trademark
Office to aid the officers in the discharge of their duties.
(Repealed Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 8 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)); amended
Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 8
Classification of patents.
The Director may revise and maintain the classification by
subject matter of United States letters patent, and such other patents and printed
publications as may be necessary or practicable, for the purpose of determining
with readiness and accuracy the novelty of inventions for which applications for
patent are filed.
(Transferred to 35 U.S.C. 7 Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 9 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 9
Certified copies of records.
The Director may furnish certified copies of specifications and
drawings of patents issued by the Patent and Trademark Office, and of other
records available either to the public or to the person applying therefor.
(Transferred to 35 U.S.C. 8 Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 10 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)); amended
Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 10
Publications.
(a) The Director may publish in printed, typewritten, or
electronic form, the following:
(1) Patents and published applications for patents,
including specifications and drawings, together with copies of the
same. The Patent and Trademark Office may print the headings of the
drawings for patents for the purpose of photolithography.
(2) Certificates of trademark registrations, including
statements and drawings, together with copies of the same.
(3) The Official Gazette of the United States Patent and
Trademark Office.
(4) Annual indexes of patents and patentees, and of
trademarks and registrants.
(5) Annual volumes of decisions in patent and trademark
cases.
(6) Pamphlet copies of the patent laws and rules of
practice, laws and rules relating to trademarks, and circulars or
other publications relating to the business of the Office.
(b) The Director may exchange any of the publications specified
in items 3, 4, 5, and 6 of subsection (a) of this section for publications
desirable for the use of the Patent and Trademark Office.
(Transferred to 35 U.S.C. 9 Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 11 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 4717(1)); amended
Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948 sec. 4804(b)).)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-565, 582 (S. 1948 secs. 4507(1) and 4732(a)(10)(A)).)
[top]
35 U.S.C. 11
Exchange of copies of patents and applications
with foreign countries.
(a) IN GENERAL.—The Director may exchange copies of
specifications and drawings of United States patents and published
applications for patents for those of foreign countries. The Director shall
not enter into an agreement to provide such copies of specifications and
drawings of United States patents and applications to a foreign country,
other than a USMCA country or a WTO member country, without the express
authorization of the Secretary of Commerce.
(b) DEFINITIONS.—In this section—
(1) the term "USMCA country" has the meaning
given that term in section 3 of the United States-Mexico-Canada
Agreement Implementation Act (19 U.S.C. 4502); and
(2) the term "WTO member country" has the
meaning given that term in section 2(10) of the Uruguay Round
Agreements Act (19 U.S.C. 3501(10)).
(Transferred to 35 U.S.C. 10 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 12 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 4717(1)); amended
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-591 (S.
1948 sec. 4808).)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-565, 582 (S. 1948 secs. 4507(2)(A), 4507(2)(B), and
4732(a)(10)(A)).)
(Amended Dec. 27, 2020, Public Law 116-260,
division O, title VI, sec. 602(d), 134 Stat. 2153.)
[top]
35 U.S.C. 12
Copies of patents and applications for public
libraries.
The Director may supply copies of specifications and drawings of
patents and published applications for patents in printed or electronic form to
public libraries in the United States which shall maintain such copies for the use
of the public, at the rate for each year’s issue established for this purpose in
section
41(d)
(Transferred to 35 U.S.C. 11 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 13 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 4717(1)); amended
Aug. 27, 1982, Public Law 97-247, sec. 15, 96 Stat. 321; amended Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565, 566, 580, 582, and
589 (S. 1948 secs. 4507(3)(A), 4507(3)(B), 4507(4), 4717(1), 4732(a)(10)(A),
and 4804(c)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective
Sept. 16, 2012), 125 Stat 284.)
[top]
35 U.S.C. 13
Annual report to Congress.
The Director shall report to the Congress, not later than 180
days after the end of each fiscal year, the moneys received and expended by the
Office, the purposes for which the moneys were spent, the quality and quantity of
the work of the Office, the nature of training provided to examiners, the
evaluation of the Commissioner of Patents and the Commissioner of Trademarks by
the Secretary of Commerce, the compensation of the Commissioners, and other
information relating to the Office.
(Transferred to 35 U.S.C. 12 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 14 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 4717(1)).)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-565, 581 (S. 1948 secs. 4507(2), 4718).)
[top]
CHAPTER CHAPTER 2 - PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE
21 Filing date and day for taking action.
22 Printing of papers filed.
23 Testimony in Patent and Trademark Office cases.
24 Subpoenas, witnesses.
25 Declaration in lieu of oath.
26 Effect of defective execution.
27 Revival of applications; reinstatement of reexamination
proceedings.
35 U.S.C. 21
Filing date and day for taking
action.
(a) The Director may by rule prescribe that any paper or fee
required to be filed in the Patent and Trademark Office will be considered
filed in the Office on the date on which it was deposited with the United
States Postal Service or would have been deposited with the United States
Postal Service but for postal service interruptions or emergencies
designated by the Director.
(b) When the day, or the last day, for taking any action or
paying any fee in the United States Patent and Trademark Office falls on
Saturday, Sunday, or a Federal holiday within the District of Columbia, the
action may be taken, or fee paid, on the next succeeding secular or business
day.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Aug. 27, 1982, Public Law 97-247, sec. 12, 96 Stat. 321; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
[top]
35 U.S.C. 22
Printing of papers filed.
The Director may require papers filed in the Patent and Trademark
Office to be printed, typewritten, or on an electronic medium.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582,
589 (S. 1948 secs. 4732(a)(10)(A), 4804(a)).)
[top]
35 U.S.C. 23
Testimony in Patent and Trademark Office
cases.
The Director may establish rules for taking affidavits and
depositions required in cases in the Patent and Trademark Office. Any officer
authorized by law to take depositions to be used in the courts of the United
States, or of the State where he resides, may take such affidavits and
depositions.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 24
Subpoenas, witnesses.
The clerk of any United States court for the district wherein
testimony is to be taken for use in any contested case in the Patent and Trademark
Office, shall, upon the application of any party thereto, issue a subpoena for any
witness residing or being within such district, commanding him to appear and
testify before an officer in such district authorized to take depositions and
affidavits, at the time and place stated in the subpoena. The provisions of the
Federal Rules of Civil Procedure relating to the attendance of witnesses and to
the production of documents and things shall apply to contested cases in the
Patent and Trademark Office.
Every witness subpoenaed and in attendance shall be allowed the
fees and traveling expenses allowed to witnesses attending the United States
district courts.
A judge of a court whose clerk issued a subpoena may enforce
obedience to the process or punish disobedience as in other like cases, on proof
that a witness, served with such subpoena, neglected or refused to appear or to
testify. No witness shall be deemed guilty of contempt for disobeying such
subpoena unless his fees and traveling expenses in going to, and returning from,
and one day’s attendance at the place of examination, are paid or tendered him at
the time of the service of the subpoena; nor for refusing to disclose any secret
matter except upon appropriate order of the court which issued the subpoena.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949.)
[top]
35 U.S.C. 25
Declaration in lieu of oath.
(a) The Director may by rule prescribe that any document to be
filed in the Patent and Trademark Office and which is required by any law,
rule, or other regulation to be under oath may be subscribed to by a written
declaration in such form as the Director may prescribe, such declaration to
be in lieu of the oath otherwise required.
(b) Whenever such written declaration is used, the document
must warn the declarant that willful false statements and the like are
punishable by fine or imprisonment, or both (
18 U.S.C.
1001
).
(Added Mar. 26, 1964, Public Law 88-292, sec. 1, 78 Stat. 171;
amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
[top]
35 U.S.C. 26
Effect of defective execution.
Any document to be filed in the Patent and Trademark Office and
which is required by any law, rule, or other regulation to be executed in a
specified manner may be provisionally accepted by the Director despite a defective
execution, provided a properly executed document is submitted within such time as
may be prescribed.
(Added Mar. 26, 1964, Public Law 88-292, sec. 1, 78 Stat. 171;
amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
[top]
35 U.S.C. 27
Revival of applications; reinstatement of
reexamination proceedings.
The Director may establish procedures, including the
requirement for payment of the fee specified in section
41(a)(7)
, to
revive an unintentionally abandoned application for patent, accept an
unintentionally delayed payment of the fee for issuing each patent, or accept an
unintentionally delayed response by the patent owner in a reexamination
proceeding, upon petition by the applicant for patent or patent owner.
(Added Dec. 18, 2012, Public Law 112-211, sec.
201(b)(1), 126 Stat. 1534).
[top]
CHAPTER CHAPTER 3 - PRACTICE BEFORE PATENT AND TRADEMARK OFFICE
31 [Repealed]
32 Suspension or exclusion from practice.
33 Unauthorized representation as practitioner.
35 U.S.C. 31
[Repealed.]
(Repealed Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-580 (S. 1948 sec. 4715(b)).)
[top]
35 U.S.C. 32
Suspension or exclusion from
practice.
The Director may, after notice and opportunity for a hearing,
suspend or exclude, either generally or in any particular case, from further
practice before the Patent and Trademark Office, any person, agent, or attorney
shown to be incompetent or disreputable, or guilty of gross misconduct, or who
does not comply with the regulations established under section
2(b)(2)(D)
or who shall, by word, circular, letter, or advertising, with intent to defraud in
any manner, deceive, mislead, or threaten any applicant or prospective applicant,
or other person having immediate or prospective business before the Office. The
reasons for any such suspension or exclusion shall be duly recorded. The Director
shall have the discretion to designate any attorney who is an officer or employee
of the United States Patent and Trademark Office to conduct the hearing required
by this section. A proceeding under this section shall be commenced not later than
the earlier of either the date that is 10 years after the date on which the
misconduct forming the basis for the proceeding occurred, or 1 year after the date
on which the misconduct forming the basis for the proceeding is made known to an
officer or employee of the Office as prescribed in the regulations established
under section
2(b)(2)(D)
. The United States District Court for the
Eastern District of Virginia, under such conditions and upon such proceedings as
it by its rules determines, may review the action of the Director upon the
petition of the person so refused recognition or so suspended or excluded.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat.1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-580, 581, 582 (S. 1948 secs. 4715(c), 4719, 4732(a)(10)(A)); amended
Sept. 16, 2011, Public Law 112-29, secs. 3(k) and 9 (effective Sept. 16, 2011)
and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 33
Unauthorized representation as
practitioner.
Whoever, not being recognized to practice before the Patent and
Trademark Office, holds himself out or permits himself to be held out as so
recognized, or as being qualified to prepare or prosecute applications for patent,
shall be fined not more than $1,000 for each offense.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949.)
[top]
CHAPTER CHAPTER 4 - PATENT FEES; FUNDING; SEARCH SYSTEMS
41 Patent fees; patent and trademark search systems.
42 Patent and Trademark Office funding.
35 U.S.C. 41
Patent fees; patent and trademark search
systems.
(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 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 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
Patent Trial and Appeal Board, $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 Patent Trial and Appeal Board, $1,080.
(7) REVIVAL FEES. — On filing each petition for the
revival of an abandoned application for a patent, for the delayed
payment of the fee for issuing each patent, for the delayed response
by the patent owner in any reexamination proceeding, for the delayed
payment of the fee for maintaining a patent in force, for the delayed
submission of a priority or benefit claim, or for the extension of the
12-month period for filing a subsequent application, $1,700.00. The
Director may refund any part of the fee specified in this paragraph,
in exceptional circumstances as determined by the Director.
(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) Three years and 6 months after grant,
$980.
(B) Seven years and 6 months after grant,
$2,480.
(C) Eleven 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.
(c) DELAYS IN PAYMENT OF MAINTENANCE FEES.—
(1) ACCEPTANCE.—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.
(2) EFFECT ON RIGHTS OF OTHERS.— 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. —
(1) PATENT SEARCH FEES. —
(A) IN GENERAL.— 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.
(B) SPECIFIC FEES.—The fees referred to in
subparagraph (A) are—
(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
(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.
(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.]
(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 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.
(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)(l)(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.—
(1) MAINTENANCE OF COLLECTIONS.— 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 and trademark search rooms or libraries.
(2) AVAILABILITY OF AUTOMATED SEARCH SYSTEMS.— 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.
(3) ACCESS FEES.— 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 waiver is in the public
interest.
(4) ANNUAL REPORT TO CONGRESS.— 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 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.
(Amended July 24, 1965, Public Law 89-83, sec. 1, 2, 79 Stat.
259; Jan. 2, 1975, Public Law 93-596, sec. 1, Jan. 2, 1975, 88 Stat. 1949; Nov.
14, 1975, Public Law 94-131, sec. 3, 89 Stat. 690; subsection (g) amended Dec.
12, 1980, Public Law 96-517, sec. 2, 94 Stat. 3017; Aug. 27, 1982, Public Law
97-247, sec. 3(a)-(e), 96 Stat. 317; subsections (a)-(d) amended Sept. 8, 1982,
Public Law 97-256, sec. 101, 96 Stat. 816; subsection (a)(6) amended Nov. 8,
1984, Public Law 98-622, sec. 204(a), 98 Stat. 3388; subsection (h) added Nov.
6, 1986, Public Law 99-607, sec. 1(b)(2), 100 Stat. 3470; subsections (a), (b),
(d), (f), and (g) amended Dec. 10, 1991, Public Law 102-204, sec. 5, 105 Stat.
1637; subsections (a)(9) - (15) and (i) added Dec. 10, 1991, Public Law
102-204, sec. 5, 105 Stat. 1637; subsection (c)(1) amended Oct. 23, 1992,
Public Law 102-444, sec. 1, 106 Stat. 2245; subsection (a)(1)(C) added Dec. 8,
1994, Public Law 103-465, sec. 532(b)(2), 108 Stat. 4986; subsection (c)(2)
amended, Dec. 8, 1994, Public Law 103-465, sec. 533(b)(1), 108 Stat. 4988;
subsections (a)-(b) revised Nov. 10, 1998, Public Law 105-358, sec. 3, 112
Stat. 3272.; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-554, 570, 582, 589 (S. 1948 secs. 4202, 4605(a), 4732(a)(5),
4732(a)(10)(A)) and 4804(d)); amended Sept. 16, 2011, Public Law 112-29, secs.
11 (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat.
284; subsections (a)(7) and (c)(1) amended Dec. 18, 2012, Public Law 112-211,
sec. 202(b)(1), 126 Stat. 1535; subsections (h)(1) and (3) amended and
subsection (j) added Dec. 29, 2022, Public Law 117-328, division W, sec. 107(a)
and (b)(1), 136 Stat. 4459.)
[top]
35 U.S.C. 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)
(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.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 4, 89 Stat.
690; Dec. 12, 1980, Public Law 96-517, sec. 3, 94 Stat. 3018; Aug. 27, 1982,
Public Law 97-247, sec. 3(g), 96 Stat. 319; Sept. 13, 1982, Public Law 97-258,
sec. 3(i), 96 Stat. 1065; subsection (c) amended Dec. 10, 1991, Public Law
102-204, sec. 5(e), 105 Stat. 1640; subsection (e) added Dec. 10, 1991, Public
Law 102-204, sec. 4, 105 Stat. 1637; subsection (c) revised Nov. 10, 1998,
Public Law 105-358, sec. 4, 112 Stat. 3274; amended Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-555, 582 (S. 1948 secs. 4205 and
4732(a)(10)(A)); subsection (c) amended Sept. 16, 2011, Public Law 112-29, sec.
22, 125 Stat. 284, effective Oct. 1, 2011; subsection (c)(3) amended Jan. 14,
2013, Public Law 112-274, sec. 1(j), 126 Stat. 2456.)
[top]
PART PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
PART II
CHAPTER CHAPTER 10 - PATENTABILITY OF INVENTIONS
100 (note) AIA First inventor to file provisions.
100 Definitions
100 (pre‑AIA) Definitions.
101 Inventions patentable.
102 Conditions for patentability; novelty.
102 (pre‑AIA) Conditions for patentability; novelty and loss of right to
patent.
103 Conditions for patentability; non-obvious subject
matter.
103 (pre‑AIA) Conditions for patentability; non-obvious subject
matter.
104 [Repealed]
104 (pre‑AIA) Invention made abroad.
105 Inventions in outer space.
35 U.S.C. 100 (note)
AIA First inventor to file
provisions.
The first inventor to file provisions of the
Leahy-Smith America Invents Act (AIA) apply to any application for patent, and to
any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an
effective filing date on or after March 16, 2013 wherein the effective
filing date is:
(i) if subparagraph (ii) does not apply, the
actual filing date of the patent or the application for the patent
containing a claim to the invention; or
(ii) the filing date of the earliest application
for which the patent or application is entitled, as to such invention,
to a right of priority under section
119
365(a)
365(b)
386(a)
, or
386(b)
or to the benefit of an earlier filing
date under section
120
121
365(c)
, or
386(c)
; or
(B) a specific reference under section
120
121
365(c)
, or
386(c)
of title 35, United States Code, to any patent
or application that contains or contained at any time such a claim.
(Sept. 16, 2011, Public Law 112-29, sec. 3(n)(1)
(effective March 16, 2013), 125 Stat. 284; references to 35 U.S.C. 386 added
Dec. 18, 2012, Public Law 112-211, sec. 102(1) (effective May 13, 2015), 126
Stat. 1531.)
[top]
35 U.S.C. 100
Definitions.
[Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only applicable
to patent applications and patents subject to the first inventor to file
provisions of the AIA (
35 U.S.C. 100 (note)
). See
35 U.S.C.
100(e) (pre‑AIA)
for subsection (e) as otherwise
applicable.]
When used in this title unless the context otherwise
indicates -
(a) The term “invention” means invention or discovery.
(b) The term “process” means process, art, or method, and
includes a new use of a known process, machine, manufacture, composition of
matter, or material.
(c) The terms “United States” and “this country” mean the
United States of America, its territories and possessions.
(d) The word “patentee” includes not only the patentee to whom
the patent was issued but also the successors in title to the patentee.
(e) The term “third-party requester” means a person
requesting ex parte reexamination under
section 302
who is not
the patent owner.
(f) The term "inventor" means the individual or, if a
joint invention, the individuals collectively who invented or discovered the
subject matter of the invention.
(g) The terms "joint inventor" and "coinventor" mean
any 1 of the individuals who invented or discovered the subject matter of a
joint invention.
(h) The term "joint research agreement" means a
written contract, grant, or cooperative agreement entered into by 2 or more
persons or entities for the performance of experimental, developmental, or
research work in the field of the claimed invention.
(i)
(1) The term "effective filing date" for a
claimed invention in a patent or application for patent means—
(A) if subparagraph (B) does not apply,
the actual filing date of the patent or the application for the
patent containing a claim to the invention; or
(B) the filing date of the earliest
application for which the patent or application is entitled, as
to such invention, to a right of priority under section
119
365(a)
365(b)
386(a)
, or
386(b)
or to
the benefit of an earlier filing date under section
120
121
365(c)
, or
386(c)
(2) The effective filing date for a claimed
invention in an application for reissue or reissued patent shall be
determined by deeming the claim to the invention to have been
contained in the patent for which reissue was sought.
(j) The term "claimed invention" means the subject
matter defined by a claim in a patent or an application for a patent.
(Subsection (e) added Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-567 (S. 1948 sec. 4603); subsection
(e) amended and subsections (f) - (j) added Sept. 16, 2011, Public Law 112-29,
sec. 3(a) (effective March 16, 2013), 125 Stat. 284.); subsection (i)(1)(B)
amended Dec. 18, 2012, Public Law 112-211, sec. 102(1) (effective May 13,
2015), 126 Stat. 1531.)
[top]
35 U.S.C. 100 (pre‑AIA)
Definitions.
[Editor Note: pre‑AIA 35 U.S.C. 100(e) as set forth below
is not
applicable
to any patent application subject to the first inventor to
file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C. 100(e)-(j)
for the law otherwise
applicable.]
When used in this title unless the context otherwise indicates
*****
(e) The term “third-party requester” means a person requesting
ex parte reexamination under
section 302
or inter
partes reexamination under
section 311
who is not
the patent owner.
(Subsection (e) added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-567 (S. 1948 sec. 4603).)
[top]
35 U.S.C. 101
Inventions patentable.
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions and requirements of this
title.
(Public Law 112-29, sec. 33, 125 Stat. 284 (Sept. 16,
2011) provided a limitation on the issuance of patents (see
AIA §
33
).)
[top]
35 U.S.C. 102
Conditions for patentability;
novelty.
[Editor Note: Applicable to any patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 102 (pre‑AIA)
for
the law otherwise applicable.]
(a) NOVELTY; PRIOR ART.—A person shall be entitled to
a patent unless—
(1) the claimed invention was patented,
described in a printed publication, or in public use, on sale, or
otherwise available to the public before the effective filing date of
the claimed invention; or
(2) the claimed invention was described in a
patent issued under section
151
, or in an
application for patent published or deemed published under section
122(b)
, in which the patent or application, as
the case may be, names another inventor and was effectively filed
before the effective filing date of the claimed invention.
(b) EXCEPTIONS.—
(1) DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE
EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1
year or less before the effective filing date of a claimed invention
shall not be prior art to the claimed invention under subsection
(a)(1) if—
(A) the disclosure was made by the
inventor or joint inventor or by another who obtained the
subject matter disclosed directly or indirectly from the
inventor or a joint inventor; or
(B) the subject matter disclosed had,
before such disclosure, been publicly disclosed by the inventor
or a joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint
inventor.
(2) DISCLOSURES APPEARING IN APPLICATIONS AND
PATENTS.—A disclosure shall not be prior art to a claimed invention
under subsection (a)(2) if—
(A) the subject matter disclosed was
obtained directly or indirectly from the inventor or a joint
inventor;
(B) the subject matter disclosed had,
before such subject matter was effectively filed under
subsection (a)(2), been publicly disclosed by the inventor or a
joint inventor or another who obtained the subject matter
disclosed directly or indirectly from the inventor or a joint
inventor; or
(C) the subject matter disclosed and the
claimed invention, not later than the effective filing date of
the claimed invention, were owned by the same person or subject
to an obligation of assignment to the same person.
(c) COMMON OWNERSHIP UNDER JOINT RESEARCH
AGREEMENTS.—Subject matter disclosed and a claimed invention shall be deemed
to have been owned by the same person or subject to an obligation of
assignment to the same person in applying the provisions of subsection
(b)(2)(C) if—
(1) the subject matter disclosed was developed
and the claimed invention was made by, or on behalf of, 1 or more
parties to a joint research agreement that was in effect on or before
the effective filing date of the claimed invention;
(2) the claimed invention was made as a result
of activities undertaken within the scope of the joint research
agreement; and
(3) the application for patent for the claimed
invention discloses or is amended to disclose the names of the parties
to the joint research agreement.
(d) PATENTS AND PUBLISHED APPLICATIONS EFFECTIVE AS
PRIOR ART.—For purposes of determining whether a patent or application for
patent is prior art to a claimed invention under subsection (a)(2), such
patent or application shall be considered to have been effectively filed,
with respect to any subject matter described in the patent or application—
(1) if paragraph (2) does not apply, as of the
actual filing date of the patent or the application for patent; or
(2) if the patent or application for patent is
entitled to claim a right of priority under section
119
365(a)
365(b)
386(a)
, or
386(b)
, or to claim the benefit of an earlier
filing date under section
120
121
365(c)
, or
386(c)
based upon 1 or more prior filed
applications for patent, as of the filing date of the earliest such
application that describes the subject matter.
(Amended July 28, 1972, Public Law 92-358, sec. 2,
86 Stat. 501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89 Stat. 691;
subsection (e) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-565 (S. 1948 sec. 4505); subsection (g) amended Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948 sec. 4806);
subsection (e) amended Nov. 2, 2002, Public Law 107-273, sec. 13205, 116 Stat.
1903; amended Sept. 16, 2011, Public Law 112-29, sec. 3(b), 125 Stat. 284,
effective March 16, 2013.*; subsection (d)(2) amended Dec. 18, 2012, Public Law
112-211, sec. 102(2) (effective May 13, 2015), 126 Stat. 1531.))
(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept.
16, 2011) provided that tax strategies are deemed to be within the prior art
(see
AIA § 14
).)
*NOTE:
The provisions of
35 U.S.C. 102(g)
, as in
effect on
March 15, 2013,
shall also apply to each claim of an application for patent, and any
patent issued thereon, for which the first inventor to file provisions of the
AIA apply (see
35 U.S.C. 100 (note)
), if
such application or patent contains or contained at any time a claim to a
claimed invention to which is
not
subject to the first inventor to file provisions of the AIA.]
[top]
35 U.S.C. 102 (pre‑AIA)
Conditions for patentability; novelty and loss
of right to patent.
[Editor Note: With the exception of subsection (g)*),
not
applicable
to any patent application subject to the first inventor to
file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C. 102
for the law otherwise
applicable.]
A person shall be entitled to a patent unless —
(a) the invention was known or used by others in this country,
or patented or described in a printed publication in this or a foreign
country, before the invention thereof by the applicant for patent, or
(b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or on sale in this
country, more than one year prior to the date of the application for patent
in the United States, or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be patented,
or was the subject of an inventor’s certificate, by the applicant or his
legal representatives or assigns in a foreign country prior to the date of
the application for patent in this country on an application for patent or
inventor’s certificate filed more than twelve months before the filing of
the application in the United States, or
(e) the invention was described in — (1) an application for
patent, published under
section 122(b)
, by
another filed in the United States before the invention by the applicant for
patent or (2) a patent granted on an application for patent by another filed
in the United States before the invention by the applicant for patent,
except that an international application filed under the treaty defined in
section
351(a)
shall have the effects for the purposes of this
subsection of an application filed in the United States only if the
international application designated the United States and was published
under
Article 21(2)
of such treaty in the English language;
or
(f) he did not himself invent the subject matter sought to be
patented, or
(g) (1) during the course of an interference conducted under
section
135
or
section 291
, another
inventor involved therein establishes, to the extent permitted in
section
104
, that before such person’s invention thereof the
invention was made by such other inventor and not abandoned, suppressed, or
concealed, or (2) before such person’s invention thereof, the invention was
made in this country by another inventor who had not abandoned, suppressed,
or concealed it. In determining priority of invention under this subsection,
there shall be considered not only the respective dates of conception and
reduction to practice of the invention, but also the reasonable diligence of
one who was first to conceive and last to reduce to practice, from a time
prior to conception by the other.
(Amended July 28, 1972, Public Law 92-358, sec. 2, 86 Stat.
501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89 Stat. 691; subsection (e)
amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565
(S. 1948 sec. 4505); subsection (g) amended Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948 sec. 4806); subsection (e)
amended Nov. 2, 2002, Public Law 107-273, sec. 13205, 116 Stat. 1903.)
(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept.
16, 2011) provided that tax strategies are deemed to be within the prior art
(see
AIA § 14
).)
*NOTE:
The provisions of
35 U.S.C. 102(g)
, as in
effect on
March 15, 2013,
shall apply to each claim of an application for patent, and any patent
issued thereon, for which the first inventor to file provisions of the AIA
apply (see
35 U.S.C. 100 (note)
, if
such application or patent contains or contained at any time—
(A) a claim to an invention having an effective
filing date as defined in section
100(i)
of title 35, United
States Code, that occurs before March 16, 2013; or
(B) a specific reference under section
120
121
, or
365(c)
of
title 35, United States Code, to any patent or application that contains or
contained at any time such a claim.
[top]
35 U.S.C. 103
Conditions for patentability; non-obvious
subject matter.
[Editor Note: Applicable to any patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 103 (pre‑AIA)
for
the law otherwise applicable.]
A patent for a claimed invention may not be obtained,
notwithstanding that the claimed invention is not identically disclosed as set
forth in section
102
, if the differences
between the claimed invention and the prior art are such that the claimed
invention as a whole would have been obvious before the effective filing date of
the claimed invention to a person having ordinary skill in the art to which the
claimed invention pertains. Patentability shall not be negated by the manner in
which the invention was made.
(Amended Nov. 8, 1984, Public Law 98-622, sec. 103,
98 Stat. 3384; Nov. 1, 1995, Public Law 104-41, sec.1, 109 Stat. 3511;
subsection (c) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-591 (S. 1948 sec. 4807); subsection (c) amended Dec. 10, 2004,
Public Law 108-453, sec. 2, 118 Stat. 3596; amended Sept. 16, 2011, Public Law
112-29, secs. 20(j) (effective Sept. 16, 2012) and 3(c) (effective March 16,
2013), 125 Stat. 284.)
(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept.
16, 2011) provided that tax strategies are deemed to be within the prior art
(see
AIA § 14
).)
[top]
35 U.S.C. 103 (pre‑AIA)
Conditions for patentability; non-obvious
subject matter.
[Editor Note:
Not applicable
to any patent application
subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C.
103
for the law otherwise applicable.]
(a) A patent may not be obtained though the invention is not
identically disclosed or described as set forth in
section 102
, if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which the invention
was made.
(b)
(1) Notwithstanding subsection (a), and upon timely
election by the applicant for patent to proceed under this subsection,
a biotechnological process using or resulting in a composition of
matter that is novel under
section 102
and
nonobvious under subsection (a) of this section shall be considered
nonobvious if-
(A) claims to the process and the composition of
matter are contained in either the same application for patent
or in separate applications having the same effective filing
date; and
(B) the composition of matter, and the process at
the time it was invented, were owned by the same person or
subject to an obligation of assignment to the same person.
(2) A patent issued on a process under paragraph (1)-
(A) shall also contain the claims to the
composition of matter used in or made by that process, or
(B) shall, if such composition of matter is claimed
in another patent, be set to expire on the same date as such
other patent, notwithstanding
section 154
(3) For purposes of paragraph (1), the term
“biotechnological process” means-
(A) a process of genetically altering or otherwise
inducing a single- or multi-celled organism to-
(i) express an exogenous nucleotide
sequence,
(ii) inhibit, eliminate, augment, or alter
expression of an endogenous nucleotide sequence, or
(iii) express a specific physiological
characteristic not naturally associated with said
organism;
(B) cell fusion procedures yielding a cell line
that expresses a specific protein, such as a monoclonal
antibody; and
(C) a method of using a product produced by a
process defined by subparagraph (A) or (B), or a combination of
subparagraphs (A) and (B).
(c)
(1) Subject matter developed by another person, which
qualifies as prior art only under one or more of subsections (e), (f),
and (g) of
section 102
shall not preclude patentability under this section where the subject
matter and the claimed invention were, at the time the claimed
invention was made, owned by the same person or subject to an
obligation of assignment to the same person.
(2) For purposes of this subsection, subject matter
developed by another person and a claimed invention shall be deemed to
have been owned by the same person or subject to an obligation of
assignment to the same person if —
(A) the claimed invention was made by or on behalf
of parties to a joint research agreement that was in effect on
or before the date the claimed invention was made;
(B) the claimed invention was made as a result of
activities undertaken within the scope of the joint research
agreement; and
(C) the application for patent for the claimed
invention discloses or is amended to disclose the names of the
parties to the joint research agreement.
(3) For purposes of paragraph (2), the term “joint
research agreement” means a written contract, grant, or cooperative
agreement entered into by two or more persons or entities for the
performance of experimental, developmental, or research work in the
field of the claimed invention.
(Amended Nov. 8, 1984, Public Law 98-622, sec. 103, 98 Stat.
3384; Nov. 1, 1995, Public Law 104-41, sec.1, 109 Stat. 3511; subsection (c)
amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-591
(S. 1948 sec. 4807); subsection (c) amended Dec. 10, 2004, Public Law 108-453,
sec. 2, 118 Stat. 3596; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j)
(effective Sept. 16, 2012), 125 Stat. 284.)
(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept.
16, 2011) provided that tax strategies are deemed to be within the prior art
(see
AIA § 14
).)
[top]
35 U.S.C. 104
[Repealed.]
(Repealed Sept. 16, 2011, Public Law 112-29, sec.
3(d) (effective March 16, 2013), 125 Stat. 284.)
[top]
35 U.S.C. 104 (pre‑AIA)
Invention made abroad.
[Editor Note:
Not applicable
to any patent application
subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100 (note)
). 35 U.S.C. 104 repealed with
regard to such applications).]
(a) IN GENERAL.—
(1) PROCEEDINGS.—In proceedings in the Patent and
Trademark Office, in the courts, and before any other competent
authority, an applicant for a patent, or a patentee, may not establish
a date of invention by reference to knowledge or use thereof, or other
activity with respect thereto, in a foreign country other than a NAFTA
country or a WTO member country, except as provided in
sections 119
and
365.
(2) RIGHTS.—If an invention was made by a person, civil
or military—
(A) while domiciled in the United States, and
serving in any other country in connection with operations by or
on behalf of the United States,
(B) while domiciled in a NAFTA country and serving
in another country in connection with operations by or on behalf
of that NAFTA country, or
(C) while domiciled in a WTO member country and
serving in another country in connection with operations by or
on behalf of that WTO member country, that person shall be
entitled to the same rights of priority in the United States
with respect to such invention as if such invention had been
made in the United States, that NAFTA country, or that WTO
member country, as the case may be.
(3) USE OF INFORMATION.—To the extent that any
information in a NAFTA country or a WTO member country concerning
knowledge, use, or other activity relevant to proving or disproving a
date of invention has not been made available for use in a proceeding
in the Patent and Trademark Office, a court, or any other competent
authority to the same extent as such information could be made
available in the United States, the Director, court, or such other
authority shall draw appropriate inferences, or take other action
permitted by statute, rule, or regulation, in favor of the party that
requested the information in the proceeding.
(b) DEFINITIONS.—As used in this section—
(1) The term “NAFTA country” has the meaning given that
term in section 2(4) of the North American Free Trade Agreement
Implementation Act; and
(2) The term “WTO member country” has the meaning given
that term in section 2(10) of the Uruguay Round Agreements Act.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 14, 1975, Public Law 94-131, sec. 6, 89 Stat. 691; Nov. 8, 1984,
Public Law 98-622, sec. 403(a), 98 Stat. 3392; Dec. 8, 1993, Public Law
103-182, sec. 331, 107 Stat. 2113; Dec. 8, 1994, Public Law 103-465, sec.
531(a), 108 Stat. 4982; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public
Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.
[top]
35 U.S.C. 105
Inventions in outer space.
(a) Any invention made, used, or sold in outer space on a space
object or component thereof under the jurisdiction or control of the United
States shall be considered to be made, used or sold within the United States
for the purposes of this title, except with respect to any space object or
component thereof that is specifically identified and otherwise provided for
by an international agreement to which the United States is a party, or with
respect to any space object or component thereof that is carried on the
registry of a foreign state in accordance with the Convention on
Registration of Objects Launched into Outer Space.
(b) Any invention made, used, or sold in outer space on a space
object or component thereof that is carried on the registry of a foreign
state in accordance with the Convention on Registration of Objects Launched
into Outer Space, shall be considered to be made, used, or sold within the
United States for the purposes of this title if specifically so agreed in an
international agreement between the United States and the state of
registry.
(Added Nov. 15, 1990, Public Law 101-580, sec. 1(a), 104 Stat.
2863.)
[top]
CHAPTER CHAPTER 11 - APPLICATION FOR PATENT
111 Application.
111 (pre-PLT (AIA)) Application.
111 (pre‑AIA) Application.
112 Specification.
112 (pre‑AIA) Specification.
113 Drawings.
114 Models, specimens.
115 Inventor's oath or declaration.
115 (pre‑AIA) Oath of applicant.
116 Inventors.
116 (pre‑AIA) Inventors.
117 Death or incapacity of inventor.
118 Filing by other than inventor.
118 (pre‑AIA) Filing by other than inventor.
119 Benefit of earlier filing date; right of priority.
119 (pre‑AIA) Benefit of earlier filing date; right of
priority.
120 Benefit of earlier filing date in the United States.
120 (pre‑AIA) Benefit of earlier filing date in the United States.
121 Divisional applications.
121 (pre‑AIA) Divisional applications.
122 Confidential status of applications; publication of patent
applications.
123 Micro entity defined.
35 U.S.C. 111
Application.
[Editor Note: Applicable to any patent application filed on or after
December 18, 2013. See
35 U.S.C. 111 (pre-PLT
(AIA))
or
35 U.S.C. 111 (pre‑AIA)
for
the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent
shall be made, or authorized to be made, by the inventor, except as
otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by
section
112
(B) a drawing as prescribed by
section 113;
and
(C) an oath or declaration as prescribed by
section
115
(3) FEE, OATH OR DECLARATION, AND CLAIMS.—The
application shall be accompanied by the fee required by law. The fee,
oath or declaration, and 1 or more claims may be submitted after the
filing date of the application, within such period and under such
conditions, including the payment of a surcharge, as may be prescribed
by the Director. Upon failure to submit the fee, oath or declaration,
and 1 or more claims within such prescribed period, the application
shall be regarded as abandoned.
(4) FILING DATE.—The filing date of an application
shall be the date on which a specification, with or without claims, is
received in the United States Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for
patent shall be made or authorized to be made by the inventor, except
as otherwise provided in this title, in writing to the Director. Such
application shall include—
(A) a specification as prescribed by section
112(a)
and
(B) a drawing as prescribed by
section
113
(2) CLAIM.—A claim, as required by subsections (b)
through (e) of
section 112
, shall
not be required in a provisional application.
(3) FEE.—The application shall be accompanied by
the fee required by law. The fee may be submitted after the filing
date of the application, within such period and under such conditions,
including the payment of a surcharge, as may be prescribed by the
Director. Upon failure to submit the fee within such prescribed
period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of a provisional
application shall be the date on which a specification, with or
without claims, is received in the United States Patent and Trademark
Office.
(5) ABANDONMENT.—Notwithstanding the absence of a
claim, upon timely request and as prescribed by the Director, a
provisional application may be treated as an application filed under
subsection (a). Subject to section
119(e)(3)
, if no
such request is made, the provisional application shall be regarded as
abandoned 12 months after the filing date of such application and
shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL
APPLICATION.—Subject to all the conditions in this subsection and
section 119(e)
, and as prescribed by the
Director, an application for patent filed under subsection (a) may be
treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING
DATE.—A provisional application shall not be entitled to the right of
priority of any other application under
section
119
365(a)
, or
386(a)
or to the
benefit of an earlier filing date in the United States under
section 120
121
365(c)
, or
386(c)
(8) APPLICABLE PROVISIONS.—The provisions of this
title relating to applications for patent shall apply to provisional
applications for patent, except as otherwise provided, and except that
provisional applications for patent shall not be subject to
sections 131
and
135
(c) PRIOR FILED APPLICATION.—Notwithstanding the
provisions of subsection (a), the Director may prescribe the conditions,
including the payment of a surcharge, under which a reference made upon the
filing of an application under subsection (a) to a previously filed
application, specifying the previously filed application by application
number and the intellectual property authority or country in which the
application was filed, shall constitute the specification and any drawings
of the subsequent application for purposes of a filing date. A copy of the
specification and any drawings of the previously filed application shall be
submitted within such period and under such conditions as may be prescribed
by the Director. A failure to submit the copy of the specification and any
drawings of the previously filed application within the prescribed period
shall result in the application being regarded as abandoned. Such
application shall be treated as having never been filed, unless—
(1) the application is revived under section
27
; and
(2) a copy of the specification and any
drawings of the previously filed application are submitted to the
Director.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96
Stat. 319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108 Stat. 4986;
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588
(S. 1948 secs. 4732(a)(10)(A), 4801(a); Sept. 16, 2011, Public Law 112-29,
secs. 4 and 20(j) (effective Sept. 16, 2012) and sec. 3(e) (effective March 16,
2013), 125 Stat. 284; Dec. 18, 2012, Public Law 112-211, sec. 201(a)(1), 126
Stat. 1531; subsection (b)(7) amended Dec. 18, 2012, Public Law 112-211, sec.
102(3) (effective May 13, 2015), 126 Stat 1531.)
[top]
35 U.S.C. 111 (pre-PLT (AIA))
Application.
[Editor Note: Applicable to any patent application filed on or after
September 16, 2012, and before December 18, 2013. See
35 U.S.C.
111
or
35 U.S.C. 111 (pre‑AIA)
for
the law otherwise applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent
shall be made, or authorized to be made, by the inventor, except as
otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by
section
112
(B) a drawing as prescribed by
section 113;
and
(C) an oath or declaration as prescribed by
section
115
(3) FEE AND OATH OR DECLARATION.—The application must
be accompanied by the fee required by law. The fee and oath or
declaration may be submitted after the specification and any required
drawing are submitted, within such period and under such conditions,
including the payment of a surcharge, as may be prescribed by the
Director.
(4) FAILURE TO SUBMIT.—Upon failure to submit the fee
and oath or declaration within such prescribed period, the application
shall be regarded as abandoned, unless it is shown to the satisfaction
of the Director that the delay in submitting the fee and oath or
declaration was unavoidable or unintentional. The filing date of an
application shall be the date on which the specification and any
required drawing are received in the Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for
patent shall be made or authorized to be made by the inventor, except
as otherwise provided in this title, in writing to the Director. Such
application shall include—
(A) a specification as prescribed by section
112(a)
and
(B) a drawing as prescribed by
section
113
(2) CLAIM.—A claim, as required by subsections (b)
through (e) of
section 112
, shall
not be required in a provisional application.
(3) FEE.—
(A) The application must be accompanied by the fee
required by law.
(B) The fee may be submitted after the
specification and any required drawing are submitted, within
such period and under such conditions, including the payment of
a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such
prescribed period, the application shall be regarded as
abandoned, unless it is shown to the satisfaction of the
Director that the delay in submitting the fee was unavoidable or
unintentional.
(4) FILING DATE.—The filing date of a provisional
application shall be the date on which the specification and any
required drawing are received in the Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a
claim, upon timely request and as prescribed by the Director, a
provisional application may be treated as an application filed under
subsection (a). Subject to section
119(e)(3)
, if no
such request is made, the provisional application shall be regarded as
abandoned 12 months after the filing date of such application and
shall not be subject to revival after such 12-month period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject
to all the conditions in this subsection and
section
119(e)
, and as prescribed by the Director, an
application for patent filed under subsection (a) may be treated as a
provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING
DATE.—A provisional application shall not be entitled to the right of
priority of any other application under
section
119
or
365(a)
or to the
benefit of an earlier filing date in the United States under
section 120
121
, or
365(c)
(8) APPLICABLE PROVISIONS.—The provisions of this
title relating to applications for patent shall apply to provisional
applications for patent, except as otherwise provided, and except that
provisional applications for patent shall not be subject to
sections 131
and
135
(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat.
319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108 Stat. 4986; Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588 (S. 1948
secs. 4732(a)(10)(A), 4801(a); Sept. 16, 2011, Public Law 112-29, secs. 4 and
20(j) (effective Sept. 16, 2012) and sec. 3(e) (effective March 16, 2013), 125
Stat. 284.)
[top]
35 U.S.C. 111 (pre‑AIA)
Application.
[Editor Note:
Not applicable
to any patent application filed
on or after September 16, 2012. See
35 U.S.C. 111
or
35
U.S.C. 111 (pre-PLT (AIA))
for the law otherwise
applicable.]
(a) IN GENERAL.—
(1) WRITTEN APPLICATION.—An application for patent shall
be made, or authorized to be made, by the inventor, except as
otherwise provided in this title, in writing to the Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by
section 112
of this title;
(B) a drawing as prescribed by
section 113
of this title; and
(C) an oath by the applicant as prescribed by
section 115
of this title.
(3) FEE AND OATH.—The application must be accompanied by
the fee required by law. The fee and oath may be submitted after the
specification and any required drawing are submitted, within such
period and under such conditions, including the payment of a
surcharge, as may be prescribed by the Director.
(4) FAILURE TO SUBMIT.—Upon failure to submit the fee and
oath within such prescribed period, the application shall be regarded
as abandoned, unless it is shown to the satisfaction of the Director
that the delay in submitting the fee and oath was unavoidable or
unintentional. The filing date of an application shall be the date on
which the specification and any required drawing are received in the
Patent and Trademark Office.
(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent
shall be made or authorized to be made by the inventor, except as
otherwise provided in this title, in writing to the Director. Such
application shall include—
(A) a specification as prescribed by the first
paragraph of
section 112
of this title; and
(B) a drawing as prescribed by
section
113
of this title.
(2) CLAIM.—A claim, as required by the second through
fifth paragraphs of
section 112
, shall
not be required in a provisional application.
(3) FEE.—
(A) The application must be accompanied by the
fee required by law.
(B) The fee may be submitted after the
specification and any required drawing are submitted, within
such period and under such conditions, including the payment of
a surcharge, as may be prescribed by the Director.
(C) Upon failure to submit the fee within such
prescribed period, the application shall be regarded as
abandoned, unless it is shown to the satisfaction of the
Director that the delay in submitting the fee was unavoidable or
unintentional.
(4) FILING DATE.—The filing date of a provisional
application shall be the date on which the specification and any
required drawing are received in the Patent and Trademark Office.
(5) ABANDONMENT.—Notwithstanding the absence of a claim,
upon timely request and as prescribed by the Director, a provisional
application may be treated as an application filed under subsection
(a). Subject to
section 119(e)(3)
of this title, if no such request is made, the provisional application
shall be regarded as abandoned 12 months after the filing date of such
application and shall not be subject to revival after such 12-month
period.
(6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to
all the conditions in this subsection and
section
119(e)
of this title, and as prescribed by the
Director, an application for patent filed under subsection (a) may be
treated as a provisional application for patent.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING
DATE.—A provisional application shall not be entitled to the right of
priority of any other application under
section
119
or
365(a)
of this
title or to the benefit of an earlier filing date in the United States
under
section 120
121
, or
365(c)
of this
title.
(8) APPLICABLE PROVISIONS.—The provisions of this title
relating to applications for patent shall apply to provisional
applications for patent, except as otherwise provided, and except that
provisional applications for patent shall not be subject to
sections 115
131
135
, and
157
of this title.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat.
319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108 Stat. 4986; Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588 (S. 1948
secs. 4732(a)(10)(A), 4801(a)).)
[top]
35 U.S.C. 112
Specification.
[Editor Note: Applicable to any patent application filed on or after
September 16, 2012. See
35 U.S.C. 112 (pre‑AIA)
for
the law otherwise applicable.]
(a) IN GENERAL.—The specification shall contain a
written description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or with which it
is most nearly connected, to make and use the same, and shall set forth the
best mode contemplated by the inventor or joint inventor of carrying out the
invention.
(b) CONCLUSION.—The specification shall conclude with
one or more claims particularly pointing out and distinctly claiming the
subject matter which the inventor or a joint inventor regards as the
invention.
(c) FORM.—A claim may be written in independent or, if
the nature of the case admits, in dependent or multiple dependent form.
(d) REFERENCE IN DEPENDENT FORMS.—Subject to
subsection (e), a claim in dependent form shall contain a reference to a
claim previously set forth and then specify a further limitation of the
subject matter claimed. A claim in dependent form shall be construed to
incorporate by reference all the limitations of the claim to which it
refers.
(e) REFERENCE IN MULTIPLE DEPENDENT FORM.—A claim in
multiple dependent form shall contain a reference, in the alternative only,
to more than one claim previously set forth and then specify a further
limitation of the subject matter claimed. A multiple dependent claim shall
not serve as a basis for any other multiple dependent claim. A multiple
dependent claim shall be construed to incorporate by reference all the
limitations of the particular claim in relation to which it is being
considered.
(f) ELEMENT IN CLAIM FOR A COMBINATION.—An element in
a claim for a combination may be expressed as a means or step for performing
a specified function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the specification
and equivalents thereof.
(Amended July 24, 1965, Public Law 89-83, sec. 9,
79 Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 7, 89 Stat. 691; amended
Sept. 16, 2011, Public Law 112-29, sec. 4(c), 125 Stat. 284, effective Sept.
16, 2012.)
[top]
35 U.S.C. 112 (pre‑AIA)
Specification.
[Editor Note:
Not applicable
to any patent application filed
on or after September 16, 2012. See
35 U.S.C. 112
for the law
otherwise applicable.]
The specification shall contain a written description of the
invention, and of the manner and process of making and using it, in such full,
clear, concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make and use the
same, and shall set forth the best mode contemplated by the inventor of carrying
out his invention.
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the
applicant regards as his invention.
A claim may be written in independent or, if the nature of the
case admits, in dependent or multiple dependent form.
Subject to the following paragraph, a claim in dependent form
shall contain a reference to a claim previously set forth and then specify a
further limitation of the subject matter claimed. A claim in dependent form shall
be construed to incorporate by reference all the limitations of the claim to which
it refers.
A claim in multiple dependent form shall contain a reference, in
the alternative only, to more than one claim previously set forth and then specify
a further limitation of the subject matter claimed. A multiple dependent claim
shall not serve as a basis for any other multiple dependent claim. A multiple
dependent claim shall be construed to incorporate by reference all the limitations
of the particular claim in relation to which it is being considered.
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the recital of
structure, material, or acts in support thereof, and such claim shall be construed
to cover the corresponding structure, material, or acts described in the
specification and equivalents thereof.
(Amended July 24, 1965, Public Law 89-83, sec. 9, 79 Stat.
261; Nov. 14, 1975, Public Law 94-131, sec. 7, 89 Stat. 691.)
[top]
35 U.S.C. 113
Drawings.
The applicant shall furnish a drawing where necessary for the
understanding of the subject matter sought to be patented. When the nature of such
subject matter admits of illustration by a drawing and the applicant has not
furnished such a drawing, the Director may require its submission within a time
period of not less than two months from the sending of a notice thereof. Drawings
submitted after the filing date of the application may not be used (i) to overcome
any insufficiency of the specification due to lack of an enabling disclosure or
otherwise inadequate disclosure therein, or (ii) to supplement the original
disclosure thereof for the purpose of interpretation of the scope of any
claim.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 8, 89 Stat.
691; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 114
Models, specimens.
The Director may require the applicant to furnish a model of
convenient size to exhibit advantageously the several parts of his invention.
When the invention relates to a composition of matter, the
Director may require the applicant to furnish specimens or ingredients for the
purpose of inspection or experiment.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 115
Inventor’s oath or declaration.
[Editor Note: Applicable to any patent application filed on or after
September 16, 2012. See
35 U.S.C. 115 (pre‑AIA)
for
the law otherwise applicable.]
(a) NAMING THE INVENTOR; INVENTOR’S OATH OR
DECLARATION.—An application for patent that is filed under section
111(a)
or commences the national stage under section
371
shall include, or be amended to include, the name
of the inventor for any invention claimed in the application. Except as
otherwise provided in this section, each individual who is the inventor or a
joint inventor of a claimed invention in an application for patent shall
execute an oath or declaration in connection with the application.
(b) REQUIRED STATEMENTS.—An oath or declaration under
subsection (a) shall contain statements that—
(1) the application was made or was authorized
to be made by the affiant or declarant; and
(2) such individual believes himself or herself
to be the original inventor or an original joint inventor of a claimed
invention in the application.
(c) ADDITIONAL REQUIREMENTS.—The Director may specify
additional information relating to the inventor and the invention that is
required to be included in an oath or declaration under subsection (a).
(d) SUBSTITUTE STATEMENT.—
(1) IN GENERAL.—In lieu of executing an oath or
declaration under subsection (a), the applicant for patent may provide
a substitute statement under the circumstances described in paragraph
(2) and such additional circumstances that the Director may specify by
regulation.
(2) PERMITTED CIRCUMSTANCES.—A substitute
statement under paragraph (1) is permitted with respect to any
individual who—
(A) is unable to file the oath or
declaration under subsection (a) because the individual—
(i) is deceased;
(ii) is under legal incapacity;
or
(iii) cannot be found or reached after
diligent effort; or
(B) is under an obligation to assign the
invention but has refused to make the oath or declaration
required under subsection (a).
(3) CONTENTS.—A substitute statement under this
subsection shall—
(A) identify the individual with respect
to whom the statement applies;
(B) set forth the circumstances
representing the permitted basis for the filing of the
substitute statement in lieu of the oath or declaration under
subsection (a); and
(C) contain any additional information,
including any showing, required by the Director.
(e) MAKING REQUIRED STATEMENTS IN ASSIGNMENT OF
RECORD.—An individual who is under an obligation of assignment of an
application for patent may include the required statements under subsections
(b) and (c) in the assignment executed by the individual, in lieu of filing
such statements separately.
(f) TIME FOR FILING.—The applicant for patent shall
provide each required oath or declaration under subsection (a), substitute
statement under subsection (d), or recorded assignment meeting the
requirements of subsection (e) no later than the date on which the issue fee
for the patent is paid.
(g) EARLIER-FILED APPLICATION CONTAINING REQUIRED
STATEMENTS OR SUBSTITUTE STATEMENT.—
(1) EXCEPTION.—The requirements under this
section shall not apply to an individual with respect to an
application for patent in which the individual is named as the
inventor or a joint inventor and that claims the benefit under section
120
121
365(c)
, or
386(c)
of the filing of an earlier-filed
application, if—
(A) an oath or declaration meeting the
requirements of subsection (a) was executed by the individual
and was filed in connection with the earlier-filed
application;
(B) a substitute statement meeting the
requirements of subsection (d) was filed in connection with the
earlier filed application with respect to the individual; or
(C) an assignment meeting the
requirements of subsection (e) was executed with respect to the
earlier-filed application by the individual and was recorded in
connection with the earlier-filed application.
(2) COPIES OF OATHS, DECLARATIONS, STATEMENTS,
OR ASSIGNMENTS.—Notwithstanding paragraph (1), the Director may
require that a copy of the executed oath or declaration, the
substitute statement, or the assignment filed in connection with the
earlier-filed application be included in the later-filed application.
(h) SUPPLEMENTAL AND CORRECTED STATEMENTS; FILING
ADDITIONAL STATEMENTS.—
(1) IN GENERAL.—Any person making a statement
required under this section may withdraw, replace, or otherwise
correct the statement at any time. If a change is made in the naming
of the inventor requiring the filing of 1 or more additional
statements under this section, the Director shall establish
regulations under which such additional statements may be filed.
(2) SUPPLEMENTAL STATEMENTS NOT REQUIRED.—If an
individual has executed an oath or declaration meeting the
requirements of subsection (a) or an assignment meeting the
requirements of subsection (e) with respect to an application for
patent, the Director may not thereafter require that individual to
make any additional oath, declaration, or other statement equivalent
to those required by this section in connection with the application
for patent or any patent issuing thereon.
(3) SAVINGS CLAUSE.—A patent shall not be
invalid or unenforceable based upon the failure to comply with a
requirement under this section if the failure is remedied as provided
under paragraph (1).
(i) ACKNOWLEDGMENT OF PENALTIES.—Any declaration or
statement filed pursuant to this section shall contain an acknowledgment
that any willful false statement made in such declaration or statement is
punishable under
section 1001 of title 18
by fine or imprisonment of not more than 5 years, or both.
(Amended Aug. 27, 1982, Public Law 97-247, sec.
14(a), 96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec. 2222(d), 112 Stat.
2681-818; amended Sept. 16, 2011, Public Law 112-29, sec. 4(a) (effective Sept.
16, 2012), 125 Stat. 284; subsections (f) and (g)(1) amended Jan. 14, 2013,
Public Law 112-274, sec. 1(f), 126 Stat. 2456; subsection (g)(1) amended Dec.
18, 2012, Public Law 112-211, sec. 102(4) (effective May 13, 2015), 126 Stat.
1531.)
[top]
35 U.S.C. 115 (pre‑AIA)
Oath of applicant.
[Editor Note:
Not applicable
to any patent application filed
on or after September 16, 2012. See
35 U.S.C. 115
for the law
otherwise applicable.]
The applicant shall make oath that he believes himself to be the
original and first inventor of the process, machine, manufacture, or composition
of matter, or improvement thereof, for which he solicits a patent; and shall state
of what country he is a citizen. Such oath may be made before any person within
the United States authorized by law to administer oaths, or, when made in a
foreign country, before any diplomatic or consular officer of the United States
authorized to administer oaths, or before any officer having an official seal and
authorized to administer oaths in the foreign country in which the applicant may
be, whose authority is proved by certificate of a diplomatic or consular officer
of the United States, or apostille of an official designated by a foreign country
which, by treaty or convention, accords like effect to apostilles of designated
officials in the United States. Such oath is valid if it complies with the laws of
the state or country where made. When the application is made as provided in this
title by a person other than the inventor, the oath may be so varied in form that
it can be made by him. For purposes of this section, a consular officer shall
include any United States citizen serving overseas, authorized to perform notarial
functions pursuant to section 1750 of the Revised Statutes, as amended (22 U.S.C.
4221).
(Amended Aug. 27, 1982, Public Law 97-247, sec. 14(a),
96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec. 2222(d), 112 Stat.
2681-818.)
[top]
35 U.S.C. 116
Inventors.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16,
2012. See
35
U.S.C. 116 (pre‑AIA)
for the law otherwise
applicable.]
(a) JOINT INVENTIONS.—When an invention is made by
two or more persons jointly, they shall apply for patent jointly and each
make the required oath, except as otherwise provided in this title.
Inventors may apply for a patent jointly even though (1) they did not
physically work together or at the same time, (2) each did not make the same
type or amount of contribution, or (3) each did not make a contribution to
the subject matter of every claim of the patent.
(b) OMITTED INVENTOR.—If a joint inventor refuses to join in
an application for patent or cannot be found or reached after diligent
effort, the application may be made by the other inventor on behalf of
himself and the omitted inventor. The Director, on proof of the pertinent
facts and after such notice to the omitted inventor as he prescribes, may
grant a patent to the inventor making the application, subject to the same
rights which the omitted inventor would have had if he had been joined. The
omitted inventor may subsequently join in the application.
(c) CORRECTION OF ERRORS IN APPLICATION.—Whenever through
error a person is named in an application for patent as the inventor, or
through an error an inventor is not named in an application, the Director
may permit the application to be amended accordingly, under such terms as he
prescribes.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(a),
96 Stat. 320; Nov. 8, 1984, Public Law 98-622, sec. 104(a), 98 Stat. 3384; Nov.
29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(a),
125 Stat. 284, effective Sept. 16, 2012.)
[top]
35 U.S.C. 116 (pre‑AIA)
Inventors.
[Editor Note:
Not applicable
to proceedings commenced on or
after September 16, 2012. See
35 U.S.C. 116
for the law
otherwise applicable.]
When an invention is made by two or more persons jointly, they
shall apply for patent jointly and each make the required oath, except as
otherwise provided in this title. Inventors may apply for a patent jointly even
though (1) they did not physically work together or at the same time, (2) each did
not make the same type or amount of contribution, or (3) each did not make a
contribution to the subject matter of every claim of the patent.
If a joint inventor refuses to join in an application for patent
or cannot be found or reached after diligent effort, the application may be made
by the other inventor on behalf of himself and the omitted inventor. The Director,
on proof of the pertinent facts and after such notice to the omitted inventor as
he prescribes, may grant a patent to the inventor making the application, subject
to the same rights which the omitted inventor would have had if he had been
joined. The omitted inventor may subsequently join in the application.
Whenever through error a person is named in an application for
patent as the inventor, or through an error an inventor is not named in an
application, and such error arose without any deceptive intention on his part, the
Director may permit the application to be amended accordingly, under such terms as
he prescribes.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(a), 96 Stat.
320; Nov. 8, 1984, Public Law 98-622, sec. 104(a), 98 Stat. 3384; Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
[top]
35 U.S.C. 117
Death or incapacity of inventor.
Legal representatives of deceased inventors and of those under
legal incapacity may make application for patent upon compliance with the
requirements and on the same terms and conditions applicable to the inventor.
[top]
35 U.S.C. 118
Filing by other than inventor.
[Editor Note: Applicable to any patent application filed on or after
September 16, 2012. See
35 U.S.C. 118 (pre‑AIA)
for
the law otherwise applicable.]
A person to whom the inventor has assigned or is under
an obligation to assign the invention may make an application for patent. A person
who otherwise shows sufficient proprietary interest in the matter may make an
application for patent on behalf of and as agent for the inventor on proof of the
pertinent facts and a showing that such action is appropriate to preserve the
rights of the parties. If the Director grants a patent on an application filed
under this section by a person other than the inventor, the patent shall be
granted to the real party in interest and upon such notice to the inventor as the
Director considers to be sufficient.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept.
16, 2011, Public Law 112-29, sec. 4(b), 125 Stat. 284, effective Sept. 16,
2012.)
[top]
35 U.S.C. 118 (pre‑AIA)
Filing by other than inventor.
[Editor Note:
Not applicable
to any patent application filed
on or after September 16, 2012. See
35 U.S.C. 118
for the law
otherwise applicable.]
Whenever an inventor refuses to execute an application for
patent, or cannot be found or reached after diligent effort, a person to whom the
inventor has assigned or agreed in writing to assign the invention or who
otherwise shows sufficient proprietary interest in the matter justifying such
action, may make application for patent on behalf of and as agent for the inventor
on proof of the pertinent facts and a showing that such action is necessary to
preserve the rights of the parties or to prevent irreparable damage; and the
Director may grant a patent to such inventor upon such notice to him as the
Director deems sufficient, and on compliance with such regulations as he
prescribes.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 119
Benefit of earlier filing date; right of
priority.
[Editor Note: 35 U.S.C. 119(a) as set forth below is only applicable to
patent applications subject to the first inventor to file provisions of the AIA
(see
35 U.S.C. 100 (note)
). See
35 U.S.C. 119(a)
(pre‑AIA)
for the law otherwise applicable.]
(a) An application for patent for an invention filed in this
country by any person who has, or whose legal representatives or assigns
have, previously regularly filed an application for a patent for the same
invention in a foreign country which affords similar privileges in the case
of applications filed in the United States or to citizens of the United
States, or in a WTO member country, shall have the same effect as the same
application would have if filed in this country on the date on which the
application for patent for the same invention was first filed in such
foreign country, if the application in this country is filed within 12
months from the earliest date on which such foreign application was filed.
The Director may prescribe regulations, including the requirement for
payment of the fee specified in section
41(a)(7)
, pursuant to
which the 12-month period set forth in this subsection may be extended by an
additional 2 months if the delay in filing the application in this country
within the 12-month period was unintentional.
(b)
(1) No application for patent shall be entitled to this
right of priority unless a claim is filed in the Patent and Trademark
Office, identifying the foreign application by specifying the
application number on that foreign application, the intellectual
property authority or country in or for which the application was
filed, and the date of filing the application, at such time during the
pendency of the application as required by the Director.
(2) The Director may consider the failure of the
applicant to file a timely claim for priority as a waiver of any such
claim. The Director may establish procedures, including the
requirement for payment of the fee specified in section
41(a)(7)
, to accept an unintentionally delayed
claim under this section.
(3) The Director may require a certified copy of the
original foreign application, specification, and drawings upon which
it is based, a translation if not in the English language, and such
other information as the Director considers necessary. Any such
certification shall be made by the foreign intellectual property
authority in which the foreign application was filed and show the date
of the application and of the filing of the specification and other
papers.
(c) In like manner and subject to the same conditions and
requirements, the right provided in this section may be based upon a
subsequent regularly filed application in the same foreign country instead
of the first filed foreign application, provided that any foreign
application filed prior to such subsequent application has been withdrawn,
abandoned, or otherwise disposed of, without having been laid open to public
inspection and without leaving any rights outstanding, and has not served,
nor thereafter shall serve, as a basis for claiming a right of priority.
(d) Applications for inventors’ certificates filed in a foreign
country in which applicants have a right to apply, at their discretion,
either for a patent or for an inventor’s certificate shall be treated in
this country in the same manner and have the same effect for purpose of the
right of priority under this section as applications for patents, subject to
the same conditions and requirements of this section as apply to
applications for patents, provided such applicants are entitled to the
benefits of the Stockholm Revision of the Paris Convention at the time of
such filing.
(e)
(1) An application for patent filed under
section 111(a)
or
section 363
for an
invention disclosed in the manner provided by
section
112(a)
(other than the requirement to disclose
the best mode) in a provisional application filed under
section 111(b)
, by
an inventor or inventors named in the provisional application, shall
have the same effect, as to such invention, as though filed on the
date of the provisional application filed under
section
111(b)
, if the application for patent filed
under
section 111(a)
or
section 363
is
filed not later than 12 months after the date on which the provisional
application was filed and if it contains or is amended to contain a
specific reference to the provisional application. The Director may
prescribe regulations, including the requirement for payment of the
fee specified in section
41(a)(7)
, pursuant
to which the 12-month period set forth in this subsection may be
extended by an additional 2 months if the delay in filing the
application under section
111(a)
or section
363
within the
12-month period was unintentional. No application shall be entitled to
the benefit of an earlier filed provisional application under this
subsection unless an amendment containing the specific reference to
the earlier filed provisional application is submitted at such time
during the pendency of the application as required by the Director.
The Director may consider the failure to submit such an amendment
within that time period as a waiver of any benefit under this
subsection. The Director may establish procedures, including the
payment of the fee specified in section
41(a)(7)
, to accept an unintentionally delayed
submission of an amendment under this subsection.
(2) A provisional application filed under
section 111(b)
may not be relied upon in any proceeding in the Patent and Trademark
Office unless the fee set forth in subparagraph (A) or (C) of
section 41(a)(1)
has been paid.
(3) If the day that is 12 months after the filing date of
a provisional application falls on a Saturday, Sunday, or Federal
holiday within the District of Columbia, the period of pendency of the
provisional application shall be extended to the next succeeding
secular or business day. For an application for patent filed under
section
363
in a Receiving
Office other than the Patent and Trademark Office, the 12-month and
additional 2-month period set forth in this subsection shall be
extended as provided under the treaty and Regulations as defined in
section
351
(f) Applications for plant breeder’s rights filed in a WTO
member country (or in a foreign UPOV Contracting Party) shall have the same
effect for the purpose of the right of priority under subsections (a)
through (c) of this section as applications for patents, subject to the same
conditions and requirements of this section as apply to applications for
patents.
(g) As used in this section—
(1) the term “WTO member country” has the same meaning as
the term is defined in
section 104(b)(2)
and
(2) the term “UPOV Contracting Party” means a member of
the International Convention for the Protection of New Varieties of
Plants.
(Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75 Stat.
748; July 28, 1972, Public Law 92-358, sec. 1, 86 Stat. 501; Jan. 2, 1975,
Public Law 93-596, sec. 1, 88 Stat. 1949; Dec. 8, 1994, Public Law 103-465,
sec. 532(b)(1), 108 Stat. 4985; subsection (b) amended Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.4503(a));
subsection (e) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-564, 588, 589 (S. 1948 secs. 4503(b)(2), 4801 and 4802; subsections
(f) and (g) added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-589 (S. 1948 sec. 4802); subsections (e), (g) amended Sept. 16, 2011,
Public Law 112-29, secs. 15(b) (effective Sept. 16, 2011) and 20(j) (effective
Sept. 16, 2012), 125 Stat. 284; subsection (a) amended Sept. 16, 2011, Public
Law 112-29, sec. 3(g) (effective March 16, 2013), 125 Stat. 284; subsections
(a) and (e), Dec. 18, 2012, Public Law 112-211, sec. 201(c)(1)(A), 126 Stat.
1527; subsection (b)(2), Dec. 18, 2012, Public Law 112-211, sec. 202(b)(2), 126
Stat. 1536.)
[top]
35 U.S.C. 119 (pre‑AIA)
Benefit of earlier filing date; right of
priority.
[Editor Note: pre‑AIA 35 U.S.C. 119(a) as set forth below is applicable
to patent applications
not
subject to the first inventor to file
provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C.
119(a)
for the law otherwise applicable.]
(a) An application for patent for an invention filed in this
country by any person who has, or whose legal representatives or assigns
have, previously regularly filed an application for a patent for the same
invention in a foreign country which affords similar privileges in the case
of applications filed in the United States or to citizens of the United
States, or in a WTO member country, shall have the same effect as the same
application would have if filed in this country on the date on which the
application for patent for the same invention was first filed in such
foreign country, if the application in this country is filed within twelve
months from the earliest date on which such foreign application was filed;
but no patent shall be granted on any application for patent for an
invention which had been patented or described in a printed publication in
any country more than one year before the date of the actual filing of the
application in this country, or which had been in public use or on sale in
this country more than one year prior to such filing.
*****
(Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75 Stat.
748; July 28, 1972, Public Law 92-358, sec. 1, 86 Stat. 501; Jan. 2, 1975,
Public Law 93-596, sec. 1, 88 Stat. 1949; Dec. 8, 1994, Public Law 103-465,
sec. 532(b)(1), 108 Stat. 4985; subsection (b) amended Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.4503(a));
subsection (e) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-564, 588, 589 (S. 1948 secs. 4503(b)(2), 4801 and 4802; subsections
(f) and (g) added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-589 (S. 1948 sec. 4802); subsections (e), (g) amended Sept. 16, 2011,
Public Law 112-29, secs. 15(b) (effective Sept. 16, 2011) and 20(j) (effective
Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 120
Benefit of earlier filing date in the United
States.
[Editor Note: Applicable to a patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 120 (pre‑AIA)
for
the law otherwise applicable.]
An application for patent for an invention disclosed in the
manner provided by
section 112(a)
(other than the
requirement to disclose the best mode) in an application previously filed in the
United States, or as provided by
section 363
or
385
which names an inventor or joint inventor in the
previously filed application shall have the same effect, as to such invention, as
though filed on the date of the prior application, if filed before the patenting
or abandonment of or termination of proceedings on the first application or on an
application similarly entitled to the benefit of the filing date of the first
application and if it contains or is amended to contain a specific reference to
the earlier filed application. No application shall be entitled to the benefit of
an earlier filed application under this section unless an amendment containing the
specific reference to the earlier filed application is submitted at such time
during the pendency of the application as required by the Director. The Director
may consider the failure to submit such an amendment within that time period as a
waiver of any benefit under this section. The Director may establish procedures,
including the requirement for payment of the fee specified in section
41(a)(7)
, to accept an unintentionally delayed submission
of an amendment under this section.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 9, 89 Stat.
691; Nov. 8, 1984, Public Law 98-622, sec. 104(b), 98 Stat. 3385; Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.
4503(b)(1)); amended Sept. 16, 2011, Public Law 112-29, secs. 15(b) (effective
Sept. 16, 2012), 20(j) (effective Sept. 16, 2012) and 3(f) (effective March 16,
2013), 125 Stat. 284; Dec. 18, 2012, Public Law 112-211, sec. 202(b)(3), 126
Stat. 1536; amended Dec. 18, 2012, Public Law 112-211, sec. 102(5) (effective
May 13, 2015), 126 Stat. 1531.)
[top]
35 U.S.C. 120 (pre‑AIA)
Benefit of earlier filing date in the United
States.
[Editor Note:
Not applicable
to patent applications subject
to the first inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See 35 U.S.C.
120
for the law otherwise applicable.]
An application for patent for an invention disclosed in the
manner provided by
section 112(a)
(other than the
requirement to disclose the best mode) in an application previously filed in the
United States, or as provided by
section 363
, which is filed by
an inventor or inventors named in the previously filed application shall have the
same effect, as to such invention, as though filed on the date of the prior
application, if filed before the patenting or abandonment of or termination of
proceedings on the first application or on an application similarly entitled to
the benefit of the filing date of the first application and if it contains or is
amended to contain a specific reference to the earlier filed application. No
application shall be entitled to the benefit of an earlier filed application under
this section unless an amendment containing the specific reference to the earlier
filed application is submitted at such time during the pendency of the application
as required by the Director. The Director may consider the failure to submit such
an amendment within that time period as a waiver of any benefit under this
section. The Director may establish procedures, including the payment of a
surcharge, to accept an unintentionally delayed submission of an amendment under
this section.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 9, 89
Stat. 691; Nov. 8, 1984, Public Law 98-622, sec. 104(b), 98 Stat. 3385; Nov.
29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948
sec. 4503(b)(1)); amended Sept. 16, 2011, Public Law 112-29, secs. 15(b)
(effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat.
284.)
[top]
35 U.S.C. 121
Divisional applications.
[Editor Note: Applicable to any patent application filed on or after
September 16, 2012. See
35 U.S.C. 121 (pre‑AIA)
for
the law otherwise applicable.]
If two or more independent and distinct inventions are claimed
in one application, the Director may require the application to be restricted to
one of the inventions. If the other invention is made the subject of a divisional
application which complies with the requirements of
section
120
it shall be entitled to the benefit of the filing date
of the original application. A patent issuing on an application with respect to
which a requirement for restriction under this section has been made, or on an
application filed as a result of such a requirement, shall not be used as a
reference either in the Patent and Trademark Office or in the courts against a
divisional application or against the original application or any patent issued on
either of them, if the divisional application is filed before the issuance of the
patent on the other application. The validity of a patent shall not be questioned
for failure of the Director to require the application to be restricted to one
invention.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, secs.
4(a) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 121 (pre‑AIA)
Divisional applications.
[Editor Note:
Not applicable
to any patent application filed
on or after September 16, 2012. See
35 U.S.C. 121
for the law
otherwise applicable.]
If two or more independent and distinct inventions are claimed in
one application, the Director may require the application to be restricted to one
of the inventions. If the other invention is made the subject of a divisional
application which complies with the requirements of
section
120
of this title it shall be entitled to the benefit of the
filing date of the original application. A patent issuing on an application with
respect to which a requirement for restriction under this section has been made,
or on an application filed as a result of such a requirement, shall not be used as
a reference either in the Patent and Trademark Office or in the courts against a
divisional application or against the original application or any patent issued on
either of them, if the divisional application is filed before the issuance of the
patent on the other application. If a divisional application is directed solely to
subject matter described and claimed in the original application as filed, the
Director may dispense with signing and execution by the inventor. The validity of
a patent shall not be questioned for failure of the Director to require the
application to be restricted to one invention.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 122
Confidential status of applications;
publication of patent applications.
(a) CONFIDENTIALITY.— Except as provided in subsection (b),
applications for patents shall be kept in confidence by the Patent and
Trademark Office and no information concerning the same given without
authority of the applicant or owner unless necessary to carry out the
provisions of an Act of Congress or in such special circumstances as may be
determined by the Director.
(b) PUBLICATION.—
(1) IN GENERAL.—
(A) Subject to paragraph (2), each application for
a patent shall be published, in accordance with procedures
determined by the Director, promptly after the expiration of a
period of 18 months from the earliest filing date for which a
benefit is sought under this title. At the request of the
applicant, an application may be published earlier than the end
of such 18-month period.
(B) No information concerning published patent
applications shall be made available to the public except as the
Director determines.
(C) Notwithstanding any other provision of law, a
determination by the Director to release or not to release
information concerning a published patent application shall be
final and nonreviewable.
(2) EXCEPTIONS.—
(A) An application shall not be published if that
application is—
(i) no longer pending;
(ii) subject to a secrecy order under
section 181
(iii) a provisional application filed under
section
111(b)
; or
(iv) an application for a design patent filed
under
chapter
16
(B)
(i) If an applicant makes a request upon
filing, certifying that the invention disclosed in the
application has not and will not be the subject of an
application filed in another country, or under a
multilateral international agreement, that requires
publication of applications 18 months after filing, the
application shall not be published as provided in
paragraph (1).
(ii) An applicant may rescind a request made
under clause (i) at any time.
(iii) An applicant who has made a request under
clause (i) but who subsequently files, in a foreign
country or under a multilateral international agreement
specified in clause (i), an application directed to the
invention disclosed in the application filed in the Patent
and Trademark Office, shall notify the Director of such
filing not later than 45 days after the date of the filing
of such foreign or international application. A failure of
the applicant to provide such notice within the prescribed
period shall result in the application being regarded as
abandoned.
(iv) If an applicant rescinds a request made
under clause (i) or notifies the Director that an
application was filed in a foreign country or under a
multilateral international agreement specified in clause
(i), the application shall be published in accordance with
the provisions of paragraph (1) on or as soon as is
practical after the date that is specified in clause
(i).
(v) If an applicant has filed applications in
one or more foreign countries, directly or through a
multilateral international agreement, and such foreign
filed applications corresponding to an application filed
in the Patent and Trademark Office or the description of
the invention in such foreign filed applications is less
extensive than the application or description of the
invention in the application filed in the Patent and
Trademark Office, the applicant may submit a redacted copy
of the application filed in the Patent and Trademark
Office eliminating any part or description of the
invention in such application that is not also contained
in any of the corresponding applications filed in a
foreign country. The Director may only publish the
redacted copy of the application unless the redacted copy
of the application is not received within 16 months after
the earliest effective filing date for which a benefit is
sought under this title. The provisions of
section
154(d)
shall not apply to a claim if
the description of the invention published in the redacted
application filed under this clause with respect to the
claim does not enable a person skilled in the art to make
and use the subject matter of the claim.
(c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall
establish appropriate procedures to ensure that no protest or other form of
pre-issuance opposition to the grant of a patent on an application may be
initiated after publication of the application without the express written
consent of the applicant.
(d) NATIONAL SECURITY.— No application for patent shall be
published under subsection (b)(1) if the publication or disclosure of such
invention would be detrimental to the national security. The Director shall
establish appropriate procedures to ensure that such applications are
promptly identified and the secrecy of such inventions is maintained in
accordance with
chapter 17
(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
(1) IN GENERAL.—Any third party may submit for
consideration and inclusion in the record of a patent application, any
patent, published patent application, or other printed publication of
potential relevance to the examination of the application, if such
submission is made in writing before the earlier of—
(A) the date a notice of allowance under
section
151
is given
or mailed in the application for patent; or
(B) the later of—
(i) 6 months after the date on which
the application for patent is first published under
section
122
by
the Office, or
(ii) the date of the first rejection
under section
132
of
any claim by the examiner during the examination of the
application for patent.
(2) OTHER REQUIREMENTS.—Any submission under
paragraph (1) shall—
(A) set forth a concise description of the
asserted relevance of each submitted document;
(B) be accompanied by such fee as the
Director may prescribe; and
(C) include a statement by the person
making such submission affirming that the submission was made in
compliance with this section.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-563
(S. 1948 sec. 4503(b)(1)); amended and subsection (e) added Sept. 16, 2011,
Public Law 112-29, secs. 8 and 20(j) (effective Sept. 16, 2012), 125 Stat. 284;
subsection (b)(2)(B)(iii), Dec. 18, 2012, Public Law 112-211, sec. 202(b)(4),
126 Stat. 1536.)
[top]
35 U.S.C. 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 applicable fee 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 most recently 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 applicable fee 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 most recently 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 an
applicant’s or entity’s gross income in the preceding calendar year is not
in United States dollars, the average currency exchange rate, as reported by
the Internal Revenue Service, during that calendar year shall be used to
determine whether the applicant’s or entity’s gross income exceeds the
threshold specified in paragraphs (3) or (4) of subsection (a).
(d) INSTITUTIONS OF HIGHER EDUCATION.—For purposes of
this section, a micro entity shall include an applicant who certifies
that—
(1) the applicant’s employer, from which the
applicant obtains the majority of the applicant’s income, is an
institution of higher education as defined in section 101(a) of the
Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
(2) the applicant has assigned, granted,
conveyed, or is under an obligation by contract or law, to assign,
grant, or convey, a license or other ownership interest in the
particular applications to such an institution of higher
education.
(e) DIRECTOR’S AUTHORITY.—In addition to the limits
imposed by this section, the Director may, in the Director’s discretion,
impose income limits, annual filing limits, or other limits on who may
qualify as a micro entity pursuant to this section if the Director
determines that such additional limits are reasonably necessary to avoid an
undue impact on other patent applicants or owners or are otherwise
reasonably necessary and appropriate. At least 3 months before any limits
proposed to be imposed pursuant to this subsection take effect, the Director
shall inform the Committee on the Judiciary of the House of Representatives
and the Committee on the Judiciary of the Senate of any such proposed
limits.
(f) PENALTY FOR FALSE CERTIFICATIONS.—In addition to
any other penalty available under law, an entity that is found to have
falsely made a certification under this section shall 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
certification, whether the Director discovers the false certification before
or after the date on which a patent has been issued.
(Added Sept. 16, 2011, Public Law 112-29, sec.
10(g), 125 Stat. 284; amended Public Law 112-29, sec. 20(j), 125 Stat. 284 and
corrected Jan. 14, 2013, Public Law 112-274, sec. 1(m), 126 Stat. 2456;
subsection (f) added Dec. 29, 2022, Public Law 117-328, division W, sec.
107(b)(2), 136 Stat. 4459.)
[top]
CHAPTER CHAPTER 12 - EXAMINATION OF APPLICATION
131 Examination of application.
132 Notice of rejection; reexamination.
133 Time for prosecuting application.
134 Appeal to the Patent Trial and Appeal Board.
134 (transitional) Appeal to the Board of Patent Appeals and
Interferences.
134 (pre‑AIA) Appeal to the Board of Patent Appeals and
Interferences.
135 Derivation proceedings.
135 (pre‑AIA) Interferences.
35 U.S.C. 131
Examination of application.
The Director shall cause an examination to be made of the
application and the alleged new invention; and if on such examination it appears
that the applicant is entitled to a patent under the law, the Director shall issue
a patent therefor.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 132
Notice of rejection; reexamination.
(a) Whenever, on examination, any claim for a patent is
rejected, or any objection or requirement made, the Director shall notify
the applicant thereof, stating the reasons for such rejection, or objection
or requirement, together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of his
application; and if after receiving such notice, the applicant persists in
his claim for a patent, with or without amendment, the application shall be
reexamined. No amendment shall introduce new matter into the disclosure of
the invention.
(b) The Director shall prescribe regulations to provide for the
continued examination of applications for patent at the request of the
applicant. The Director may establish appropriate fees for such continued
examination and shall provide a 50 percent reduction in such fees for small
entities that qualify for reduced fees under
section
41(h)(1)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-560, 582 (S. 1948 secs. 4403 and 4732(a)(10)(A)); amended Sept.
16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat.
284.)
[top]
35 U.S.C. 133
Time for prosecuting application.
Upon failure of the applicant to prosecute the application within
six months after any action therein, of which notice has been given or mailed to
the applicant, or within such shorter time, not less than thirty days, as fixed by
the Director in such action, the application shall be regarded as abandoned by the
parties thereto.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); Dec. 18, 2012, Public Law
12-211, sec. 202(b)(5), 126 Stat. 1536.)
[top]
35 U.S.C. 134
Appeal to the Patent Trial and Appeal
Board.
[Editor Note: Applicable to proceedings commenced on or after September
16, 2012 and applicable to any patent application subject to the first inventor
to file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35
U.S.C. 134 (transitional)
for the law applicable to
proceedings commenced on or after September 16, 2012 but
not
applicable
to any patent application subject to the first inventor to
file provisions of the AIA. See
35 U.S.C. 134 (pre‑AIA)
for
the law applicable to proceedings commenced before September 16,
2012.]
(a) PATENT APPLICANT.— An applicant for a patent, any of
whose claims has been twice rejected, may appeal from the decision of the
primary examiner to the Patent Trial and Appeal Board, having once paid the
fee for such appeal.
(b) PATENT OWNER.— A patent owner in a reexamination may
appeal from the final rejection of any claim by the primary examiner to the
Patent Trial and Appeal Board, having once paid the fee for such appeal.
(Amended Nov. 8, 1984, Public Law 98-622, sec.
204(b)(1), 98 Stat. 3388; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4605(b)); subsections (a)-(c) amended Nov. 2,
2002, Public Law 107-273, secs. 13106 and 13202, 116 Stat. 1901; amended Sept.
16, 2011, Public Law 112-29, secs. 7(b) (effective Sept. 16, 2012) and 3(j)
(effective March 16, 2013), 125 Stat. 284.)
[top]
35 U.S.C. 134 (transitional)
Appeal to the Board of Patent Appeals and
Interferences.
[Editor Note: Applicable to proceedings commenced on or after September
16, 2012, but
not applicable
to any patent application subject to
the first inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 134
for the law
applicable to patent applications subject to the first inventor to file
provisions of the AIA.] See
35 U.S.C. 134 (pre‑AIA)
for
the law applicable to proceedings commenced before September 16, 2012.]
(a) PATENT APPLICANT.— An applicant for a patent, any of
whose claims has been twice rejected, may appeal from the decision of the
primary examiner to the Board of Patent Appeals and Interferences, having
once paid the fee for such appeal.
(b) PATENT OWNER.— A patent owner in a reexamination may
appeal from the final rejection of any claim by the primary examiner to the
Board of Patent Appeals and Interferences, having once paid the fee for such
appeal.
(Amended Nov. 8, 1984, Public Law 98-622, sec. 204(b)(1),
98 Stat. 3388; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-570 (S. 1948 sec. 4605(b)); subsections (a)-(c) amended Nov. 2, 2002,
Public Law 107-273, secs. 13106 and 13202, 116 Stat. 1901; amended Sept. 16,
2011, Public Law 112-29, sec. 7(b) (effective Sept. 16, 2012), 125 Stat.
284.)
[top]
35 U.S.C. 134 (pre‑AIA)
Appeal to the Board of Patent Appeals and
Interferences.
[Editor Note:
Not applicable
to proceedings commenced on or
after September 16, 2012. See
35 U.S.C. 134
or
35
U.S.C. 134 (transitional)
for the law otherwise
applicable.]
(a) PATENT APPLICANT.— An applicant for a patent, any of whose
claims has been twice rejected, may appeal from the decision of the primary
examiner to the Board of Patent Appeals and Interferences, having once paid
the fee for such appeal.
(b) PATENT OWNER.— A patent owner in any reexamination
proceeding may appeal from the final rejection of any claim by the primary
examiner to the Board of Patent Appeals and Interferences, having once paid
the fee for such appeal.
(c) THIRD-PARTY.— A third-party requester in an inter partes
proceeding may appeal to the Board of Patent Appeals and Interferences from
the final decision of the primary examiner favorable to the patentability of
any original or proposed amended or new claim of a patent, having once paid
the fee for such appeal.
(Amended Nov. 8, 1984, Public Law 98-622, sec. 204(b)(1), 98
Stat. 3388; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-570 (S. 1948 sec. 4605(b)); subsections (a)-(c) amended Nov. 2, 2002,
Public Law 107-273, secs. 13106 and 13202, 116 Stat. 1901.)
[top]
35 U.S.C. 135
Derivation proceedings.
[Editor Note: Applicable to any patent application subject to the AIA
first inventor to file provisions (see
35 U.S.C. 100
(note)
).* See
35 U.S.C. 135 (pre‑AIA)
for
the law otherwise applicable.]
(a) INSTITUTION OF PROCEEDING.—
(1) IN GENERAL.— An applicant for patent may
file a petition with respect to an invention to institute a derivation
proceeding in the Office. The petition shall set forth with
particularity the basis for finding that an individual named in an
earlier application as the inventor or a joint inventor derived such
invention from an individual named in the petitioner’s application as
the inventor or a joint inventor and, without authorization, the
earlier application claiming such invention was filed. Whenever the
Director determines that a petition filed under this subsection
demonstrates that the standards for instituting a derivation
proceeding are met, the Director may institute a derivation
proceeding.
(2) TIME FOR FILING.—A petition under this
section with respect to an invention that is the same or substantially
the same invention as a claim contained in a patent issued on an
earlier application, or contained in an earlier application when
published or deemed published under section
122(b)
, may not be filed unless such petition
is filed during the 1-year period following the date on which the
patent containing such claim was granted or the earlier application
containing such claim was published, whichever is earlier.
(3) EARLIER APPLICATION.—For purposes of this
section, an application shall not be deemed to be an earlier
application with respect to an invention, relative to another
application, unless a claim to the invention was or could have been
made in such application having an effective filing date that is
earlier than the effective filing date of any claim to the invention
that was or could have been made in such other application.
(4) NO APPEAL.—A determination by the Director
whether to institute a derivation proceeding under paragraph (1) shall
be final and not appealable.
(b) DETERMINATION BY PATENT TRIAL AND APPEAL BOARD.—
In a derivation proceeding instituted under subsection (a), the Patent Trial
and Appeal Board shall determine whether an inventor named in the earlier
application derived the claimed invention from an inventor named in the
petitioner’s application and, without authorization, the earlier application
claiming such invention was filed. In appropriate circumstances, the Patent
Trial and Appeal Board may correct the naming of the inventor in any
application or patent at issue. The Director shall prescribe regulations
setting forth standards for the conduct of derivation proceedings, including
requiring parties to provide sufficient evidence to prove and rebut a claim
of derivation.
(c) DEFERRAL OF DECISION.—The Patent Trial and Appeal
Board may defer action on a petition for a derivation proceeding until the
expiration of the 3-month period beginning on the date on which the Director
issues a patent that includes the claimed invention that is the subject of
the petition. The Patent Trial and Appeal Board also may defer action on a
petition for a derivation proceeding, or stay the proceeding after it has
been instituted, until the termination of a proceeding under
chapter
30
, 31, or 32 involving the patent of the earlier
applicant.
(d) EFFECT OF FINAL DECISION.—The final decision of
the Patent Trial and Appeal Board, if adverse to claims in an application
for patent, shall constitute the final refusal by the Office on those
claims. The final decision of the Patent Trial and Appeal Board, if adverse
to claims in a patent, shall, if no appeal or other review of the decision
has been or can be taken or had, constitute cancellation of those claims,
and notice of such cancellation shall be endorsed on copies of the patent
distributed after such cancellation.
(e) SETTLEMENT.—Parties to a proceeding instituted
under subsection (a) may terminate the proceeding by filing a written
statement reflecting the agreement of the parties as to the correct inventor
of the claimed invention in dispute. Unless the Patent Trial and Appeal
Board finds the agreement to be inconsistent with the evidence of record, if
any, it shall take action consistent with the agreement. Any written
settlement or understanding of the parties shall be filed with the Director.
At the request of a party to the proceeding, the agreement or understanding
shall be treated as business confidential information, shall be kept
separate from the file of the involved patents or applications, and shall be
made available only to Government agencies on written request, or to any
person on a showing of good cause.
(f) ARBITRATION.—Parties to a proceeding instituted
under subsection (a) may, within such time as may be specified by the
Director by regulation, determine such contest or any aspect thereof by
arbitration. Such arbitration shall be governed by the provisions of title
9, to the extent such title is not inconsistent with this section. The
parties shall give notice of any arbitration award to the Director, and such
award shall, as between the parties to the arbitration, be dispositive of
the issues to which it relates. The arbitration award shall be unenforceable
until such notice is given. Nothing in this subsection shall preclude the
Director from determining the patentability of the claimed inventions
involved in the proceeding.
(Subsection (c) added Oct. 15, 1962, Public Law 87-831, 76
Stat. 958; subsections (a) and (c) amended, Jan. 2, 1975, Public Law 93-596,
sec. 1, 88 Stat. 1949; subsection (a) amended Nov. 8, 1984, Public Law 98-622,
sec. 202, 98 Stat. 3386; subsection (d) added Nov. 8, 1984, Public Law 98-622,
sec. 105, 98 Stat. 3385; amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs. 4507(11) and
4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, secs. 20(j)
(effective Sept. 16, 2012) and (3)(i)(effective March 16, 2013)*, 125 Stat.
284; subsections (a) and (e) amended Jan. 14, 2013, Public Law 112-274, secs.
1(e) and (k), 126 Stat. 2456, effective March 16, 2013.*)
*NOTE:
The provisions of
35 U.S.C. 135 (pre‑AIA)
, as
in effect on
March 15, 2013
, shall apply to each claim of an application for patent, and any patent
issued thereon, for which the first inventor to file provisions of the AIA also
apply (see
35 U.S.C. 100 (note)
), if
such application or patent contains or contained at any time—
(A) a claim to an invention having an effective
filing date as defined in section
100(i)
, that occurs before
March 16, 2013; or
(B) a specific reference under section
120
121
, or
365(c)
to
any patent or application that contains or contained at any time such a
claim.
[top]
35 U.S.C. 135 (pre‑AIA)
Interferences.
[Editor Note: Except as noted below,*
not applicable
to any
patent application subject to the first inventor to file provisions of the AIA
(see
35 U.S.C. 100 (note)
). See
35 U.S.C. 135
for the law otherwise applicable.]
(a) Whenever an application is made for a patent which, in the
opinion of the Director, would interfere with any pending application, or
with any unexpired patent, an interference may be declared and the Director
shall give notice of such declaration to the applicants, or applicant and
patentee, as the case may be. The Board of Patent Appeals and Interferences
shall determine questions of priority of the inventions and may determine
questions of patentability. Any final decision, if adverse to the claim of
an applicant, shall constitute the final refusal by the Patent and Trademark
Office of the claims involved, and the Director may issue a patent to the
applicant who is adjudged the prior inventor. A final judgment adverse to a
patentee from which no appeal or other review has been or can be taken or
had shall constitute cancellation of the claims involved in the patent, and
notice of such cancellation shall be endorsed on copies of the patent
distributed after such cancellation by the Patent and Trademark Office.
(b)
(1) A claim which is the same as, or for the same or
substantially the same subject matter as, a claim of an issued patent
may not be made in any application unless such a claim is made prior
to one year from the date on which the patent was granted.
(2) A claim which is the same as, or for the same or
substantially the same subject matter as, a claim of an application
published under
section 122(b)
may
be made in an application filed after the application is published
only if the claim is made before 1 year after the date on which the
application is published.
(c) Any agreement or understanding between parties to an
interference, including any collateral agreements referred to therein, made
in connection with or in contemplation of the termination of the
interference, shall be in writing and a true copy thereof filed in the
Patent and Trademark Office before the termination of the interference as
between the said parties to the agreement or understanding. If any party
filing the same so requests, the copy shall be kept separate from the file
of the interference, and made available only to Government agencies on
written request, or to any person on a showing of good cause. Failure to
file the copy of such agreement or understanding shall render permanently
unenforceable such agreement or understanding and any patent of such parties
involved in the interference or any patent subsequently issued on any
application of such parties so involved. The Director may, however, on a
showing of good cause for failure to file within the time prescribed, permit
the filing of the agreement or understanding during the six-month period
subsequent to the termination of the interference as between the parties to
the agreement or understanding.
The Director shall give notice to the parties or their
attorneys of record, a reasonable time prior to said termination, of the
filing requirement of this section. If the Director gives such notice at a
later time, irrespective of the right to file such agreement or
understanding within the six-month period on a showing of good cause, the
parties may file such agreement or understanding within sixty days of the
receipt of such notice.
Any discretionary action of the Director under this
subsection shall be reviewable under section 10 of the Administrative
Procedure Act.
(d) Parties to a patent interference, within such time as may
be specified by the Director by regulation, may determine such contest or
any aspect thereof by arbitration. Such arbitration shall be governed by the
provisions of title 9 to the extent such title is not inconsistent with this
section. The parties shall give notice of any arbitration award to the
Director, and such award shall, as between the parties to the arbitration,
be dispositive of the issues to which it relates. The arbitration award
shall be unenforceable until such notice is given. Nothing in this
subsection shall preclude the Director from determining patentability of the
invention involved in the interference.
(Subsection (c) added Oct. 15, 1962, Public Law 87-831, 76
Stat. 958; subsections (a) and (c) amended, Jan. 2, 1975, Public Law 93-596,
sec. 1, 88 Stat. 1949; subsection (a) amended Nov. 8, 1984, Public Law 98-622,
sec. 202, 98 Stat. 3386; subsection (d) added Nov. 8, 1984, Public Law 98-622,
sec. 105, 98 Stat. 3385; amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs. 4507(11) and
4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j)
(effective Sept. 16, 2012), 125 Stat. 284 .
NOTE:
The provisions of
35 U.S.C.
135 (pre‑AIA)
, as in effect on
March 15, 2013
, shall apply to each claim of an application for patent, and any patent
issued thereon, for which the first inventor to file provisions of the AIA also
apply (see
35 U.S.C. 100 (note)
), if
such application or patent contains or contained at any time—
(A) a claim to an invention having an effective
filing date as defined in section
100(i)
, that occurs before
March 16, 2013; or
(B) a specific reference under section
120
121
, or
365(c)
to
any patent or application that contains or contained at any time such a
claim.
[top]
CHAPTER CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISION
141 Appeal to Court of Appeals for the Federal Circuit.
141 (pre‑AIA) Appeal to Court of Appeals for the Federal
Circuit.
142 Notice of appeal.
143 Proceedings on appeal.
143 (pre‑AIA) Proceedings on appeal.
144 Decision on appeal.
145 Civil action to obtain patent.
145 (pre‑AIA) Civil action to obtain patent.
146 Civil action in case of derivation proceeding.
146 (pre‑AIA) Civil action in case of interference.
35 U.S.C. 141
Appeal to Court of Appeals for the Federal
Circuit.
[Editor Note: Applicable to proceedings commenced on or after September
16, 2012. See
35 U.S.C. 141 (pre‑AIA)
for the law otherwise
applicable.*]
(a) EXAMINATIONS.—An applicant who is dissatisfied
with the final decision in an appeal to the Patent Trial and Appeal Board
under section
134(a)
may appeal the
Board’s decision to the United States Court of Appeals for the Federal
Circuit. By filing such an appeal, the applicant waives his or her right to
proceed under section
145
(b) REEXAMINATIONS.—A patent owner who is
dissatisfied with the final decision in an appeal of a reexamination to the
Patent Trial and Appeal Board under section
134(a)
may appeal the Board’s decision only to the
United States Court of Appeals for the Federal Circuit.
(c) POST-GRANT AND INTER PARTES REVIEWS.—A party to an
inter partes review or a post-grant review who is dissatisfied with the
final written decision of the Patent Trial and Appeal Board under section
318(a)
or
328(a)
(as the case may
be) may appeal the Board’s decision only to the United States Court of
Appeals for the Federal Circuit.
(d) DERIVATION PROCEEDINGS.—A party to a derivation
proceeding who is dissatisfied with the final decision of the Patent Trial
and Appeal Board in the proceeding may appeal the decision to the United
States Court of Appeals for the Federal Circuit, but such appeal shall be
dismissed if any adverse party to such derivation proceeding, within 20 days
after the appellant has filed notice of appeal in accordance with section
142
, files notice with the Director that the party
elects to have all further proceedings conducted as provided in section
146
. If the appellant does not, within 30 days after
the filing of such notice by the adverse party, file a civil action under
section
146
, the Board’s decision shall govern the further
proceedings in the case.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7),
(b)(2), 96 Stat. 49, 50; Nov. 8, 1984, Public Law 98-622, sec. 203(a), 98 Stat.
3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571,
582 (S. 1948 secs. 4605(c) and 4732(a)(10)(A)); Nov. 2, 2002, Public Law
107-273, sec. 13106, 116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29,
sec. 7(c) (effective Sept. 16, 2012), 125 Stat. 284.)
NOTE:
The provisions of this section
as in effect on Sept. 15, 2012 (
35 U.S.C. 141 (pre‑AIA)
apply to interference proceedings that are declared after September 15, 2012
under
35
U.S.C. 135 (pre‑AIA)
. See Public Law 112-274, sec.
1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
[top]
35 U.S.C. 141 (pre‑AIA)
Appeal to the Court of Appeals for the Federal
Circuit.
[Editor Note:
Not applicable
to proceedings commenced on or
after September 16, 2012.* See
35 U.S.C. 141
for the law
otherwise applicable.]
An applicant dissatisfied with the decision in an appeal to the
Board of Patent Appeals and Interferences under
section
134
of this title may appeal the decision to the United
States Court of Appeals for the Federal Circuit. By filing such an appeal the
applicant waives his or her right to proceed under
section 145
of this title. A patent owner, or a third-party requester in an inter partes
reexamination proceeding, who is in any reexamination proceeding dissatisfied with
the final decision in an appeal to the Board of Patent Appeals and Interferences
under
section
134
may appeal the decision only to the United States Court
of Appeals for the Federal Circuit. A party to an interference dissatisfied with
the decision of the Board of Patent Appeals and Interferences on the interference
may appeal the decision to the United States Court of Appeals for the Federal
Circuit, but such appeal shall be dismissed if any adverse party to such
interference, within twenty days after the appellant has filed notice of appeal in
accordance with
section 142
of this title, files notice with the Director
that the party elects to have all further proceedings conducted as provided in
section
146
of this title. If the appellant does not, within thirty
days after filing of such notice by the adverse party, file a civil action under
section
146
, the decision appealed from shall govern the further
proceedings in the case.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7),
(b)(2), 96 Stat. 49, 50; Nov. 8, 1984, Public Law 98-622, sec. 203(a), 98 Stat.
3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571,
582 (S. 1948 secs. 4605(c) and 4732(a)(10)(A)); Nov. 2, 2002, Public Law
107-273, sec. 13106, 116 Stat. 1901.)
NOTE:
The provisions of 35 U.S.C. 141
(pre‑AIA) as in effect on Sept. 15, 2012 apply to interference proceedings that
are declared after September 15, 2012 under
35 U.S.C. 135 (pre‑AIA)
See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
[top]
35 U.S.C. 142
Notice of appeal.
When an appeal is taken to the United States Court of Appeals for
the Federal Circuit, the appellant shall file in the Patent and Trademark Office a
written notice of appeal directed to the Director, within such time after the date
of the decision from which the appeal is taken as the Director prescribes, but in
no case less than 60 days after that date.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8,
1984, Public Law 98-620, sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
[top]
35 U.S.C. 143
Proceedings on appeal.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16,
2012. See
35
U.S.C. 143 (pre‑AIA)
for the law otherwise
applicable.]
With respect to an appeal described in
section 142
the Director shall transmit to the United States Court of Appeals for the Federal
Circuit a certified list of the documents comprising the record in the Patent and
Trademark Office. The court may request that the Director forward the original or
certified copies of such documents during the pendency of the appeal. In an ex
parte case, the Director shall submit to the court in writing the grounds for the
decision of the Patent and Trademark Office, addressing all of the issues raised
in the appeal. The Director shall have the right to intervene in an appeal from a
decision entered by the Patent Trial and Appeal Board in a derivation proceeding
under section
135
or in an inter partes or
post-grant review under
chapter 31
or
32
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8,
1984, Public Law 98-620, sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(d) and
4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901;
amended Sept. 16, 2011, Public Law 112-29, secs. 7(c) and 20(j) (effective
Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 143 (pre‑AIA)
Proceedings on appeal.
[Editor Note:
Not applicable
to proceedings commenced on or
after September 16, 2012. See
35 U.S.C. 143
for the law
otherwise applicable.]
With respect to an appeal described in
section 142
of this title, the Director shall transmit to the United States Court of Appeals
for the Federal Circuit a certified list of the documents comprising the record in
the Patent and Trademark Office. The court may request that the Director forward
the original or certified copies of such documents during the pendency of the
appeal. In an ex parte case or any reexamination case, the Director shall submit
to the court in writing the grounds for the decision of the Patent and Trademark
Office, addressing all the issues involved in the appeal. The court shall, before
hearing an appeal, give notice of the time and place of the hearing to the
Director and the parties in the appeal.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8,
1984, Public Law 98-620, sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(d) and
4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat.
1901.)
[top]
35 U.S.C. 144
Decision on appeal.
The United States Court of Appeals for the Federal Circuit shall
review the decision from which an appeal is taken on the record before the Patent
and Trademark Office. Upon its determination the court shall issue to the Director
its mandate and opinion, which shall be entered of record in the Patent and
Trademark Office and shall govern the further proceedings in the case.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8,
1984, Public Law 98-620, sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
[top]
35 U.S.C. 145
Civil action to obtain patent.
[Editor Note: Applicable to any patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 145 (pre‑AIA)
for
the law otherwise applicable.]
An applicant dissatisfied with the decision of the Patent
Trial and Appeal Board in an appeal under
section
134(a)
may, unless appeal has been taken to the United
States Court of Appeals for the Federal Circuit, have remedy by civil action
against the Director in the United States District Court for the Eastern District
of Virginia if commenced within such time after such decision, not less than sixty
days, as the Director appoints. The court may adjudge that such applicant is
entitled to receive a patent for his invention, as specified in any of his claims
involved in the decision of the Patent Trial and Appeal Board, as the facts in the
case may appear, and such adjudication shall authorize the Director to issue such
patent on compliance with the requirements of law. All the expenses of the
proceedings shall be paid by the applicant.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7),
96 Stat. 49; Nov. 8, 1984, Public Law 98-622, sec. 203(b), 98 Stat. 3387; Nov.
29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S.
1948 secs. 4605(e) and 4732(a)(10)(A) ); amended Sept. 16, 2011, Public Law
112-29, secs. 9 (effective Sept. 16, 2011), 20(j) (effective Sept. 16, 2012),
and 3(j) (effective March 16, 2013), 125 Stat. 284.)
[top]
35 U.S.C. 145 (pre‑AIA)
Civil action to obtain patent.
[Editor Note:
Not applicable
to any patent application
subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C. 145
for the law otherwise applicable.]
An applicant dissatisfied with the decision of the Board of
Patent Appeals and Interferences in an appeal under
section
134(a)
may, unless appeal has been taken to the United
States Court of Appeals for the Federal Circuit, have remedy by civil action
against the Director in the United States District Court for the Eastern District
of Virginia if commenced within such time after such decision, not less than sixty
days, as the Director appoints. The court may adjudge that such applicant is
entitled to receive a patent for his invention, as specified in any of his claims
involved in the decision of the Board of Patent Appeals and Interferences, as the
facts in the case may appear, and such adjudication shall authorize the Director
to issue such patent on compliance with the requirements of law. All the expenses
of the proceedings shall be paid by the applicant.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96
Stat. 49; Nov. 8, 1984, Public Law 98-622, sec. 203(b), 98 Stat. 3387; Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948
secs. 4605(e) and 4732(a)(10)(A) ); amended Sept. 16, 2011, Public Law 112-29,
secs. 9 (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125
Stat. 284.)
[top]
35 U.S.C. 146
Civil action in case of derivation
proceeding.
[Editor Note: Applicable to any patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 146 (pre‑AIA)
for the law otherwise applicable.]
Any party to a derivation proceeding dissatisfied with the
decision of the Patent Trial and Appeal Board on the derivation proceeding, may
have remedy by civil action, if commenced within such time after such decision,
not less than sixty days, as the Director appoints or as provided in
section
141
, unless he has appealed to the United States Court of
Appeals for the Federal Circuit, and such appeal is pending or has been decided.
In such suits the record in the Patent and Trademark Office shall be admitted on
motion of either party upon the terms and conditions as to costs, expenses, and
the further cross-examination of the witnesses as the court imposes, without
prejudice to the right of the parties to take further testimony. The testimony and
exhibits of the record in the Patent and Trademark Office when admitted shall have
the same effect as if originally taken and produced in the suit.
Such suit may be instituted against the party in interest as
shown by the records of the Patent and Trademark Office at the time of the
decision complained of, but any party in interest may become a party to the
action. If there be adverse parties residing in a plurality of districts not
embraced within the same state, or an adverse party residing in a foreign country,
the United States District Court for the Eastern District of Virginia shall have
jurisdiction and may issue summons against the adverse parties directed to the
marshal of any district in which any adverse party resides. Summons against
adverse parties residing in foreign countries may be served by publication or
otherwise as the court directs. The Director shall not be a necessary party but he
shall be notified of the filing of the suit by the clerk of the court in which it
is filed and shall have the right to intervene. Judgment of the court in favor of
the right of an applicant to a patent shall authorize the Director to issue such
patent on the filing in the Patent and Trademark Office of a certified copy of the
judgment and on compliance with the requirements of law.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8,
1984, Public Law 98-622, sec. 203(c), 98 Stat. 3387; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A));
amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective Sept. 16, 2011),
sec. 20(j) (effective Sept. 16, 2012) and 3(j) (effective March 16, 2013), 125
Stat. 284.)
[top]
35 U.S.C. 146 (pre‑AIA)
Civil action in case of
interference.
[Editor Note:
Not applicable
to any patent application
subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C. 146
for the law otherwise applicable.]
Any party to an interference dissatisfied with the decision of
the Board of Patent Appeals and Interferences on the interference, may have remedy
by civil action, if commenced within such time after such decision, not less than
sixty days, as the Director appoints or as provided in
section 141
unless he has appealed to the United States Court of Appeals for the Federal
Circuit, and such appeal is pending or has been decided. In such suits the record
in the Patent and Trademark Office shall be admitted on motion of either party
upon the terms and conditions as to costs, expenses, and the further
cross-examination of the witnesses as the court imposes, without prejudice to the
right of the parties to take further testimony. The testimony and exhibits of the
record in the Patent and Trademark Office when admitted shall have the same effect
as if originally taken and produced in the suit.
Such suit may be instituted against the party in interest as
shown by the records of the Patent and Trademark Office at the time of the
decision complained of, but any party in interest may become a party to the
action. If there be adverse parties residing in a plurality of districts not
embraced within the same state, or an adverse party residing in a foreign country,
the United States District Court for the Eastern District of Virginia shall have
jurisdiction and may issue summons against the adverse parties directed to the
marshal of any district in which any adverse party resides. Summons against
adverse parties residing in foreign countries may be served by publication or
otherwise as the court directs. The Director shall not be a necessary party but he
shall be notified of the filing of the suit by the clerk of the court in which it
is filed and shall have the right to intervene. Judgment of the court in favor of
the right of an applicant to a patent shall authorize the Director to issue such
patent on the filing in the Patent and Trademark Office of a certified copy of the
judgment and on compliance with the requirements of law.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. 49; Nov. 8,
1984, Public Law 98-622, sec. 203(c), 98 Stat. 3387; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A));
amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective Sept. 16, 2011)
and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
CHAPTER CHAPTER 14 - ISSUE OF PATENT
151 Issue of patent.
152 Issue of patent to assignee.
153 How issued.
154 Contents and term of patent; provisional rights.
154 (pre‑AIA) Contents and term of patent; provisional
rights.
155 [Repealed.]
155A [Repealed.]
156 Extension of patent term.
157 [Repealed.]
157 (pre‑AIA) Statutory invention registration.
35 U.S.C. 151
Issue of patent.
(a) IN GENERAL.—If it appears that an applicant is
entitled to a patent under the law, a written notice of allowance of the
application shall be given or mailed to the applicant. The notice shall specify a
sum, constituting the issue fee and any required publication fee, which shall be
paid within 3 months thereafter.
(b) EFFECT OF PAYMENT.—Upon payment of this sum the
patent may issue, but if payment is not timely made, the application shall be
regarded as abandoned.
(Amended July 24, 1965, Public Law 89-83, sec. 4, 79 Stat.
260; Jan. 2, 1975, Public Law 93-601, sec. 3, 88 Stat. 1956; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-582 (S. 1948 sec. 4732(a)(10)(A)); Dec. 18, 2012, Public Law 112-211,
sec. 202(b)(6), 126 Stat. 1536.)
[top]
35 U.S.C. 152
Issue of patent to assignee.
Patents may be granted to the assignee of the inventor of record
in the Patent and Trademark Office, upon the application made and the
specification sworn to by the inventor, except as otherwise provided in this
title.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949.)
[top]
35 U.S.C. 153
How issued.
Patents shall be issued in the name of the United States of
America, under the seal of the Patent and Trademark Office, and shall be signed by
the Director or have his signature placed thereon and shall be recorded in the
Patent and Trademark Office.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec. 13203,
116 Stat. 1902.)
[top]
35 U.S.C. 154
Contents and term of patent; provisional
rights.
[Editor Note: 35 U.S.C. 154(b)(1) as set forth below is only applicable
to patent applications subject to the first inventor to file provisions of the
AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C. 154(b)(1) (pre‑AIA)
for the law otherwise
applicable.]
(a) IN GENERAL.—
(1) CONTENTS.—Every patent shall contain a short title of
the invention and a grant to the patentee, his heirs or assigns, of
the right to exclude others from making, using, offering for sale, or
selling the invention throughout the United States or importing the
invention into the United States, and, if the invention is a process,
of the right to exclude others from using, offering for sale or
selling throughout the United States, or importing into the United
States, products made by that process, referring to the specification
for the particulars thereof.
(2) TERM.—Subject to the payment of fees under this
title, such grant shall be for a term beginning on the date on which
the patent issues and ending 20 years from the date on which the
application for the patent was filed in the United States or, if the
application contains a specific reference to an earlier filed
application or applications under
section
120
121
365(c)
, or
386(c)
from the date on which the earliest such
application was filed.
(3) PRIORITY.—Priority under
section
119
365(a)
365(b)
386(a)
, or
386(b)
shall not be taken into account in
determining the term of a patent.
(4) SPECIFICATION AND DRAWING.—A copy of the
specification and drawing shall be annexed to the patent and be a part
of such patent.
(b) ADJUSTMENT OF PATENT TERM.—
(1) PATENT TERM GUARANTEES.—
(A) GUARANTEE OF PROMPT PATENT AND TRADEMARK OFFICE
RESPONSES.— Subject to the limitations under paragraph (2), if
the issue of an original patent is delayed due to the failure of
the Patent and Trademark Office to—
(i) provide at least one of the notifications
under
section
132
or a notice of allowance under
section
151
not later than 14 months after—
(I) the date on which an application
was filed under
section
111(a)
; or
(II) the date of commencement of the
national stage under
section 371
in an
international application;
(ii) respond to a reply under
section
132
, or to an appeal taken under
section
134
, within 4 months after the date
on which the reply was filed or the appeal was taken;
(iii) act on an application within 4 months
after the date of a decision by the Patent Trial and
Appeal Board under
section 134
or
135
or
a decision by a Federal court under
section 141
145
, or
146
in a case in which allowable claims
remain in the application; or
(iv) issue a patent within 4 months after the
date on which the issue fee was paid under
section
151
and all outstanding requirements
were satisfied,
the term of the patent shall be
extended 1 day for each day after the end of the period
specified in clause (i), (ii), (iii), or (iv), as the case may
be, until the action described in such clause is taken.
(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION
PENDENCY.— Subject to the limitations under paragraph (2), if
the issue of an original patent is delayed due to the failure of
the United States Patent and Trademark Office to issue a patent
within 3 years after the actual filing date of the application
under
section
111(a)
in the United States or, in the
case of an international application, the date of commencement
of the national stage under
section 371
in the international application not including—
(i) any time consumed by continued
examination of the application requested by the applicant
under
section
132(b
);
(ii) any time consumed by a proceeding under
section
135(a)
, any time consumed by the
imposition of an order under
section
181
, or any time consumed by
appellate review by the Patent Trial and Appeal Board or
by a Federal court; or
(iii) any delay in the processing of the
application by the United States Patent and Trademark
Office requested by the applicant except as permitted by
paragraph (3)(C),
the term of the patent shall be
extended 1 day for each day after the end of that 3-year period
until the patent is issued.
(C) GUARANTEE OR ADJUSTMENTS FOR DELAYS DUE TO
DERIVATION PROCEEDINGS, SECRECY ORDERS, AND APPEALS.— Subject to
the limitations under paragraph (2), if the issue of an original
patent is delayed due to—
(i) a proceeding under
section
135(a)
(ii) the imposition of an order under
section
181
; or
(iii) appellate review by the Patent Trial and
Appeal Board or by a Federal court in a case in which the
patent was issued under a decision in the review reversing
an adverse determination of patentability,
the term of the patent shall be
extended 1 day for each day of the pendency of the proceeding,
order, or review, as the case may be.
(2) LIMITATIONS.—
(A) IN GENERAL.— To the extent that periods of
delay attributable to grounds specified in paragraph (1)
overlap, the period of any adjustment granted under this
subsection shall not exceed the actual number of days the
issuance of the patent was delayed.
(B) DISCLAIMED TERM.— No patent the term of which
has been disclaimed beyond a specified date may be adjusted
under this section beyond the expiration date specified in the
disclaimer.
(C) REDUCTION OF PERIOD OF ADJUSTMENT.—
(i) The period of adjustment of the term of a
patent under paragraph (1) shall be reduced by a period
equal to the period of time during which the applicant
failed to engage in reasonable efforts to conclude
prosecution of the application.
(ii) With respect to adjustments to patent
term made under the authority of paragraph (1)(B), an
applicant shall be deemed to have failed to engage in
reasonable efforts to conclude processing or examination
of an application for the cumulative total of any periods
of time in excess of 3 months that are taken to respond to
a notice from the Office making any rejection, objection,
argument, or other request, measuring such 3-month period
from the date the notice was given or mailed to the
applicant.
(iii) The Director shall prescribe regulations
establishing the circumstances that constitute a failure
of an applicant to engage in reasonable efforts to
conclude processing or examination of an application.
(3) PROCEDURES FOR PATENT TERM ADJUSTMENT DETERMINATION.—
(A) The Director shall prescribe regulations
establishing procedures for the application for and
determination of patent term adjustments under this
subsection.
(B) Under the procedures established under
subparagraph (A), the Director shall—
(i) make a determination of the period of any
patent term adjustment under this subsection, and shall
transmit a notice of that determination no later than the
date of issuance of the patent; and
(ii) provide the applicant one opportunity to
request reconsideration of any patent term adjustment
determination made by the Director.
(C) The Director shall reinstate all or part of the
cumulative period of time of an adjustment under paragraph
(2)(C) if the applicant, prior to the issuance of the patent,
makes a showing that, in spite of all due care, the applicant
was unable to respond within the 3-month period, but in no case
shall more than three additional months for each such response
beyond the original 3-month period be reinstated.
(D) The Director shall proceed to grant the patent
after completion of the Director’s determination of a patent
term adjustment under the procedures established under this
subsection, notwithstanding any appeal taken by the applicant of
such determination.
(4) APPEAL OF PATENT TERM ADJUSTMENT DETERMINATION.—
(A) An applicant dissatisfied with the Director's
decision on the applicant's request for reconsideration under
paragraph (3)(B)(ii) shall have exclusive remedy by a civil
action against the Director filed in the United States District
Court for the Eastern District of Virginia within 180 days after
the date of the Director's decision on the applicant's request
for reconsideration. Chapter 7 of title 5 shall apply to such
action. Any final judgment resulting in a change to the period
of adjustment of the patent term shall be served on the
Director, and the Director shall thereafter alter the term of
the patent to reflect such change.
(B) The determination of a patent term adjustment
under this subsection shall not be subject to appeal or
challenge by a third party prior to the grant of the patent.
(c) CONTINUATION.—
(1) DETERMINATION.—The term of a patent that is in force
on or that results from an application filed before the date that is 6
months after the date of the enactment of the Uruguay Round Agreements
Act shall be the greater of the 20-year term as provided in subsection
(a), or 17 years from grant, subject to any terminal disclaimers.
(2) REMEDIES.—The remedies of
sections
283
284
, and
285
shall not apply to acts which —
(A) were commenced or for which substantial
investment was made before the date that is 6 months after the
date of the enactment of the Uruguay Round Agreements Act;
and
(B) became infringing by reason of paragraph
(1).
(3) REMUNERATION.—The acts referred to in paragraph (2)
may be continued only upon the payment of an equitable remuneration to
the patentee that is determined in an action brought
under
chapter 28
and
chapter 29
(other than those provisions
excluded by paragraph (2)).
(d) PROVISIONAL RIGHTS.—
(1) IN GENERAL.— In addition to other rights provided by
this section, a patent shall include the right to obtain a reasonable
royalty from any person who, during the period beginning on the date
of publication of the application for such patent under
section 122(b)
, or in the case of an
international application filed under the treaty defined in
section 351(a)
designating the United States
under
Article 21(2)(a)
of such treaty, or an international design application filed under the
treaty defined in section
381(a)(1)
designating the United States under Article 5 of such treaty, the date
of publication of the application, and ending on the date the patent
is issued—
(A)
(i) makes, uses, offers for sale, or
sells in the United States the invention as claimed in the
published patent application or imports such an invention
into the United States; or
(ii) if the invention as claimed in the
published patent application is a process, uses, offers
for sale, or sells in the United States or imports into
the United States products made by that process as claimed
in the published patent application; and
(B) had actual notice of the published patent
application and, in a case in which the right arising under this
paragraph is based upon an international application designating
the United States that is published in a language other than
English, had a translation of the international application into
the English language.
(2) RIGHT BASED ON SUBSTANTIALLY IDENTICAL INVENTIONS.—
The right under paragraph (1) to obtain a reasonable royalty shall not
be available under this subsection unless the invention as claimed in
the patent is substantially identical to the invention as claimed in
the published patent application.
(3) TIME LIMITATION ON OBTAINING A REASONABLE ROYALTY.—
The right under paragraph (1) to obtain a reasonable royalty shall be
available only in an action brought not later than 6 years after the
patent is issued. The right under paragraph (1) to obtain a reasonable
royalty shall not be affected by the duration of the period described
in paragraph (1).
(4) REQUIREMENTS FOR INTERNATIONAL APPLICATIONS—
(A) EFFECTIVE DATE.— The right under paragraph (1)
to obtain a reasonable royalty based upon the publication under
the treaty defined in
section
351(a)
of an international application
designating the United States shall commence on the date of
publication under the treaty of the international application,
or, if the publication under the treaty of the international
application is in a language other than English, on the date on
which the Patent and Trademark Office receives a translation of
the publication in the English language.
(B) COPIES.— The Director may require the applicant
to provide a copy of the international application and a
translation thereof.
(Amended July 24, 1965, Public Law 89-83, sec. 5, 79 Stat.
261; Dec. 12, 1980, Public Law 96-517, sec. 4, 94 Stat. 3018; Aug. 23, 1988,
Public Law 100-418, sec. 9002, 102 Stat. 1563; Dec. 8, 1994, Public Law
103-465, sec. 532 (a)(1), 108 Stat. 4983; Oct. 11, 1996, Public Law 104-295,
sec. 20(e)(1), 110 Stat. 3529; subsection (b) amended Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-557 (S. 1948 sec. 4402(a));
subsection (d) added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-564 (S. 1948 sec. 4504); subsection (b)(4) amended Nov. 2, 2002,
Public Law 107-273, sec. 13206, 116 Stat. 1904; subsection (d)(4)(A) amended
Nov. 2, 2002, Public Law 107-273, sec. 13204, 116 Stat. 1902; subsection
(b)(4)(A) amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective Sept.
16, 2011), 20(j) (effective Sept. 16, 2012), and 3(j) (effective March 16,
2013), 125 Stat. 284; subsection (b) amended Jan. 14, 2013, Public Law 112-274,
sec. 1(h), 126 Stat. 2456; subsections (a) and (d)(1) amended Dec. 18, 2012,
Public Law 112-211, sec. 102(6) (effective May 13, 2015), 126 Stat. 1531.)
[top]
35 U.S.C. 154 (pre‑AIA)
Contents and term of patent; provisional
rights.
[Editor Note: 35 U.S.C. 154(b)(1)(pre‑AIA) as set forth below is
not applicable
to any patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 154(b)(1)
for
the law otherwise applicable.]
*****
(b) ADJUSTMENT OF PATENT TERM.—
(1) PATENT TERM GUARANTEES.—
(A) GUARANTEE OF PROMPT PATENT AND TRADEMARK
OFFICE RESPONSES.— Subject to the limitations under paragraph
(2), if the issue of an original patent is delayed due to the
failure of the Patent and Trademark Office to—
(i) provide at least one of the
notifications under
section
132
or a notice of allowance under
section
151
not later than 14 months after—
(I) the date on which an application
was filed under
section
111(a)
; or
(II) the date of commencement of the
national stage under
section 371
in an
international application;
(ii) respond to a reply under
section
132
, or to an appeal taken under
section
134
, within 4 months after the date
on which the reply was filed or the appeal was taken;
(iii) act on an application within 4 months
after the date of a decision by the Board of Patent
Appeals and Interferences under
section
134
or
135
or a decision by a Federal court under
section
141
145
, or
146
in a case in which allowable claims
remain in the application; or
(iv) issue a patent within 4 months after the
date on which the issue fee was paid under
section
151
and all outstanding requirements
were satisfied,
the term of the patent shall be
extended 1 day for each day after the end of the period
specified in clause (i), (ii), (iii), or (iv), as the case may
be, until the action described in such clause is taken.
(B) GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION
PENDENCY.— Subject to the limitations under paragraph (2), if
the issue of an original patent is delayed due to the failure of
the United States Patent and Trademark Office to issue a patent
within 3 years after the actual filing date of the application
under
section
111(a)
in the United States or, in the
case of an international application, the date of commencement
of the national stage under
section 371
in the international application not including—
(i) any time consumed by continued
examination of the application requested by the applicant
under
section
132(b
);
(ii) any time consumed by a proceeding under
section
135(a)
, any time consumed by the
imposition of an order under
section
181
, or any time consumed by
appellate review by the Board of Patent Appeals and
Interferences or by a Federal court; or
(iii) any delay in the processing of the
application by the United States Patent and Trademark
Office requested by the applicant except as permitted by
paragraph (3)(C),
the term of the patent shall be
extended 1 day for each day after the end of that 3-year period
until the patent is issued.
(C) GUARANTEE OR ADJUSTMENTS FOR DELAYS DUE TO
INTERFERENCES, SECRECY ORDERS, AND APPEALS.— Subject to the
limitations under paragraph (2), if the issue of an original
patent is delayed due to—
(i) a proceeding under
section
135(a)
(ii) the imposition of an order under
section
181
; or
(iii) appellate review by the Board of Patent
Appeals and Interferences or by a Federal court in a case
in which the patent was issued under a decision in the
review reversing an adverse determination of
patentability,
the term of the patent shall be
extended 1 day for each day of the pendency of the proceeding,
order, or review, as the case may be.
*****
(Amended July 24, 1965, Public Law 89-83, sec. 5, 79 Stat.
261; Dec. 12, 1980, Public Law 96-517, sec. 4, 94 Stat. 3018; Aug. 23, 1988,
Public Law 100-418, sec. 9002, 102 Stat. 1563; Dec. 8, 1994, Public Law
103-465, sec. 532 (a)(1), 108 Stat. 4983; Oct. 11, 1996, Public Law 104-295,
sec. 20(e)(1), 110 Stat. 3529; subsection (b) amended Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-557 (S. 1948 sec. 4402(a));
subsection (d) added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-564 (S. 1948 sec. 4504); subsection (b)(4) amended Nov. 2, 2002,
Public Law 107-273, sec. 13206, 116 Stat. 1904; subsection (d)(4)(A) amended
Nov. 2, 2002, Public Law 107-273, sec. 13204, 116 Stat. 1902; subsection
(b)(4)(A) amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective Sept.
16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 155
[Repealed.]
(Repealed Sept. 16, 2011, Public Law 112-29, sec. 20(k)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 155A
[Repealed.]
(Repealed Sept. 16, 2011, Public Law 112-29, sec. 20(k)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 156
Extension of patent term.
(a) The term of a patent which claims a product, a method of
using a product, or a method of manufacturing a product shall be extended in
accordance with this section from the original expiration date of the
patent, which shall include any patent term adjustment granted under
section
154(b)
if —
(1) the term of the patent has not expired before an
application is submitted under subsection (d)(1) for its
extension;
(2) the term of the patent has never been extended under
subsection (e)(1) of this section;
(3) an application for extension is submitted by the
owner of record of the patent or its agent and in accordance with the
requirements of paragraphs (1) through (4) of subsection (d);
(4) the product has been subject to a regulatory review
period before its commercial marketing or use;
(5)
(A) except as provided in subparagraph (B) or (C),
the permission for the commercial marketing or use of the
product after such regulatory review period is the first
permitted commercial marketing or use of the product under the
provision of law under which such regulatory review period
occurred;
(B) in the case of a patent which claims a method
of manufacturing the product which primarily uses recombinant
DNA technology in the manufacture of the product, the permission
for the commercial marketing or use of the product after such
regulatory review period is the first permitted commercial
marketing or use of a product manufactured under the process
claimed in the patent; or
(C) for purposes of subparagraph (A), in the case
of a patent which —
(i) claims a new animal drug or a veterinary
biological product which (I) is not covered by the claims
in any other patent which has been extended, and (II) has
received permission for the commercial marketing or use in
non-food-producing animals and in food-producing animals,
and
(ii) was not extended on the basis of the
regulatory review period for use in non-food-producing
animals,
the permission for the commercial
marketing or use of the drug or product after the regulatory
review period for use in food-producing animals is the first
permitted commercial marketing or use of the drug or product for
administration to a food-producing animal.
The product referred to in paragraphs (4) and (5) is
hereinafter in this section referred to as the “approved product.”
(b) Except as provided in subsection (d)(5)(F), the rights
derived from any patent the term of which is extended under this section
shall during the period during which the term of the patent is extended
(1) in the case of a patent which claims a product, be
limited to any use approved for the product —
(A) before the expiration of the term of the patent
(i) under the provision of law under which
the applicable regulatory review occurred, or
(ii) under the provision of law under which
any regulatory review described in paragraph (1), (4), or
(5) of subsection (g) occurred, and
(B) on or after the expiration of the regulatory
review period upon which the extension of the patent was
based;
(2) in the case of a patent which claims a method of
using a product, be limited to any use claimed by the patent and
approved for the product —
(A) before the expiration of the term of the patent
(i) under any provision of law under which an
applicable regulatory review occurred, and
(ii) under the provision of law under which
any regulatory review described in paragraph (1), (4), or
(5) of subsection (g) occurred, and
(B) on or after the expiration of the regulatory
review period upon which the extension of the patent was based;
and
(3) in the case of a patent which claims a method of
manufacturing a product, be limited to the method of manufacturing as
used to make —
(A) the approved product, or
(B) the product if it has been subject to a
regulatory review period described in paragraph (1), (4), or (5)
of subsection (g).
As used in this subsection, the term “product”
includes an approved product.
(c) The term of a patent eligible for extension under
subsection (a) shall be extended by the time equal to the regulatory review
period for the approved product which period occurs after the date the
patent is issued, except that—
(1) each period of the regulatory review period shall be
reduced by any period determined under subsection (d)(2)(B) during
which the applicant for the patent extension did not act with due
diligence during such period of the regulatory review period;
(2) after any reduction required by paragraph (1), the
period of extension shall include only one-half of the time remaining
in the periods described in paragraphs (1)(B)(i), (2)(B)(i),
(3)(B)(i), (4)(B)(i), and (5)(B)(i) of subsection (g);
(3) if the period remaining in the term of a patent after
the date of the approval of the approved product under the provision
of law under which such regulatory review occurred when added to the
regulatory review period as revised under paragraphs (1) and (2)
exceeds fourteen years, the period of extension shall be reduced so
that the total of both such periods does not exceed fourteen years,
and
(4) in no event shall more than one patent be extended
under subsection (e)(1) for the same regulatory review period for any
product.
(d)
(1) To obtain an extension of the term of a patent under
this section, the owner of record of the patent or its agent shall
submit an application to the Director. Except as provided in paragraph
(5), such an application may only be submitted within the sixty-day
period beginning on the date the product received permission under the
provision of law under which the applicable regulatory review period
occurred for commercial marketing or use, or in the case of a drug
product described in subsection (i), within the sixty-day period
beginning on the covered date (as defined in subsection (i)).
The application shall contain—
(A) the identity of the approved product and the
Federal statute under which regulatory review occurred;
(B) the identity of the patent for which an
extension is being sought and the identity of each claim of such
patent which claims the approved product or a method of using or
manufacturing the approved product;
(C) information to enable the Director to determine
under subsections (a) and (b) the eligibility of a patent for
extension and the rights that will be derived from the extension
and information to enable the Director and the Secretary of
Health and Human Services or the Secretary of Agriculture to
determine the period of the extension under subsection (g);
(D) a brief description of the activities
undertaken by the applicant during the applicable regulatory
review period with respect to the approved product and the
significant dates applicable to such activities; and
(E) such patent or other information as the
Director may require.
For purposes of determining the date on
which a product receives permission under the second sentence of this
paragraph, if such permission is transmitted after 4:30 P.M., Eastern
Time, on a business day, or is transmitted on a day that is not a
business day, the product shall be deemed to receive such permission
on the next business day. For purposes of the preceding sentence, the
term "business day" means any Monday, Tuesday, Wednesday, Thursday, or
Friday, excluding any legal holiday under section 6103 of title 5.
(2)
(A) Within 60 days of the submittal of an
application for extension of the term of a patent under
paragraph (1), the Director shall notify —
(i) the Secretary of Agriculture if the
patent claims a drug product or a method of using or
manufacturing a drug product and the drug product is
subject to the Virus-Serum-Toxin Act, and
(ii) the Secretary of Health and Human
Services if the patent claims any other drug product, a
medical device, or a food additive or color additive or a
method of using or manufacturing such a product, device,
or additive and if the product, device, and additive are
subject to the Federal Food, Drug and Cosmetic Act, of the
extension application and shall submit to the Secretary
who is so notified a copy of the application. Not later
than 30 days after the receipt of an application from the
Director, the Secretary receiving the application shall
review the dates contained in the application pursuant to
paragraph (1)(C) and determine the applicable regulatory
review period, shall notify the Director of the
determination, and shall publish in the Federal Register a
notice of such determination.
(B)
(i) If a petition is submitted to the
Secretary making the determination under subparagraph (A),
not later than 180 days after the publication of the
determination under subparagraph (A), upon which it may
reasonably be determined that the applicant did not act
with due diligence during the applicable regulatory review
period, the Secretary making the determination shall, in
accordance with regulations promulgated by such Secretary,
determine if the applicant acted with due diligence during
the applicable regulatory review period. The Secretary
making the determination shall make such determination not
later than 90 days after the receipt of such a petition.
For a drug product, device, or additive subject to the
Federal Food, Drug, and Cosmetic Act or the Public Health
Service Act, the Secretary may not delegate the authority
to make the determination prescribed by this clause to an
office below the Office of the Director* of Food and
Drugs. For a product subject to the Virus-Serum-Toxin Act,
the Secretary of Agriculture may not delegate the
authority to make the determination prescribed by this
clause to an office below the Office of the Assistant
Secretary for Marketing and Inspection Services.
(ii) The Secretary making a determination
under clause (i) shall notify the Director of the
determination and shall publish in the Federal Register a
notice of such determination together with the factual and
legal basis for such determination. Any interested person
may request, within the 60-day period beginning on the
publication of a determination, the Secretary making the
determination to hold an informal hearing on the
determination. If such a request is made within such
period, such Secretary shall hold such hearing not later
than 30 days after the date of the request, or at the
request of the person making the request, not later than
60 days after such date. The Secretary who is holding the
hearing shall provide notice of the hearing to the owner
of the patent involved and to any interested person and
provide the owner and any interested person an opportunity
to participate in the hearing. Within 30 days after the
completion of the hearing, such Secretary shall affirm or
revise the determination which was the subject of the
hearing and shall notify the Director of any revision of
the determination and shall publish any such revision in
the Federal Register.
(3) For the purposes of paragraph (2)(B), the term “due
diligence” means that degree of attention, continuous directed effort,
and timeliness as may reasonably be expected from, and are ordinarily
exercised by, a person during a regulatory review period.
(4) An application for the extension of the term of a
patent is subject to the disclosure requirements prescribed by the
Director.
(5)
(A) If the owner of record of the patent or its
agent reasonably expects that the applicable regulatory review
period described in paragraph (1)(B)(ii), (2)(B)(ii),
(3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection (g) that
began for a product that is the subject of such patent may
extend beyond the expiration of the patent term in effect, the
owner or its agent may submit an application to the Director for
an interim extension during the period beginning 6 months, and
ending 15 days before such term is due to expire. The
application shall contain—
(i) the identity of the product subject to
regulatory review and the Federal statute under which such
review is occurring;
(ii) the identity of the patent for which
interim extension is being sought and the identity of each
claim of such patent which claims the product under
regulatory review or a method of using or manufacturing
the product;
(iii) information to enable the Director to
determine under subsection (a)(1), (2), and (3) the
eligibility of a patent for extension;
(iv) a brief description of the activities
undertaken by the applicant during the applicable
regulatory review period to date with respect to the
product under review and the significant dates applicable
to such activities; and
(v) such patent or other information as the
Director may require.
(B) If the Director determines that, except for
permission to market or use the product commercially, the patent
would be eligible for an extension of the patent term under this
section, the Director shall publish in the Federal Register a
notice of such determination, including the identity of the
product under regulatory review, and shall issue to the
applicant a certificate of interim extension for a period of not
more than 1 year.
(C) The owner of record of a patent, or its agent,
for which an interim extension has been granted under
subparagraph (B), may apply for not more than 4 subsequent
interim extensions under this paragraph, except that, in the
case of a patent subject to subsection (g)(6)(C), the owner of
record of the patent, or its agent, may apply for only 1
subsequent interim extension under this paragraph. Each such
subsequent application shall be made during the period beginning
60 days before, and ending 30 days before, the expiration of the
preceding interim extension.
(D) Each certificate of interim extension under
this paragraph shall be recorded in the official file of the
patent and shall be considered part of the original patent.
(E) Any interim extension granted under this
paragraph shall terminate at the end of the 60-day period
beginning on the date on which the product involved receives
permission for commercial marketing or use, except that, if
within that 60-day period, the applicant notifies the Director
of such permission and submits any additional information under
paragraph (1) of this subsection not previously contained in the
application for interim extension, the patent shall be further
extended, in accordance with the provisions of this section—
(i) for not to exceed 5 years from the date
of expiration of the original patent term; or
(ii) if the patent is subject to subsection
(g)(6)(C), from the date on which the product involved
receives approval for commercial marketing or use.
(F) The rights derived from any patent the term of
which is extended under this paragraph shall, during the period
of interim extension—
(i) in the case of a patent which claims a
product, be limited to any use then under regulatory
review;
(ii) in the case of a patent which claims a
method of using a product, be limited to any use claimed
by the patent then under regulatory review; and
(iii) in the case of a patent which claims a
method of manufacturing a product, be limited to the
method of manufacturing as used to make the product then
under regulatory review.
(e)
(1) A determination that a patent is eligible for
extension may be made by the Director solely on the basis of the
representations contained in the application for the extension. If the
Director determines that a patent is eligible for extension under
subsection (a) and that the requirements of paragraphs (1) through (4)
of subsection (d) have been complied with, the Director shall issue to
the applicant for the extension of the term of the patent a
certificate of extension, under seal, for the period prescribed by
subsection (c). Such certificate shall be recorded in the official
file of the patent and shall be considered as part of the original
patent.
(2) If the term of a patent for which an application has
been submitted under subsection (d)(1) would expire before a
certificate of extension is issued or denied under paragraph (1)
respecting the application, the Director shall extend, until such
determination is made, the term of the patent for periods of up to one
year if he determines that the patent is eligible for extension.
(f) For purposes of this section:
(1) The term “product” means:
(A) A drug product.
(B) Any medical device, food additive, or color
additive subject to regulation under the Federal Food, Drug, and
Cosmetic Act.
(2) The term “drug product” means the active ingredient
of—
(A) a new drug, antibiotic drug, or human
biological product (as those terms are used in the Federal Food,
Drug, and Cosmetic Act and the Public Health Service Act),
or
(B) a new animal drug or veterinary biological
product (as those terms are used in the Federal Food, Drug, and
Cosmetic Act and the Virus-Serum-Toxin Act) which is not
primarily manufactured using recombinant DNA, recombinant RNA,
hybridoma technology, or other processes involving site specific
genetic manipulation techniques
including any salt or ester of the active
ingredient, as a single entity or in combination with another active
ingredient.
(3) The term “major health or environmental effects test”
means a test which is reasonably related to the evaluation of the
health or environmental effects of a product, which requires at least
six months to conduct, and the data from which is submitted to receive
permission for commercial marketing or use. Periods of analysis or
evaluation of test results are not to be included in determining if
the conduct of a test required at least six months.
(4)
(A) Any reference to section 351 is a reference to
section 351 of the Public Health Service Act.
(B) Any reference to section 503, 505, 512, or 515
is a reference to section 503, 505, 512, or 515 of the Federal
Food, Drug and Cosmetic Act.
(C) Any reference to the Virus-Serum-Toxin Act is a
reference to the Act of March 4, 1913 (21 U.S.C. 151 - 158).
(5) The term “informal hearing” has the meaning
prescribed for such term by section 201(y) of the Federal Food, Drug
and Cosmetic Act.
(6) The term “patent” means a patent issued by the United
States Patent and Trademark Office.
(7) The term “date of enactment” as used in this section
means September 24, 1984, for human drug product, a medical device,
food additive, or color additive.
(8) The term “date of enactment” as used in this section
means the date of enactment of the Generic Animal Drug and Patent Term
Restoration Act for an animal drug or a veterinary biological
product.
(g) For purposes of this section, the term “regulatory review
period” has the following meanings:
(1)
(A) In the case of a product which is a new drug,
antibiotic drug, or human biological product, the term means the
period described in subparagraph (B) to which the limitation
described in paragraph (6) applies.
(B) The regulatory review period for a new drug,
antibiotic drug, or human biological product is the sum of —
(i) the period beginning on the date an
exemption under subsection (i) of section 505 or
subsection (d) of section 507 became effective for the
approved product and ending on the date an application was
initially submitted for such drug product under section
351, 505, or 507, and
(ii) the period beginning on the date the
application was initially submitted for the approved
product under section 351, subsection (b) of section 505,
or section 507 and ending on the date such application was
approved under such section.
(2)
(A) In the case of a product which is a food
additive or color additive, the term means the period described
in subparagraph (B) to which the limitation described in
paragraph (6) applies.
(B) The regulatory review period for a food or
color additive is the sum of —
(i) the period beginning on the date a major
health or environmental effects test on the additive was
initiated and ending on the date a petition was initially
submitted with respect to the product under the Federal
Food, Drug, and Cosmetic Act requesting the issuance of a
regulation for use of the product, and
(ii) the period beginning on the date a
petition was initially submitted with respect to the
product under the Federal Food, Drug, and Cosmetic Act
requesting the issuance of a regulation for use of the
product, and ending on the date such regulation became
effective or, if objections were filed to such regulation,
ending on the date such objections were resolved and
commercial marketing was permitted or, if commercial
marketing was permitted and later revoked pending further
proceedings as a result of such objections, ending on the
date such proceedings were finally resolved and commercial
marketing was permitted.
(3)
(A) In the case of a product which is a medical
device, the term means the period described in subparagraph (B)
to which the limitation described in paragraph (6) applies.
(B) The regulatory review period for a medical
device is the sum of —
(i) the period beginning on the date a
clinical investigation on humans involving the device was
begun and ending on the date an application was initially
submitted with respect to the device under section 515,
and
(ii) the period beginning on the date an
application was initially submitted with respect to the
device under section 515 and ending on the date such
application was approved under such Act or the period
beginning on the date a notice of completion of a product
development protocol was initially submitted under section
515(f)(5) and ending on the date the protocol was declared
completed under section 515(f)(6).
(4)
(A) In the case of a product which is a new animal
drug, the term means the period described in subparagraph (B) to
which the limitation described in paragraph (6) applies.
(B) The regulatory review period for a new animal
drug product is the sum of —
(i) the period beginning on the earlier of
the date a major health or environmental effects test on
the drug was initiated or the date an exemption under
subsection (j) of section 512 became effective for the
approved new animal drug product and ending on the date an
application was initially submitted for such animal drug
product under section 512, and
(ii) the period beginning on the date the
application was initially submitted for the approved
animal drug product under subsection (b) of section 512
and ending on the date such application was approved under
such section.
(5)
(A) In the case of a product which is a veterinary
biological product, the term means the period described in
subparagraph (B) to which the limitation described in paragraph
(6) applies.
(B) The regulatory period for a veterinary
biological product is the sum of —
(i) the period beginning on the date the
authority to prepare an experimental biological product
under the Virus- Serum-Toxin Act became effective and
ending on the date an application for a license was
submitted under the Virus-Serum-Toxin Act, and
(ii) the period beginning on the date an
application for a license was initially submitted for
approval under the Virus-Serum-Toxin Act and ending on the
date such license was issued.
(6) A period determined under any of the preceding
paragraphs is subject to the following limitations:
(A) If the patent involved was issued after the
date of the enactment of this section, the period of extension
determined on the basis of the regulatory review period
determined under any such paragraph may not exceed five
years.
(B) If the patent involved was issued before the
date of the enactment of this section and —
(i) no request for an exemption described in
paragraph (1)(B) or (4)(B) was submitted and no request
for the authority described in paragraph (5)(B) was
submitted,
(ii) no major health or environmental effects
test described in paragraph (2)(B) or (4)(B) was initiated
and no petition for a regulation or application for
registration described in such paragraph was submitted,
or
(iii) no clinical investigation described in
paragraph (3) was begun or product development protocol
described in such paragraph was submitted, before such
date for the approved product the period of extension
determined on the basis of the regulatory review period
determined under any such paragraph may not exceed five
years.
(C) If the patent involved was issued before the
date of the enactment of this section and if an action described
in subparagraph (B) was taken before the date of the enactment
of this section with respect to the approved product and the
commercial marketing or use of the product has not been approved
before such date, the period of extension determined on the
basis of the regulatory review period determined under such
paragraph may not exceed two years or in the case of an approved
product which is a new animal drug or veterinary biological
product (as those terms are used in the Federal Food, Drug, and
Cosmetic Act or the Virus-Serum-Toxin Act), three years.
(h) The Director may establish such fees as the Director
determines appropriate to cover the costs to the Office of receiving and
acting upon applications under this section.
(i)(1) For purposes of this section, if the Secretary
of Health and Human Services provides notice to the sponsor of an
application or request for approval, conditional approval, or indexing of a
drug product for which the Secretary intends to recommend controls under the
Controlled Substances Act, beginning on the covered date, the drug product
shall be considered to—
(A) have been approved or indexed under the
relevant provision of the Public Health Service Act or Federal Food,
Drug, and Cosmetic Act; and
(B) have permission for commercial marketing
or use.
(2) In this subsection, the term "covered date"
means the later of—
(A) the date an application is approved—
(i) under section 351(a)(2)(C) of the
Public Health Service Act; or
(ii) under section 505(b) or 512(c) of
the Federal Food, Drug, and Cosmetic Act;
(B) the date an application is conditionally
approved under section 571(b) of the Federal Food, Drug, and Cosmetic
Act;
(C) the date a request for indexing is granted
under section 572(d) of the Federal Food, Drug, and Cosmetic Act;
or
(D) the date of issuance of the interim final
rule controlling the drug under section 201(j) of the Controlled
Substances Act.
(Added Sept. 24, 1984, Public Law 98-417, sec. 201(a),
98 Stat. 1598; amended Nov. 16, 1988, Public Law 100-670, sec. 201(a)-(h), 102
Stat. 3984; Dec. 3, 1993, Public Law 103-179, secs. 5, 6, 107 Stat. 2040, 2042;
Dec. 8, 1994, Public Law 103-465, sec. 532(c)(1), 108 Stat. 4987; subsection
(f) amended Nov. 21, 1997, Public Law 105-115, sec. 125(b)(2)(P), 111 Stat.
2326; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-560, 582 (S. 1948 secs. 4404 and 4732(a)(10)(A)); subsections (b)(3)(B),
(d)(2)(B)(i), and (g)(6)(B)(iii) amended Nov. 2, 2002, Public Law 107-273, sec.
13206, 116 Stat. 1904; subsection (d)(1) amended Sept. 16, 2011, Public Law
112-29, sec. 37, 125 Stat. 284; subsection (d)(1) amended Nov. 25, 2015, Public
Law 114-89, sec. 2(c), 129 Stat. 700-701; subsection (i) added, Nov. 25, 2015,
Public Law 114-89, sec. 2(c), 129 Stat. 701; * So in original. Probably should
be “Commissioner”.)
[top]
35 U.S.C. 157
[Repealed.]
(Repealed Sept. 16, 2011, Public Law 112-29, sec.
3(e) (effective March 16, 2013), 125 Stat. 284.)
[top]
35 U.S.C. 157 (pre‑AIA)
Statutory invention registration.
[Editor Note:
Not applicable
to requests for statutory
invention registrations filed on or after March 16, 2013. 35 U.S.C. 157
repealed with regard to such requests.]
(a) Notwithstanding any other provision, the Director is
authorized to publish a statutory invention registration containing the
specification and drawings of a regularly filed application for a patent
without examination if the applicant —
(1) meets the requirements of
section
112
(2) has complied with the requirements for printing, as
set forth in regulations of the Director;
(3) waives the right to receive a patent on the invention
within such period as may be prescribed by the Director; and
(4) pays application, publication, and other processing
fees established by the Director.
If an interference is declared with respect to such an
application, a statutory invention registration may not be published unless
the issue of priority of invention is finally determined in favor of the
applicant.
(b) The waiver under subsection (a)(3) of this section by an
applicant shall take effect upon publication of the statutory invention
registration.
(c) A statutory invention registration published pursuant to
this section shall have all of the attributes specified for patents in this
title except those specified in
section 183
and
sections 271
through
289
. A
statutory invention registration shall not have any of the attributes
specified for patents in any other provision of law other than this title. A
statutory invention registration published pursuant to this section shall
give appropriate notice to the public, pursuant to regulations which the
Director shall issue, of the preceding provisions of this subsection. The
invention with respect to which a statutory invention certificate is
published is not a patented invention for purposes of
section
292
(d) The Director shall report to the Congress annually on the
use of statutory invention registrations. Such report shall include an
assessment of the degree to which agencies of the federal government are
making use of the statutory invention registration system, the degree to
which it aids the management of federally developed technology, and an
assessment of the cost savings to the Federal Government of the uses of such
procedures.
(Added Nov. 8, 1984, Public Law 98-622, sec. 102(a), 98 Stat.
3383; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-582, 583 (S. 1948 secs. 4732(a)(10)(A) and 4732(a)(11)); amended Sept.
16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat.
284.)
[top]
CHAPTER CHAPTER 15 - PLANT PATENTS
161 Patents for plants.
162 Description, claim.
163 Grant.
164 Assistance of the Department of Agriculture.
35 U.S.C. 161
Patents for plants.
Whoever invents or discovers and asexually reproduces any
distinct and new variety of plant, including cultivated sports, mutants, hybrids,
and newly found seedlings, other than a tuber propagated plant or a plant found in
an uncultivated state, may obtain a patent therefor, subject to the conditions and
requirements of this title.
The provisions of this title relating to patents for inventions
shall apply to patents for plants, except as otherwise provided.
(Amended Sept. 3, 1954, 68 Stat. 1190.)
[top]
35 U.S.C. 162
Description, claim.
No plant patent shall be declared invalid for noncompliance with
section
112
if the description is as complete as is reasonably
possible.
The claim in the specification shall be in formal terms to the
plant shown and described.
(Amended Sept. 16, 2011, Public Law 112-29, sec.
20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 163
Grant.
In the case of a plant patent, the grant shall include the right
to exclude others from asexually reproducing the plant, and from using, offering
for sale, or selling the plant so reproduced, or any of its parts, throughout the
United States, or from importing the plant so reproduced, or any parts thereof,
into the United States.
(Amended Oct. 27, 1998, Public Law 105-289, sec. 3, 112 Stat.
2781.)
[top]
35 U.S.C. 164
Assistance of the Department of
Agriculture.
The President may by Executive order direct the Secretary of
Agriculture, in accordance with the requests of the Director, for the purpose of
carrying into effect the provisions of this title with respect to plants (1) to
furnish available information of the Department of Agriculture, (2) to conduct
through the appropriate bureau or division of the Department research upon special
problems, or (3) to detail to the Director officers and employees of the
Department.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
[top]
CHAPTER CHAPTER 16 - DESIGNS
171 Patents for designs.
172 Right of priority.
172 (pre‑AIA) Right of priority.
173 Term of design patent.
35 U.S.C. 171
Patents for designs.
(a) IN GENERAL.—Whoever invents any new, original, and
ornamental design for an article of manufacture may obtain a patent
therefor, subject to the conditions and requirements of this title.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title
relating to patents for inventions shall apply to patents for designs,
except as otherwise provided.
(c) FILING DATE.—The filing date of an application for
patent for design shall be the date on which the specification as prescribed
by section
112
and any required
drawings are filed.
(Amended Dec. 18, 2012, Public Law 112-211, sec.
202(a), 126 Stat. 1535.)
[top]
35 U.S.C. 172
Right of priority.
[Editor Note: Applicable to any patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 172 (pre‑AIA)
for
the law otherwise applicable.]
The right of priority provided for by subsections (a) through
(d) of
section
119
shall be six months in the case of designs. The right of
priority provided for by
section 119(e)
shall not apply
to designs.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 532(c)(2),
108 Stat. 4987; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j)
(effective Sept. 16, 2012) and sec. 3(g)(effective March 16, 2013), 125 Stat.
284.)
[top]
35 U.S.C. 172 (pre‑AIA)
Right of priority.
[Editor Note:
Not applicable
to any patent application
subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C. 172
for the law otherwise applicable.]
The right of priority provided for by subsections (a) through (d)
of
section
119
and the time specified in
section
102(d)
shall be six months in the case of designs. The right
of priority provided for by
section 119(e)
shall not apply
to designs.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 532(c)(2), 108
Stat. 4987; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125 Stat.
284, effective Sept. 16, 2012.)
[top]
35 U.S.C. 173
Term of design patent.
Patents for designs shall be granted for the term of 15 years
from the date of grant.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 16, 96 Stat.
321; Dec. 8, 1994, Public Law 103-465, sec. 532(c)(3), 108 Stat. 4987; amended
Dec. 18, 2012, Public Law 112-211, sec. 102(7) (effective May 13, 2015), 126
Stat. 1532.)
[top]
CHAPTER CHAPTER 17 - SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN
FOREIGN COUNTRIES
181 Secrecy of certain inventions and withholding of patent.
182 Abandonment of invention for unauthorized disclosure.
183 Right to compensation.
184 Filing of application in foreign country.
184 (pre‑AIA) Filing of application in foreign country.
185 Patent barred for filing without license.
185 (pre‑AIA) Patent barred for filing without license.
186 Penalty.
187 Nonapplicability to certain persons.
188 Rules and regulations, delegation of power.
35 U.S.C. 181
Secrecy of certain inventions and withholding of
patent.
Whenever publication or disclosure by the publication of an
application or by the grant of a patent on an invention in which the Government
has a property interest might, in the opinion of the head of the interested
Government agency, be detrimental to the national security, the Commissioner of
Patents upon being so notified shall order that the invention be kept secret and
shall withhold the publication of an application or the grant of a patent therefor
under the conditions set forth hereinafter.
Whenever the publication or disclosure of an invention by the
publication of an application or by the granting of a patent, in which the
Government does not have a property interest, might, in the opinion of the
Commissioner of Patents, be detrimental to the national security, he shall make
the application for patent in which such invention is disclosed available for
inspection to the Atomic Energy Commission, the Secretary of Defense, and the
chief officer of any other department or agency of the Government designated by
the President as a defense agency of the United States.
Each individual to whom the application is disclosed shall sign a
dated acknowledgment thereof, which acknowledgment shall be entered in the file of
the application. If, in the opinion of the Atomic Energy Commission, the Secretary
of a Defense Department, or the chief officer of another department or agency so
designated, the publication or disclosure of the invention by the publication of
an application or by the granting of a patent therefor would be detrimental to the
national security, the Atomic Energy Commission, the Secretary of a Defense
Department, or such other chief officer shall notify the Commissioner of Patents
and the Commissioner of Patents shall order that the invention be kept secret and
shall withhold the publication of the application or the grant of a patent for
such period as the national interest requires, and notify the applicant thereof.
Upon proper showing by the head of the department or agency who caused the secrecy
order to be issued that the examination of the application might jeopardize the
national interest, the Commissioner of Patents shall thereupon maintain the
application in a sealed condition and notify the applicant thereof. The owner of
an application which has been placed under a secrecy order shall have a right to
appeal from the order to the Secretary of Commerce under rules prescribed by
him.
An invention shall not be ordered kept secret and the publication
of an application or the grant of a patent withheld for a period of more than one
year. The Commissioner of Patents shall renew the order at the end thereof, or at
the end of any renewal period, for additional periods of one year upon
notification by the head of the department or the chief officer of the agency who
caused the order to be issued that an affirmative determination has been made that
the national interest continues to so require. An order in effect, or issued,
during a time when the United States is at war, shall remain in effect for the
duration of hostilities and one year following cessation of hostilities. An order
in effect, or issued, during a national emergency declared by the President shall
remain in effect for the duration of the national emergency and six months
thereafter. The Commissioner of Patents may rescind any order upon notification by
the heads of the departments and the chief officers of the agencies who caused the
order to be issued that the publication or disclosure of the invention is no
longer deemed detrimental to the national security.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-566, 582 (S. 1948 secs. 4507(7) and 4732(a)(10)(B)).)
[top]
35 U.S.C. 182
Abandonment of invention for unauthorized
disclosure.
The invention disclosed in an application for patent subject to
an order made pursuant to
section 181
may be held
abandoned upon its being established by the Commissioner of Patents that in
violation of said order the invention has been published or disclosed or that an
application for a patent therefor has been filed in a foreign country by the
inventor, his successors, assigns, or legal representatives, or anyone in privity
with him or them, without the consent of the Commissioner of Patents. The
abandonment shall be held to have occurred as of the time of violation. The
consent of the Commissioner of Patents shall not be given without the concurrence
of the heads of the departments and the chief officers of the agencies who caused
the order to be issued. A holding of abandonment shall constitute forfeiture by
the applicant, his successors, assigns, or legal representatives, or anyone in
privity with him or them, of all claims against the United States based upon such
invention.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(B)); amended Sept. 16, 2011,
Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 183
Right to compensation.
An applicant, his successors, assigns, or legal representatives,
whose patent is withheld as herein provided, shall have the right, beginning at
the date the applicant is notified that, except for such order, his application is
otherwise in condition for allowance, or February 1, 1952, whichever is later, and
ending six years after a patent is issued thereon, to apply to the head of any
department or agency who caused the order to be issued for compensation for the
damage caused by the order of secrecy and/or for the use of the invention by the
Government, resulting from his disclosure. The right to compensation for use shall
begin on the date of the first use of the invention by the Government. The head of
the department or agency is authorized, upon the presentation of a claim, to enter
into an agreement with the applicant, his successors, assigns, or legal
representatives, in full settlement for the damage and/or use. This settlement
agreement shall be conclusive for all purposes notwithstanding any other provision
of law to the contrary. If full settlement of the claim cannot be effected, the
head of the department or agency may award and pay to such applicant, his
successors, assigns, or legal representatives, a sum not exceeding 75 per centum
of the sum which the head of the department or agency considers just compensation
for the damage and/or use. A claimant may bring suit against the United States in
the United States Court of Federal Claims or in the District Court of the United
States for the district in which such claimant is a resident for an amount which
when added to the award shall constitute just compensation for the damage and/or
use of the invention by the Government. The owner of any patent issued upon an
application that was subject to a secrecy order issued pursuant to
section
181
, who did not apply for compensation as above provided,
shall have the right, after the date of issuance of such patent, to bring suit in
the United States Court of Federal Claims for just compensation for the damage
caused by reason of the order of secrecy and/or use by the Government of the
invention resulting from his disclosure. The right to compensation for use shall
begin on the date of the first use of the invention by the Government. In a suit
under the provisions of this section the United States may avail itself of all
defenses it may plead in an action under section 1498 of title 28. This section
shall not confer a right of action on anyone or his successors, assigns, or legal
representatives who, while in the full-time employment or service of the United
States, discovered, invented, or developed the invention on which the claim is
based.
(Amended Apr. 2, 1982, Public Law 97-164, sec. 160(a)(12), 96
Stat. 48; Oct. 29, 1992, Public Law 102-572, sec. 902 (b)(1), 106 Stat. 4516;
amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16,
2012), 125 Stat. 284.)
[top]
35 U.S.C. 184
Filing of application in foreign country.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16,
2012. See
35
U.S.C. 184 (pre‑AIA)
for the law otherwise
applicable.]
(a) FILING IN FOREIGN COUNTRY.—Except when authorized
by a license obtained from the Commissioner of Patents a person shall not
file or cause or authorize to be filed in any foreign country prior to six
months after filing in the United States an application for patent or for
the registration of a utility model, industrial design, or model in respect
of an invention made in this country. A license shall not be granted with
respect to an invention subject to an order issued by the Commissioner of
Patents pursuant to
section 181
without the
concurrence of the head of the departments and the chief officers of the
agencies who caused the order to be issued. The license may be granted
retroactively where an application has been filed abroad through error and
the application does not disclose an invention within the scope of
section
181
(b) APPLICATION.—The term “application” when used in
this chapter includes applications and any modifications, amendments, or
supplements thereto, or divisions thereof.
(c) SUBSEQUENT MODIFICATIONS, AMENDMENTS, AND
SUPPLEMENTS.—The scope of a license shall permit subsequent modifications,
amendments, and supplements containing additional subject matter if the
application upon which the request for the license is based is not, or was
not, required to be made available for inspection under
section
181
and if such modifications, amendments, and
supplements do not change the general nature of the invention in a manner
which would require such application to be made available for inspection
under such
section 181
. In any case in which a license is not,
or was not, required in order to file an application in any foreign country,
such subsequent modifications, amendments, and supplements may be made,
without a license, to the application filed in the foreign country if the
United States application was not required to be made available for
inspection under
section 181
and if such
modifications, amendments, and supplements do not, or did not, change the
general nature of the invention in a manner which would require the United
States application to have been made available for inspection under such
section
181
(Amended Aug. 23, 1988, Public Law 100-418, sec.
9101(b)(1), 102 Stat. 1567; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(B)); amended Sept. 16, 2011,
Public Law 112-29, secs. 20(b) and (j) (effective Sept. 16, 2012), 125 Stat.
284)
[top]
35 U.S.C. 184 (pre‑AIA)
Filing of application in foreign
country.
[Editor Note:
Not applicable
to proceedings commenced on or
after September 16, 2012. See
35 U.S.C. 184
for the law
otherwise applicable.]
Except when authorized by a license obtained from the
Commissioner of Patents a person shall not file or cause or authorize to be filed
in any foreign country prior to six months after filing in the United States an
application for patent or for the registration of a utility model, industrial
design, or model in respect of an invention made in this country. A license shall
not be granted with respect to an invention subject to an order issued by the
Commissioner of Patents pursuant to
section 181
of this title
without the concurrence of the head of the departments and the chief officers of
the agencies who caused the order to be issued. The license may be granted
retroactively where an application has been filed abroad through error and without
deceptive intent and the application does not disclose an invention within the
scope of
section
181
of this title.
The term “application” when used in this chapter includes
applications and any modifications, amendments, or supplements thereto, or
divisions thereof.
The scope of a license shall permit subsequent modifications,
amendments, and supplements containing additional subject matter if the
application upon which the request for the license is based is not, or was not,
required to be made available for inspection under
section 181
of this title and if such modifications, amendments, and supplements do not change
the general nature of the invention in a manner which would require such
application to be made available for inspection under such
section 181
In any case in which a license is not, or was not, required in order to file an
application in any foreign country, such subsequent modifications, amendments, and
supplements may be made, without a license, to the application filed in the
foreign country if the United States application was not required to be made
available for inspection under
section 181
and if such
modifications, amendments, and supplements do not, or did not, change the general
nature of the invention in a manner which would require the United States
application to have been made available for inspection under such
section
181
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(1),
102 Stat. 1567; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-582 (S. 1948 sec. 4732(a)(10)(B)).)
[top]
35 U.S.C. 185
Patent barred for filing without
license.
[Editor Note: Applicable to proceedings commenced on or after Sept. 16,
2012. See
35
U.S.C. 185 (pre‑AIA)
for the law otherwise
applicable.]
Notwithstanding any other provisions of law any person, and
his successors, assigns, or legal representatives, shall not receive a United
States patent for an invention if that person, or his successors, assigns, or
legal representatives shall, without procuring the license prescribed in
section
184
, have made, or consented to or assisted another’s
making, application in a foreign country for a patent or for the registration of a
utility model, industrial design, or model in respect of the invention. A United
States patent issued to such person, his successors, assigns, or legal
representatives shall be invalid, unless the failure to procure such license was
through error, and the patent does not disclose subject matter within the scope of
section
181
(Amended Aug. 23, 1988, Public Law 100-418, sec.
9101(b)(2), 102 Stat. 1568; Nov. 2, 2002, Public Law 107-273, sec. 13206, 116
Stat. 1904; amended Sept. 16, 2011, Public Law 112-29, secs. 20(c) and (j)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 185 (pre‑AIA)
Patent barred for filing without
license.
[Editor Note:
Not applicable
to proceedings commenced on or
after September 16, 2012. See
35 U.S.C. 185
for the law
otherwise applicable.]
Notwithstanding any other provisions of law any person, and his
successors, assigns, or legal representatives, shall not receive a United States
patent for an invention if that person, or his successors, assigns, or legal
representatives shall, without procuring the license prescribed in
section
184
of this title, have made, or consented to or assisted
another’s making, application in a foreign country for a patent or for the
registration of a utility model, industrial design, or model in respect of the
invention. A United States patent issued to such person, his successors, assigns,
or legal representatives shall be invalid, unless the failure to procure such
license was through error and without deceptive intent, and the patent does not
disclose subject matter within the scope of
section 181
of this title.
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(2),
102 Stat. 1568; Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat.
1904.)
[top]
35 U.S.C. 186
Penalty.
Whoever, during the period or periods of time an invention has
been ordered to be kept secret and the grant of a patent thereon withheld pursuant
to
section
181
, shall, with knowledge of such order and without due
authorization, willfully publish or disclose or authorize or cause to be published
or disclosed the invention, or material information with respect thereto, or
whoever willfully, in violation of the provisions of
section
184
, shall file or cause or authorize to be filed in any
foreign country an application for patent or for the registration of a utility
model, industrial design, or model in respect of any invention made in the United
States, shall, upon conviction, be fined not more than $10,000 or imprisoned for
not more than two years, or both.
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(3),
102 Stat. 1568; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125
Stat. 284, effective Sept. 16, 2012.)
[top]
35 U.S.C. 187
Nonapplicability to certain persons.
The prohibitions and penalties of this chapter shall not apply to
any officer or agent of the United States acting within the scope of his
authority, nor to any person acting upon his written instructions or
permission.
[top]
35 U.S.C. 188
Rules and regulations, delegation of
power.
The Atomic Energy Commission, the Secretary of a defense
department, the chief officer of any other department or agency of the Government
designated by the President as a defense agency of the United States, and the
Secretary of Commerce, may separately issue rules and regulations to enable the
respective department or agency to carry out the provisions of this chapter, and
may delegate any power conferred by this chapter.
[top]
CHAPTER CHAPTER 18 - PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL
ASSISTANCE
200 Policy and objective.
201 Definitions.
202 Disposition of rights.
202 (pre‑AIA) Disposition of rights.
203 March-in rights.
204 Preference for United States industry.
205 Confidentiality.
206 Uniform clauses and regulations.
207 Domestic and foreign protection of federally owned
inventions.
208 Regulations governing Federal licensing.
209 Licensing federally owned inventions.
210 Precedence of chapter.
211 Relationship to antitrust laws.
212 Disposition of rights in educational awards.
35 U.S.C. 200
Policy and objective.
It is the policy and objective of the Congress to use the patent
system to promote the utilization of inventions arising from federally supported
research or development; to encourage maximum participation of small business
firms in federally supported research and development efforts; to promote
collaboration between commercial concerns and nonprofit organizations, including
universities; to ensure that inventions made by nonprofit organizations and small
business firms are used in a manner to promote free competition and enterprise
without unduly encumbering future research and discovery; to promote the
commercialization and public availability of inventions made in the United States
by United States industry and labor; to ensure that the Government obtains
sufficient rights in federally supported inventions to meet the needs of the
Government and protect the public against nonuse or unreasonable use of
inventions; and to minimize the costs of administering policies in this area.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3018; amended Nov. 1, 2000, Public Law 106-404, sec. 5, 114 Stat. 1745.)
[top]
35 U.S.C. 201
Definitions.
As used in this chapter —
(a) The term “Federal agency” means any executive agency as
defined in section 105 of title 5, and the military departments as defined
by section 102 of title 5.
(b) The term “funding agreement” means any contract, grant, or
cooperative agreement entered into between any Federal agency, other than
the Tennessee Valley Authority, and any contractor for the performance of
experimental, developmental, or research work funded in whole or in part by
the Federal Government. Such term includes any assignment, substitution of
parties, or subcontract of any type entered into for the performance of
experimental, developmental, or research work under a funding agreement as
herein defined.
(c) The term “contractor” means any person, small business
firm, or nonprofit organization that is a party to a funding agreement.
(d) The term “invention” means any invention or discovery which
is or may be patentable or otherwise protectable under this title or any
novel variety of plant which is or may be protectable under the Plant
Variety Protection Act (7 U.S.C. 2321, et seq.).
(e) The term “subject invention” means any invention of the
contractor conceived or first actually reduced to practice in the
performance of work under a funding agreement:
Provided,
That in the case of a variety of plant, the date of determination (as
defined in section 41(d) of the Plant Variety Protection Act (7 U.S.C.
2401(d)) must also occur during the period of contract performance.
(f) The term “practical application” means to manufacture in
the case of a composition or product, to practice in the case of a process
or method, or to operate in the case of a machine or system; and, in each
case, under such conditions as to establish that the invention is being
utilized and that its benefits are to the extent permitted by law or
Government regulations available to the public on reasonable terms.
(g) The term “made” when used in relation to any invention
means the conception or first actual reduction to practice of such
invention.
(h) The term “small business firm” means a small business
concern as defined at section 2 of Public Law 85-536 (15 U.S.C. 632) and
implementing regulations of the Administrator of the Small Business
Administration.
(i) The term “nonprofit organization” means universities and
other institutions of higher education or an organization of the type
described in section 501(c)(3) of the Internal Revenue Code of 1986 (26
U.S.C. 501(c)) and exempt from taxation under section 501(a) of the Internal
Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific or educational
organization qualified under a State nonprofit organization statute.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3019; subsection (d) amended Nov. 8, 1984, Public Law 98-620, sec. 501(1), 98
Stat. 3364; subsection (e) amended Nov. 8, 1984, Public Law 98-620, sec.
501(2), 98 Stat. 3364; subsection (i) amended Oct. 22, 1986, Public Law 99-514,
sec. 2, 100 Stat. 2095; subsection (a) amended Nov. 2, 2002, Public Law
107-273, sec. 13206, 116 Stat. 1904.)
[top]
35 U.S.C. 202
Disposition of rights.
[Editor Note: 35 U.S.C. 202(c)(2) and (c)(3) as set forth below are
applicable only to patent applications subject to the first inventor to file
provisions of the AIA (see
35 U.S.C. 100 (note)
). See
pre‑AIA
35 U.S.C. 202 (c)(2) and (c)(3)
for the law otherwise
applicable.]
(a) Each nonprofit organization or small business firm may,
within a reasonable time after disclosure as required by paragraph (c)(1) of
this section, elect to retain title to any subject invention:
Provided, however,
That a funding agreement may
provide otherwise (i) when the contractor is not located in the United
States or does not have a place of business located in the United States or
is subject to the control of a foreign government, (ii) in exceptional
circumstances when it is determined by the agency that restriction or
elimination of the right to retain title to any subject invention will
better promote the policy and objectives of this chapter, (iii) when it is
determined by a Government authority which is authorized by statute or
Executive order to conduct foreign intelligence or counterintelligence
activities that the restriction or elimination of the right to retain title
to any subject invention is necessary to protect the security of such
activities, or (iv) when the funding agreement includes the operation of a
Government-owned, contractor-operated facility of the Department of Energy
primarily dedicated to that Department’s naval nuclear propulsion or weapons
related programs and all funding agreement limitations under this
subparagraph on the contractor’s right to elect title to a subject invention
are limited to inventions occurring under the above two programs of the
Department of Energy. The rights of the nonprofit organization or small
business firm shall be subject to the provisions of paragraph (c) of this
section and the other provisions of this chapter.
(b)
(1) The rights of the Government under subsection (a)
shall not be exercised by a Federal agency unless it first determines
that at least one of the conditions identified in clauses (i) through
(iii) of subsection (a) exists. Except in the case of subsection
(a)(iii), the agency shall file with the Secretary of Commerce, within
thirty days after the award of the applicable funding agreement, a
copy of such determination. In the case of a determination under
subsection (a)(ii), the statement shall include an analysis justifying
the determination. In the case of determinations applicable to funding
agreements with small business firms, copies shall also be sent to the
Chief Counsel for Advocacy of the Small Business Administration. If
the Secretary of Commerce believes that any individual determination
or pattern of determinations is contrary to the policies and
objectives of this chapter or otherwise not in conformance with this
chapter, the Secretary shall so advise the head of the agency
concerned and the Administrator of the Office of Federal Procurement
Policy, and recommend corrective actions.
(2) Whenever the Administrator of the Office of Federal
Procurement Policy has determined that one or more Federal agencies
are utilizing the authority of clause (i) or (ii) of subsection (a) of
this section in a manner that is contrary to the policies and
objectives of this chapter the Administrator is authorized to issue
regulations describing classes of situations in which agencies may not
exercise the authorities of those clauses.
(3) If the contractor believes that a determination is
contrary to the policies and objectives of this chapter or constitutes
an abuse of discretion by the agency, the determination shall be
subject to
section 203(b)
(c) Each funding agreement with a small business firm or
nonprofit organization shall contain appropriate provisions to effectuate
the following:
(1) That the contractor disclose each subject invention
to the Federal agency within a reasonable time after it becomes known
to contractor personnel responsible for the administration of patent
matters, and that the Federal Government may receive title to any
subject invention not disclosed to it within such time.
(2) That the contractor make a written election within
two years after disclosure to the Federal agency (or such additional
time as may be approved by the Federal agency) whether the contractor
will retain title to a subject invention:
Provided,
That in any case where the 1-year period referred to in section
102(b)
would end
before the end of that 2-year period, the period for election may be
shortened by the Federal agency to a date that is not more than sixty
days before the end of that 1-year period: And
provided
further,
That the Federal Government may receive title to
any subject invention in which the contractor does not elect to retain
rights or fails to elect rights within such times.
(3) That a contractor electing rights in a subject
invention agrees to file a patent application prior to the expiration
of the 1-year period referred to in section
102(b)
, and shall thereafter file corresponding
patent applications in other countries in which it wishes to retain
title within reasonable times, and that the Federal Government may
receive title to any subject inventions in the United States or other
countries in which the contractor has not filed patent applications on
the subject invention within such times.
(4) With respect to any invention in which the contractor
elects rights, the Federal agency shall have a nonexclusive,
nontransferable, irrevocable, paid-up license to practice or have
practiced for or on behalf of the United States any subject invention
throughout the world:
Provided,
That the funding
agreement may provide for such additional rights, including the right
to assign or have assigned foreign patent rights in the subject
invention, as are determined by the agency as necessary for meeting
the obligations of the United States under any treaty, international
agreement, arrangement of cooperation, memorandum of understanding, or
similar arrangement, including military agreements relating to weapons
development and production.
(5) The right of the Federal agency to require periodic
reporting on the utilization or efforts at obtaining utilization that
are being made by the contractor or his licensees or assignees:
Provided,
That any such information, as well as
any information on utilization or efforts at obtaining utilization
obtained as part of a proceeding under
section 203
of this chapter shall be treated by the Federal
agency as commercial and financial information obtained from a person
and privileged and confidential and not subject to disclosure under
section 552 of title 5.
(6) An obligation on the part of the contractor, in the
event a United States patent application is filed by or on its behalf
or by any assignee of the contractor, to include within the
specification of such application and any patent issuing thereon, a
statement specifying that the invention was made with Government
support and that the Government has certain rights in the
invention.
(7) In the case of a nonprofit organization, (A) a
prohibition upon the assignment of rights to a subject invention in
the United States without the approval of the Federal agency, except
where such assignment is made to an organization which has as one of
its primary functions the management of inventions (provided that such
assignee shall be subject to the same provisions as the contractor);
(B) a requirement that the contractor share royalties with the
inventor; (C) except with respect to a funding agreement for the
operation of a Government-owned-contractor-operated facility, a
requirement that the balance of any royalties or income earned by the
contractor with respect to subject inventions, after payment of
expenses (including payments to inventors) incidental to the
administration of subject inventions, be utilized for the support of
scientific research, or education; (D) a requirement that, except
where it is determined to be infeasible following a reasonable
inquiry, a preference in the licensing of subject inventions shall be
given to small business firms; and (E) with respect to a funding
agreement for the operation of a Government-owned-contractor-operator
facility, requirements (i) that after payment of patenting costs,
licensing costs, payments to inventors, and other expenses incidental
to the administration of subject inventions, 100 percent of the
balance of any royalties or income earned and retained by the
contractor during any fiscal year, up to an amount equal to 5 percent
of the annual budget of the facility, shall be used by the contractor
for scientific research, development, and education consistent with
the research and development mission and objectives of the facility,
including activities that increase the licensing potential of other
inventions of the facility provided that if said balance exceeds 5
percent of the annual budget of the facility, that 15 percent of such
excess shall be paid to the Treasury of the United States and the
remaining 85 percent shall be used for the same purposes described
above in this clause; and (ii) that, to the extent it provides the
most effective technology transfer, the licensing of subject
inventions shall be administered by contractor employees on location
at the facility.
(8) The requirements of
sections
203
and
204
of this
chapter.
(d) If a contractor does not elect to retain title to a subject
invention in cases subject to this section, the Federal agency may consider
and after consultation with the contractor grant requests for retention of
rights by the inventor subject to the provisions of this Act and regulations
promulgated hereunder.
(e) In any case when a Federal employee is a coinventor of any
invention made with a nonprofit organization, a small business firm, or a
non-Federal inventor, the Federal agency employing such coinventor may, for
the purpose of consolidating rights in the invention and if it finds that it
would expedite the development of the invention—
(1) license or assign whatever rights it may acquire in
the subject invention to the nonprofit organization, small business
firm, or non-Federal inventor in accordance with the provisions of
this chapter; or
(2) acquire any rights in the subject invention from the
nonprofit organization, small business firm, or non-Federal inventor,
but only to the extent the party from whom the rights are acquired
voluntarily enters into the transaction and no other transaction under
this chapter is conditioned on such acquisition.
(f)
(1) No funding agreement with a small business firm or
nonprofit organization shall contain a provision allowing a Federal
agency to require the licensing to third parties of inventions owned
by the contractor that are not subject inventions unless such
provision has been approved by the head of the agency and a written
justification has been signed by the head of the agency. Any such
provision shall clearly state whether the licensing may be required in
connection with the practice of a subject invention, a specifically
identified work object, or both. The head of the agency may not
delegate the authority to approve provisions or sign justifications
required by this paragraph.
(2) A Federal agency shall not require the licensing of
third parties under any such provision unless the head of the agency
determines that the use of the invention by others is necessary for
the practice of a subject invention or for the use of a work object of
the funding agreement and that such action is necessary to achieve the
practical application of the subject invention or work object. Any
such determination shall be on the record after an opportunity for an
agency hearing. Any action commenced for judicial review of such
determination shall be brought within sixty days after notification of
such determination.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3020; subsection (b)(4) added and subsections (a), (b)(1), (b)(2), (c)(4),
(c)(5), and (c)(7) amended Nov. 8, 1984, Public Law 98-620, sec. 501, 98 Stat.
3364; subsection (b)(3) amended Dec. 10, 1991, Public Law 102-204, sec. 10, 105
Stat. 1641; subsection (a) amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-583 (S. 1948 sec. 4732(a)(12)); subsection (e)
amended Nov. 1, 2000, Public Law 106-404, sec. 6(1), 114 Stat. 1745;
subsections (b)(4), (c)(4), and (c)(5) amended Nov. 2, 2002, Public Law
107-273, sec. 13206, 116 Stat. 1905; paragraph (d)(4) redesignated as (d)(3)
and former paragraph (d)(3) struck Public Law 111-8, div. G, title I, sec.
1301(h), Mar. 11, 2009, 123 Stat. 829; subsection (c)(7)(E)(i) amended Sept.
16, 2011, Public Law 112-29, sec. 13, 125 Stat. 284; subsections (b)(3) and
(c)(7)(D) amended by Public Law 112-29, sec. 20(i)(effective Sept. 16, 2012),
and subsections (c)(2) and (c)(3) amended by Public Law 112-29, sec. 3(g)
(effective March 16, 2013), 125 Stat. 284.)
[top]
35 U.S.C. 202 (pre‑AIA)
Disposition of rights.
[Editor Note: pre‑AIA 35 U.S.C. 202(c)(2) and (c)(3) as set forth below
are
not applicable
to patent applications subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 202(c)(2) and
(c)(3)
for the law otherwise applicable.]
*****
(c) Each funding agreement with a small business firm or
nonprofit organization shall contain appropriate provisions to effectuate
the following:
*****
(2) That the contractor make a written election within
two years after disclosure to the Federal agency (or such additional
time as may be approved by the Federal agency) whether the contractor
will retain title to a subject invention:
Provided,
That in any case where publication, on sale, or public use, has
initiated the one year statutory period in which valid patent
protection can still be obtained in the United States, the period for
election may be shortened by the Federal agency to a date that is not
more than sixty days prior to the end of the statutory period: And
provided further,
That the Federal Government
may receive title to any subject invention in which the contractor
does not elect to retain rights or fails to elect rights within such
times.
(3) That a contractor electing rights in a subject
invention agrees to file a patent application prior to any statutory
bar date that may occur under this title due to publication, on sale,
or public use, and shall thereafter file corresponding patent
applications in other countries in which it wishes to retain title
within reasonable times, and that the Federal Government may receive
title to any subject inventions in the United States or other
countries in which the contractor has not filed patent applications on
the subject invention within such times.
*****
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3020; subsection (b)(4) added and subsections (a), (b)(1), (b)(2),
(c)(4), (c)(5), and (c)(7) amended Nov. 8, 1984, Public Law 98-620, sec. 501,
98 Stat. 3364; subsection (b)(3) amended Dec. 10, 1991, Public Law 102-204,
sec. 10, 105 Stat. 1641; subsection (a) amended Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-583 (S. 1948 sec. 4732(a)(12));
subsection (e) amended Nov. 1, 2000, Public Law 106-404, sec. 6(1), 114 Stat.
1745; subsections (b)(4), (c)(4), and (c)(5) amended Nov. 2, 2002, Public Law
107-273, sec. 13206, 116 Stat. 1905; paragraph (d)(4) redesignated as (d)(3)
and former paragraph (d)(3) struck Public Law 111-8, div. G, title I, sec.
1301(h), Mar. 11, 2009, 123 Stat. 829; subsection (c)(7)(E)(i) amended Sept.
16, 2011, Public Law 112-29, sec. 13, 125 Stat. 284; subsections (b)(3) and
(c)(7)(D) amended by Public Law 112-29, sec. 20(i) (effective Sept. 16, 2012),
125 Stat. 284.)
[top]
35 U.S.C. 203
March-in rights.
(a) With respect to any subject invention in which a small
business firm or nonprofit organization has acquired title under this
chapter, the Federal agency under whose funding agreement the subject
invention was made shall have the right, in accordance with such procedures
as are provided in regulations promulgated hereunder, to require the
contractor, an assignee, or exclusive licensee of a subject invention to
grant a nonexclusive, partially exclusive, or exclusive license in any field
of use to a responsible applicant or applicants, upon terms that are
reasonable under the circumstances, and if the contractor, assignee, or
exclusive licensee refuses such request, to grant such a license itself, if
the Federal agency determines that such —
(1) action is necessary because the contractor or
assignee has not taken, or is not expected to take within a reasonable
time, effective steps to achieve practical application of the subject
invention in such field of use;
(2) action is necessary to alleviate health or safety
needs which are not reasonably satisfied by the contractor, assignee,
or their licensees;
(3) action is necessary to meet requirements for public
use specified by Federal regulations and such requirements are not
reasonably satisfied by the contractor, assignee, or licensees; or
(4) action is necessary because the agreement required by
section 204
has not been obtained or waived or
because a licensee of the exclusive right to use or sell any subject
invention in the United States is in breach of its agreement obtained
pursuant to
section 204
(b) A determination pursuant to this section or
section
202(b)(4)
shall not be subject to chapter 71 of title
41. An administrative appeals procedure shall be established by regulations
promulgated in accordance with
section 206
Additionally, any contractor, inventor, assignee, or exclusive licensee
adversely affected by a determination under this section may, at any time
within sixty days after the determination is issued, file a petition in the
United States Court of Federal Claims, which shall have jurisdiction to
determine the appeal on the record and to affirm, reverse, remand or modify,
as appropriate, the determination of the Federal agency. In cases described
in paragraphs (1) and (3) of subsection (a), the agency’s determination
shall be held in abeyance pending the exhaustion of appeals or petitions
filed under the preceding sentence.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3022; amended Nov. 8, 1984, Public Law 98-620, sec. 501(9), 98 Stat. 3367; Oct.
29, 1992, Public Law 102-572, sec. 902(b)(1), 106 Stat. 4516; amended Nov. 2,
2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; subsection (b) amended
Jan. 4, 2011, Public Law 111-350, sec. 5(i)(2), 124 Stat. 3850.)
[top]
35 U.S.C. 204
Preference for United States
industry.
Notwithstanding any other provision of this chapter, no small
business firm or nonprofit organization which receives title to any subject
invention and no assignee of any such small business firm or nonprofit
organization shall grant to any person the exclusive right to use or sell any
subject invention in the United States unless such person agrees that any products
embodying the subject invention or produced through the use of the subject
invention will be manufactured substantially in the United States. However, in
individual cases, the requirement for such an agreement may be waived by the
Federal agency under whose funding agreement the invention was made upon a showing
by the small business firm, nonprofit organization, or assignee that reasonable
but unsuccessful efforts have been made to grant licenses on similar terms to
potential licensees that would be likely to manufacture substantially in the
United States or that under the circumstances domestic manufacture is not
commercially feasible.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3023.)
[top]
35 U.S.C. 205
Confidentiality.
Federal agencies are authorized to withhold from disclosure to
the public information disclosing any invention in which the Federal Government
owns or may own a right, title, or interest (including a nonexclusive license) for
a reasonable time in order for a patent application to be filed. Furthermore,
Federal agencies shall not be required to release copies of any document which is
part of an application for patent filed with the United States Patent and
Trademark Office or with any foreign patent office.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3023.)
[top]
35 U.S.C. 206
Uniform clauses and regulations.
The Secretary of Commerce may issue regulations which may be made
applicable to Federal agencies implementing the provisions of
sections 202
through
204
of this chapter and shall establish standard funding
agreement provisions required under this chapter. The regulations and the standard
funding agreement shall be subject to public comment before their issuance.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3023; amended Nov. 8, 1984, Public Law 98-620, sec. 501(10), 98 Stat.
3367.)
[top]
35 U.S.C. 207
Domestic and foreign protection of federally
owned inventions.
(a) Each Federal agency is authorized to —
(1) apply for, obtain, and maintain patents or other
forms of protection in the United States and in foreign countries on
inventions in which the Federal Government owns a right, title, or
interest;
(2) grant nonexclusive, exclusive, or partially exclusive
licenses under federally owned inventions, royalty-free or for
royalties or other consideration, and on such terms and conditions,
including the grant to the licensee of the right of enforcement
pursuant to the provisions of
chapter 29
as
determined appropriate in the public interest;
(3) undertake all other suitable and necessary steps to
protect and administer rights to federally owned inventions on behalf
of the Federal Government either directly or through contract,
including acquiring rights for and administering royalties to the
Federal Government in any invention, but only to the extent the party
from whom the rights are acquired voluntarily enters into the
transaction, to facilitate the licensing of a federally owned
invention; and
(4) transfer custody and administration, in whole or in
part, to another Federal agency, of the right, title, or interest in
any federally owned invention.
(b) For the purpose of assuring the effective management of
Government-owned inventions, the Secretary of Commerce authorized to -
(1) assist Federal agency efforts to promote the
licensing and utilization of Government-owned inventions;
(2) assist Federal agencies in seeking protection and
maintaining inventions in foreign countries, including the payment of
fees and costs connected therewith; and
(3) consult with and advise Federal agencies as to areas
of science and technology research and development with potential for
commercial utilization.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3023; amended Nov. 8, 1984, Public Law 98-620, sec. 501(11), 98 Stat. 3367;
subsections (a)(2) and (a)(3) amended Nov. 1, 2000, Public Law 106-404, sec.
6(2), 114 Stat. 1745; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j),
125 Stat. 284, effective Sept. 16, 2012.)
[top]
35 U.S.C. 208
Regulations governing Federal
licensing.
The Secretary of Commerce is authorized to promulgate regulations
specifying the terms and conditions upon which any federally owned invention,
other than inventions owned by the Tennessee Valley Authority, may be licensed on
a nonexclusive, partially exclusive, or exclusive basis.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3024; amended Nov. 8, 1984, Public Law 98-620, sec. 501(12), 98 Stat.
3367.)
[top]
35 U.S.C. 209
Licensing federally owned
inventions.
(a) AUTHORITY.—A Federal agency may grant an exclusive or
partially exclusive license on a federally owned invention under section
207(a)(2)
only if—
(1) granting the license is a reasonable and necessary
incentive to—
(A) call forth the investment capital and
expenditures needed to bring the invention to practical
application; or
(B) otherwise promote the invention’s utilization
by the public;
(2) the Federal agency finds that the public will be
served by the granting of the license, as indicated by the applicant’s
intentions, plans, and ability to bring the invention to practical
application or otherwise promote the invention’s utilization by the
public, and that the proposed scope of exclusivity is not greater than
reasonably necessary to provide the incentive for bringing the
invention to practical application, as proposed by the applicant, or
otherwise to promote the invention’s utilization by the public;
(3) the applicant makes a commitment to achieve practical
application of the invention within a reasonable time, which time may
be extended by the agency upon the applicant’s request and the
applicant’s demonstration that the refusal of such extension would be
unreasonable;
(4) granting the license will not tend to substantially
lessen competition or create or maintain a violation of the Federal
antitrust laws; and
(5) in the case of an invention covered by a foreign
patent application or patent, the interests of the Federal Government
or United States industry in foreign commerce will be enhanced.
(b) MANUFACTURE IN UNITED STATES.—A Federal agency shall
normally grant a license under section
207(a)(2)
to use or sell
any federally owned invention in the United States only to a licensee who
agrees that any products embodying the invention or produced through the use
of the invention will be manufactured substantially in the United
States.
(c) SMALL BUSINESS.—First preference for the granting of any
exclusive or partially exclusive licenses under section
207(a)(2)
shall be given to small business firms
having equal or greater likelihood as other applicants to bring the
invention to practical application within a reasonable time.
(d) TERMS AND CONDITIONS.—Any licenses granted under section
207(a)(2)
shall contain such terms and conditions as
the granting agency considers appropriate, and shall include provisions—
(1) retaining a nontransferable, irrevocable, paid-up
license for any Federal agency to practice the invention or have the
invention practiced throughout the world by or on behalf of the
Government of the United States;
(2) requiring periodic reporting on utilization of the
invention, and utilization efforts, by the licensee, but only to the
extent necessary to enable the Federal agency to determine whether the
terms of the license are being complied with, except that any such
report shall be treated by the Federal agency as commercial and
financial information obtained from a person and privileged and
confidential and not subject to disclosure under section 552 of title
5; and
(3) empowering the Federal agency to terminate the
license in whole or in part if the agency determines that—
(A) the licensee is not executing its commitment to
achieve practical application of the invention, including
commitments contained in any plan submitted in support of its
request for a license, and the licensee cannot otherwise
demonstrate to the satisfaction of the Federal agency that it
has taken, or can be expected to take within a reasonable time,
effective steps to achieve practical application of the
invention;
(B) the licensee is in breach of an agreement
described in subsection (b);
(C) termination is necessary to meet requirements
for public use specified by Federal regulations issued after the
date of the license, and such requirements are not reasonably
satisfied by the licensee; or
(D) the licensee has been found by a court of
competent jurisdiction to have violated the Federal antitrust
laws in connection with its performance under the license
agreement.
(e) PUBLIC NOTICE.—No exclusive or partially exclusive license
may be granted under section 207(a)(2) unless public notice of the intention
to grant an exclusive or partially exclusive license on a federally owned
invention has been provided in an appropriate manner at least 15 days before
the license is granted, and the Federal agency has considered all comments
received before the end of the comment period in response to that public
notice. This subsection shall not apply to the licensing of inventions made
under a cooperative research and development agreement entered into under
section 12 of the Stevenson-Wydler Technology Innovation Act of 1980 (15
U.S.C. 3710a).
(f) PLAN.—No Federal agency shall grant any license under a
patent or patent application on a federally owned invention unless the
person requesting the license has supplied the agency with a plan for
development or marketing of the invention, except that any such plan shall
be treated by the Federal agency as commercial and financial information
obtained from a person and privileged and confidential and not subject to
disclosure under section 552 of title 5.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3024; amended Nov. 1, 2000, Public Law 106-404, sec. 4, 114 Stat. 1743;
subsections (d)(2) and (f) amended Nov. 2, 2002, Public Law 107-273, sec.
13206, 116 Stat. 1905; subsection (d)(1) amended Sept. 16, 2011, Public Law
112-29, sec. 20(i) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 210
Precedence of chapter.
(a) This chapter shall take precedence over any other Act which
would require a disposition of rights in subject inventions of small
business firms or nonprofit organizations contractors in a manner that is
inconsistent with this chapter, including but not necessarily limited to the
following:
(1) section 10(a) of the Act of June 29, 1935, as added
by title I of the Act of August 14, 1946 (7 U.S.C. 427i(a); 60 Stat.
1085);
(2) section 205(a) of the Act of August 14, 1946 (7
U.S.C. 1624(a); 60 Stat. 1090);
(3) section 501(c) of the Federal Mine Safety and Health
Act of 1977 (30 U.S.C. 951(c); 83 Stat. 742);
(4) section 30168(e) of title 49;
(5) section 12 of the National Science Foundation Act of
1950 (42 U.S.C. 1871(a); 82 Stat. 360);
(6) section 152 of the Atomic Energy Act of 1954 (42
U.S.C. 2182; 68 Stat. 943);
(7) section 20135 of title 51;
(8) section 6 of the Coal Research and Development Act of
1960 (30 U.S.C. 666; 74 Stat. 337);
(9) section 4 of the Helium Act Amendments of 1960 (50
U.S.C. 167b; 74 Stat. 920);
(10) section 32 of the Arms Control and Disarmament Act of
1961 (22 U.S.C. 2572; 75 Stat. 634);
(11) section 9 of the Federal Nonnuclear Energy Research
and Development Act of 1974 (42 U.S.C. 5908; 88 Stat. 1878);
(12) section 5(d) of the Consumer Product Safety Act (15
U.S.C. 2054(d); 86 Stat. 1211);
(13) section 3 of the Act of April 5, 1944 (30 U.S.C. 323;
58 Stat. 191);
(14) section 8001(c)(3) of the Solid Waste Disposal Act
(42 U.S.C. 6981(c); 90 Stat. 2829);
(15) section 219 of the Foreign Assistance Act of 1961 (22
U.S.C. 2179; 83 Stat. 806);
(16) section 427(b) of the Federal Mine Health and Safety
Act of 1977 (30 U.S.C. 937(b); 86 Stat. 155);
(17) section 306(d) of the Surface Mining and Reclamation
Act of 1977 (30 U.S.C. 1226(d); 91 Stat. 455);
(18) section 21(d) of the Federal Fire Prevention and
Control Act of 1974 (15 U.S.C. 2218(d); 88 Stat. 1548);
(19) section 6(b) of the Solar Photovoltaic Energy
Research Development and Demonstration Act of 1978 (42 U.S.C. 5585(b);
92 Stat. 2516);
(20) section 12 of the Native Latex Commercialization and
Economic Development Act of 1978 (7 U.S.C. 178j; 92 Stat. 2533);
and
(21) section 408 of the Water Resources and Development
Act of 1978 (42 U.S.C. 7879; 92 Stat. 1360).
The Act creating this chapter shall be construed to take
precedence over any future Act unless that Act specifically cites this Act
and provides that it shall take precedence over this Act.
(b) Nothing in this chapter is intended to alter the effect of
the laws cited in paragraph (a) of this section or any other laws with
respect to the disposition of rights in inventions made in the performance
of funding agreements with persons other than nonprofit organizations or
small business firms.
(c) Nothing in this chapter is intended to limit the authority
of agencies to agree to the disposition of rights in inventions made in the
performance of work under funding agreements with persons other than
nonprofit organizations or small business firms in accordance with the
Statement of Government Patent Policy issued on February 18, 1983, agency
regulations, or other applicable regulations or to otherwise limit the
authority of agencies to allow such persons to retain ownership of
inventions, except that all funding agreements, including those with other
than small business firms and nonprofit organizations, shall include the
requirements established in
section 202(c)(4)
and
section
203
. Any disposition of rights in inventions made in
accordance with the Statement or implementing regulations, including any
disposition occurring before enactment of this section, are hereby
authorized.
(d) Nothing in this chapter shall be construed to require the
disclosure of intelligence sources or methods or to otherwise affect the
authority granted to the Director of Central Intelligence by statute or
Executive order for the protection of intelligence sources or methods.
(e) The provisions of the Stevenson-Wydler Technology
Innovation Act of 1980 shall take precedence over the provisions of this
chapter to the extent that they permit or require a disposition of rights in
subject inventions which is inconsistent with this chapter.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3026; subsection (c) amended Nov. 8, 1984, Public Law 98-620, sec. 501(13), 98
Stat. 3367; subsection (e) added Oct. 20, 1986, Public Law 99-502, sec. 9(c),
100 Stat. 1796; subsection (a)(4) amended July 5, 1994, Public Law 103-272,
sec. 5(j), 108 Stat. 1375; subsection (e) amended Mar. 7, 1996, Public Law
104-113, sec. 7, 110 Stat. 779.; subsection (a) amended Nov. 13, 1998, Public
Law 105-393, sec. 220(c)(2), 112 Stat. 3625; subsections (a)(11), (a)(20), and
(c) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905;
subsection (a)(8) amended Aug. 8, 2005, Public Law 109-58, sec. 1009(a)(2), 119
Stat. 934; subsection (a)(7) amended Dec. 18, 2010, Public Law 111-314, sec.
4(c), 124 Stat. 3440; subsection (c) amended Sept. 16, 2011, Public Law 112-29,
sec. 20(j), 125 Stat. 284, effective Sept. 16, 2012.)
[top]
35 U.S.C. 211
Relationship to antitrust laws.
Nothing in this chapter shall be deemed to convey to any person
immunity from civil or criminal liability, or to create any defenses to actions,
under any antitrust law.
(Added Dec.12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
3027.)
[top]
35 U.S.C. 212
Disposition of rights in educational
awards.
No scholarship, fellowship, training grant, or other funding
agreement made by a Federal agency primarily to an awardee for educational
purposes will contain any provision giving the Federal agency any rights to
inventions made by the awardee.
(Added Nov. 8, 1984, Public Law 98-620, sec. 501(14), 98 Stat.
3368.)
[top]
PART PART III - PATENTS AND PROTECTION OF PATENT RIGHTS
PART III
CHAPTER CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS
251 Reissue of defective patents.
251 (pre‑AIA) Reissue of defective patents.
252 Effect of reissue.
253 Disclaimer.
253 (pre‑AIA) Disclaimer.
254 Certificate of correction of Patent and Trademark Office
mistake.
255 Certificate of correction of applicant’s mistake.
256 Correction of named inventor.
256 (pre‑AIA) Correction of named inventor.
257 Supplemental examinations to consider, reconsider, or correct
information.
35 U.S.C. 251
Reissue of defective patents.
[Editor Note: Applicable to any patent application filed on or after
September 16, 2012. See
35 U.S.C. 251 (pre‑AIA)
for
the law otherwise applicable.]
(a) IN GENERAL.—Whenever any patent is, through error,
deemed wholly or partly inoperative or invalid, by reason of a defective
specification or drawing, or by reason of the patentee claiming more or less
than he had a right to claim in the patent, the Director shall, on the
surrender of such patent and the payment of the fee required by law, reissue
the patent for the invention disclosed in the original patent, and in
accordance with a new and amended application, for the unexpired part of the
term of the original patent. No new matter shall be introduced into the
application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue
several reissued patents for distinct and separate parts of the thing
patented, upon demand of the applicant, and upon payment of the required fee
for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this
title relating to applications for patent shall be applicable to
applications for reissue of a patent, except that application for reissue
may be made and sworn to by the assignee of the entire interest if the
application does not seek to enlarge the scope of the claims of the original
patent or the application for the original patent was filed by the assignee
of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued
patent shall be granted enlarging the scope of the claims of the original
patent unless applied for within two years from the grant of the original
patent.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept.
16, 2011, Public Law 112-29, secs. 4(b) and 20(d) (effective Sept, 16, 2012),
125 Stat. 284.)
[top]
35 U.S.C. 251 (pre‑AIA)
Reissue of defective patents.
[Editor Note:
Not applicable
to any patent application filed
on or after September 16, 2012. See
35 U.S.C. 251
for the law
otherwise applicable.]
Whenever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or invalid, by reason of a
defective specification or drawing, or by reason of the patentee claiming more or
less than he had a right to claim in the patent, the Director shall, on the
surrender of such patent and the payment of the fee required by law, reissue the
patent for the invention disclosed in the original patent, and in accordance with
a new and amended application, for the unexpired part of the term of the original
patent. No new matter shall be introduced into the application for reissue.
The Director may issue several reissued patents for distinct and
separate parts of the thing patented, upon demand of the applicant, and upon
payment of the required fee for a reissue for each of such reissued patents.
The provisions of this title relating to applications for patent
shall be applicable to applications for reissue of a patent, except that
application for reissue may be made and sworn to by the assignee of the entire
interest if the application does not seek to enlarge the scope of the claims of
the original patent.
No reissued patent shall be granted enlarging the scope of the
claims of the original patent unless applied for within two years from the grant
of the original patent.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 252
Effect of reissue.
The surrender of the original patent shall take effect upon the
issue of the reissued patent, and every reissued patent shall have the same effect
and operation in law, on the trial of actions for causes thereafter arising, as if
the same had been originally granted in such amended form, but in so far as the
claims of the original and reissued patents are substantially identical, such
surrender shall not affect any action then pending nor abate any cause of action
then existing, and the reissued patent, to the extent that its claims are
substantially identical with the original patent, shall constitute a continuation
thereof and have effect continuously from the date of the original patent.
A reissued patent shall not abridge or affect the right of any
person or that person’s successors in business who, prior to the grant of a
reissue, made, purchased, offered to sell, or used within the United States, or
imported into the United States, anything patented by the reissued patent, to
continue the use of, to offer to sell, 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 unless the making, using, offering for sale, or selling of such thing
infringes a valid claim of the reissued patent which was in the original patent.
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, used, or imported as specified, or for the manufacture, use, offer for
sale, or sale in the United States of which substantial preparation was made
before the grant of the reissue, and the court may also provide for the continued
practice of any process patented by the reissue that is practiced, or for the
practice of which substantial preparation was made, before the grant of the
reissue, to the extent and under such terms as the court deems equitable for the
protection of investments made or business commenced before the grant of the
reissue.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(2), 108
Stat. 4989; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-566 (S. 1948 sec. 4507(8)).)
[top]
35 U.S.C. 253
Disclaimer.
[Editor Note: Applicable to all proceedings commenced on or after
September 16, 2012. See
35 U.S.C. 253 (pre‑AIA)
for
the law otherwise applicable.]
(a) IN GENERAL.—Whenever a claim of a patent is
invalid the remaining claims shall not thereby be rendered invalid. A
patentee, whether of the whole or any sectional interest therein, may, on
payment of the fee required by law, make disclaimer of any complete claim,
stating therein the extent of his interest in such patent. Such disclaimer
shall be in writing and recorded in the Patent and Trademark Office, and it
shall thereafter be considered as part of the original patent to the extent
of the interest possessed by the disclaimant and by those claiming under
him.
(b) ADDITIONAL DISCLAIMER OR DEDICATION.—In the manner set
forth in subsection (a), any patentee or applicant may disclaim or dedicate
to the public the entire term, or any terminal part of the term, of the
patent granted or to be granted.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; amended Sept. 16, 2011, Public Law 112-29, sec. 20(e), 125 Stat. 284,
effective Sept. 16, 2012.)
[top]
35 U.S.C. 253 (pre‑AIA)
Disclaimer.
[Editor Note:
Not applicable
to proceedings commenced on or
after September 16, 2012. See
35 U.S.C. 253
for the law
otherwise applicable.]
Whenever, without any deceptive intention, a claim of a patent is
invalid the remaining claims shall not thereby be rendered invalid. A patentee,
whether of the whole or any sectional interest therein, may, on payment of the fee
required by law, make disclaimer of any complete claim, stating therein the extent
of his interest in such patent. Such disclaimer shall be in writing and recorded
in the Patent and Trademark Office, and it shall thereafter be considered as part
of the original patent to the extent of the interest possessed by the disclaimant
and by those claiming under him.
In like manner any patentee or applicant may disclaim or dedicate
to the public the entire term, or any terminal part of the term, of the patent
granted or to be granted.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949.)
[top]
35 U.S.C. 254
Certificate of correction of Patent and
Trademark Office mistake.
Whenever a mistake in a patent, incurred through the fault of the
Patent and Trademark Office, is clearly disclosed by the records of the Office,
the Director may issue a certificate of correction stating the fact and nature of
such mistake, under seal, without charge, to be recorded in the records of
patents. A printed copy thereof shall be attached to each printed copy of the
patent, and such certificate shall be considered as part of the original patent.
Every such patent, together with such certificate, shall have the same effect and
operation in law on the trial of actions for causes thereafter arising as if the
same had been originally issued in such corrected form. The Director may issue a
corrected patent without charge in lieu of and with like effect as a certificate
of correction.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 255
Certificate of correction of applicant’s
mistake.
Whenever a mistake of a clerical or typographical nature, or of
minor character, which was not the fault of the Patent and Trademark Office,
appears in a patent and a showing has been made that such mistake occurred in good
faith, the Director may, upon payment of the required fee, issue a certificate of
correction, if the correction does not involve such changes in the patent as would
constitute new matter or would require reexamination. Such patent, together with
the certificate, shall have the same effect and operation in law on the trial of
actions for causes thereafter arising as if the same had been originally issued in
such corrected form.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 256
Correction of named inventor.
[Editor Note: Applicable to proceedings commenced on or after September
16, 2012. See
35 U.S.C. 256 (pre‑AIA)
for the law otherwise
applicable.]
(a) CORRECTION.—Whenever through error a person is
named in an issued patent as the inventor, or through error an inventor is
not named in an issued patent, the Director may, on application of all the
parties and assignees, with proof of the facts and such other requirements
as may be imposed, issue a certificate correcting such error.
(b) PATENT VALID IF ERROR CORRECTED.— The error of omitting
inventors or naming persons who are not inventors shall not invalidate the
patent in which such error occurred if it can be corrected as provided in
this section. The court before which such matter is called in question may
order correction of the patent on notice and hearing of all parties
concerned and the Director shall issue a certificate accordingly.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(b), 96
Stat. 320; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law
112-29, sec. 20(f) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 256 (pre‑AIA)
Correction of named inventor.
[Editor Note:
Not applicable
to proceedings commenced on or
after September 16, 2012. See
35 U.S.C. 256
for the law
otherwise applicable.]
Whenever through error a person is named in an issued patent as
the inventor, or through error an inventor is not named in an issued patent and
such error arose without any deceptive intention on his part, the Director may, on
application of all the parties and assignees, with proof of the facts and such
other requirements as may be imposed, issue a certificate correcting such
error.
The error of omitting inventors or naming persons who are not
inventors shall not invalidate the patent in which such error occurred if it can
be corrected as provided in this section. The court before which such matter is
called in question may order correction of the patent on notice and hearing of all
parties concerned and the Director shall issue a certificate accordingly.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(b), 96 Stat.
320; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 257
Supplemental examinations to consider,
reconsider, or correct information.
(a) REQUEST FOR SUPPLEMENTAL EXAMINATION.—A patent
owner may request supplemental examination of a patent in the Office to
consider, reconsider, or correct information believed to be relevant to the
patent, in accordance with such requirements as the Director may establish.
Within 3 months after the date a request for supplemental examination
meeting the requirements of this section is received, the Director shall
conduct the supplemental examination and shall conclude such examination by
issuing a certificate indicating whether the information presented in the
request raises a substantial new question of patentability.
(b) REEXAMINATION ORDERED.—If the certificate issued
under subsection (a) indicates that a substantial new question of
patentability is raised by 1 or more items of information in the request,
the Director shall order reexamination of the patent. The reexamination
shall be conducted according to procedures established by
chapter
30
, except that the patent owner shall not have the
right to file a statement pursuant to section
304
During the reexamination, the Director shall address each substantial new
question of patentability identified during the supplemental examination,
notwithstanding the limitations in
chapter 30
relating to
patents and printed publication or any other provision of such chapter.
(c) EFFECT.—
(1) IN GENERAL.—A patent shall not be held
unenforceable on the basis of conduct relating to information that had
not been considered, was inadequately considered, or was incorrect in
a prior examination of the patent if the information was considered,
reconsidered, or corrected during a supplemental examination of the
patent. The making of a request under subsection (a), or the absence
thereof, shall not be relevant to enforceability of the patent under
section
282
(2) EXCEPTIONS.—
(A) PRIOR ALLEGATIONS.—Paragraph (1)
shall not apply to an allegation pled with particularity in a
civil action, or set forth with particularity in a notice
received by the patent owner under section 505(j) (2)(B)(iv)(II)
of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355(j)
(2)(B)(iv)(II)), before the date of a supplemental examination
request under subsection (a) to consider, reconsider, or correct
information forming the basis for the allegation.
(B) PATENT ENFORCEMENT ACTIONS.—In an
action brought under section 337(a) of the Tariff Act of 1930
(19 U.S.C. 1337(a)), or section 281, paragraph (1) shall not
apply to any defense raised in the action that is based upon
information that was considered, reconsidered, or corrected
pursuant to a supplemental examination request under subsection
(a), unless the supplemental examination, and any reexamination
ordered pursuant to the request, are concluded before the date
on which the action is brought.
(d) FEES AND REGULATIONS.—
(1) FEES.—The Director shall, by regulation,
establish fees for the submission of a request for supplemental
examination of a patent, and to consider each item of information
submitted in the request. If reexamination is ordered under subsection
(b), fees established and applicable to ex parte reexamination
proceedings under
chapter 30
shall
be paid, in addition to fees applicable to supplemental
examination.
(2) REGULATIONS.—The Director shall issue
regulations governing the form, content, and other requirements of
requests for supplemental examination, and establishing procedures for
reviewing information submitted in such requests.
(e) FRAUD.—If the Director becomes aware, during the
course of a supplemental examination or reexamination proceeding ordered
under this section, that a material fraud on the Office may have been
committed in connection with the patent that is the subject of the
supplemental examination, then in addition to any other actions the Director
is authorized to take, including the cancellation of any claims found to be
invalid under section
307
as a result of a
reexamination ordered under this section, the Director shall also refer the
matter to the Attorney General for such further action as the Attorney
General may deem appropriate. Any such referral shall be treated as
confidential, shall not be included in the file of the patent, and shall not
be disclosed to the public unless the United States charges a person with a
criminal offense in connection with such referral.
(f) RULE OF CONSTRUCTION.—Nothing in this section
shall be construed—
(1) to preclude the imposition of sanctions
based upon criminal or antitrust laws (including section
1001(a) of title 18
, the first section of the
Clayton Act, and section 5 of the Federal Trade Commission Act to the
extent that section relates to unfair methods of competition);
(2) to limit the authority of the Director to
investigate issues of possible misconduct and impose sanctions for
misconduct in connection with matters or proceedings before the
Office; or
(3) to limit the authority of the Director to
issue regulations under chapter 3 relating to sanctions for misconduct
by representatives practicing before the Office.
(Added Sept. 16, 2011, Public Law 112-29, sec. 12, 125
Stat. 284; amended Sept. 16, 2011 Public Law 112-29, sec. 20(j) (effective
Sept. 16, 2012), 125 Stat. 284.)
[top]
CHAPTER CHAPTER 26 - OWNERSHIP AND ASSIGNMENT
261 Ownership; assignment.
262 Joint owners.
35 U.S.C. 261
Ownership; assignment.
Subject to the provisions of this title, patents shall have the
attributes of personal property. The Patent and Trademark Office shall maintain a
register of interests in patents and applications for patents and shall record any
document related thereto upon request, and may require a fee therefor.
Applications for patent, patents, or any interest therein, shall
be assignable in law by an instrument in writing. The applicant, patentee, or his
assigns or legal representatives may in like manner grant and convey an exclusive
right under his application for patent, or patents, to the whole or any specified
part of the United States.
A certificate of acknowledgment under the hand and official seal
of a person authorized to administer oaths within the United States, or, in a
foreign country, of a diplomatic or consular officer of the United States or an
officer authorized to administer oaths whose authority is proved by a certificate
of a diplomatic or consular officer of the United States, or apostille of an
official designated by a foreign country which, by treaty or convention, accords
like effect to apostilles of designated officials in the United States, shall be
prima facie
evidence of the execution of an assignment,
grant, or conveyance of a patent or application for patent.
An interest that constitutes an assignment, grant, or conveyance
shall be void as against any subsequent purchaser or mortgagee for a valuable
consideration, without notice, unless it is recorded in the Patent and Trademark
Office within three months from its date or prior to the date of such subsequent
purchase or mortgage.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Aug. 27, 1982, Public Law 97-247, sec. 14(b), 96 Stat. 321; Dec. 18,
2012, Public Law 112-211, sec. 201(d), 126 Stat. 1535.)
[top]
35 U.S.C. 262
Joint owners.
In the absence of any agreement to the contrary, each of the
joint owners of a patent may make, use, offer to sell, or sell the patented
invention within the United States, or import the patented invention into the
United States, without the consent of and without accounting to the other
owners.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(3), 108
Stat. 4989.)
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CHAPTER CHAPTER 27 - GOVERNMENT INTERESTS IN PATENTS
266 [Repealed.]
267 Time for taking action in Government applications.
35 U.S.C. 266
[Repealed.]
(Repealed July 24, 1965, Public Law 89-83, sec. 8, 79 Stat.
261.)
[top]
35 U.S.C. 267
Time for taking action in Government
applications.
Notwithstanding the provisions of
sections
133
and
151
, the Director may extend
the time for taking any action to three years, when an application has become the
property of the United States and the head of the appropriate department or agency
of the Government has certified to the Director that the invention disclosed
therein is important to the armament or defense of the United States.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011,
Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
CHAPTER CHAPTER 28 - INFRINGEMENT OF PATENTS
271 Infringement of patent.
272 Temporary presence in the United States.
273 Defense to infringement based on prior commercial use.
35 U.S.C. 271
Infringement of patent.
(a) Except as otherwise provided in this title, whoever without
authority makes, uses, offers to sell, or sells any patented invention,
within the United States, or imports into the United States any patented
invention during the term of the patent therefor, infringes the patent.
(b) Whoever actively induces infringement of a patent shall be
liable as an infringer.
(c) Whoever offers to sell or sells within the United States or
imports into the United States a component of a patented machine,
manufacture, combination, or composition, or a material or apparatus for use
in practicing a patented process, constituting a material part of the
invention, knowing the same to be especially made or especially adapted for
use in an infringement of such patent, and not a staple article or commodity
of commerce suitable for substantial noninfringing use, shall be liable as a
contributory infringer.
(d) No patent owner otherwise entitled to relief for
infringement or contributory infringement of a patent shall be denied relief
or deemed guilty of misuse or illegal extension of the patent right by
reason of his having done one or more of the following: (1) derived revenue
from acts which if performed by another without his consent would constitute
contributory infringement of the patent; (2) licensed or authorized another
to perform acts which if performed without his consent would constitute
contributory infringement of the patent; (3) sought to enforce his patent
rights against infringement or contributory infringement; (4) refused to
license or use any rights to the patent; or (5) conditioned the license of
any rights to the patent or the sale of the patented product on the
acquisition of a license to rights in another patent or purchase of a
separate product, unless, in view of the circumstances, the patent owner has
market power in the relevant market for the patent or patented product on
which the license or sale is conditioned.
(e)
(1) It shall not be an act of infringement to make, use,
offer to sell, or sell within the United States or import into the
United States a patented invention (other than a new animal drug or
veterinary biological product (as those terms are used in the Federal
Food, Drug, and Cosmetic Act and the Act of March 4, 1913) which is
primarily manufactured using recombinant DNA, recombinant RNA,
hybridoma technology, or other processes involving site specific
genetic manipulation techniques) solely for uses reasonably related to
the development and submission of information under a Federal law
which regulates the manufacture, use, or sale of drugs or veterinary
biological products.
(2) It shall be an act of infringement to submit —
(A) an application under section 505(j) of the
Federal Food, Drug, and Cosmetic Act or described in section
505(b)(2) of such Act for a drug claimed in a patent or the use
of which is claimed in a patent,
(B) an application under section 512 of such Act or
under the Act of March 4, 1913 (21 U.S.C. 151 - 158) for a drug
or veterinary biological product which is not primarily
manufactured using recombinant DNA, recombinant RNA, hybridoma
technology, or other processes involving site specific genetic
manipulation techniques and which is claimed in a patent or the
use of which is claimed in a patent, or
(C)
(i) with respect to a patent that
is identified in the list of patents described in section
351(l)(3) of the Public Health Service Act (including as
provided under section 351(l)(7) of such Act), an
application seeking approval of a biological product, or
(ii) if the applicant for the
application fails to provide the application and
information required under section 351(l)(2)(A) of such
Act, an application seeking approval of a biological
product for a patent that could be identified pursuant to
section 351(l)(3)(A)(i) of such Act,
if the purpose of such submission is
to obtain approval under such Act to engage in the commercial
manufacture, use, or sale of a drug, veterinary biological
product, or biological product claimed in a patent or the use of
which is claimed in a patent before the expiration of such
patent.
(3) In any action for patent infringement brought under
this section, no injunctive or other relief may be granted which would
prohibit the making, using, offering to sell, or selling within the
United States or importing into the United States of a patented
invention under paragraph (1).
(4) For an act of infringement described in paragraph
(2)—
(A) the court shall order the effective date of any
approval of the drug or veterinary biological product involved
in the infringement to be a date which is not earlier than the
date of the expiration of the patent which has been
infringed,
(B) injunctive relief may be granted against an
infringer to prevent the commercial manufacture, use, offer to
sell, or sale within the United States or importation into the
United States of an approved drug, veterinary biological
product, or biological product,
(C) damages or other monetary relief may be awarded
against an infringer only if there has been commercial
manufacture, use, offer to sell, or sale within the United
States or importation into the United States of an approved
drug, veterinary biological product, or biological product, and
(D) the court shall order a permanent
injunction prohibiting any infringement of the patent by the
biological product involved in the infringement until a date
which is not earlier than the date of the expiration of the
patent that has been infringed under paragraph (2)(C), provided
the patent is the subject of a final court decision, as defined
in section 351(k)(6) of the Public Health Service Act, in an
action for infringement of the patent under section 351(l)(6) of
such Act, and the biological product has not yet been approved
because of section 351(k)(7) of such Act.
The remedies prescribed by subparagraphs (A), (B),
(C), and (D) are the only remedies which may be granted by a court for
an act of infringement described in paragraph (2), except that a court
may award attorney fees under
section 285
(5) Where a person has filed an application described in
paragraph (2) that includes a certification under subsection
(b)(2)(A)(iv) or (j) (2)(A)(vii)(IV) of section 505 of the Federal
Food, Drug, and Cosmetic Act (21 U.S.C. 355), and neither the owner of
the patent that is the subject of the certification nor the holder of
the approved application under subsection (b) of such section for the
drug that is claimed by the patent or a use of which is claimed by the
patent brought an action for infringement of such patent before the
expiration of 45 days after the date on which the notice given under
subsection (b)(3) or (j) (2)(B) of such section was received, the
courts of the United States shall, to the extent consistent with the
Constitution, have subject matter jurisdiction in any action brought
by such person under section 2201 of title 28 for a declaratory
judgment that such patent is invalid or not infringed.
(6)
(A) Subparagraph (B) applies, in lieu of
paragraph (4), in the case of a patent-
(i) that is identified, as
applicable, in the list of patents described in section
351(l)(4) of the Public Health Service Act or the lists of
patents described in section 351(l)(5)(B) of such Act with
respect to a biological product; and
(ii) for which an action for
infringement of the patent with respect to the biological
product—
(I) was brought after the
expiration of the 30-day period described in
subparagraph (A) or (B), as applicable, of section
351(l)(6) of such Act; or
(II) was brought before the
expiration of the 30-day period described in
subclause (I), but which was dismissed without
prejudice or was not prosecuted to judgment in good
faith.
(B) In an action for infringement of a
patent described in subparagraph (A), the sole and exclusive
remedy that may be granted by a court, upon a finding that the
making, using, offering to sell, selling, or importation into
the United States of the biological product that is the subject
of the action infringed the patent, shall be a reasonable
royalty.
(C) The owner of a patent that should
have been included in the list described in section 351(l)(3)(A)
of the Public Health Service Act, including as provided under
section 351(l)(7) of such Act for a biological product, but was
not timely included in such list, may not bring an action under
this section for infringement of the patent with respect to the
biological product.
(f)
(1) Whoever without authority supplies or causes to be
supplied in or from the United States all or a substantial portion of
the components of a patented invention, where such components are
uncombined in whole or in part, in such manner as to actively induce
the combination of such components outside of the United States in a
manner that would infringe the patent if such combination occurred
within the United States, shall be liable as an infringer.
(2) Whoever without authority supplies or causes to be
supplied in or from the United States any component of a patented
invention that is especially made or especially adapted for use in the
invention and not a staple article or commodity of commerce suitable
for substantial noninfringing use, where such component is uncombined
in whole or in part, knowing that such component is so made or adapted
and intending that such component will be combined outside of the
United States in a manner that would infringe the patent if such
combination occurred within the United States, shall be liable as an
infringer.
(g) Whoever without authority imports into the United States or
offers to sell, sells, or uses within the United States a product which is
made by a process patented in the United States shall be liable as an
infringer, if the importation, offer to sell, sale, or use of the product
occurs during the term of such process patent. In an action for infringement
of a process patent, no remedy may be granted for infringement on account of
the noncommercial use or retail sale of a product unless there is no
adequate remedy under this title for infringement on account of the
importation or other use, offer to sell, or sale of that product. A product
which is made by a patented process will, for purposes of this title, not be
considered to be so made after —
(1) it is materially changed by subsequent processes;
or
(2) it becomes a trivial and nonessential component of
another product.
(h) As used in this section, the term “whoever” includes any
State, any instrumentality of a State, any officer or employee of a State or
instrumentality of a State acting in his official capacity. Any State, and
any such instrumentality, officer, or employee, shall be subject to the
provisions of this title in the same manner and to the same extent as any
nongovernmental entity.
(i) As used in this section, an “offer for sale” or an “offer
to sell” by a person other than the patentee or any assignee of the
patentee, is that in which the sale will occur before the expiration of the
term of the patent.
(Subsection (e) added Sept. 24, 1984, Public Law 98-417, sec.
202, 98 Stat. 1603; subsection (f) added Nov. 8, 1984, Public Law 98-622, sec.
101(a), 98 Stat. 3383; subsection (g) added Aug. 23, 1988, Public Law 100-418,
sec. 9003, 102 Stat. 1564; subsection (e) amended Nov. 16, 1988, Public Law
100-670, sec. 201(i), 102 Stat. 3988; subsection (d) amended Nov. 19, 1988,
Public Law 100-703, sec. 201, 102 Stat. 4676; subsection (h) added Oct. 28,
1992, Public Law 102-560, sec. 2(a)(1), 106 Stat. 4230.; subsections (a), (c),
(e), and (g) amended Dec. 8, 1994, Public Law 103-465, sec. 533(a), 108 Stat.
4988; subsection (i) added Dec. 8, 1994, Public Law 103-465, sec. 533(a), 108
Stat. 4988.; subsection (e)(5) added Dec. 8, 2003, Public Law 108-173, sec.
1101(d), 117 Stat. 2457; subsection (e) amended March 23, 2010, Public Law
111-148, title VII, sec. 7002(c)(1), 124 Stat. 815.)
[top]
35 U.S.C. 272
Temporary presence in the United
States.
The use of any invention in any vessel, aircraft or vehicle of
any country which affords similar privileges to vessels, aircraft, or vehicles of
the United States, entering the United States temporarily or accidentally, shall
not constitute infringement of any patent, if the invention is used exclusively
for the needs of the vessel, aircraft, or vehicle and is not offered for sale or
sold in or used for the manufacture of anything to be sold in or exported from the
United States.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(4), 108
Stat. 4989.)
[top]
35 U.S.C. 273
Defense to infringement based on prior
commercial use.
(a) IN GENERAL.—A person shall be entitled to a defense under
section
282(b)
with respect to
subject matter consisting of a process, or consisting of a machine,
manufacture, or composition of matter used in a manufacturing or other
commercial process, that would otherwise infringe a claimed invention being
asserted against the person if—
(1) such person, acting in good faith, commercially used
the subject matter in the United States, either in connection with an
internal commercial use or an actual arm’s length sale or other arm’s
length commercial transfer of a useful end result of such commercial
use; and
(2) such commercial use occurred at least 1 year before
the earlier of either—
(A) the effective filing date of the claimed
invention; or
(B) the date on which the claimed invention was
disclosed to the public in a manner that qualified for the
exception from prior art under section
102(b)
(b) BURDEN OF PROOF.—A person asserting a defense
under this section shall have the burden of establishing the defense by
clear and convincing evidence.
(c) ADDITIONAL COMMERCIAL USES.—
(1) PREMARKETING REGULATORY REVIEW.— Subject
matter for which commercial marketing or use is subject to a
premarketing regulatory review period during which the safety or
efficacy of the subject matter is established, including any period
specified in section
156(g)
, shall be
deemed to be commercially used for purposes of subsection (a)(1)
during such regulatory review period.
(2) NONPROFIT LABORATORY USE.—A use of subject
matter by a nonprofit research laboratory or other nonprofit entity,
such as a university or hospital, for which the public is the intended
beneficiary, shall be deemed to be a commercial use for purposes of
subsection (a)(1), except that a defense under this section may be
asserted pursuant to this paragraph only for continued and
noncommercial use by and in the laboratory or other nonprofit
entity.
(d) EXHAUSTION OF RIGHTS.—Notwithstanding subsection
(e)(1), the sale or other disposition of a useful end result by a person
entitled to assert a defense under this section in connection with a patent
with respect to that useful end result shall exhaust the patent owner’s
rights under the patent to the extent that such rights would have been
exhausted had such sale or other disposition been made by the patent
owner.
(e) LIMITATIONS AND EXCEPTIONS.—
(1) PERSONAL DEFENSE.—
(A) IN GENERAL.—A defense under this
section may be asserted only by the person who performed or
directed the performance of the commercial use described in
subsection (a), or by an entity that controls, is controlled by,
or is under common control with such person.
(B) TRANSFER OF RIGHT.—Except for any
transfer to the patent owner, the right to assert a defense
under this section shall not be licensed or assigned or
transferred to another person except as an ancillary and
subordinate part of a good-faith assignment or transfer for
other reasons of the entire enterprise or line of business to
which the defense relates.
(C) RESTRICTION ON SITES.—A defense under
this section, when acquired by a person as part of an assignment
or transfer described in subparagraph (B), may only be asserted
for uses at sites where the subject matter that would otherwise
infringe a claimed invention is in use before the later of the
effective filing date of the claimed invention or the date of
the assignment or transfer of such enterprise or line of
business.
(2) DERIVATION.—A person may not assert a
defense under this section if the subject matter on which the defense
is based was derived from the patentee or persons in privity with the
patentee.
(3) NOT A GENERAL LICENSE.—The defense asserted
by a person under this section is not a general license under all
claims of the patent at issue, but extends only to the specific
subject matter for which it has been established that a commercial use
that qualifies under this section occurred, except that the defense
shall also extend to variations in the quantity or volume of use of
the claimed subject matter, and to improvements in the claimed subject
matter that do not infringe additional specifically claimed subject
matter of the patent.
(4) ABANDONMENT OF USE.—A person who has
abandoned commercial use (that qualifies under this section) of
subject matter may not rely on activities performed before the date of
such abandonment in establishing a defense under this section with
respect to actions taken on or after the date of such abandonment.
(5) UNIVERSITY EXCEPTION.—
(A) IN GENERAL.—A person commercially
using subject matter to which subsection (a) applies may not
assert a defense under this section if the claimed invention
with respect to which the defense is asserted was, at the time
the invention was made, owned or subject to an obligation of
assignment to either an institution of higher education (as
defined in section 101(a) of the Higher Education Act of 1965
(20 U.S.C. 1001(a)), or a technology transfer organization whose
primary purpose is to facilitate the commercialization of
technologies developed by one or more such institutions of
higher education.
(B) EXCEPTION.—Subparagraph (A) shall not
apply if any of the activities required to reduce to practice
the subject matter of the claimed invention could not have been
under taken using funds provided by the Federal Government.
(f) UNREASONABLE ASSERTION OF DEFENSE.—If the defense
under this section is pleaded by a person who is found to infringe the
patent and who subsequently fails to demonstrate a reasonable basis for
asserting the defense, the court shall find the case exceptional for the
purpose of awarding attorney fees under section
35 U.S.C.
285
(g) INVALIDITY.—A patent shall not be deemed to be
invalid under section
102
or
103
solely because a defense is raised or established
under this section.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-555 (S. 1948 sec. 4302); amended Sept. 16, 2011, Public Law
112-29, sec. 5, 125 Stat. 284.)
[top]
CHAPTER CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER
ACTIONS
281 Remedy for infringement of patent.
282 Presumption of validity; defenses.
283 Injunction.
284 Damages.
285 Attorney fees.
286 Time limitation on damages.
287 Limitation on damages and other remedies; marking and
notice.
288 Action for infringement of a patent containing an invalid
claim.
288 (pre‑AIA) Action for infringement of a patent containing an invalid
claim.
289 Additional remedy for infringement of design patent.
290 Notice of patent suits.
291 Derived patents.
291 (pre‑AIA) Interfering patents.
292 False marking.
293 Nonresident patentee; service and notice.
294 Voluntary arbitration.
295 Presumptions: Product made by patented process.
296 Liability of States, instrumentalities of States, and State officials
for infringement of patents.
297 Improper and deceptive invention promotion.
298 Advice of counsel.
299 Joinder of parties.
35 U.S.C. 281
Remedy for infringement of patent.
A patentee shall have remedy by civil action for infringement of
his patent.
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35 U.S.C. 282
Presumption of validity; defenses.
(a) IN GENERAL.—A patent shall be presumed valid.
Each claim of a patent (whether in independent, dependent, or multiple
dependent form) shall be presumed valid independently of the validity of
other claims; dependent or multiple dependent claims shall be presumed valid
even though dependent upon an invalid claim. The burden of establishing
invalidity of a patent or any claim thereof shall rest on the party
asserting such invalidity.
(b) DEFENSES.—The following shall be defenses in any action
involving the validity or infringement of a patent and shall be pleaded:
(1) Noninfringement, absence of liability for
infringement, or unenforceability.
(2) Invalidity of the patent or any claim in suit on any
ground specified in
part II
as a
condition for patentability.
(3) Invalidity of the patent or any claim in suit for
failure to comply with—
(A) any requirement of
section
112
, except that the failure to disclose
the best mode shall not be a basis on which any claim of a
patent may be canceled or held invalid or otherwise
unenforceable; or
(B) any requirement of section
251
(4) Any other fact or act made a defense by this
title.
(c) NOTICE OF ACTIONS; ACTIONS DURING EXTENSION OF PATENT
TERM.— In an action involving the validity or infringement of a patent the
party asserting invalidity or noninfringement shall give notice in the
pleadings or otherwise in writing to the adverse party at least thirty days
before the trial, of the country, number, date, and name of the patentee of
any patent, the title, date, and page numbers of any publication to be
relied upon as anticipation of the patent in suit or, except in actions in
the United States Court of Federal Claims, as showing the state of the art,
and the name and address of any person who may be relied upon as the prior
inventor or as having prior knowledge of or as having previously used or
offered for sale the invention of the patent in suit. In the absence of such
notice proof of the said matters may not be made at the trial except on such
terms as the court requires.
Invalidity of the extension of a patent term or any portion
thereof under
section 154(b)
or
156
because of the material failure—
(1) by the applicant for the extension, or
(2) by the Director,
to comply with the requirements of such section
shall be a defense in any action involving the infringement of a patent
during the period of the extension of its term and shall be pleaded. A due
diligence determination under
section 156(d)(2)
is not
subject to review in such an action.
(Amended July 24, 1965, Public Law 89-83, sec. 10, 79 Stat.
261; Nov. 14, 1975, Public Law 94-131, sec. 10, 89 Stat. 692; Apr. 2, 1982,
Public Law 97-164, sec. 161(7), 96 Stat. 49; Sept. 24, 1984, Public Law 98-417,
sec. 203, 98 Stat. 1603; Oct. 29, 1992, Public Law 102-572, sec. 902(b)(1), 106
Stat. 4516; Nov. 1, 1995, Public Law 104-41, sec. 2, 109 Stat. 352; Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-560, 582 (S. 1948
secs. 4402(b)(1) and 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law
112-29, sec. 15(a) (effective Sept. 16, 2011) and secs. 20(g) and (j)
(effective Sept. 16, 2012), 125 Stat. 284.)
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35 U.S.C. 283
Injunction.
The several courts having jurisdiction of cases under this title
may grant injunctions in accordance with the principles of equity to prevent the
violation of any right secured by patent, on such terms as the court deems
reasonable.
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35 U.S.C. 284
Damages.
Upon finding for the claimant the court shall award the claimant
damages adequate to compensate for the infringement but in no event less than a
reasonable royalty for the use made of the invention by the infringer, together
with interest and costs as fixed by the court.
When the damages are not found by a jury, the court shall assess
them. In either event the court may increase the damages up to three times the
amount found or assessed. Increased damages under this paragraph shall not apply
to provisional rights under
section 154(d)
The court may receive expert testimony as an aid to the
determination of damages or of what royalty would be reasonable under the
circumstances.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-566 (S. 1948 sec. 4507(9)); amended Sept. 16, 2011, Public Law
112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 285
Attorney fees.
The court in exceptional cases may award reasonable attorney fees
to the prevailing party.
[top]
35 U.S.C. 286
Time limitation on damages.
Except as otherwise provided by law, no recovery shall be had for
any infringement committed more than six years prior to the filing of the
complaint or counterclaim for infringement in the action.
In the case of claims against the United States Government for
use of a patented invention, the period before bringing suit, up to six years,
between the date of receipt of a written claim for compensation by the department
or agency of the Government having authority to settle such claim, and the date of
mailing by the Government of a notice to the claimant that his claim has been
denied shall not be counted as a part of the period referred to in the preceding
paragraph.
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35 U.S.C. 287
Limitation on damages and other remedies;
marking and notice.
(a) Patentees, and persons making, offering for sale, or
selling within the United States any patented article for or under them, or
importing any patented article into the United States, may give notice to
the public that the same is patented, either by fixing thereon the word
“patent” or the abbreviation “pat.”, together with the number of the patent,
or by fixing thereon the word “patent” or the abbreviation “pat.” together
with an address of a posting on the Internet, accessible to the public
without charge for accessing the address, that associates the patented
article with the number of the patent, or when, from the character of the
article, this cannot be done, by fixing to it, or to the package wherein one
or more of them is contained, a label containing a like notice. In the event
of failure so to mark, no damages shall be recovered by the patentee in any
action for infringement, except on proof that the infringer was notified of
the infringement and continued to infringe thereafter, in which event
damages may be recovered only for infringement occurring after such notice.
Filing of an action for infringement shall constitute such notice.
(b)
(1) An infringer under
section
271(g)
shall be subject to all the provisions of
this title relating to damages and injunctions except to the extent
those remedies are modified by this subsection or section 9006 of the
Process Patent Amendments Act of 1988. The modifications of remedies
provided in this subsection shall not be available to any person who
(A) practiced the patented process;
(B) owns or controls, or is owned or controlled by,
the person who practiced the patented process; or
(C) had knowledge before the infringement that a
patented process was used to make the product the importation,
use, offer for sale, or sale of which constitutes the
infringement.
(2) No remedies for infringement under
section
271(g)
shall be available with respect to any
product in the possession of, or in transit to, the person subject to
liability under such section before that person had notice of
infringement with respect to that product. The person subject to
liability shall bear the burden of proving any such possession or
transit.
(3)
(A) In making a determination with respect to the
remedy in an action brought for infringement under
section
271(g)
, the court shall consider—
(i) the good faith demonstrated by the
defendant with respect to a request for disclosure;
(ii) the good faith demonstrated by the
plaintiff with respect to a request for disclosure,
and
(iii) the need to restore the exclusive rights
secured by the patent.
(B) For purposes of subparagraph (A), the following
are evidence of good faith:
(i) a request for disclosure made by the
defendant;
(ii) a response within a reasonable time by
the person receiving the request for disclosure; and
(iii) the submission of the response by the
defendant to the manufacturer, or if the manufacturer is
not known, to the supplier, of the product to be purchased
by the defendant, together with a request for a written
statement that the process claimed in any patent disclosed
in the response is not used to produce such product.
The failure to perform any acts described in
the preceding sentence is evidence of absence of good faith
unless there are mitigating circumstances. Mitigating
circumstances include the case in which, due to the nature of
the product, the number of sources for the product, or like
commercial circumstances, a request for disclosure is not
necessary or practicable to avoid infringement.
(4)
(A) For purposes of this subsection, a “request
for disclosure” means a written request made to a person then
engaged in the manufacture of a product to identify all process
patents owned by or licensed to that person, as of the time of
the request, that the person then reasonably believes could be
asserted to be infringed under
section
271(g)
if that product were imported into,
or sold, offered for sale, or used in, the United States by an
unauthorized person. A request for disclosure is further limited
to a request—
(i) which is made by a person regularly
engaged in the United States in the sale of the type of
products as those manufactured by the person to whom the
request is directed, or which includes facts showing that
the person making the request plans to engage in the sale
of such products in the United States;
(ii) which is made by such person before the
person’s first importation, use, offer for sale, or sale
of units of the product produced by an infringing process
and before the person had notice of infringement with
respect to the product; and
(iii) which includes a representation by the
person making the request that such person will promptly
submit the patents identified pursuant to the request to
the manufacturer, or if the manufacturer is not known, to
the supplier, of the product to be purchased by the person
making the request, and will request from that
manufacturer or supplier a written statement that none of
the processes claimed in those patents is used in the
manufacture of the product.
(B) In the case of a request for disclosure
received by a person to whom a patent is licensed, that person
shall either identify the patent or promptly notify the licensor
of the request for disclosure.
(C) A person who has marked, in the manner
prescribed by subsection (a), the number of the process patent
on all products made by the patented process which have been
offered for sale or sold by that person in the United States, or
imported by the person into the United States, before a request
for disclosure is received is not required to respond to the
request for disclosure. For purposes of the preceding sentence,
the term “all products” does not include products made before
the effective date of the Process Patent Amendments Act of
1988.
(5)
(A) For purposes of this subsection, notice of
infringement means actual knowledge, or receipt by a person of a
written notification, or a combination thereof, of information
sufficient to persuade a reasonable person that it is likely
that a product was made by a process patented in the United
States.
(B) A written notification from the patent holder
charging a person with infringement shall specify the patented
process alleged to have been used and the reasons for a good
faith belief that such process was used. The patent holder shall
include in the notification such information as is reasonably
necessary to explain fairly the patent holder’s belief, except
that the patent holder is not required to disclose any trade
secret information.
(C) A person who receives a written notification
described in subparagraph (B) or a written response to a request
for disclosure described in paragraph (4) shall be deemed to
have notice of infringement with respect to any patent referred
to in such written notification or response unless that person,
absent mitigating circumstances—
(i) promptly transmits the written
notification or response to the manufacturer or, if the
manufacturer is not known, to the supplier, of the product
purchased or to be purchased by that person; and
(ii) receives a written statement from the
manufacturer or supplier which on its face sets forth a
well grounded factual basis for a belief that the
identified patents are not infringed.
(D) For purposes of this subsection, a person who
obtains a product made by a process patented in the United
States in a quantity which is abnormally large in relation to
the volume of business of such person or an efficient inventory
level shall be rebuttably presumed to have actual knowledge that
the product was made by such patented process.
(6) A person who receives a response to a request for
disclosure under this subsection shall pay to the person to whom the
request was made a reasonable fee to cover actual costs incurred in
complying with the request, which may not exceed the cost of a
commercially available automated patent search of the matter involved,
but in no case more than $500.
(c)
(1) With respect to a medical practitioner’s performance
of a medical activity that constitutes an infringement under
section 271(a)
or
(b)
, the provisions of
sections
281
283
284
, and
285
shall not
apply against the medical practitioner or against a related health
care entity with respect to such medical activity.
(2) For the purposes of this subsection:
(A) the term “medical activity” means the
performance of a medical or surgical procedure on a body, but
shall not include (i) the use of a patented machine,
manufacture, or composition of matter in violation of such
patent, (ii) the practice of a patented use of a composition of
matter in violation of such patent, or (iii) the practice of a
process in violation of a biotechnology patent.
(B) the term “medical practitioner” means any
natural person who is licensed by a State to provide the medical
activity described in subsection (c)(1) or who is acting under
the direction of such person in the performance of the medical
activity.
(C) the term “related health care entity” shall
mean an entity with which a medical practitioner has a
professional affiliation under which the medical practitioner
performs the medical activity, including but not limited to a
nursing home, hospital, university, medical school, health
maintenance organization, group medical practice, or a medical
clinic.
(D) the term “professional affiliation” shall mean
staff privileges, medical staff membership, employment or
contractual relationship, partnership or ownership interest,
academic appointment, or other affiliation under which a medical
practitioner provides the medical activity on behalf of, or in
association with, the health care entity.
(E) the term “body” shall mean a human body, organ
or cadaver, or a nonhuman animal used in medical research or
instruction directly relating to the treatment of humans.
(F) the term “patented use of a composition of
matter” does not include a claim for a method of performing a
medical or surgical procedure on a body that recites the use of
a composition of matter where the use of that composition of
matter does not directly contribute to achievement of the
objective of the claimed method.
(G) the term “State” shall mean any State or
territory of the United States, the District of Columbia, and
the Commonwealth of Puerto Rico.
(3) This subsection does not apply to the activities of
any person, or employee or agent of such person (regardless of whether
such person is a tax exempt organization under section 501(c) of the
Internal Revenue Code), who is engaged in the commercial development,
manufacture, sale, importation, or distribution of a machine,
manufacture, or composition of matter or the provision of pharmacy or
clinical laboratory services (other than clinical laboratory services
provided in a physician’s office), where such activities are:
(A) directly related to the commercial development,
manufacture, sale, importation, or distribution of a machine,
manufacture, or composition of matter or the provision of
pharmacy or clinical laboratory services (other than clinical
laboratory services provided in a physician’s office), and
(B) regulated under the Federal Food, Drug, and
Cosmetic Act, the Public Health Service Act, or the Clinical
Laboratories Improvement Act.
(4) This subsection shall not apply to any patent issued
based on an application which has an effective filing date before
September 30, 1996.
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9004(a), 102
Stat. 1564; Dec. 8, 1994, Public Law 103-465, sec. 533(b)(5), 108 Stat. 4989;
subsection (c) added Sept. 30, 1996, Public Law 104-208, sec. 616, 110 Stat.
3009-67; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-589 (S. 1948 sec. 4803); amended Sept. 16, 2011, Public Law 112-29, sec.
16(a) (effective Sept. 16, 2011), secs. 20(i) and (j) (effective Sept. 16,
2012), and sec. 3(g) (effective March 16, 2013), 125 Stat. 284.)
[top]
35 U.S.C. 288
Action for infringement of a patent containing
an invalid claim.
[Editor Note: Applicable to all proceedings commenced on or after
September 16, 2012. See
35 U.S.C. 288 (pre‑AIA)
for
the law otherwise applicable.]
Whenever a claim of a patent is invalid, an action may be
maintained for the infringement of a claim of the patent which may be valid. The
patentee shall recover no costs unless a disclaimer of the invalid claim has been
entered at the Patent and Trademark Office before the commencement of the
suit.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; amended Sept. 16, 2011, Public Law 112-29, sec. 20(h), 125 Stat. 284,
effective Sept. 16, 2012.)
[top]
35 U.S.C. 288 (pre‑AIA)
Action for infringement of a patent containing
an invalid claim.
[Editor Note:
Not applicable
to to proceedings commenced on
or after September 16, 2012. See
35 U.S.C. 288
for the law
otherwise applicable.]
Whenever, without deceptive intention, a claim of a patent is
invalid, an action may be maintained for the infringement of a claim of the patent
which may be valid. The patentee shall recover no costs unless a disclaimer of the
invalid claim has been entered at the Patent and Trademark Office before the
commencement of the suit.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949.)
[top]
35 U.S.C. 289
Additional remedy for infringement of design
patent.
Whoever during the term of a patent for a design, without license
of the owner, (1) applies the patented design, or any colorable imitation thereof,
to any article of manufacture for the purpose of sale, or (2) sells or exposes for
sale any article of manufacture to which such design or colorable imitation has
been applied shall be liable to the owner to the extent of his total profit, but
not less than $250, recoverable in any United States district court having
jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or impeach any
other remedy which an owner of an infringed patent has under the provisions of
this title, but he shall not twice recover the profit made from the
infringement.
[top]
35 U.S.C. 290
Notice of patent suits.
The clerks of the courts of the United States, within one month
after the filing of an action under this title, shall give notice thereof in
writing to the Director, setting forth so far as known the names and addresses of
the parties, name of the inventor, and the designating number of the patent upon
which the action has been brought. If any other patent is subsequently included in
the action he shall give like notice thereof. Within one month after the decision
is rendered or a judgment issued the clerk of the court shall give notice thereof
to the Director. The Director shall, on receipt of such notices, enter the same in
the file of such patent.
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
[top]
35 U.S.C. 291
Derived Patents.
[Editor Note: Applicable to any patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
)*. See
35 U.S.C. 291 (pre‑AIA)
for
the law otherwise applicable.]
(a) IN GENERAL.—The owner of a patent may have relief
by civil action against the owner of another patent that claims the same
invention and has an earlier effective filing date, if the invention claimed
in such other patent was derived from the inventor of the invention claimed
in the patent owned by the person seeking relief under this section.
(b) FILING LIMITATION.—An action under this section
may be filed only before the end of the 1-year period beginning on the date
of the issuance of the first patent containing a claim to the allegedly
derived invention and naming an individual alleged to have derived such
invention as the inventor or joint inventor.
(Amended Sept. 16, 2011, Public Law 112-29, secs.
20(j) (effective Sept. 16, 2012)and 3(h) (effective March 16, 2013)*, 125 Stat.
284.)
*NOTE:
The provisions of
35 U.S.C. 291 (pre‑AIA)
, as
in effect on
March 15, 2013,
shall also apply to each claim of an application for patent, and any
patent issued thereon, for which the first inventor to file provisions of the
AIA apply (see
35 U.S.C. 100 (note)
), if
such application or patent contains or contained at any time—
(A) a claim to an invention having an effective
filing date as defined in
35 U.S.C. 100(i)
, that
occurs before March 16, 2013; or
(B) a specific reference under
35 U.S.C. 120
121
, or
365(c)
to any patent or application that contains or contained at any time such a
claim.
[top]
35 U.S.C. 291 (pre‑AIA)
Interfering patents.
[Editor Note:
Not applicable
to any patent application
subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100 (note)
).* See
35 U.S.C. 291
for the law otherwise applicable.*]
The owner of an interfering patent may have relief against the
owner of another by civil action, and the court may adjudge the question of
validity of any of the interfering patents, in whole or in part. The provisions of
the second paragraph of
section 146
shall apply to
actions brought under this section.
(Amended Sept. 16, 2011, Public Law 112-29, sec.
20(j) (effective Sept. 16, 2012), 125 Stat. 284.
*NOTE:
The provisions of 35 U.S.C. 291 (pre‑AIA), as in effect on
March 15, 2013,
shall also apply to each claim of an application for patent, and any
patent issued thereon, for which the first inventor to file provisions of the
AIA apply (see
35 U.S.C. 100 (note)
), if
such application or patent contains or contained at any time—
(A) a claim to an invention having an effective
filing date as defined in
35 U.S.C. 100(i)
that occurs before March 16, 2013; or
(B) a specific reference under
35 U.S.C. 120
121
, or
365(c)
, to any patent or application that contains
or contained at any time such a claim.
[top]
35 U.S.C. 292
False marking.
(a)
Whoever, without the consent of the patentee, marks
upon, or affixes to, or uses in advertising in connection with
anything made, used, offered for sale, or sold by such person within
the United States, or imported by the person into the United States,
the name or any imitation of the name of the patentee, the patent
number, or the words “patent,” “patentee,” or the like, with the
intent of counterfeiting or imitating the mark of the patentee, or of
deceiving the public and inducing them to believe that the thing was
made, offered for sale, sold, or imported into the United States by or
with the consent of the patentee; or
Whoever marks upon, or affixes to, or uses in
advertising in connection with any unpatented article the word
“patent” or any word or number importing the same is patented, for the
purpose of deceiving the public; or
Whoever marks upon, or affixes to, or uses in
advertising in connection with any article the words “patent applied
for,” “patent pending,” or any word importing that an application for
patent has been made, when no application for patent has been made, or
if made, is not pending, for the purpose of deceiving the public—
Shall be fined not more than $500 for every such offense.
Only the United States may sue for the penalty authorized by this
subsection.
(b) A person who has suffered a competitive injury as a result
of a violation of this section may file a civil action in a district court
of the United States for recovery of damages adequate to compensate for the
injury.
(c) The marking of a product, in a manner described
in subsection (a), with matter relating to a patent that covered that
product but has expired is not a violation of this section.
(Subsection (a) amended Dec. 8, 1994, Public Law 103-465, sec.
533(b)(6), 108 Stat. 4990; amended Sept. 16, 2011, Public Law 112-29, sec.
16(b), 125 Stat. 284.)
[top]
35 U.S.C. 293
Nonresident patentee; service and
notice.
Every patentee not residing in the United States may file in the
Patent and Trademark Office a written designation stating the name and address of
a person residing within the United States on whom may be served process or notice
of proceedings affecting the patent or rights thereunder. If the person designated
cannot be found at the address given in the last designation, or if no person has
been designated, the United States District Court for the Eastern District of
Virginia shall have jurisdiction and summons shall be served by publication or
otherwise as the court directs. The court shall have the same jurisdiction to take
any action respecting the patent or rights thereunder that it would have if the
patentee were personally within the jurisdiction of the court.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; amended Sept. 16, 2011, Public Law 112-29, sec. 9, 125 Stat. 284.)
[top]
35 U.S.C. 294
Voluntary arbitration.
(a) A contract involving a patent or any right under a patent
may contain a provision requiring arbitration of any dispute relating to
patent validity or infringement arising under the contract. In the absence
of such a provision, the parties to an existing patent validity or
infringement dispute may agree in writing to settle such dispute by
arbitration. Any such provision or agreement shall be valid, irrevocable,
and enforceable, except for any grounds that exist at law or in equity for
revocation of a contract.
(b) Arbitration of such disputes, awards by arbitrators, and
confirmation of awards shall be governed by title 9, to the extent such
title is not inconsistent with this section. In any such arbitration
proceeding, the defenses provided for under section
282
shall be considered by the arbitrator if raised by any party to the
proceeding.
(c) An award by an arbitrator shall be final and binding
between the parties to the arbitration but shall have no force or effect on
any other person. The parties to an arbitration may agree that in the event
a patent which is the subject matter of an award is subsequently determined
to be invalid or unenforceable in a judgment rendered by a court of
competent jurisdiction from which no appeal can or has been taken, such
award may be modified by any court of competent jurisdiction upon
application by any party to the arbitration. Any such modification shall
govern the rights and obligations between such parties from the date of such
modification.
(d) When an award is made by an arbitrator, the patentee, his
assignee or licensee shall give notice thereof in writing to the Director.
There shall be a separate notice prepared for each patent involved in such
proceeding. Such notice shall set forth the names and addresses of the
parties, the name of the inventor, and the name of the patent owner, shall
designate the number of the patent, and shall contain a copy of the award.
If an award is modified by a court, the party requesting such modification
shall give notice of such modification to the Director. The Director shall,
upon receipt of either notice, enter the same in the record of the
prosecution of such patent. If the required notice is not filed with the
Director, any party to the proceeding may provide such notice to the
Director.
(e) The award shall be unenforceable until the notice required
by subsection (d) is received by the Director.
(Added Aug. 27, 1982, Public Law 97-247, sec. 17(b)(1), 96
Stat. 322; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); subsections (b) and (c) amended
Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; amended Sept. 16,
2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat.
284.
[top]
35 U.S.C. 295
Presumption: Product made by patented
process.
In actions alleging infringement of a process patent based on the
importation, sale, offered for sale, or use of a product which is made from a
process patented in the United States, if the court finds—
(1) that a substantial likelihood exists that the product was
made by the patented process, and
(2) that the plaintiff has made a reasonable effort to
determine the process actually used in the production of the product and was
unable so to determine, the product shall be presumed to have been so made,
and the burden of establishing that the product was not made by the process
shall be on the party asserting that it was not so made.
(Added Aug. 23, 1988, Public Law 100-418, sec. 9005(a), 102
Stat. 1566; amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(7), 108 Stat.
4990.)
[top]
35 U.S.C. 296
Liability of States, instrumentalities of
States, and State officials for infringement of patents.
(a) IN GENERAL.—Any State, any instrumentality of a State, and
any officer or employee of a State or instrumentality of a State, acting in
his official capacity, shall not be immune, under the eleventh amendment of
the Constitution of the United States or under any other doctrine of
sovereign immunity, from suit in Federal court by any person, including any
governmental or nongovernmental entity, for infringement of a patent under
section
271
, or for any other violation under this title.
(b) REMEDIES.—In a suit described in subsection (a) for a
violation described in that subsection, remedies (including remedies both at
law and in equity) are available for the violation to the same extent as
such remedies are available for such a violation in a suit against any
private entity. Such remedies include damages, interest, costs, and treble
damages under
section 284
, attorney
fees under
section 285
, and the additional remedy for
infringement of design patents under
section 289
(Added Oct. 28, 1992, Public Law 102-560, sec. 2(a)(2), 106
Stat. 4230.)
[top]
35 U.S.C. 297
Improper and deceptive invention
promotion.
(a) IN GENERAL.— An invention promoter shall have a duty to
disclose the following information to a customer in writing, prior to
entering into a contract for invention promotion services:
(1) the total number of inventions evaluated by the
invention promoter for commercial potential in the past 5 years, as
well as the number of those inventions that received positive
evaluations, and the number of those inventions that received negative
evaluations;
(2) the total number of customers who have contracted
with the invention promoter in the past 5 years, not including
customers who have purchased trade show services, research,
advertising, or other nonmarketing services from the invention
promoter, or who have defaulted in their payment to the invention
promoter;
(3) the total number of customers known by the invention
promoter to have received a net financial profit as a direct result of
the invention promotion services provided by such invention
promoter;
(4) the total number of customers known by the invention
promoter to have received license agreements for their inventions as a
direct result of the invention promotion services provided by such
invention promoter; and
(5) the names and addresses of all previous invention
promotion companies with which the invention promoter or its officers
have collectively or individually been affiliated in the previous 10
years.
(b) CIVIL ACTION.—
(1) Any customer who enters into a contract with an
invention promoter and who is found by a court to have been injured by
any material false or fraudulent statement or representation, or any
omission of material fact, by that invention promoter (or any agent,
employee, director, officer, partner, or independent contractor of
such invention promoter), or by the failure of that invention promoter
to disclose such information as required under subsection (a), may
recover in a civil action against the invention promoter (or the
officers, directors, or partners of such invention promoter), in
addition to reasonable costs and attorneys’ fees—
(A) the amount of actual damages incurred by the
customer; or
(B) at the election of the customer at any time
before final judgment is rendered, statutory damages in a sum of
not more than $5,000, as the court considers just.
(2) Notwithstanding paragraph (1), in a case where the
customer sustains the burden of proof, and the court finds, that the
invention promoter intentionally misrepresented or omitted a material
fact to such customer, or willfully failed to disclose such
information as required under subsection (a), with the purpose of
deceiving that customer, the court may increase damages to not more
than three times the amount awarded, taking into account past
complaints made against the invention promoter that resulted in
regulatory sanctions or other corrective actions based on those
records compiled by the Commissioner of Patents under subsection
(d).
(c) DEFINITIONS.— For purposes of this section—
(1) a “contract for invention promotion services” means a
contract by which an invention promoter undertakes invention promotion
services for a customer;
(2) a “customer” is any individual who enters into a
contract with an invention promoter for invention promotion
services;
(3) the term “invention promoter” means any person, firm,
partnership, corporation, or other entity who offers to perform or
performs invention promotion services for, or on behalf of, a
customer, and who holds itself out through advertising in any mass
media as providing such services, but does not include—
(A) any department or agency of the Federal
Government or of a State or local government;
(B) any nonprofit, charitable, scientific, or
educational organization, qualified under applicable State law
or described under section 170(b)(1)(A) of the Internal Revenue
Code of 1986;
(C) any person or entity involved in the evaluation
to determine commercial potential of, or offering to license or
sell, a utility patent or a previously filed nonprovisional
utility patent application;
(D) any party participating in a transaction
involving the sale of the stock or assets of a business; or
(E) any party who directly engages in the business
of retail sales of products or the distribution of products;
and
(4) the term “invention promotion services” means the
procurement or attempted procurement for a customer of a firm,
corporation, or other entity to develop and market products or
services that include the invention of the customer.
(d) RECORDS OF COMPLAINTS.—
(1) RELEASE OF COMPLAINTS.— The Commissioner of Patents
shall make all complaints received by the Patent and Trademark Office
involving invention promoters publicly available, together with any
response of the invention promoters. The Commissioner of Patents shall
notify the invention promoter of a complaint and provide a reasonable
opportunity to reply prior to making such complaint publicly
available.
(2) REQUEST FOR COMPLAINTS.— The Commissioner of Patents
may request complaints relating to invention promotion services from
any Federal or State agency and include such complaints in the records
maintained under paragraph (1), together with any response of the
invention promoters.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-552 (S. 1948 sec. 4102(a)).)
[top]
35 U.S.C. 298
Advice of counsel.
The failure of an infringer to obtain the advice of
counsel with respect to any allegedly infringed patent, or the failure of the
infringer to present such advice to the court or jury, may not be used to prove
that the accused infringer willfully infringed the patent or that the infringer
intended to induce infringement of the patent.
(Added Sept. 16, 2011, Public Law 112-29, sec. 17,
125 Stat. 284, effective as to patents issued on or after Sept. 16, 2012,
effective date revised Public Law 112-274, sec. (1)(a), 126 Stat. 2456 as
applicable to any civil action commenced on or after Jan. 14, 2013.)
[top]
35 U.S.C. 299
Joinder of parties.
(a) JOINDER OF ACCUSED INFRINGERS.—With respect to any
civil action arising under any Act of Congress relating to patents, other
than an action or trial in which an act of infringement under section
271(e)(2)
has been pled, parties that are accused
infringers may be joined in one action as defendants or counterclaim
defendants, or have their actions consolidated for trial, only if—
(1) any right to relief is asserted against the
parties jointly, severally, or in the alternative with respect to or
arising out of the same transaction, occurrence, or series of
transactions or occurrences relating to the making, using, importing
into the United States, offering for sale, or selling of the same
accused product or process; and
(2) questions of fact common to all defendants
or counterclaim defendants will arise in the action.
(b) ALLEGATIONS INSUFFICIENT FOR JOINDER.— For
purposes of this subsection, accused infringers may not be joined in one
action as defendants or counterclaim defendants, or have their actions
consolidated for trial, based solely on allegations that they each have
infringed the patent or patents in suit.
(c) WAIVER.—A party that is an accused infringer may
waive the limitations set forth in this section with respect to that party.
(Added Sept. 16, 2011, Public Law 112-29, sec.
19(d), 125 Stat. 284, corrected Jan. 14, 2013, Public Law 112-274, sec. 1(c),
126 Stat. 2456.)
[top]
CHAPTER CHAPTER 30 - PRIOR ART CITATIONS TO OFFICE AND EX PARTE REEXAMINATION OF
PATENTS
301 Citation of prior art and written statements.
302 Request for reexamination.
303 Determination of issue by Director.
304 Reexamination order by Director.
305 Conduct of reexamination proceedings.
305 (pre‑AIA) Conduct of reexamination proceedings.
306 Appeal.
307 Certificate of patentability, unpatentability, and claim
cancellation.
35 U.S.C. 301
Citation of prior art and written
statements.
(a) IN GENERAL.—Any person at any time may cite to
the Office in writing—
(1) prior art consisting of patents or printed
publications which that person believes to have a bearing on the
patentability of any claim of a particular patent; or
(2) statements of the patent owner filed in a
proceeding before a Federal court or the Office in which the patent
owner took a position on the scope of any claim of a particular
patent.
(b) OFFICIAL FILE.—If the person citing prior art or
written statements pursuant to subsection (a) explains in writing the
pertinence and manner of applying the prior art or written statements to at
least 1 claim of the patent, the citation of the prior art or written
statements and the explanation thereof shall become a part of the official
file of the patent.
(c) ADDITIONAL INFORMATION.—A party that submits a
written statement pursuant to subsection (a)(2) shall include any other
documents, pleadings, or evidence from the proceeding in which the statement
was filed that addresses the written statement.
(d) LIMITATIONS.—A written statement submitted
pursuant to subsection (a)(2), and additional information submitted pursuant
to subsection (c), shall not be considered by the Office for any purpose
other than to determine the proper meaning of a patent claim in a proceeding
that is ordered or instituted pursuant to section
304
314
, or
324
. If any such written
statement or additional information is subject to an applicable protective
order, such statement or information shall be redacted to exclude
information that is subject to that order.
(e) CONFIDENTIALITY.—Upon the written request of the
person citing prior art or written statements pursuant to subsection (a),
that person’s identity shall be excluded from the patent file and kept
confidential.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1,
94 Stat. 3015; amended Sept. 16, 2011, Public Law 112-29, sec. 6(g) (effective
Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 302
Request for reexamination.
Any person at any time may file a request for reexamination by
the Office of any claim of a patent on the basis of any prior art cited under the
provisions of
section 301
. The request must
be in writing and must be accompanied by payment of a reexamination fee
established by the Director pursuant to the provisions of
section 41
The request must set forth the pertinency and manner of applying cited prior art
to every claim for which reexamination is requested. Unless the requesting person
is the owner of the patent, the Director promptly will send a copy of the request
to the owner of record of the patent.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3015; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-582 (S. 1948 secs. 4732(a)(8) and 4732(a)(10)(A)); amended Sept. 16,
2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat.
284.)
[top]
35 U.S.C. 303
Determination of issue by Director.
(a) Within three months following the filing of a request for
reexamination under the provisions of
section 302
, the
Director will determine whether a substantial new question of patentability
affecting any claim of the patent concerned is raised by the request, with
or without consideration of other patents or printed publications. On his
own initiative, and any time, the Director may determine whether a
substantial new question of patentability is raised by patents and
publications discovered by him or cited under the provisions of section
301
or
302
The existence of a substantial new question of patentability is not
precluded by the fact that a patent or printed publication was previously
cited by or to the Office or considered by the Office.
(b) A record of the Director’s determination under subsection
(a) of this section will be placed in the official file of the patent, and a
copy promptly will be given or mailed to the owner of record of the patent
and to the person requesting reexamination, if any.
(c) A determination by the Director pursuant to subsection (a)
of this section that no substantial new question of patentability has been
raised will be final and nonappealable. Upon such a determination, the
Director may refund a portion of the reexamination fee required under
section
302.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3015; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-581, 582 (S. 1948 secs. 4732(a)(9) and (4732(a)(10)(A)); subsection (a)
amended Nov. 2, 2002, Public Law 107-273, sec. 13105, 116 Stat. 1900; amended
Sept. 16, 2011, Public Law 112-29, secs. 6(h) and 20(j) (effective Sept. 16,
2012), 125 Stat. 284.)
[top]
35 U.S.C. 304
Reexamination order by Director.
If, in a determination made under the provisions of
subsection
303(a)
, the Director finds that a substantial new question
of patentability affecting any claim of a patent is raised, the determination will
include an order for reexamination of the patent for resolution of the question.
The patent owner will be given a reasonable period, not less than two months from
the date a copy of the determination is given or mailed to him, within which he
may file a statement on such question, including any amendment to his patent and
new claim or claims he may wish to propose, for consideration in the
reexamination. If the patent owner files such a statement, he promptly will serve
a copy of it on the person who has requested reexamination under the provisions of
section
302
. Within a period of two months from the date of service,
that person may file and have considered in the reexamination a reply to any
statement filed by the patent owner. That person promptly will serve on the patent
owner a copy of any reply filed.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3016; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law
112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 305
Conduct of reexamination
proceedings.
[Editor Note: Applicable to any patent issuing from an application
subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C. 305
(pre‑AIA)
for the law otherwise applicable.]
After the times for filing the statement and reply provided for
by section
304
have expired, reexamination will be conducted according
to the procedures established for initial examination under the provisions of
sections
132
and
133
. In any reexamination
proceeding under this chapter, the patent owner will be permitted to propose any
amendment to his patent and a new claim or claims thereto, in order to distinguish
the invention as claimed from the prior art cited under the provisions of
section 301
, or in response to a decision adverse to the
patentability of a claim of a patent. No proposed amended or new claim enlarging
the scope of a claim of the patent will be permitted in a reexamination proceeding
under this chapter. All reexamination proceedings under this section, including
any appeal to the Patent Trial and Appeal Board, will be conducted with special
dispatch within the Office.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3016; amended Nov. 8, 1984, Public Law 98-622, sec. 204(c), 98 Stat. 3388;
amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16,
2012) and 3(j) (effective March 16, 2013), 125 Stat. 284.)
[top]
35 U.S.C. 305 (pre‑AIA)
Conduct of reexamination
proceedings.
[Editor Note:
Not applicable
to any patent issuing from an
application subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C. 305
for the law otherwise applicable.]
After the times for filing the statement and reply provided for
by section
304
have expired, reexamination will be conducted according
to the procedures established for initial examination under the provisions of
sections
132
and
133
. In any reexamination
proceeding under this chapter, the patent owner will be permitted to propose any
amendment to his patent and a new claim or claims thereto, in order to distinguish
the invention as claimed from the prior art cited under the provisions of section
301
, or in response to a decision adverse to the
patentability of a claim of a patent. No proposed amended or new claim enlarging
the scope of a claim of the patent will be permitted in a reexamination proceeding
under this chapter. All reexamination proceedings under this section, including
any appeal to the Board of Patent Appeals and Interferences, will be conducted
with special dispatch within the Office.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3016; amended Nov. 8, 1984, Public Law 98-622, sec. 204(c), 98 Stat. 3388;
amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16,
2012), 125 Stat. 284.)
[top]
35 U.S.C. 306
Appeal.
The patent owner involved in a reexamination proceeding under
this chapter may appeal under the provisions of
section
134
, and may seek court review under the provisions of
sections
141
to
144
, with respect to any
decision adverse to the patentability of any original or proposed amended or new
claim of the patent.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3016; amended Sept. 16, 2011, Public Law 112-29, secs. 6(h)(2) (effective Sept.
16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 307
Certificate of patentability, unpatentability,
and claim cancellation.
(a) In a reexamination proceeding under this chapter, when the
time for appeal has expired or any appeal proceeding has terminated, the
Director will issue and publish a certificate canceling any claim of the
patent finally determined to be unpatentable, confirming any claim of the
patent determined to be patentable, and incorporating in the patent any
proposed amended or new claim determined to be patentable.
(b) Any proposed amended or new claim determined to be
patentable and incorporated into a patent following a reexamination
proceeding will have the same effect as that specified in
section
252
for reissued patents on the right of any person
who made, purchased, or used within the United States, or imported into the
United States, anything patented by such proposed amended or new claim, or
who made substantial preparation for the same, prior to issuance of a
certificate under the provisions of subsection (a) of this section.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3016; amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(8), 108 Stat. 4990;
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S.
1948 sec. 4732(a)(10)(A))amended Sept. 16, 2011, Public Law 112-29, sec. 20(j),
125 Stat. 284, effective Sept. 16, 2012.)
[top]
CHAPTER CHAPTER 31 - INTER PARTES REVIEW
311 (note) Inter partes review applicability provisions.
311 Inter partes review.
312 Petitions.
313 Preliminary response to petition.
314 Institution of inter partes review.
315 Relation to other proceedings or actions.
316 Conduct of inter partes review.
317 Settlement.
318 Decision of the Board.
319 Appeal.
35 U.S.C. 311 (note)
Inter partes review applicability provisions.
The post-grant review provisions of the Leahy-Smith
America Invents Act (AIA) apply only to proceedings commenced on or after Sept.
16, 2012, except that— (1) the extension of jurisdiction to the United States
Court of Appeals for the Federal Circuit to entertain appeals of decisions of the
Patent Trial and Appeal Board in reexaminations under the amendment made by
subsection (c)(2) of the AIA shall be deemed to take effect on Sept. 16, 2011 and
shall extend to any decision of the Board of Patent Appeals and Interferences with
respect to a reexamination that is entered before, on, or after Sept. 16, 2011;
(2) the provisions of
35 U.S.C. 6
(pre‑AIA)
134 (pre‑AIA)
, and
141
(pre‑AIA)
as in effect on
Sept. 15, 2012
shall continue to apply to inter partes reexaminations that are requested
under
35 U.S.C.
311 (pre‑AIA)
before Sept. 16, 2012;
(3) the Patent Trial and Appeal Board may be deemed to
be the Board of Patent Appeals and Interferences for purposes of appeals of inter
partes reexaminations that are requested under 35 U.S.C. 311 (pre‑AIA) before
Sept. 16, 2012; and
(4) the Director’s right under the fourth sentence of
35 U.S.C. 143, to intervene in an appeal from a decision entered by the Patent
Trial and Appeal Board shall be deemed to extend to inter partes reexaminations
that are requested under 35 U.S.C. 311 before Sept. 16, 2012.
(Sept. 16, 2011, Public Law 112-29, sec. 7(e)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 311
Inter partes review.
(a) IN GENERAL.—Subject to the provisions of this chapter, a
person who is not the owner of a patent may file with the Office a petition
to institute an inter partes review of the patent. The Director shall
establish, by regulation, fees to be paid by the person requesting the
review, in such amounts as the Director determines to be reasonable,
considering the aggregate costs of the review.
(b) SCOPE.—A petitioner in an inter partes review may
request to cancel as unpatentable 1 or more claims of a patent only on a
ground that could be raised under section
102
or
103
and only on the
basis of prior art consisting of patents or printed publications.
(c) FILING DEADLINE.*—A petition for inter partes review
shall be filed after the later of either—
(1) the date that is 9 months after the grant
of a patent; or
(2) if a post-grant review is instituted under
chapter 32, the date of the termination of such post-grant review.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (c) amended
Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16,
2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat.
284.)
NOTE:
Pursuant to Public Law 112-274,
sec. 1(d), 126 Stat. 2456, Jan. 14, 2013, the filing deadlines of subsection
(c) do not apply to patents not subject to the first inventor to file
provisions of the AIA (
35 U.S.C. 100 (note)
).
[top]
35 U.S.C. 312
Petitions.
(a) REQUIREMENTS OF PETITION.—A petition filed under section
311
may be considered only if—
(1) the petition is accompanied by payment of
the fee established by the Director under section
311
(2) the petition identifies all real parties in
interest;
(3) the petition identifies, in writing and
with particularity, each claim challenged, the grounds on which the
challenge to each claim is based, and the evidence that supports the
grounds for the challenge to each claim, including—
(A) copies of patents and printed
publications that the petitioner relies upon in support of the
petition; and
(B) affidavits or declarations of
supporting evidence and opinions, if the petitioner relies on
expert opinions;
(4) the petition provides such other
information as the Director may require by regulation; and
(5) the petitioner provides copies of any of
the documents required under paragraphs (2), (3), and (4) to the
patent owner or, if applicable, the designated representative of the
patent owner.
(b) PUBLIC AVAILABILITY.—As soon as practicable after the
receipt of a petition under section
311
, the Director shall
make the petition available to the public.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (b) amended
Nov. 2, 2002, Public Law 107-273, secs. 13105 and 13202, 116 Stat.1900-1901;
subsections (a) and (c) amended Sept. 16, 2011, Public Law 112-29, sec.
6(c)(3), 125 Stat. 284; amended Sept. 16, 2011, Public Law 112-29, sec. 6(a),
125 Stat. 284, effective Sept. 16, 2012.)
[top]
35 U.S.C. 313
Preliminary response to petition.
If an inter partes review petition is filed under section
311
, the patent owner shall have the right to file a
preliminary response to the petition, within a time period set by the Director,
that sets forth reasons why no inter partes review should be instituted based upon
the failure of the petition to meet any requirement of this chapter.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16, 2011, Public Law
112-29, sec. 6(c)(3), 125 Stat. 284 and further amended by Public Law 112-29,
sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 314
Institution of inter partes review.
(a) THRESHOLD.—The Director may not authorize an inter
partes review to be instituted unless the Director determines that the
information presented in the petition filed under section
311
and any response filed under section
313
shows that there is
a reasonable likelihood that the petitioner would prevail with respect to at
least 1 of the claims challenged in the petition.
(b) TIMING.—The Director shall determine whether to
institute an inter partes review under this chapter pursuant to a petition
filed under section
311
within 3 months
after—
(1) receiving a preliminary response to the petition
under section
313
; or
(2) if no such preliminary response is filed, the last
date on which such response may be filed.
(c) NOTICE.—The Director shall notify the petitioner and
patent owner, in writing, of the Director’s determination under subsection
(a), and shall make such notice available to the public as soon as is
practicable. Such notice shall include the date on which the review shall
commence.
(d) NO APPEAL.—The determination by the Director
whether to institute an inter partes review under this section shall be
final and nonappealable.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b)(1) amended Nov. 2,
2002, Public Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16, 2011,
Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 315
Relation to other proceedings or
actions.
(a) INFRINGER’S CIVIL ACTION.—
(1) INTER PARTES REVIEW BARRED BY CIVIL ACTION.—An
inter partes review may not be instituted if, before the date on which
the petition for such a review is filed, the petitioner or real party
in interest filed a civil action challenging the validity of a claim
of the patent.
(2) STAY OF CIVIL ACTION.—If the petitioner or real
party in interest files a civil action challenging the validity of a
claim of the patent on or after the date on which the petitioner files
a petition for inter partes review of the patent, that civil action
shall be automatically stayed until either—
(A) the patent owner moves the court to
lift the stay;
(B) the patent owner files a civil action
or counterclaim alleging that the petitioner or real party in
interest has infringed the patent; or
(C) the petitioner or real party in
interest moves the court to dismiss the civil action.
(3) TREATMENT OF COUNTERCLAIM.—A counterclaim
challenging the validity of a claim of a patent does not constitute a
civil action challenging the validity of a claim of a patent for
purposes of this subsection.
(b) PATENT OWNER’S ACTION.—An inter partes review may not be
instituted if the petition requesting the proceeding is filed more than 1
year after the date on which the petitioner, real party in interest, or
privy of the petitioner is served with a complaint alleging infringement of
the patent. The time limitation set forth in the preceding sentence shall
not apply to a request for joinder under subsection (c).
(c) JOINDER.—If the Director institutes an inter partes
review, the Director, in his or her discretion, may join as a party to that
inter partes review any person who properly files a petition under section
311
that the Director, after receiving a preliminary
response under section
313
or the expiration of
the time for filing such a response, determines warrants the institution of
an inter partes review under section
314
(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections
135(a)
251
, and
252
, and
chapter
30
, during the pendency of an inter partes review, if
another proceeding or matter involving the patent is before the Office, the
Director may determine the manner in which the inter partes review or other
proceeding or matter may proceed, including providing for stay, transfer,
consolidation, or termination of any such matter or proceeding.
(e) ESTOPPEL.—
(1) PROCEEDINGS BEFORE THE OFFICE.—The
petitioner in an inter partes review of a claim in a patent under this
chapter that results in a final written decision under section
318(a)
, or the
real party in interest or privy of the petitioner, may not request or
maintain a proceeding before the Office with respect to that claim on
any ground that the petitioner raised or reasonably could have raised
during that inter partes review.
(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The
petitioner in an inter partes review of a claim in a patent under this
chapter that results in a final written decision under section
318(a)
, or the
real party in interest or privy of the petitioner, may not assert
either in a civil action arising in whole or in part under section
1338 of title 28 or in a proceeding before the International Trade
Commission under section 337 of the Tariff Act of 1930 that the claim
is invalid on any ground that the petitioner raised or reasonably
could have raised during that inter partes review.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b) amended Nov. 2,
2002, Public Law 107-273, sec. 13106, 116 Stat. 1900; subsection (c) amended
Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16,
2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat.
284.)
[top]
35 U.S.C. 316
Conduct of inter partes review.
(a) REGULATIONS.—The Director shall prescribe regulations—
(1) providing that the file of any proceeding
under this chapter shall be made available to the public, except that
any petition or document filed with the intent that it be sealed
shall, if accompanied by a motion to seal, be treated as sealed
pending the outcome of the ruling on the motion;
(2) setting forth the standards for the showing
of sufficient grounds to institute a review under section 314(a);
(3) establishing procedures for the submission
of supplemental information after the petition is filed;
(4) establishing and governing inter partes
review under this chapter and the relationship of such review to other
proceedings under this title;
(5) setting forth standards and procedures for
discovery of relevant evidence, including that such discovery shall be
limited to—
(A) the deposition of witnesses submitting
affidavits or declarations; and
(B) what is otherwise necessary in the
interest of justice;
(6) prescribing sanctions for abuse of
discovery, abuse of process, or any other improper use of the
proceeding, such as to harass or to cause unnecessary delay or an
unnecessary increase in the cost of the proceeding;
(7) providing for protective orders governing
the exchange and submission of confidential information;
(8) providing for the filing by the patent owner
of a response to the petition under section
313
after an inter partes review has been
instituted, and requiring that the patent owner file with such
response, through affidavits or declarations, any additional factual
evidence and expert opinions on which the patent owner relies in
support of the response;
(9) setting forth standards and procedures for
allowing the patent owner to move to amend the patent under subsection
(d) to cancel a challenged claim or propose a reasonable number of
substitute claims, and ensuring that any information submitted by the
patent owner in support of any amendment entered under subsection (d)
is made available to the public as part of the prosecution history of
the patent;
(10) providing either party with the right to an
oral hearing as part of the proceeding;
(11) requiring that the final determination in
an inter partes review be issued not later than 1 year after the date
on which the Director notices the institution of a review under this
chapter, except that the Director may, for good cause shown, extend
the 1-year period by not more than 6 months, and may adjust the time
periods in this paragraph in the case of joinder under section
315(c)
(12) setting a time period for requesting
joinder under section
315(c)
; and
(13) providing the petitioner with at least 1
opportunity to file written comments within a time period established
by the Director.
(b) CONSIDERATIONS.—In prescribing regulations under this
section, the Director shall consider the effect of any such regulation on
the economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to timely
complete proceedings instituted under this chapter.
(c) PATENT TRIAL AND APPEAL BOARD.—The Patent Trial
and Appeal Board shall, in accordance with section
conduct each inter partes review instituted under this chapter.
(d) AMENDMENT OF THE PATENT.—
(1) IN GENERAL.—During an inter partes review
instituted under this chapter, the patent owner may file 1 motion to
amend the patent in 1 or more of the following ways:
(A) Cancel any challenged patent claim.
(B) For each challenged claim, propose a
reasonable number of substitute claims.
(2) ADDITIONAL MOTIONS.—Additional motions to
amend may be permitted upon the joint request of the petitioner and
the patent owner to materially advance the settlement of a proceeding
under section
317
, or as
permitted by regulations prescribed by the Director.
(3) SCOPE OF CLAIMS.—An amendment under this
subsection may not enlarge the scope of the claims of the patent or
introduce new matter.
(e) EVIDENTIARY STANDARDS.—In an inter partes review
instituted under this chapter, the petitioner shall have the burden of
proving a proposition of unpatentability by a preponderance of the evidence.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16, 2011, Public Law
112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 317
Settlement.
(a) IN GENERAL.—An inter partes review instituted under this
chapter shall be terminated with respect to any petitioner upon the joint
request of the petitioner and the patent owner, unless the Office has
decided the merits of the proceeding before the request for termination is
filed. If the inter partes review is terminated with respect to a petitioner
under this section, no estoppel under section
315(e)
shall attach to the petitioner, or to the real
party in interest or privy of the petitioner, on the basis of that
petitioner’s institution of that inter partes review. If no petitioner
remains in the inter partes review, the Office may terminate the review or
proceed to a final written decision under section
318(a)
(b) AGREEMENTS IN WRITING.—Any agreement or understanding
between the patent owner and a petitioner, including any collateral
agreements referred to in such agreement or understanding, made in
connection with, or in contemplation of, the termination of an inter partes
review under this section shall be in writing and a true copy of such
agreement or understanding shall be filed in the Office before the
termination of the inter partes review as between the parties. At the
request of a party to the proceeding, the agreement or understanding shall
be treated as business confidential information, shall be kept separate from
the file of the involved patents, and shall be made available only to
Federal Government agencies on written request, or to any person on a
showing of good cause.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (b) amended
Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16,
2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat.
284.)
[top]
35 U.S.C. 318
Decision of the Board.
(a) FINAL WRITTEN DECISION.—If an inter partes review
is instituted and not dismissed under this chapter, the Patent Trial and
Appeal Board shall issue a final written decision with respect to the
patentability of any patent claim challenged by the petitioner and any new
claim added under section
316(d)
(b) CERTIFICATE.—If the Patent Trial and Appeal Board
issues a final written decision under subsection (a) and the time for appeal
has expired or any appeal has terminated, the Director shall issue and
publish a certificate canceling any claim of the patent finally determined
to be unpatentable, confirming any claim of the patent determined to be
patentable, and incorporating in the patent by operation of the certificate
any new or amended claim determined to be patentable.
(c) INTERVENING RIGHTS.—Any proposed amended or new
claim determined to be patentable and incorporated into a patent following
an inter partes review under this chapter shall have the same effect as that
specified in section
252
for reissued patents
on the right of any person who made, purchased, or used within the United
States, or imported into the United States, anything patented by such
proposed amended or new claim, or who made substantial preparation therefor,
before the issuance of a certificate under subsection (b).
(d) DATA ON LENGTH OF REVIEW.—The Office shall make
available to the public data describing the length of time between the
institution of, and the issuance of a final written decision under
subsection (a) for, each inter partes review.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16, 2011, Public Law
112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 319
Appeal.
A party dissatisfied with the final written decision of
the Patent Trial and Appeal Board under section
318(a)
may appeal the decision pursuant to sections
141
through
144
. Any party to the inter
partes review shall have the right to be a party to the appeal.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(a)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
CHAPTER CHAPTER 31 (pre‑AIA) - OPTIONAL INTER PARTES REEXAMINATION
PROCEDURES
311 (pre‑AIA) Request for inter partes reexamination.
312 (transitional) Determination of issue by Director.
313 (transitional) Inter partes reexamination order by
Director.
314 (pre‑AIA) Conduct of inter partes reexamination
proceedings.
315 (pre‑AIA) Appeal.
316 (pre‑AIA) Certificate of patentability, unpatentability, and claim
cancellation.
317 (pre‑AIA) Inter partes reexamination prohibited.
318 (pre‑AIA) Stay of litigation.
35 U.S.C. 311 (pre‑AIA)
Request for inter partes
reexamination.
[Editor Note: Applicable
only
to a request for inter partes
reexamination filed prior to September 16, 2012.]
(a) IN GENERAL.— Any third-party requester at any time may file
a request for inter partes reexamination by the Office of a patent on the
basis of any prior art cited under the provisions of
section
301
(b) REQUIREMENTS.— The request shall—
(1) be in writing, include the identity of the real party
in interest, and be accompanied by payment of an inter partes
reexamination fee established by the Director under
section
41
; and
(2) set forth the pertinency and manner of applying cited
prior art to every claim for which reexamination is requested.
(c) COPY.— The Director promptly shall send a copy of the
request to the owner of record of the patent.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (c) amended
Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)
[top]
35 U.S.C. 312 (transitional)
Determination of issue by Director.
[Editor Note: Applicable to requests for inter partes reexamination filed
on or after Sept. 16, 2011, but before Sept. 16, 2012.]
(a) REEXAMINATION.— Not later than 3 months after the filing of
a request for inter partes reexamination under
section
311
, the Director shall determine whether the
information presented in the request shows that there is a reasonable
likelihood that the requester would prevail with respect to at least 1 of
the claims challenged in the request, with or without consideration of other
patents or printed publications. A showing that there is a reasonable
likelihood that the requester would prevail with respect to at least 1 of
the claims challenged in the request is not precluded by the fact that a
patent or printed publication was previously cited by or to the Office or
considered by the Office.
(b) RECORD.— A record of the Director’s determination under
subsection (a) shall be placed in the official file of the patent, and a
copy shall be promptly given or mailed to the owner of record of the patent
and to the third-party requester.
(c) FINAL DECISION.— A determination by the Director under
subsection (a) shall be final and non-appealable. Upon a determination that
the showing required by subsection (a) has not been made, the Director may
refund a portion of the inter partes reexamination fee required under
section
311
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (b) amended Nov. 2,
2002, Public Law 107-273, secs. 13105 and 13202, 116 Stat.1900-1901; amended
Sept. 16, 2011, Public Law 112-29, sec. 6(c)(3), 125 Stat. 284.)
[top]
35 U.S.C. 313 (transitional)
Inter partes reexamination order by
Director.
[Editor Note: Applicable to requests for inter partes reexamination filed
on or after Sept. 16, 2011, but before Sept. 16, 2012.]
If, in a determination made under section
312(a)
, the
Director finds that it has been shown that there is a reasonable likelihood that
the requester would prevail with respect to at least 1 of the claims challenged in
the request, the determination shall include an order for inter partes
reexamination of the patent for resolution of the question. The order may be
accompanied by the initial action of the Patent and Trademark Office on the merits
of the inter partes reexamination conducted in accordance with
section
314
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16, 2011, Public Law
112-29, sec. 6(c)(3), 125 Stat. 284.)
[top]
35 U.S.C. 314 (pre‑AIA)
Conduct of inter partes reexamination
proceedings.
[Editor Note: Applicable
only
to a request for inter partes
reexamination filed prior to September 16, 2012.]
(a) IN GENERAL.— Except as otherwise provided in this section,
reexamination shall be conducted according to the procedures established for
initial examination under the provisions of
sections
132
and
133
. In any inter partes
reexamination proceeding under this chapter, the patent owner shall be
permitted to propose any amendment to the patent and a new claim or claims,
except that no proposed amended or new claim enlarging the scope of the
claims of the patent shall be permitted.
(b) RESPONSE.—
(1) With the exception of the inter partes reexamination
request, any document filed by either the patent owner or the
third-party requester shall be served on the other party. In addition,
the Office shall send to the third-party requester a copy of any
communication sent by the Office to the patent owner concerning the
patent subject to the inter partes reexamination proceeding.
(2) Each time that the patent owner files a response to
an action on the merits from the Patent and Trademark Office, the
third-party requester shall have one opportunity to file written
comments addressing issues raised by the action of the Office or the
patent owner’s response thereto, if those written comments are
received by the Office within 30 days after the date of service of the
patent owner’s response.
(c) SPECIAL DISPATCH.— Unless otherwise provided by the
Director for good cause, all inter partes reexamination proceedings under
this section, including any appeal to the Board of Patent Appeals and
Interferences, shall be conducted with special dispatch within the
Office.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b)(1) amended Nov. 2,
2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)
[top]
35 U.S.C. 315 (pre‑AIA)
Appeal.
[Editor Note: Applicable
only
to a request for inter partes
reexamination filed prior to September 16, 2012.]
(a) PATENT OWNER.— The patent owner involved in an inter partes
reexamination proceeding under this chapter—
(1) may appeal under the provisions of
section 134
and may appeal under the provisions of
sections 141
through
144,
with respect to any decision adverse to
the patentability of any original or proposed amended or new claim of
the patent; and
(2) may be a party to any appeal taken by a third-party
requester under subsection (b).
(b) THIRD-PARTY REQUESTER.— A third-party requester—
(1) may appeal under the provisions of
section
134
, and may appeal under the provisions of
sections
141
through
144
, with respect to any final decision
favorable to the patentability of any original or proposed amended or
new claim of the patent; and
(2) may, subject to subsection (c), be a party to any
appeal taken by the patent owner under the provisions of section
134
or sections
141
through
144
(c) CIVIL ACTION.— A third-party requester whose request for an
inter partes reexamination results in an order under
section
313
is estopped from asserting at a later time, in any
civil action arising in whole or in part under section 1338 of title 28, the
invalidity of any claim finally determined to be valid and patentable on any
ground which the third-party requester raised or could have raised during
the inter partes reexamination proceedings. This subsection does not prevent
the assertion of invalidity based on newly discovered prior art unavailable
to the third-party requester and the Patent and Trademark Office at the time
of the inter partes reexamination proceedings.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b) amended Nov. 2,
2002, Public Law 107-273, sec. 13106, 116 Stat. 1900; subsection (c) amended
Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)
[top]
35 U.S.C. 316 (pre‑AIA)
Certificate of patentability, unpatentability
and claim cancellation.
[Editor Note: Applicable
only
to a request for inter partes
reexamination filed prior to September 16, 2012.]
(a) IN GENERAL.— In an inter partes reexamination proceeding
under this chapter, when the time for appeal has expired or any appeal
proceeding has terminated, the Director shall issue and publish a
certificate canceling any claim of the patent finally determined to be
unpatentable, confirming any claim of the patent determined to be
patentable, and incorporating in the patent any proposed amended or new
claim determined to be patentable.
(b) AMENDED OR NEW CLAIM.— Any proposed amended or new claim
determined to be patentable and incorporated into a patent following an
inter partes reexamination proceeding shall have the same effect as that
specified in
section 252
of this
title for reissued patents on the right of any person who made, purchased,
or used within the United States, or imported into the United States,
anything patented by such proposed amended or new claim, or who made
substantial preparation therefor, prior to issuance of a certificate under
the provisions of subsection (a) of this section.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)).)
[top]
35 U.S.C. 317 (pre‑AIA)
Inter partes reexamination
prohibited.
[Editor Note: Applicable
only
to a request for inter partes
reexamination filed prior to September 16, 2012.]
(a) ORDER FOR REEXAMINATION.— Notwithstanding any provision of
this chapter, once an order for inter partes reexamination of a patent has
been issued under
section 313
, neither the
third-party requester nor its privies may file a subsequent request for
inter partes reexamination of the patent until an inter partes reexamination
certificate is issued and published under
section
316
, unless authorized by the Director.
(b) FINAL DECISION.— Once a final decision has been entered
against a party in a civil action arising in whole or in part under section
1338 of title 28, that the party has not sustained its burden of proving the
invalidity of any patent claim in suit or if a final decision in an inter
partes reexamination proceeding instituted by a third-party requester is
favorable to the patentability of any original or proposed amended or new
claim of the patent, then neither that party nor its privies may thereafter
request an inter partes reexamination of any such patent claim on the basis
of issues which that party or its privies raised or could have raised in
such civil action or inter partes reexamination proceeding, and an inter
partes reexamination requested by that party or its privies on the basis of
such issues may not thereafter be maintained by the Office, notwithstanding
any other provision of this chapter. This subsection does not prevent the
assertion of invalidity based on newly discovered prior art unavailable to
the third-party requester and the Patent and Trademark Office at the time of
the inter partes reexamination proceedings.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (b) amended
Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)
[top]
35 U.S.C. 318 (pre‑AIA)
Stay of litigation.
[Editor Note: Applicable
only
to a request for inter partes
reexamination filed prior to September 16, 2012.]
Once an order for inter partes reexamination of a patent has
been issued under
section 313
, the patent owner
may obtain a stay of any pending litigation which involves an issue of
patentability of any claims of the patent which are the subject of the inter
partes reexamination order, unless the court before which such litigation is
pending determines that a stay would not serve the interests of justice.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)).)
[top]
CHAPTER CHAPTER 32 - POST-GRANT REVIEW
321 (note) Post-grant review applicability.
321 Post-grant review.
322 Petitions.
323 Preliminary response to petition.
324 Institution of post-grant review.
325 Relation to other proceedings or actions.
326 Conduct of post-grant review.
327 Settlement.
328 Decision of the Board.
329 Appeal.
35 U.S.C. 321 (note)
Post-grant review applicability.
(1) APPLICABILITY.—
(A) The post-grant review provisions of the
Leahy-Smith America Invents Act (AIA) apply only to patents subject to
the first inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
), except as provided in
AIA §
18
and paragraph 2 below.
(B) LIMITATION.—The Director may impose a limit
on the number of post-grant reviews that may be instituted under
chapter 32
of
title 35, United States Code, during each of the first 4 1-year
periods in which the these provisions are in effect.
(2) PENDING INTERFERENCES.—
(A) PROCEDURES IN GENERAL.—The Director shall
determine, and include in the regulations issued under paragraph (1),
the procedures under which an interference commenced before the
effective date set forth in paragraph (2)(A) is to proceed, including
whether such interference—
(i) is to be dismissed without prejudice
to the filing of a petition for a post-grant review under
chapter
32
of title
35, United States Code; or
(ii) is to proceed as if the AIA had not
been enacted.
(B) PROCEEDINGS BY PATENT TRIAL AND APPEAL
BOARD.—For purposes of an interference that is commenced before the
effective date set forth in paragraph (2)(A), the Director may deem
the Patent Trial and Appeal Board to be the Board of Patent Appeals
and Interferences, and may allow the Patent Trial and Appeal Board to
conduct any further proceedings in that interference.
(C) APPEALS.—The authorization to appeal or
have remedy from derivation proceedings in sections
141(d)
and
146
of title 35, United States Code, as amended
by this Act, and the jurisdiction to entertain appeals from derivation
proceedings in section 1295(a)(4)(A) of title 28, United States Code,
as amended by this Act, shall be deemed to extend to any final
decision in an interference that is commenced before the effective
date set forth in paragraph (2)(A) of this subsection and that is not
dismissed pursuant to this paragraph.
(Sept. 16, 2011, Public Law 112-29, sec. 6(f), 125
Stat. 284.)
[top]
35 U.S.C. 321
Post-grant review.
(a) IN GENERAL.—Subject to the provisions of this
chapter, a person who is not the owner of a patent may file with the Office
a petition to institute a post-grant review of the patent. The Director
shall establish, by regulation, fees to be paid by the person requesting the
review, in such amounts as the Director determines to be reasonable,
considering the aggregate costs of the post-grant review.
(b) SCOPE.—A petitioner in a post-grant review may
request to cancel as unpatentable 1 or more claims of a patent on any ground
that could be raised under paragraph (2) or (3) of section
282(b)
(relating to invalidity of the patent or any
claim).
(c) FILING DEADLINE.—A petition for a post-grant
review may only be filed not later than the date that is 9 months after the
date of the grant of the patent or of the issuance of a reissue patent (as
the case may be).
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d)
(effective Sept. 16, 2012), 125 Stat. 284.)
(Public Law 112-29, sec. 18, 125 Stat. 284 (Sept.
16, 2011) provided a transitional program for covered business method patents
(see
AIA § 18
).)
[top]
35 U.S.C. 322
Petitions.
(a) REQUIREMENTS OF PETITION.—A petition filed under
section
321
may be considered
only if—
(1) the petition is accompanied by payment of
the fee established by the Director under section
321
(2) the petition identifies all real parties in
interest;
(3) the petition identifies, in writing and
with particularity, each claim challenged, the grounds on which the
challenge to each claim is based, and the evidence that supports the
grounds for the challenge to each claim, including—
(A) copies of patents and printed
publications that the petitioner relies upon in support of the
petition; and
(B) affidavits or declarations of
supporting evidence and opinions, if the petitioner relies on
other factual evidence or on expert opinions;
(4) the petition provides such other
information as the Director may require by regulation; and
(5) the petitioner provides copies of any of
the documents required under paragraphs (2), (3), and (4) to the
patent owner or, if applicable, the designated representative of the
patent owner.
(b) PUBLIC AVAILABILITY.—As soon as practicable after
the receipt of a petition under section
321
, the Director shall make the petition available
to the public.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 323
Preliminary response to petition.
If a post-grant review petition is filed under section
321
, the patent owner shall have the right to file a
preliminary response to the petition, within a time period set by the Director,
that sets forth reasons why no post-grant review should be instituted based upon
the failure of the petition to meet any requirement of this chapter.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 324
Institution of post-grant review.
(a) THRESHOLD.—The Director may not authorize a
post-grant review to be instituted unless the Director determines that the
information presented in the petition filed under section
321
, if such information is not rebutted, would
demonstrate that it is more likely than not that at least 1 of the claims
challenged in the petition is unpatentable.
(b) ADDITIONAL GROUNDS.—The determination required
under subsection (a) may also be satisfied by a showing that the petition
raises a novel or unsettled legal question that is important to other
patents or patent applications.
(c) TIMING.—The Director shall determine whether to
institute a post-grant review under this chapter pursuant to a petition
filed under section
321
within 3 months
after—
(1) receiving a preliminary response to the
petition under section
323
; or
(2) if no such preliminary response is filed,
the last date on which such response may be filed.
(d) NOTICE.—The Director shall notify the petitioner
and patent owner, in writing, of the Director’s determination under
subsection (a) or (b), and shall make such notice available to the public as
soon as is practicable. Such notice shall include the date on which the
review shall commence.
(e) NO APPEAL.—The determination by the Director
whether to institute a post-grant review under this section shall be final
and nonappealable.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 325
Relation to other proceedings or actions.
(a) INFRINGER’S CIVIL ACTION.—
(1) POST-GRANT REVIEW BARRED BY CIVIL ACTION.—A
post-grant review may not be instituted under this chapter if, before
the date on which the petition for such a review is filed, the
petitioner or real party in interest filed a civil action challenging
the validity of a claim of the patent.
(2) STAY OF CIVIL ACTION.—If the petitioner or
real party in interest files a civil action challenging the validity
of a claim of the patent on or after the date on which the petitioner
files a petition for post-grant review of the patent, that civil
action shall be automatically stayed until either—
(A) the patent owner moves the court to
lift the stay;
(B) the patent owner files a civil action
or counterclaim alleging that the petitioner or real party in
interest has infringed the patent; or
(C) the petitioner or real party in
interest moves the court to dismiss the civil action.
(3) TREATMENT OF COUNTERCLAIM.—A counterclaim
challenging the validity of a claim of a patent does not constitute a
civil action challenging the validity of a claim of a patent for
purposes of this subsection.
(b) PRELIMINARY INJUNCTIONS.—If a civil action
alleging infringement of a patent is filed within 3 months after the date on
which the patent is granted, the court may not stay its consideration of the
patent owner’s motion for a preliminary injunction against infringement of
the patent on the basis that a petition for post-grant review has been filed
under this chapter or that such a post-grant review has been instituted
under this chapter.
(c) JOINDER.—If more than 1 petition for a post-grant
review under this chapter is properly filed against the same patent and the
Director determines that more than 1 of these petitions warrants the
institution of a post-grant review under section
324
, the Director may consolidate such reviews into
a single post-grant review.
(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections
135(a)
251
, and
252
, and
chapter
30
, during the pendency of any post- grant review
under this chapter, if another proceeding or matter involving the patent is
before the Office, the Director may determine the manner in which the
post-grant review or other proceeding or matter may proceed, including
providing for the stay, transfer, consolidation, or termination of any such
matter or proceeding. In determining whether to institute or order a
proceeding under this chapter,
chapter 30
, or chapter
31, the Director may take into account whether, and reject the petition or
request because, the same or substantially the same prior art or arguments
previously were presented to the Office.
(e) ESTOPPEL.—
(1) PROCEEDINGS BEFORE THE OFFICE.—The
petitioner in a post-grant review of a claim in a patent under this
chapter that results in a final written decision under section
328(a)
, or the
real party in interest or privy of the petitioner, may not request or
maintain a proceeding before the Office with respect to that claim on
any ground that the petitioner raised or reasonably could have raised
during that post-grant review.
(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The
petitioner in a post-grant review of a claim in a patent under this
chapter that results in a final written decision under section
328(a)
, or the
real party in interest or privy of the petitioner, may not assert
either in a civil action arising in whole or in part under section
1338 of title 28 or in a proceeding before the International Trade
Commission under section 337 of the Tariff Act of 1930 that the claim
is invalid on any ground that the petitioner raised or reasonably
could have raised during that post-grant review.
(f) REISSUE PATENTS.—A post-grant review may not be
instituted under this chapter if the petition requests cancellation of a
claim in a reissue patent that is identical to or narrower than a claim in
the original patent from which the reissue patent was issued, and the time
limitations in section
321(c)
would bar filing
a petition for a post-grant review for such original patent.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 326
Conduct of post-grant review.
(a) REGULATIONS.—The Director shall prescribe
regulations—
(1) providing that the file of any proceeding
under this chapter shall be made available to the public, except that
any petition or document filed with the intent that it be sealed
shall, if accompanied by a motion to seal, be treated as sealed
pending the outcome of the ruling on the motion;
(2) setting forth the standards for the showing
of sufficient grounds to institute a review under subsections (a) and
(b) of section
324
(3) establishing procedures for the submission
of supplemental information after the petition is filed;
(4) establishing and governing a post-grant
review under this chapter and the relationship of such review to other
proceedings under this title;
(5) setting forth standards and procedures for
discovery of relevant evidence, including that such discovery shall be
limited to evidence directly related to factual assertions advanced by
either party in the proceeding;
(6) prescribing sanctions for abuse of
discovery, abuse of process, or any other improper use of the
proceeding, such as to harass or to cause unnecessary delay or an
unnecessary increase in the cost of the proceeding;
(7) providing for protective orders governing
the exchange and submission of confidential information;
(8) providing for the filing by the patent owner
of a response to the petition under section
323
after a post-grant review has been
instituted, and requiring that the patent owner file with such
response, through affidavits or declarations, any additional factual
evidence and expert opinions on which the patent owner relies in
support of the response;
(9) setting forth standards and procedures for
allowing the patent owner to move to amend the patent under subsection
(d) to cancel a challenged claim or propose a reasonable number of
substitute claims, and ensuring that any information submitted by the
patent owner in support of any amendment entered under subsection (d)
is made available to the public as part of the prosecution history of
the patent;
(10) providing either party with the right to an
oral hearing as part of the proceeding;
(11) requiring that the final determination in
any post-grant review be issued not later than 1 year after the date
on which the Director notices the institution of a proceeding under
this chapter, except that the Director may, for good cause shown,
extend the 1-year period by not more than 6 months, and may adjust the
time periods in this paragraph in the case of joinder under section
325(c)
; and
(12) providing the petitioner with at least 1
opportunity to file written comments within a time period established
by the Director.
(b) CONSIDERATIONS.—In prescribing regulations under
this section, the Director shall consider the effect of any such regulation
on the economy, the integrity of the patent system, the efficient
administration of the Office, and the ability of the Office to timely
complete proceedings instituted under this chapter.
(c) PATENT TRIAL AND APPEAL BOARD.—The Patent Trial
and Appeal Board shall, in accordance with section
conduct each post-grant review instituted under this chapter.
(d) AMENDMENT OF THE PATENT.—
(1) IN GENERAL.—During a post-grant review
instituted under this chapter, the patent owner may file 1 motion to
amend the patent in 1 or more of the following ways:
(A) Cancel any challenged patent
claim.
(B) For each challenged claim, propose a
reasonable number of substitute claims.
(2) ADDITIONAL MOTIONS.—Additional motions to
amend may be permitted upon the joint request of the petitioner and
the patent owner to materially advance the settlement of a proceeding
under section
327
, or upon the
request of the patent owner for good cause shown.
(3) SCOPE OF CLAIMS.—An amendment under this
subsection may not enlarge the scope of the claims of the patent or
introduce new matter.
(e) EVIDENTIARY STANDARDS.—In a post-grant review
instituted under this chapter, the petitioner shall have the burden of
proving a proposition of unpatentability by a preponderance of the evidence.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 327
Settlement.
(a) IN GENERAL.—A post-grant review instituted under
this chapter shall be terminated with respect to any petitioner upon the
joint request of the petitioner and the patent owner, unless the Office has
decided the merits of the proceeding before the request for termination is
filed. If the post-grant review is terminated with respect to a petitioner
under this section, no estoppel under section
325(e)
shall attach to the petitioner, or to the real
party in interest or privy of the petitioner, on the basis of that
petitioner’s institution of that post-grant review. If no petitioner remains
in the post-grant review, the Office may terminate the post-grant review or
proceed to a final written decision under section
328(a)
(b) AGREEMENTS IN WRITING.—Any agreement or
understanding between the patent owner and a petitioner, including any
collateral agreements referred to in such agreement or understanding, made
in connection with, or in contemplation of, the termination of a post-grant
review under this section shall be in writing, and a true copy of such
agreement or understanding shall be filed in the Office before the
termination of the post-grant review as between the parties. At the request
of a party to the proceeding, the agreement or understanding shall be
treated as business confidential information, shall be kept separate from
the file of the involved patents, and shall be made available only to
Federal Government agencies on written request, or to any person on a
showing of good cause.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 328
Decision of the Board.
(a) FINAL WRITTEN DECISION.—If a post-grant review is
instituted and not dismissed under this chapter, the Patent Trial and Appeal
Board shall issue a final written decision with respect to the patentability
of any patent claim challenged by the petitioner and any new claim added
under section
326(d)
(b) CERTIFICATE.—If the Patent Trial and Appeal Board
issues a final written decision under subsection (a) and the time for appeal
has expired or any appeal has terminated, the Director shall issue and
publish a certificate canceling any claim of the patent finally determined
to be unpatentable, confirming any claim of the patent determined to be
patentable, and incorporating in the patent by operation of the certificate
any new or amended claim determined to be patentable.
(c) INTERVENING RIGHTS.—Any proposed amended or new
claim determined to be patentable and incorporated into a patent following a
post-grant review under this chapter shall have the same effect as that
specified in section
252
for reissued patents
on the right of any person who made, purchased, or used within the United
States, or imported into the United States, anything patented by such
proposed amended or new claim, or who made substantial preparation therefor,
before the issuance of a certificate under subsection (b).
(d) DATA ON LENGTH OF REVIEW.—The Office shall make
available to the public data describing the length of time between the
institution of, and the issuance of a final written decision under
subsection (a) for, each post-grant review.
(Added Sept. 16, 2011, Public Law 112-29, secs. 6(d)
and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 329
Appeal.
A party dissatisfied with the final written decision of
the Patent Trial and Appeal Board under section
328(a)
may appeal the decision pursuant to sections
141
through
144
. Any party to the
post-grant review shall have the right to be a party to the appeal.
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
PART PART IV - PATENT COOPERATION TREATY
PART IV
CHAPTER CHAPTER 35 - DEFINITIONS
351 Definitions.
35 U.S.C. 351
Definitions.
When used in this part unless the context otherwise
indicates—
(a) The term “treaty” means the Patent Cooperation Treaty done
at Washington, on June 19, 1970.
(b) The term “Regulations,” when capitalized, means the
Regulations under the treaty, done at Washington on the same date as the
treaty. The term “regulations,” when not capitalized, means the regulations
established by the Director under this title.
(c) The term “international application” means an application
filed under the treaty.
(d) The term “international application originating in the
United States” means an international application filed in the Patent and
Trademark Office when it is acting as a Receiving Office under the treaty,
irrespective of whether or not the United States has been designated in that
international application.
(e) The term “international application designating the United
States” means an international application specifying the United States as a
country in which a patent is sought, regardless where such international
application is filed.
(f) The term “Receiving Office” means a national patent office
or intergovernmental organization which receives and processes international
applications as prescribed by the treaty and the Regulations.
(g) The terms “International Searching Authority” and
“International Preliminary Examining Authority” mean a national patent
office or intergovernmental organization as appointed under the treaty which
processes international applications as prescribed by the treaty and the
Regulations.
(h) The term “International Bureau” means the international
intergovernmental organization which is recognized as the coordinating body
under the treaty and the Regulations.
(i) Terms and expressions not defined in this part are to be
taken in the sense indicated by the treaty and the Regulations.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 685;
amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; Nov. 6,
1986, Public Law 99-616, sec. 2 (a)-(c), 100 Stat. 3485; Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
[top]
CHAPTER CHAPTER 36 - INTERNATIONAL STAGE
361 Receiving Office.
362 International Searching Authority and International Preliminary
Examining Authority.
363 International application designating the United States:
Effect.
363 (pre‑AIA) International application designating the United States:
Effect.
364 International stage: Procedure.
365 Right of priority; benefit of the filing date of a prior application.
366 Withdrawn international application.
367 Actions of other authorities: Review.
368 Secrecy of certain inventions; filing international applications in
foreign countries.
35 U.S.C. 361
Receiving Office.
(a) The Patent and Trademark Office shall act as a Receiving
Office for international applications filed by nationals or residents of the
United States. In accordance with any agreement made between the United
States and another country, the Patent and Trademark Office may also act as
a Receiving Office for international applications filed by residents or
nationals of such country who are entitled to file international
applications.
(b) The Patent and Trademark Office shall perform all acts
connected with the discharge of duties required of a Receiving Office,
including the collection of international fees and their transmittal to the
International Bureau.
(c) International applications filed in the Patent and
Trademark Office shall be filed in the English language, or an English
translation shall be filed within such later time as may be fixed by the
Director.
(d) The international fee, and the transmittal and search fees
prescribed under
section 376(a)
of this
part, shall either be paid on filing of an international application or
within such later time as may be fixed by the Director.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686;
amended Nov. 8, 1984, Public Law 98-622, sec. 401(a), 403(a), 98 Stat.
3391-3392; Nov. 6, 1986, Public Law 99-616, sec. 2(d), 100 Stat. 3485; Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A))); subsection (c) amended Dec. 18, 2012, Public Law 112-211,
sec. 202(b)(7), 126 Stat. 1536.)
[top]
35 U.S.C. 362
International Searching Authority and
International Preliminary Examining Authority.
(a) The Patent and Trademark Office may act as an International
Searching Authority and International Preliminary Examining Authority with
respect to international applications in accordance with the terms and
conditions of an agreement which may be concluded with the International
Bureau, and may discharge all duties required of such Authorities, including
the collection of handling fees and their transmittal to the International
Bureau.
(b) The handling fee, preliminary examination fee, and any
additional fees due for international preliminary examination shall be paid
within such time as may be fixed by the Director.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686;
amended Nov. 8, 1984, Public Law 98-622, sec. 403 (a), 98 Stat. 3392; Nov. 6,
1986, Public Law 99-616, sec. 4, 100 Stat. 3485; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
[top]
35 U.S.C. 363
International application designating the
United States: Effect.
[Editor Note: Applicable to any patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 363 (pre‑AIA)
for
the law otherwise applicable.]
An international application designating the United States
shall have the effect, from its international filing date under
article 11
of the treaty, of a national application for patent regularly filed in the Patent
and Trademark Office.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
686; amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392;
amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 16,
2012) and 3(g) (effective March 16, 2013), 125 Stat. 284.)
[top]
35 U.S.C. 363 (pre‑AIA)
International application designating the
United States: Effect.
[Editor Note:
Not applicable
to any patent application
subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C.
363
for the law otherwise applicable.]
An international application designating the United States shall
have the effect, from its international filing date under
article 11
of the treaty, of a national application for patent regularly filed in the Patent
and Trademark Office except as otherwise provided in
section
102(e)
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686;
amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; amended
Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125
Stat. 284.)
[top]
35 U.S.C. 364
International stage: Procedure.
(a) International applications shall be processed by the Patent
and Trademark Office when acting as a Receiving Office, International
Searching Authority, or International Preliminary Examining Authority, in
accordance with the applicable provisions of the treaty, the Regulations,
and this title.
(b) An applicant’s failure to act within prescribed time limits
in connection with requirements pertaining to an international application
may be excused as provided in the treaty and the Regulations.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686;
amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; subsection
(a) amended Nov. 6, 1986, Public Law 99-616, sec. 5, 100 Stat. 3485; amended
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S.
1948 sec. 4732(a)(10)(A)); Dec. 18, 2012, sec. 202(b)(8), 126 Stat. 1536.)
[top]
35 U.S.C. 365
Right of priority; benefit of the filing date
of a prior application.
(a) In accordance with the conditions and requirements of
subsections (a) through (d) of
section 119
, a national
application shall be entitled to the right of priority based on a prior
filed international application which designated at least one country other
than the United States.
(b) In accordance with the conditions and requirements of
section
119(a)
and the treaty and the Regulations, an
international application designating the United States shall be entitled to
the right of priority based on a prior foreign application, or a prior
international application designating at least one country other than the
United States. The Director may establish procedures, including the
requirement for payment of the fee specified in section
41(a)(7)
, to accept an unintentionally delayed claim
for priority under the treaty and the Regulations, and to accept a priority
claim that pertains to an application that was not filed within the priority
period specified in the treaty and Regulations, but was filed within the
additional 2-month period specified under section
119(a)
or the treaty and Regulations.
(c) In accordance with the conditions and requirements of
section 120
, an international application designating
the United States shall be entitled to the benefit of the filing date of a
prior national application, a prior international application designating
the United States, or a prior international design application as defined in
section
381(a)(6)
designating
the United States, and a national application shall be entitled to the
benefit of the filing date of a prior international application designating
the United States. If any claim for the benefit of an earlier filing date is
based on a prior international application which designated but did not
originate in the United States, or a prior international design application
as defined in section
381(a)(6)
which
designated but did not originate in the United States, the Director may
require the filing in the Patent and Trademark Office of a certified copy of
such application together with a translation thereof into the English
language, if it was filed in another language.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686;
amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; Dec. 8,
1994, Public Law 103-465, sec. 532(c)(4), 108 Stat. 4987; Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec. 20(j)
(effective Sept. 16, 2012), 125 Stat. 284; subsection (b) amended Dec. 18,
2012, Public Law 112-211, sec. 201(c)(2), 126 Stat. 1535; subsection (c)
amended Dec. 18, 2012, Public Law 112-211, sec. 102(8) (effective May 13,
2015), 126 Stat. 1532.)
[top]
35 U.S.C. 366
Withdrawn international
application.
Subject to
section 367
of this part, if
an international application designating the United States is withdrawn or
considered withdrawn, either generally or as to the United States, under the
conditions of the treaty and the Regulations, before the applicant has complied
with the applicable requirements prescribed by
section 371(c)
of this part,
the designation of the United States shall have no effect after the date of
withdrawal and shall be considered as not having been made, unless a claim for
benefit of a prior filing date under
section 365(c)
of this section
was made in a national application, or an international application designating
the United States, or a claim for benefit under section
386(c)
was made in an international design application
designating the United States, filed before the date of such withdrawal. However,
such withdrawn international application may serve as the basis for a claim of
priority under
section 365 (a)
and
(b)
, or under section
386(a)
or
(b)
, if it designated a
country other than the United States.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687;
amended Nov. 8, 1984, Public Law 98-622, sec. 401(b), 98 Stat. 3391; amended
Dec. 18, 2012, Public Law 112-211, sec. 102(9) (effective May 13, 2015), 126
Stat. 1532.)
[top]
35 U.S.C. 367
Actions of other authorities:
Review.
(a) Where a Receiving Office other than the Patent and
Trademark Office has refused to accord an international filing date to an
international application designating the United States or where it has held
such application to be withdrawn either generally or as to the United
States, the applicant may request review of the matter by the Director, on
compliance with the requirements of and within the time limits specified by
the treaty and the Regulations. Such review may result in a determination
that such application be considered as pending in the national stage.
(b) The review under subsection (a) of this section, subject to
the same requirements and conditions, may also be requested in those
instances where an international application designating the United States
is considered withdrawn due to a finding by the International Bureau under
article
12
(3) of the treaty.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687;
amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat 3392; Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
[top]
35 U.S.C. 368
Secrecy of certain inventions; filing
international applications in foreign countries.
(a) International applications filed in the Patent and
Trademark Office shall be subject to the provisions of
chapter
17
(b) In accordance with
article 27
(8) of the
treaty, the filing of an international application in a country other than
the United States on the invention made in this country shall be considered
to constitute the filing of an application in a foreign country within the
meaning of
chapter 17
, whether or not the United States is
designated in that international application.
(c) If a license to file in a foreign country is refused or if
an international application is ordered to be kept secret and a permit
refused, the Patent and Trademark Office when acting as a Receiving Office,
International Searching Authority, or International Preliminary Examining
Authority, may not disclose the contents of such application to anyone not
authorized to receive such disclosure.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687;
amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; Nov. 6,
1986, Public Law 99-616, sec. 6, 100 Stat. 3486; amended Sept. 16, 2011, Public
Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
CHAPTER CHAPTER 37 - NATIONAL STAGE
371 National stage: Commencement.
372 National stage: Requirements and procedure.
373 [Repealed]
374 Publication of international application: Effect.
374 (pre‑AIA) Publication of international application:
Effect.
375 Patent issued on international application: Effect.
375 (pre‑AIA) Patent issued on international application: Effect.
376 Fees.
35 U.S.C. 371
National stage: Commencement.
(a) Receipt from the International Bureau of copies of
international applications with any amendments to the claims, international
search reports, and international preliminary examination reports including
any annexes thereto may be required in the case of international
applications designating or electing the United States.
(b) Subject to subsection (f) of this section, the national
stage shall commence with the expiration of the applicable time limit under
article
22
(1) or (2), or under
article
39
(1)(a) of the treaty.
(c) The applicant shall file in the Patent and Trademark
Office—
(1) the national fee provided in
section
41(a)
(2) a copy of the international application, unless not
required under subsection (a) of this section or already communicated
by the International Bureau, and a translation into the English
language of the international application, if it was filed in another
language;
(3) amendments, if any, to the claims in the
international application, made under
article
19
of the treaty, unless such amendments have
been communicated to the Patent and Trademark Office by the
International Bureau, and a translation into the English language if
such amendments were made in another language;
(4) an oath or declaration of the inventor (or other
person authorized under
chapter 11
complying with the requirements of
section
115
and with regulations prescribed for oaths or
declarations of applicants;
(5) a translation into the English language of any
annexes to the international preliminary examination report, if such
annexes were made in another language.
(d) The requirement with respect to the national fee referred
to in subsection (c)(1), the translation referred to in subsection (c)(2),
and the oath or declaration referred to in subsection (c)(4) of this section
shall be complied with by the date of the commencement of the national stage
or by such later time as may be fixed by the Director. The copy of the
international application referred to in subsection (c)(2) shall be
submitted by the date of the commencement of the national stage. Failure to
comply with these requirements shall be regarded as abandonment of the
application by the parties thereof. The payment of a surcharge may be
required as a condition of accepting the national fee referred to in
subsection (c)(1) or the oath or declaration referred to in subsection
(c)(4) of this section if these requirements are not met by the date of the
commencement of the national stage. The requirements of subsection (c)(3) of
this section shall be complied with by the date of the commencement of the
national stage, and failure to do so shall be regarded as a cancellation of
the amendments to the claims in the international application made under
article
19
of the treaty. The requirement of subsection (c)(5)
shall be complied with at such time as may be fixed by the Director and
failure to do so shall be regarded as cancellation of the amendments made
under
article 34
(2)(b) of the treaty.
(e) After an international application has entered the national
stage, no patent may be granted or refused thereon before the expiration of
the applicable time limit under
article 28
or
article
41
of the treaty, except with the express consent of
the applicant. The applicant may present amendments to the specification,
claims, and drawings of the application after the national stage has
commenced.
(f) At the express request of the applicant, the national stage
of processing may be commenced at any time at which the application is in
order for such purpose and the applicable requirements of subsection (c) of
this section have been complied with.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 688;
amended Nov. 8, 1984, Public Law 98-622, sec. 402(a)-(d), 403(a), 98 Stat.
3391, 3392; subsections (a), (b), (c), (d), and (e) amended Nov. 6, 1986,
Public Law, 99-616, sec. 7, 100 Stat. 3486; subsection (c)(1) amended Dec. 10,
1991, Public Law 102-204, sec. 5(g)(2), 105 Stat. 1641; amended Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); subsection (d) amended Nov. 2, 2002, Public Law 107-273, sec.
13206, 116 Stat. 1905; amended Sept. 16, 2011, Public Law 112-29, secs. 20(i)
and (j) (effective Sept. 16, 2012), 125 Stat. 284; subsection (d) amended Dec.
18, 2012, Public Law 112-211, sec. 202(b)(9), 126 Stat. 1536.
[top]
35 U.S.C. 372
National stage: Requirements and
procedure.
(a) All questions of substance and, within the scope of the
requirements of the treaty and Regulations, procedure in an international
application designating the United States shall be determined as in the case
of national applications regularly filed in the Patent and Trademark
Office.
(b) In case of international applications designating but not
originating in, the United States—
(1) the Director may cause to be reexamined questions
relating to form and contents of the application in accordance with
the requirements of the treaty and the Regulations;
(2) the Director may cause the question of unity of
invention to be reexamined under
section
121
, within the scope of the requirements of the
treaty and the Regulations; and
(3) the Director may require a verification of the
translation of the international application or any other document
pertaining to the application if the application or other document was
filed in a language other than English.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689;
amended Nov. 8, 1984, Public Law 98-622, sec. 402(e), (f), 403(a), 98 Stat.
3392; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec.
20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 373
[Repealed.]
(Repealed Jan. 14, 2013, Public Law 112-274, sec. 1(i), 126
Stat. 2456.)
[top]
35 U.S.C. 374
Publication of international
application.
[Editor Note: Applicable to any patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 374 (pre‑AIA)
for
the law otherwise applicable.]
The publication under the treaty defined in section
351(a)
, of an international application designating the
United States shall be deemed a publication under section
122(b)
except as provided in section
154(d)
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
689; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-566 (S. 1948 sec. 4507(10)); amended Nov. 2, 2002, Public Law 107-273,
sec.13205, 116 Stat. 1903; amended Sept. 16, 2011, Public Law 112-29, secs.
20(j) (effective Sept. 16, 2012) and 3(g)(effective March 16, 2013), 125 Stat.
284.)
[top]
35 U.S.C. 374 (pre‑AIA)
Publication of international
application.
[Editor Note:
Not applicable
to any patent application
subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C. 374
for the law otherwise applicable.]
The publication under the treaty defined in
section
351(a)
, of an international application designating the
United States shall be deemed a publication under
section
122(b)
, except as provided in
sections
102(e)
and
154(d)
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689;
amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566
(S. 1948 sec. 4507(10)); amended Nov. 2, 2002, Public Law 107-273, sec.13205,
116 Stat. 1903; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j)
(effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 375
Patent issued on international application:
Effect.
[Editor Note: Applicable to any patent application subject to the first
inventor to file provisions of the AIA (see
35 U.S.C. 100
(note)
). See
35 U.S.C. 375 (pre‑AIA)
for
the law otherwise applicable.]
(a) A patent may be issued by the Director based on an
international application designating the United States, in accordance with
the provisions of this title. Such patent shall have the force and effect of
a patent issued on a national application filed under the provisions of
chapter 11
(b) Where due to an incorrect translation the scope of a
patent granted on an international application designating the United
States, which was not originally filed in the English language, exceeds the
scope of the international application in its original language, a court of
competent jurisdiction may retroactively limit the scope of the patent, by
declaring it unenforceable to the extent that it exceeds the scope of the
international application in its original language.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
689; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law
112-29, secs. 20(j) (effective Sept. 16, 2012) and 3(g)(effective March 16,
2013), 125 Stat. 284. )
[top]
35 U.S.C. 375 (pre‑AIA)
Patent issued on international application:
Effect.
[Editor Note:
Not applicable
to any patent application
subject to the first inventor to file provisions of the AIA (see
35 U.S.C. 100 (note)
). See
35 U.S.C.
375
for the law otherwise applicable.]
(a) A patent may be issued by the Director based on an
international application designating the United States, in accordance with
the provisions of this title. Subject to
section 102(e)
, such
patent shall have the force and effect of a patent issued on a national
application filed under the provisions of
chapter
11
(b) Where due to an incorrect translation the scope of a patent
granted on an international application designating the United States, which
was not originally filed in the English language, exceeds the scope of the
international application in its original language, a court of competent
jurisdiction may retroactively limit the scope of the patent, by declaring
it unenforceable to the extent that it exceeds the scope of the
international application in its original language.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689;
amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, sec.
20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
35 U.S.C. 376
Fees.
(a) The required payment of the international fee and the
handling fee, which amounts are specified in the Regulations, shall be paid
in United States currency. The Patent and Trademark Office shall charge a
national fee as provided in
section 41(a)
, and may
also charge the following fees:
(1) A transmittal fee (see
section
361(d))
(2) A search fee (see
section
361(d))
(3) A supplemental search fee (to be paid when
required).
(4) A preliminary examination fee and any additional fees
(see
section 362(b))
(5) Such other fees as established by the Director.
(b) The amounts of fees specified in subsection (a) of this
section, except the international fee and the handling fee, shall be
prescribed by the Director. He may refund any sum paid by mistake or in
excess of the fees so specified, or if required under the treaty and the
Regulations. The Director may also refund any part of the search fee, the
national fee, the preliminary examination fee and any additional fees, where
he determines such refund to be warranted.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 690,
amended Nov. 8, 1984, Public Law 98-622, sec. 402(g), 403(a), 98 Stat. 3392;
Nov. 6, 1986, Public Law 99-616, sec. 8(a) & (b), 100 Stat. 3486; Dec. 10,
1991, Public Law 102-204, sec. 5(g)(1), 105 Stat. 1640; amended Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501-582 (S. 1948 sec.
4732(a)(10)(A)); subsections (a)(1)-(a)(3) amended Nov. 2, 2002, Public Law
107-273, sec. 13206, 116 Stat. 1905.)
[top]
PART PART V - THE HAGUE AGREEMENT CONCERNING INTERNATIONAL REGISTRATION
OF INDUSTRIAL DESIGNS
PART V
CHAPTER CHAPTER 38 - INTERNATIONAL DESIGN APPLICATIONS
381 Definitions.
382 Filing international design applications.
383 International design application.
384 Filing date.
385 Effect of international design application.
386 Right of priority.
387 Relief from prescribed time limits.
388 Withdrawn or abandoned international design application.
389 Examination of international design application.
390 Publication of international design application.
35 U.S.C. 381
Definitions.
(a) IN GENERAL.—When used in this part, unless the
context otherwise indicates—
(1) the term "treaty" means the Geneva Act of
the Hague Agreement Concerning the International Registration of
Industrial Designs adopted at Geneva on July 2, 1999;
(2) the term "regulations"—
(A) when capitalized, means the Common
Regulations under the treaty; and
(B) when not capitalized, means the
regulations established by the Director under this title;
(3) the terms "designation", "designating", and
"designate" refer to a request that an international registration have
effect in a Contracting Party to the treaty;
(4) the term "International Bureau" means the
international intergovernmental organization that is recognized as the
coordinating body under the treaty and the Regulations;
(5) the term "effective registration date"
means the date of international registration determined by the
International Bureau under the treaty;
(6) the term "international design application"
means an application for international registration; and
(7) the term "international registration" means
the international registration of an industrial design filed under the
treaty.
(b) RULE OF CONSTRUCTION.—Terms and expressions not
defined in this part are to be taken in the sense indicated by the treaty
and the Regulations.
(Added Dec. 18, 2012, Public Law 112-211, sec.
101(a) (effective May 13, 2015), 126 Stat. 1527.)
[top]
35 U.S.C. 382
Filing international design
applications.
(a) IN GENERAL.—Any person who is a national of the
United States, or has a domicile, a habitual residence, or a real and
effective industrial or commercial establishment in the United States, may
file an international design application by submitting to the Patent and
Trademark Office an application in such form, together with such fees, as
may be prescribed by the Director.
(b) REQUIRED ACTION.—The Patent and Trademark Office
shall perform all acts connected with the discharge of its duties under the
treaty, including the collection of international fees and transmittal
thereof to the International Bureau. Subject to chapter 17, international
design applications shall be forwarded by the Patent and Trademark Office to
the International Bureau, upon payment of a transmittal fee.
(c) APPLICABILITY OF CHAPTER 16.—Except as otherwise
provided in this chapter, the provisions of chapter 16 shall apply.
(d) APPLICATION FILED IN ANOTHER COUNTRY.—An
international design application on an industrial design made in this
country shall be considered to constitute the filing of an application in a
foreign country within the meaning of chapter 17 if the international design
application is filed—
(1) in a country other than the United
States;
(2) at the International Bureau; or
(3) with an intergovernmental organization.
(Added Dec. 18, 2012, Public Law 112-211, sec.
101(a) (effective May 13, 2015), 126 Stat. 1528.)
[top]
35 U.S.C. 383
International design application.
In addition to any requirements pursuant to
chapter 16, the international design application shall contain—
(1) a request for international registration
under the treaty;
(2) an indication of the designated Contracting
Parties;
(3) data concerning the applicant as prescribed
in the treaty and the Regulations;
(4) copies of a reproduction or, at the choice
of the applicant, of several different reproductions of the industrial
design that is the subject of the international design application,
presented in the number and manner prescribed in the treaty and the
Regulations;
(5) an indication of the product or products
that constitute the industrial design or in relation to which the
industrial design is to be used, as prescribed in the treaty and the
Regulations;
(6) the fees prescribed in the treaty and the
Regulations; and
(7) any other particulars prescribed in the
Regulations.
(Added Dec. 18, 2012, Public Law 112-211, sec.
101(a) (effective May 13, 2015), 126 Stat. 1528.)
[top]
35 U.S.C. 384
Filing date.
(a) IN GENERAL.—Subject to
subsection
(b)
, the filing date of an international design
application in the United States shall be the effective registration date.
Notwithstanding the provisions of this part, any international design
application designating the United States that otherwise meets the
requirements of chapter 16 may be treated as a design application under
chapter 16.
(b) REVIEW.—An applicant may request review by the
Director of the filing date of the international design application in the
United States. The Director may determine that the filing date of the
international design application in the United States is a date other than
the effective registration date. The Director may establish procedures,
including the payment of a surcharge, to review the filing date under this
section. Such review may result in a determination that the application has
a filing date in the United States other than the effective registration
date.
(Added Dec. 18, 2012, Public Law 112-211, sec.
101(a), 126 Stat. 1529.)
[top]
35 U.S.C. 385
Effect of international design
application.
An international design application designating the
United States shall have the effect, for all purposes, from its filing date
determined in accordance with
section 384
, of an application
for patent filed in the Patent and Trademark Office pursuant to chapter 16.
(Added Dec. 18, 2012, Public Law 112-211, sec.
101(a) (effective May 13, 2015), 126 Stat. 1529.)
[top]
35 U.S.C. 386
Right of priority.
(a) NATIONAL APPLICATION.—In accordance with the
conditions and requirements of subsections
(a)
through
(d)
of
section 119
and
section 172
, a national application shall be entitled
to the right of priority based on a prior international design application
that designated at least 1 country other than the United States.
(b) PRIOR FOREIGN APPLICATION.—In accordance with the
conditions and requirements of subsections
(a)
through
(d)
of
section 119
and
section 172
and the treaty and the Regulations, an
international design application designating the United States shall be
entitled to the right of priority based on a prior foreign application, a
prior international application as defined in
section
351(c)
designating at least 1 country other than the
United States, or a prior international design application designating at
least 1 country other than the United States.
(c) PRIOR NATIONAL APPLICATION.—In accordance with
the conditions and requirements of
section 120
, an
international design application designating the United States shall be
entitled to the benefit of the filing date of a prior national application,
a prior international application as defined in
section
351(c)
designating the United States, or a prior
international design application designating the United States, and a
national application shall be entitled to the benefit of the filing date of
a prior international design application designating the United States. If
any claim for the benefit of an earlier filing date is based on a prior
international application as defined in
section 351(c)
which
designated but did not originate in the United States or a prior
international design application which designated but did not originate in
the United States, the Director may require the filing in the Patent and
Trademark Office of a certified copy of such application together with a
translation thereof into the English language, if it was filed in another
language.
(Added Dec. 18, 2012, Public Law 112-211, sec.
101(a) (effective May 13, 2015), 126 Stat. 1529.)
[top]
35 U.S.C. 387
Relief from prescribed time limits.
An applicant’s failure to act within prescribed time
limits in connection with requirements pertaining to an international design
application may be excused as to the United States upon a showing satisfactory to
the Director of unintentional delay and under such conditions, including a
requirement for payment of the fee specified in
section
41(a)(7)
, as may be prescribed by the Director.
(Added Dec. 18, 2012, Public Law 112-211, sec.
101(a) (effective May 13, 2015), 126 Stat. 1530.)
[top]
35 U.S.C. 388
Withdrawn or abandoned international design
application.
Subject to
sections 384
and
387
, if an international design application designating the
United States is withdrawn, renounced or canceled or considered withdrawn or
abandoned, either generally or as to the United States, under the conditions of
the treaty and the Regulations, the designation of the United States shall have no
effect after the date of withdrawal, renunciation, cancellation, or abandonment
and shall be considered as not having been made, unless a claim for benefit of a
prior filing date under
section 386(c)
was made in a
national application, or an international design application designating the
United States, or a claim for benefit under
section 365(c)
was made in an
international application designating the United States, filed before the date of
such withdrawal, renunciation, cancellation, or abandonment. However, such
withdrawn, renounced, canceled, or abandoned international design application may
serve as the basis for a claim of priority under
subsections
(a)
and
(b)
of
section
386
, or under
subsection (a)
or
(b)
of
section 365
, if it designated
a country other than the United States.
(Added Dec. 18, 2012, Public Law 112-211, sec.
101(a) (effective May 13, 2015), 126 Stat. 1530.)
[top]
35 U.S.C. 389
Examination of international design
application.
(a) IN GENERAL.—The Director shall cause an
examination to be made pursuant to this title of an international design
application designating the United States.
(b) APPLICABILITY OF CHAPTER 16.—All questions of
substance and, unless otherwise required by the treaty and Regulations,
procedures regarding an international design application designating the
United States shall be determined as in the case of applications filed under
chapter 16.
(c) FEES.—The Director may prescribe fees for filing
international design applications, for designating the United States, and
for any other processing, services, or materials relating to international
design applications, and may provide for later payment of such fees,
including surcharges for later submission of fees.
(d) ISSUANCE OF PATENT.—The Director may issue a
patent based on an international design application designating the United
States, in accordance with the provisions of this title. Such patent shall
have the force and effect of a patent issued on an application filed under
chapter 16.
(Added Dec. 18, 2012, Public Law 112-211, sec.
101(a) (effective May 13, 2015), 126 Stat. 1530.)
[top]
35 U.S.C. 390
Publication of international design
application.
The publication under the treaty of an international
design application designating the United States shall be deemed a publication
under
section
122(b)
(Added Dec. 18, 2012, Public Law 112-211, sec.
101(a) (effective May 13, 2015), 126 Stat. 1530.)
[top]
SELECTED PROVISIONS OF OTHER TITLES OF THE UNITED STATES
CODE
PART [Number missing in Part]SELECT PROVISIONS OF TITLE 18, UNITED STATES
CODE
CHAPTER [Number and Title missing in AppendixChapter]
18 U.S.C. 1001 Statements or entries generally.
18 U.S.C. 2071 Concealment, removal, or mutilation generally.
18 U.S.C. 1001
Statements or entries generally.
(a) Except as otherwise provided in this section, whoever, in
any matter within the jurisdiction of the executive, legislative, or
judicial branch of the Government of the United States, knowingly and
willfully—
(1) falsifies, conceals, or covers up by any trick,
scheme, or device a material fact;
(2) makes any materially false, fictitious, or fraudulent
statement or representation; or
(3) makes or uses any false writing or document knowing
the same to contain any materially false, fictitious, or fraudulent
statement or entry;
shall be fined under this title, imprisoned not
more than 5 years or, if the offense involves international or domestic
terrorism (as defined in section 2331), imprisoned not more than 8 years, or
both. If the matter relates to an offense under chapter 109A, 109B, 110, or
117, or section 1591, then the term of imprisonment imposed under this
section shall be not more than 8 years.
(b) Subsection (a) does not apply to a party to a judicial
proceeding, or that party’s counsel, for statements, representations,
writings or documents submitted by such party or counsel to a judge or
magistrate in that proceeding.
(c) With respect to any matter within the jurisdiction of the
legislative branch, subsection (a) shall apply only to —
(1) administrative matters, including a claim for
payment, a matter related to the procurement of property or services,
personnel or employment practices, or support services, or a document
required by law, rule, or regulation to be submitted to the Congress
or any office or officer within the legislative branch; or
(2) any investigation or review, conducted pursuant to
the authority of any committee, subcommittee, commission or office of
the Congress, consistent with applicable rules of the House or
Senate.
(Amended Sept. 13, 1994, Public Law 103-322, sec.
330016(1)(L), 108 Stat. 2147; Oct. 11, 1996, Public Law 104-292, Sec. 2, 110
Stat. 3459.)
(Subsection (a) amended Dec. 17, 2004, Public Law 108-458,
sec. 6703(a), 118 Stat. 3766; July 27, 2006, Public Law 109-248, sec. 141(c),
120 Stat. 603.)
[top]
18 U.S.C. 2071
Concealment, removal, or mutilation
generally.
(a) Whoever willfully and unlawfully conceals, removes,
mutilates, obliterates, or destroys, or attempts to do so, or, with intent
to do so takes and carries away any record, proceeding, map, book, paper,
document, or other thing, filed or deposited with any clerk or officer of
any court of the United States, or in any public office, or with any
judicial or public officer of the United States, shall be fined under this
title or imprisoned not more than three years, or both.
(b) Whoever, having the custody of any such record, proceeding,
map, book, document, paper, or other thing, willfully and unlawfully
conceals, removes, mutilates, obliterates, falsifies, or destroys the same,
shall be fined under this title or imprisoned not more than three years, or
both; and shall forfeit his office and be disqualified from holding any
office under the United States. As used in this subsection, the term
“office” does not include the office held by any person as a retired officer
of the Armed Forces of the United States.
(Amended Nov. 5, 1990, Public Law 101-510, sec. 552(a), 104
Stat. 1566; Sept. 13, 1994, Public Law 103-322, sec. 330016(1)(I), 108 Stat.
2147.)
[top]
UNCODIFIED LAW
PART [Number missing in Part]SELECT UNCODIFIED AIA PROVISIONS
CHAPTER [Number and Title missing in AppendixChapter]
AIA § 14 Tax strategies deemed within the prior art.
AIA § 18 Transitional program for covered business method
patents.
AIA § 33 Limitation on issuance of patents.
AIA § 14 (Related to 35 U.S.C. 102, 103)
Tax strategies deemed within the prior
art.
(a) IN GENERAL.—For purposes of evaluating an
invention under section
102
or
103
of title 35, United States Code, any strategy for
reducing, avoiding, or deferring tax liability, whether known or unknown at
the time of the invention or application for patent, shall be deemed
insufficient to differentiate a claimed invention from the prior art.
(b) DEFINITION.—For purposes of this section, the term
‘‘tax liability’’ refers to any liability for a tax under any Federal,
State, or local law, or the law of any foreign jurisdiction, including any
statute, rule, regulation, or ordinance that levies, imposes, or assesses
such tax liability.
(c) EXCLUSIONS.—This section does not apply to that
part of an invention that—
(1) is a method, apparatus, technology,
computer program product, or system, that is used solely for preparing
a tax or information return or other tax filing, including one that
records, transmits, transfers, or organizes data related to such
filing; or
(2) is a method, apparatus, technology,
computer program product, or system used solely for financial
management, to the extent that it is severable from any tax strategy
or does not limit the use of any tax strategy by any taxpayer or tax
advisor.
(d) RULE OF CONSTRUCTION.—Nothing in this section
shall be construed to imply that other business methods are patentable or
that other business method patents are valid.
(e) EFFECTIVE DATE; APPLICABILITY.—This section shall
take effect on [Sept. 16, 2011] and shall apply to any patent application
that is pending on, or filed on or after, that date, and to any patent that
is issued on or after that date.
(Sept. 16, 2011, Public Law 112-29, sec. 14, 125
Stat. 284.)
[top]
AIA § 18 (Related to 35 U.S.C. 321)
Transitional program for covered business
method patents.
(a) TRANSITIONAL PROGRAM.—
(1) ESTABLISHMENT.—Not later than Sept. 16,
2012, the Director shall issue regulations establishing and
implementing a transitional post-grant review proceeding for review of
the validity of covered business method patents. The transitional
proceeding implemented pursuant to this subsection shall be regarded
as, and shall employ the standards and procedures of, a post-grant
review under chapter
32
of title 35,
United States Code, subject to the following:
(A) 35 U.S.C. 321(c) and 35 U.S.C.
325(b), (e)(2), and (f), shall not apply to a transitional
proceeding.
(B) A person may not file a petition for
a transitional proceeding with respect to a covered business
method patent unless the person or the person’s real party in
interest or privy has been sued for infringement of the patent
or has been charged with infringement under that patent.
(C) A petitioner in a transitional
proceeding who challenges the validity of 1 or more claims in a
covered business method patent on a ground raised under 35
U.S.C. 102 or 103 as in effect on March 15, 2013 (pre‑AIA 35
U.S.C. 102 or 103), may support such ground only on the basis
of—
(i) prior art that is described by
pre‑AIA 35 U.S.C. 102(a); or
(ii) prior art that—
(I) discloses the invention
more than 1 year before the date of the application
for patent in the United States; and
(II) would be described by
pre‑AIA 35 U.S.C. 102(a) if the disclosure had been
made by another before the invention thereof by the
applicant for patent.
(D) The petitioner in a transitional
proceeding that results in a final written decision under 35
U.S.C. 328(a), with respect to a claim in a covered business
method patent, or the petitioner’s real party in interest, may
not assert, either in a civil action arising in whole or in part
under section 1338 of title 28, United States Code, or in a
proceeding before the International Trade Commission under
section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), that the
claim is invalid on any ground that the petitioner raised during
that transitional proceeding.
(E) The Director may institute a
transitional proceeding only for a patent that is a covered
business method patent.
(b) REQUEST FOR STAY.—
(1) IN GENERAL.—If a party seeks a stay of a
civil action alleging infringement of a patent under section
281
of title 35, United States Code, relating
to a transitional proceeding for that patent, the court shall decide
whether to enter a stay based on—
(A) whether a stay, or the denial
thereof, will simplify the issues in question and streamline the
trial;
(B) whether discovery is complete and
whether a trial date has been set;
(C) whether a stay, or the denial
thereof, would unduly prejudice the nonmoving party or present a
clear tactical advantage for the moving party; and
(D) whether a stay, or the denial
thereof, will reduce the burden of litigation on the parties and
on the court.
(2) REVIEW.—A party may take an immediate
interlocutory appeal from a district court’s decision under paragraph
(1). The United States Court of Appeals for the Federal Circuit shall
review the district court’s decision to ensure consistent application
of established precedent, and such review may be de novo.
(c) ATM EXEMPTION FOR VENUE PURPOSES.—In an action
for infringement under section
281
of title 35, United
States Code, of a covered business method patent, an automated teller
machine shall not be deemed to be a regular and established place of
business for purposes of section 1400(b) of title 28, United States Code.
(d) DEFINITION.—
(1) IN GENERAL.—For purposes of this section,
the term ‘‘covered business method patent’’ means a patent that claims
a method or corresponding apparatus for performing data processing or
other operations used in the practice, administration, or management
of a financial product or service, except that the term does not
include patents for technological inventions.
(2) REGULATIONS.—To assist in implementing the
transitional proceeding authorized by this section, the Director shall
issue regulations for determining whether a patent is for a
technological invention.
(e) RULE OF CONSTRUCTION.—Nothing in this section
shall be construed as amending or interpreting categories of patent-eligible
subject matter set forth under 35 U.S.C. 101.
(Sept. 16, 2011, Public Law 112-29, sec. 18, 125
Stat. 284, corrected Jan. 14, 2013, Public Law 112-274, sec. 1(b), 126 Stat.
2456.)
[top]
AIA § 33 (Related to 35 U.S.C. 101)
—Limitation on issuance of patents.
(a) LIMITATION.—Notwithstanding any other provision
of law, no patent may issue on a claim directed to or encompassing a human
organism.
(b) EFFECTIVE DATE.—
(1) IN GENERAL.— Subsection (a) shall apply to
any application for patent that is pending on, or filed on or after,
the date of the enactment of this Act [Sept. 16, 2011].
(2) PRIOR APPLICATIONS.—Subsection (a) shall not
affect the validity of any patent issued on an application to which
paragraph (1) does not apply.
(Sept. 16, 2011, Public Law 112-29, sec. 33, 125
Stat. 284.)
[top]
U.S.C. INDEX
[Follows on the next page]
[top]
INDEX OF PATENT LAWS
Abandoned applications, fee on petition to revive
27
41(a)(7)
Abandonment of application by failure to prosecute
133
371
Abandonment of invention:
Bar to patent
102 (pre‑AIA)
By violation of secrecy
182
Adjustment of patent term
154(b)
Administrative Patent Judges
Administrator, executor, or guardian
117
Advice of counsel with respect to infringement
298
Affidavits and depositions in contested cases, rules for taking
23
Agreement to terminate derivation proceeding
135
Agreement to terminate interference
135 (pre‑AIA)
Agriculture, Secretary of, to furnish information, and detail employees to
Director for plant patent
164
Allowance and issue of patents
153
Allowance, notice of
151
Amendment:
Copying claim of issued patent
135 (pre‑AIA)
Time for
133
135 (pre‑AIA)
Annual indexes of patents
10
Annual report of the Director
13
Apostille on assignment
261
Appeals to Patent Trial and Appeal Board
134
Fee
41(a)(6)
134
Hearing of
Reexamination proceedings
306
Appeals to Court of Appeals for the Federal Circuit
141
Certificate of decision of Court recorded in the United States Patent and
Trademark Office
144
Determination of Appeal; revision of decision
144
From Patent Trial and Appeal Board
141
Grounds of decision to be furnished court
143
Notice of appeal
142
Proceedings on appeal
143
Applicant for foreign patent, license required
184
Applicant, notified of interference
135 (pre‑AIA)
Application:
Abandonment of, by failure to prosecute
133
Assignment of
261
Confidential while pending
122
Continuing
120
Description; specification and claim
112
Divisional
121
Drawings
113
Effect of defective execution
26
Effective as of date of earliest foreign application in certain
cases
119
Examination of invention
131
Fee on filing
41(a)(1)
111
For deceased or legally incapacitated inventors
117
May be made by legal representative of deceased or legally incapacitated
inventor
117
Must be made within specified time after foreign application for right of
priority
119
Oath of inventor (See Oath in patent application)
Owned by Government
267
Provisional
111(b)
Publication
102
122(b)
181
Reissue
251
Secrecy order
181
What to contain
111
When filed by other than inventor
118
121
Appointments, how made
Arbitration of derivation proceeding
135
Arbitration of interferences
135 (pre‑AIA)
Arbitration, voluntary
294
Article patented marked with number of patent
287
Assignee:
May file application in certain cases
118
May file divisional application
121
May file reissue application
251
Patent may be issued to
152
Assignments, patent
261
Establishing prima facie execution of
261
Fees for recording
41(d)(2)
Must be recorded in United States Patent and Trademark Office to issue
patent to assignee
152
Patent may issue to assignee
152
Recording in Patent and Trademark Office
261
Attorney fees in infringement suit
285
Attorneys and agents:
May be refused recognition for misconduct
32
Petition to District Court, Eastern District of Virginia
32
Suspension or exclusion from practice
32
Unauthorized practitioners
33
Bars to grant of a patent
102 (pre‑AIA)
Benefit of earlier filing date in foreign country
119
Benefit of earlier filing date in United States
120
Best mode required
112
Bill in equity (See Civil action)
Board of Patent Appeals and Interferences (See Patent Trial and Appeal
Board)
Certificate of correction:
Applicant mistake
255
Office mistake
254
Certified copies:
Of drawings and specifications of patents issued
Of records, furnished to Court of Appeals for the Federal Circuit in
appeals
143
Citation of prior art in patent
301
Civil action:
Election of in case of derivation proceeding
141
Infringement
291
In case of derivation proceeding
146
Jurisdiction, plurality of parties, foreign party
146
To obtain patent
145
Claim of patent:
Independent or dependent
41(a)(2)
112
Independent or dependent, validity
282
Invalid, effect of
253
Invalid, suits on patent with
288
Notice of rejection
132
Too extensive or narrow, remedy
251
What to cover
112
Classification of patents
Clerk of United States Court may summon witness in
Contested cases
24
Must notify Director of patent suits
290
Commerce, Department of, United States Patent and Trademark Office
in
Commerce, Secretary of:
Appointments by
Commissioner for Patents:
How appointed and duties
Member of Board
Common ownership under joint research agreements
102(c)
103 (pre‑AIA)
Compensation, right to because of secrecy order
183
Composition of matter:
Patentable
101
Specimens of ingredients may be required
114
Concealment of records
18 U.S.C. 2071
Confidential status of application
122
205
Continuing application
120
Contributory infringement
271
Copies of records, fees
41(d)(2)
Correction of inventors in patent
256
Correction of letters patent
254
255
Damages for infringement
284
Day of taking any action or paying any fee falling on Saturday, Sunday, or
holiday
21
Death or legal incapacity of inventor
117
Decisions in patent cases, printing of
10
Declaration in lieu of oath
25
Dedication of term
253
Defective execution of documents, effect of
26
Defenses in action for infringement
282
Definitions
100
201
351
Derived patents:
Civil action
146
291
Jurisdiction
146
291
Time limit for filing for relief
291
Deposit with United States Postal Service
21
Depositions, Director may establish rules for
23
Deputy Director
Member of Board
Description of invention
112
Design patents:
Double recovery, not allowed
289
Fees
41
For what granted
171
Liability for infringement of
289
Penalty for unauthorized use of patented design
289
Prior foreign applications
172
Right of priority
172
Subject to same provisions as other patents
171
Term of
173
Unauthorized use of
289
Designated office
363
366
367
371
372
381
386
389
390
Determination of patent term adjustment
154
Director:
Annual report to Congress
13
Consult with Patent Public Advisory Committee
Duties of
How appointed
Intellectual Property Policy Issues, advises President, Federal
Departments
May disbar attorneys
32
May establish charges
41
May make rules for taking affidavits and depositions
23
Member of Board
Reexamination order
304
Shall cause examination to be made
131
To establish regulations
To furnish court with grounds of decision, on appeal
143
To prescribe rules and regulations governing recognition of attorneys and
agents
To sign patents or have name printed thereon and attested
153
To superintend grant of patents
Disbarment of attorneys and agents
32
Disclaimer:
Fee
41(a)(5)
How filed and by whom
253
Must be filed before commencement of suit to recover costs
288
Nature of
253
Disclosure, inventor initiated
102(b)
District Court for Eastern District of Virginia:
Jurisdiction
146
Review of disbarment of attorneys and agents
32
Division of application
121
Division of patent on reissue
251
Drawing:
Attached to patent
154
Part of patent
154
Printing of
10
When necessary
113
Duties of Director
Effective filing date, definition
100
Elected office
371
372
Employees of United States Patent and Trademark Office
How appointed
Restrictions on as to interest in patents
English language
361
Entry into national phase in United States
371
Error in naming inventors
116
Establishment, United States Patent and Trademark Office
Examination:
Applicants shall be notified of rejection on
132
To be made of application and alleged invention
131
Exceptions to prior art
102(b)
Exchange of United States Patent and Trademark Office Publications for other
publications
10
Exchange of printed copies of patents and published application of patents
with foreign countries
11
Executors, administrators or guardians
117
Extension of time to reply fee
41(a)(8)
Falsely making or labeling articles as patented
292
Federal agency, defined
201
Federal Assistance, inventions made with:
Confidentiality
205
Definitions
201
Disposition of rights
202
Domestic and foreign protection of federally owned inventions
207
Educational awards
212
March-in rights
203
Policy and objective of
200
Precedence of chapter over other Acts
210
Preference for United States industry
204
Regulations governing Federal licensing
208
Relationship to antitrust laws
211
Restrictions on licensing of federally owned inventions
209
Uniform clauses and regulations
206
Fees:
Amount of
41
For attorney awarded by court
285
For records, publications, and services not specified in
statute
41(d)(2)
How paid and refunded
42
Independent inventor, reduction
41(h)
International
361
376
Nonprofit organization, reduction
41(h)
Payable to Director
42(a)
Small business, reduction
41(h)
Small entity, reduction
41(h)
133
To witness contested cases
24
Filing application by other than inventor
118
Filing date requirements
111
Filing fee, Amount of
41(a)(1)
Foreign applications:
License to file required
184
Penalty for filing without license
185
186
Foreign countries, exchange of printed copies of patents and published
application of patents with
11
Foreign patentee:
Jurisdiction
293
Service
293
Foreign patents:
Copies of, exchanged for United States patents and published application
of patents
11
Prior, effect on United States application for patent
102
Foreign priority
119(a)-(d)
365
Fraudulent statements
18 U.S.C. 1001
Funding agreement, defined
201
Government interests in patents
267
Holiday, time for action expiring on
21
Importation of products made by a patented process
295
Improvements, patents may be granted for
101
Indexes of patents and patentees, printing of
10
Infringement, patent: Action for
281
Attorney fees
285
By United States, time limitation in suit for
286
Clerk of court to notify United States Patent and Trademark Office of
suit
290
Contributory
271
Damages for
284
Defenses in suit for
273
282
Defined
271
Design patent
289
Injunction
283
Notice of, necessary to recovery of damages
287
Pleading defense and special matters to be proved in suit
282
Suit for, when a claim is invalid
288
Temporary presence in United States
272
Time limitation
286
Injunctions may be granted by court having jurisdiction
283
Interference, patent:
Agreements, between parties, relating to termination, to be filed in
Patent and Trademark Office
135 (pre‑AIA)
Appeal to court
141 (pre‑AIA)
Arbitration
135 (pre‑AIA)
Determination of priority
102 (pre‑AIA)
135 (pre‑AIA)
Parties to be notified of
135 (pre‑AIA)
Review of decision by civil action
145 (pre‑AIA)
146 (pre‑AIA)
Rules for taking testimony
23
International application
351
365
366
367
375
Fees
376
National phase in United States
371
Priority rights
365
International Bureau
351
361
362
371
International Design Application:
Application Requirements
383
Examination
389
Filing
382
384
Priority
386
Publication
390
International Preliminary Examining Authority
362
364
368
International Searching Authority
351
362
364
368
International studies
Inter partes review:
Appeal of
319
Conduct of
316
Decision of the Board
318
Notice
314
Petitions requirements
312
Preliminary response to petition
313
Relation to other proceedings
315
Request
311
Settlement
317
Intervening rights on reissue
252
Invalid patent claim disclaimer
288
Invalidity of term extension
282
Invention, defined
100
Inventions promotion, improper and deceptive
297
Inventions in outer space
105
Inventions patentable
101
Inventions previously patented
102
Inventor:
Correction of patent
256
Death or legal incapacity
117
Definition
100
Disclosure
102(b)
May obtain patent
101
Oath for joint
116
To make application
111
Inventors certificate priority right
119
Issue of patent
151
Issue fee
41(a)(4)
If not paid within three months, patent withheld
151
Nonpayment
41(c)
151
Payment of
151
Joinder of parties in patent cases
299
Joint inventors
100
116
256
Joint owners
262
Joint research agreement defined
100
Joint research agreement, common ownership under
102(c)
Jurisdiction of District Court for the Eastern District of
Virginia
32
145
146
154
293
Legal representative of deceased or legally incapacitated
inventor
117
Liability of States
296
Libraries, public, copies of patents and published applications for patents
for
12
41(d)
Library
License for foreign filing
184
Limitation on damages
154
286
287
Machines patentable
100
Maintenance fees
41(b)
Late payment
41(c)
Manufactures patentable
101
Marking articles falsely as patented
292
Marking articles patented
287
Micro entity defined
123
Misjoinder of inventor
116
256
Mistake in patent, certificate thereof issued
254
255
Model, shall be furnished if required
114
Money:
Paid by mistake or in excess, refunded
42
Received for fees, etc. to be paid into Treasury
42
Multiple dependent claim
112
Fee
41(a)(2)
Mutilation of records
18 U.S.C. 2071
National Security
122
181
National stage of international application
371
372
New matter inadmissible in reissue
251
New matter, may not be introduced by amendment
132
Nonjoinder of inventor
256
Nonobviousness
103
Nonprofit organization, defined
201
Nonresident patentee
293
Notice as regards patents:
As to proof in infringement suits
282
Of allowance of patent
151
Of appeal to the Court of Appeals for the Federal Circuit
142
143
Of patent suit, decision to be given United States Patent and Trademark
Office by clerk of court
290
Of rejection of an application
132
Of suit to be entered on file of patent
290
To the public by Federal agency
209
To the public that invention is patented
287
Novelty
102
Oath in patent application
115
152
Declaration in lieu of
25
Joint inventors
116
Made by inventor
115
Requirements of
115
To be made by legal representative if inventor is deceased or legally
incapacitated
117
Obviousness
103
Officer of United States Patent and Trademark Office may attest
patents
153
Officers and employees:
Of United States Patent and Trademark Office
Of United States Patent and Trademark Office, restrictions on as to
interests in patents
Official Gazette:
Exchange for publications
11
Printing and distribution of
11
Public Advisory Committee Report
Owners, joint
262
Ownership interest, recordation of
261
Paris Convention
119
Patent and Trademark Office: See United States Patent and Trademark
Office
Patent Cooperation Treaty:
Definitions
351
Patent fees
41
Disposition of
42
Patent laws, printing of
10
Patent pending, false marking as
292
Patent Public Advisory Committee
Appointment, timing and basis
Duties
Consultation with Director
Patent term adjustment
154
Patent term extension application
156
Patentability, conditions for
102
103
Patentable inventions
101
Patented article, marked as such
287
Patent Trial and Appeal Board, how constituted
Patentee:
Defined
100
Patents:
Application for
111
Assignment of
261
Based on international application
375
Certified copies of
Classification of
Contents and duration of
154
Copies supplied to public libraries
12
41(d)(2)
Date, duration, and form
154
Design (See Design Patents or International Design
Applications)
Exchange of printed copies with foreign countries
11
Fee on issuing
41
Filing application in foreign country
184
For what granted
101
How issued, attested, and recorded
153
May be granted to assignee
152
May be withheld in certain cases
181
Obtainable by civil action
145
Personal property
261
Presumption of validity
282
Price of copies
41(d)(2)
Printing of
10
Reissuing of, when defective
251
Rights of invention made with federal assistance
200 - 212
Restrictions on officers and employees of United States Patent and
Trademark Office as to interest in
Surrender of, to take effect on reissue
251
Term
154
156
Term adjustment
154
Term extension
156
Time of issue, payment of issue fee
151
To be authenticated by seal of United States Patent and Trademark
Office
When to issue
151
Withheld for nonpayment of issue fee
151
Patent rights in inventions made with Federal
assistance
200-212
Confidentiality
205
Definitions
201
Disposition of rights
202
Domestic and foreign protection of federally owned inventions
207
Educational awards
212
March-in rights
203
Policy and objective of
200
Precedence of chapter over other Acts
210
Preference for United States industry
204
Regulations governing federal licensing
208
Relationship to antitrust laws
211
Restrictions on licensing of federally owned inventions
209
Uniform clauses and regulations
206
Period for response
21
133
Photolithography, Headings of drawings printed
10
Plant patents:
Claim
162
164
Description
162
163
Fees
41
Nature of right
163
Plants patentable
161
Secretary of Agriculture to furnish information and detail
employees
164
Pleading and proof in action for infringement
282
Post-grant review:
Appeal of
329
Conduct of
326
Decision of the Board
328
Initiation of
321
Notice
324
Petitions requirements
322
Preliminary response to petition
323
Relation to other proceedings
325
Settlement
327
Postal Service deposit
21
Practical application, defined
201
Pre-issuance opposition, when prohibited
122
Presumption of product made by patented process
295
Presumption of validity of patents
282
Printed publication bar to a patent
102(b) (pre‑AIA)
Printing:
Decisions in patent cases
10
Of papers filed
22
United States Patent and Trademark Office
10
Printing headings of drawings by United States Patent and Trademark
Office
10
Prior art, defined
102
Prior art, citation of
301
Prior commercial use as a defense to infringement
273
Priority, foreign
119
365
386
Priority, right of, under treaty or law
119
For design applications
172
386
Process defined
100
Process Patent Amendment Act of 1988
287
Process patentable
101
Product made by patent process
295
Property of United States Patent and Trademark Office
Provisional applications
111(b)
119(e)
Provisional rights
154
Protest and pre-issuance opposition, when prohibited
122(c)
Public use or sale
102
Publication of international application, effect
374
Publication of patent applications
122
181
Publications regarding patents and trademarks
10
Receiving Office
351
361
364
367
368
Recording of assignments
261
Reexamination order by Director
304
313 (pre‑AIA)
Reexamination procedure:
Appeal
134
141
306
315 (pre‑AIA)
319
329
Certificate of patentability, unpatentability, and claim
cancellation
307
316 (pre‑AIA)
Conduct of reexamination proceedings
305
314 (pre‑AIA)
Determination of issue by Director
303
312 (pre‑AIA)
Determination of new question
303
312 (pre‑AIA)
Ex Parte
302-307
Inter Partes
311 (pre‑AIA)-318 (pre‑AIA)
When prohibited
317 (pre‑AIA)
Reinstatement of proceedings
27
Request
302
311 (pre‑AIA)
Special dispatch
305
314 (pre‑AIA)
Stay of litigation
318 (pre‑AIA)
Reexamination to be made after first rejection, if desired
132
References, to be cited on examination
132
Refund of money paid by mistake or in excess
42
Reissue of patents:
Application fee
41
Application may be made by assignee in certain cases
251
By reason of defective claims
251
Effect of
252
For unexpired term of original patent
251
Intervening rights
252
Of defective patents
251
To contain no new matter
251
Rejection, applicant shall be notified of reasons for
132
Remedy for infringement of patent
281
Removal of records
18 U.S.C. 2071
Report to Congress, annual
13
Request for reexamination proceeding
302
311 (pre‑AIA)
Restrictions on officers and employees of United States Patent and Trademark
Office as to interest in patents
Retention of revenue
Revival if delay unintentional
133
Right of foreign priority
365
386
Right to compensation because of secrecy order
183
Rules for taking testimony, Director to establish
23
Rules of practice:
Authority for
Printing of
10
Saturday, time for action expiring on
21
Seal of United States Patent and Trademark Office
Secrecy of applications
122
Secrecy of certain inventions
181 - 188
Secrecy of international application
368
Secrecy order
181
Small business firm, defined
201
Small entity status
2(b)(2)
41(h)
Specification(s):
Contents of
112
If defective, reissue to correct
251
Part of patent
154
Printing of
10
41(d)(2)
Uncertified copies, price of
41(d)(2)
Specimens, may be required
114
Subpoenas to witnesses
24
Suit against the United States
286
Suit in equity (See Civil action)
Sunday, time for action expiring on
21
Supplemental examination
257
Surcharge for later filing of fee or oath
111
Term extension:
For administrative delays
154
For delays due to derivation proceedings, secrecy orders, and/or appellate
review
154
Regulatory review
156
Term of patent:
Design
173
Disclaimer of
253
Extension
156
Period
154
Testimony, rules for taking
23
Time:
Expiring on Saturday, Sunday, or holiday
21
For payment of issue fee
151
For taking action in Government cases
267
Limitation on damages
286
Within which action must be taken
133
Title of invention
154
Trademark fees
42(c)
Trademarks, reference to
10
Translation error in international application
375
Unauthorized disclosure
182
Unauthorized person may not lawfully assist persons in transaction of
business before the Office
33
Under Secretary of Commerce for Intellectual Property
United States as designated office
363
381
386
389
390
United States, defined
100
United States Patent and Trademark Office:
In Department of Commerce
Library
Printing
10
Rules, authority for
Seal of
Unpatented article, penalty for deceptive marking
292
Verified translation requirement
372
Voluntary arbitration
294
Withdrawal of international application
366
Withdrawal of international design application
388
Withholding of patent
181
Witness:
Failing to attend or refusing to testify
24
Fees of, interference cases
24
In interference summoned by clerk of United States court
24
When in contempt, punishment
24
[top]
UNITED STATES PATENT AND TRADEMARK OFFICE
35 U.S.C. 1 - Establishment.
35 U.S.C. 2 - Powers and duties.
35 U.S.C. 3 - Officers and employees.
35 U.S.C. 4 - Restrictions on officers and employees as to interest in patents.
35 U.S.C. 5 - Patent and Trademark Office Public Advisory Committees.
35 U.S.C. 6 - Patent Trial and Appeal Board.
35 U.S.C. 6 (pre‑AIA) - Board of Patent Appeals and Interferences.
35 U.S.C. 7 - Library.
35 U.S.C. 8 - Classification of patents.
35 U.S.C. 9 - Certified copies of records.
35 U.S.C. 10 - Publications.
35 U.S.C. 11 - Exchange of copies of patents and applications with foreign countries.
35 U.S.C. 12 - Copies of patents and applications for public libraries.
35 U.S.C. 13 - Annual report to Congress.
35 U.S.C. 21 - Filing date and day for taking action.
35 U.S.C. 22 - Printing of papers filed.
35 U.S.C. 23 - Testimony in Patent and Trademark Office cases.
35 U.S.C. 24 - Subpoenas, witnesses.
35 U.S.C. 25 - Declaration in lieu of oath.
35 U.S.C. 26 - Effect of defective execution.
35 U.S.C. 27 - Revival of applications; reinstatement of reexamination proceedings.
35 U.S.C. 31 - [Repealed.]
35 U.S.C. 32 - Suspension or exclusion from practice.
35 U.S.C. 33 - Unauthorized representation as practitioner.
35 U.S.C. 41 - Patent fees; patent and trademark search systems.
35 U.S.C. 42 - Patent and Trademark Office funding.
PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
35 U.S.C. 100 (note) - AIA First inventor to file provisions.
35 U.S.C. 100 - Definitions.
35 U.S.C. 100 (pre‑AIA) - Definitions.
35 U.S.C. 101 - Inventions patentable.
35 U.S.C. 102 - Conditions for patentability; novelty.
35 U.S.C. 102 (pre‑AIA) - Conditions for patentability; novelty and loss of right to patent.
35 U.S.C. 103 - Conditions for patentability; non-obvious subject matter.
35 U.S.C. 103 (pre‑AIA) - Conditions for patentability; non-obvious subject matter.
35 U.S.C. 104 - [Repealed.]
35 U.S.C. 104 (pre‑AIA) - Invention made abroad.
35 U.S.C. 105 - Inventions in outer space.
35 U.S.C. 111 - Application.
35 U.S.C. 111 (pre-PLT (AIA)) - Application.
35 U.S.C. 111 (pre‑AIA) - Application.
35 U.S.C. 112 - Specification.
35 U.S.C. 112 (pre‑AIA) - Specification.
35 U.S.C. 113 - Drawings.
35 U.S.C. 114 - Models, specimens.
35 U.S.C. 115 - Inventor’s oath or declaration.
35 U.S.C. 115 (pre‑AIA) - Oath of applicant.
35 U.S.C. 116 - Inventors.
35 U.S.C. 116 (pre‑AIA) - Inventors.
35 U.S.C. 117 - Death or incapacity of inventor.
35 U.S.C. 118 - Filing by other than inventor.
35 U.S.C. 118 (pre‑AIA) - Filing by other than inventor.
35 U.S.C. 119 - Benefit of earlier filing date; right of priority.
35 U.S.C. 119 (pre‑AIA) - Benefit of earlier filing date; right of priority.
35 U.S.C. 120 - Benefit of earlier filing date in the United States.
35 U.S.C. 120 (pre‑AIA) - Benefit of earlier filing date in the United States.
35 U.S.C. 121 - Divisional applications.
35 U.S.C. 121 (pre‑AIA) - Divisional applications.
35 U.S.C. 122 - Confidential status of applications; publication of patent applications.
35 U.S.C. 123 - Micro entity defined.
35 U.S.C. 131 - Examination of application.
35 U.S.C. 132 - Notice of rejection; reexamination.
35 U.S.C. 133 - Time for prosecuting application.
35 U.S.C. 134 - Appeal to the Patent Trial and Appeal Board.
35 U.S.C. 134 (transitional) - Appeal to the Board of Patent Appeals and Interferences.
35 U.S.C. 134 (pre‑AIA) - Appeal to the Board of Patent Appeals and Interferences.
35 U.S.C. 135 - Derivation proceedings.
35 U.S.C. 135 (pre‑AIA) - Interferences.
35 U.S.C. 141 - Appeal to Court of Appeals for the Federal Circuit.
35 U.S.C. 141 (pre‑AIA) - Appeal to the Court of Appeals for the Federal Circuit.
35 U.S.C. 142 - Notice of appeal.
35 U.S.C. 143 - Proceedings on appeal.
35 U.S.C. 143 (pre‑AIA) - Proceedings on appeal.
35 U.S.C. 144 - Decision on appeal.
35 U.S.C. 145 - Civil action to obtain patent.
35 U.S.C. 145 (pre‑AIA) - Civil action to obtain patent.
35 U.S.C. 146 - Civil action in case of derivation proceeding.
35 U.S.C. 146 (pre‑AIA) - Civil action in case of interference.
35 U.S.C. 151 - Issue of patent.
35 U.S.C. 152 - Issue of patent to assignee.
35 U.S.C. 153 - How issued.
35 U.S.C. 154 - Contents and term of patent; provisional rights.
35 U.S.C. 154 (pre‑AIA) - Contents and term of patent; provisional rights.
35 U.S.C. 155 - [Repealed.]
35 U.S.C. 155A - [Repealed.]
35 U.S.C. 156 - Extension of patent term.
35 U.S.C. 157 - [Repealed.]
35 U.S.C. 157 (pre‑AIA) - Statutory invention registration.
35 U.S.C. 161 - Patents for plants.
35 U.S.C. 162 - Description, claim.
35 U.S.C. 163 - Grant.
35 U.S.C. 164 - Assistance of the Department of Agriculture.
35 U.S.C. 171 - Patents for designs.
35 U.S.C. 172 - Right of priority.
35 U.S.C. 172 (pre‑AIA) - Right of priority.
35 U.S.C. 173 - Term of design patent.
35 U.S.C. 181 - Secrecy of certain inventions and withholding of patent.
35 U.S.C. 182 - Abandonment of invention for unauthorized disclosure.
35 U.S.C. 183 - Right to compensation.
35 U.S.C. 184 - Filing of application in foreign country.
35 U.S.C. 184 (pre‑AIA) - Filing of application in foreign country.
35 U.S.C. 185 - Patent barred for filing without license.
35 U.S.C. 185 (pre‑AIA) - Patent barred for filing without license.
35 U.S.C. 186 - Penalty.
35 U.S.C. 187 - Nonapplicability to certain persons.
35 U.S.C. 188 - Rules and regulations, delegation of power.
35 U.S.C. 200 - Policy and objective.
35 U.S.C. 201 - Definitions.
35 U.S.C. 202 - Disposition of rights.
35 U.S.C. 202 (pre‑AIA) - Disposition of rights.
35 U.S.C. 203 - March-in rights.
35 U.S.C. 204 - Preference for United States industry.
35 U.S.C. 205 - Confidentiality.
35 U.S.C. 206 - Uniform clauses and regulations.
35 U.S.C. 207 - Domestic and foreign protection of federally owned inventions.
35 U.S.C. 208 - Regulations governing Federal licensing.
35 U.S.C. 209 - Licensing federally owned inventions.
35 U.S.C. 210 - Precedence of chapter.
35 U.S.C. 211 - Relationship to antitrust laws.
35 U.S.C. 212 - Disposition of rights in educational awards.
PATENTS AND PROTECTION OF PATENT RIGHTS
35 U.S.C. 251 - Reissue of defective patents.
35 U.S.C. 251 (pre‑AIA) - Reissue of defective patents.
35 U.S.C. 252 - Effect of reissue.
35 U.S.C. 253 - Disclaimer.
35 U.S.C. 253 (pre‑AIA) - Disclaimer.
35 U.S.C. 254 - Certificate of correction of Patent and Trademark Office mistake.
35 U.S.C. 255 - Certificate of correction of applicant’s mistake.
35 U.S.C. 256 - Correction of named inventor.
35 U.S.C. 256 (pre‑AIA) - Correction of named inventor.
35 U.S.C. 257 - Supplemental examinations to consider, reconsider, or correct information.
35 U.S.C. 261 - Ownership; assignment.
35 U.S.C. 262 - Joint owners.
35 U.S.C. 266 - [Repealed.]
35 U.S.C. 267 - Time for taking action in Government applications.
35 U.S.C. 271 - Infringement of patent.
35 U.S.C. 272 - Temporary presence in the United States.
35 U.S.C. 273 - Defense to infringement based on prior commercial use.
35 U.S.C. 281 - Remedy for infringement of patent.
35 U.S.C. 282 - Presumption of validity; defenses.
35 U.S.C. 283 - Injunction.
35 U.S.C. 284 - Damages.
35 U.S.C. 285 - Attorney fees.
35 U.S.C. 286 - Time limitation on damages.
35 U.S.C. 287 - Limitation on damages and other remedies; marking and notice.
35 U.S.C. 288 - Action for infringement of a patent containing an invalid claim.
35 U.S.C. 288 (pre‑AIA) - Action for infringement of a patent containing an invalid claim.
35 U.S.C. 289 - Additional remedy for infringement of design patent.
35 U.S.C. 290 - Notice of patent suits.
35 U.S.C. 291 - Derived Patents.
35 U.S.C. 291 (pre‑AIA) - Interfering patents.
35 U.S.C. 292 - False marking.
35 U.S.C. 293 - Nonresident patentee; service and notice.
35 U.S.C. 294 - Voluntary arbitration.
35 U.S.C. 295 - Presumption: Product made by patented process.
35 U.S.C. 296 - Liability of States, instrumentalities of States, and State officials for infringement of patents.
35 U.S.C. 297 - Improper and deceptive invention promotion.
35 U.S.C. 298 - Advice of counsel.
35 U.S.C. 299 - Joinder of parties.
35 U.S.C. 301 - Citation of prior art and written statements.
35 U.S.C. 302 - Request for reexamination.
35 U.S.C. 303 - Determination of issue by Director.
35 U.S.C. 304 - Reexamination order by Director.
35 U.S.C. 305 - Conduct of reexamination proceedings.
35 U.S.C. 305 (pre‑AIA) - Conduct of reexamination proceedings.
35 U.S.C. 306 - Appeal.
35 U.S.C. 307 - Certificate of patentability, unpatentability, and claim cancellation.
35 U.S.C. 311 (note) - Inter partes review applicability provisions.
35 U.S.C. 311 - Inter partes review.
35 U.S.C. 312 - Petitions.
35 U.S.C. 313 - Preliminary response to petition.
35 U.S.C. 314 - Institution of inter partes review.
35 U.S.C. 315 - Relation to other proceedings or actions.
35 U.S.C. 316 - Conduct of inter partes review.
35 U.S.C. 317 - Settlement.
35 U.S.C. 318 - Decision of the Board.
35 U.S.C. 319 - Appeal.
35 U.S.C. 311 (pre‑AIA) - Request for inter partes reexamination.
35 U.S.C. 312 (transitional) - Determination of issue by Director.
35 U.S.C. 313 (transitional) - Inter partes reexamination order by Director.
35 U.S.C. 314 (pre‑AIA) - Conduct of inter partes reexamination proceedings.
35 U.S.C. 315 (pre‑AIA) - Appeal.
35 U.S.C. 316 (pre‑AIA) - Certificate of patentability, unpatentability and claim cancellation.
35 U.S.C. 317 (pre‑AIA) - Inter partes reexamination prohibited.
35 U.S.C. 318 (pre‑AIA) - Stay of litigation.
35 U.S.C. 321 (note) - Post-grant review applicability.
35 U.S.C. 321 - Post-grant review.
35 U.S.C. 322 - Petitions.
35 U.S.C. 323 - Preliminary response to petition.
35 U.S.C. 324 - Institution of post-grant review.
35 U.S.C. 325 - Relation to other proceedings or actions.
35 U.S.C. 326 - Conduct of post-grant review.
35 U.S.C. 327 - Settlement.
35 U.S.C. 328 - Decision of the Board.
35 U.S.C. 329 - Appeal.
PATENT COOPERATION TREATY
35 U.S.C. 351 - Definitions.
35 U.S.C. 361 - Receiving Office.
35 U.S.C. 362 - International Searching Authority and International Preliminary Examining Authority.
35 U.S.C. 363 - International application designating the United States: Effect.
35 U.S.C. 363 (pre‑AIA) - International application designating the United States: Effect.
35 U.S.C. 364 - International stage: Procedure.
35 U.S.C. 365 - Right of priority; benefit of the filing date of a prior application.
35 U.S.C. 366 - Withdrawn international application.
35 U.S.C. 367 - Actions of other authorities: Review.
35 U.S.C. 368 - Secrecy of certain inventions; filing international applications in foreign countries.
35 U.S.C. 371 - National stage: Commencement.
35 U.S.C. 372 - National stage: Requirements and procedure.
35 U.S.C. 373 - [Repealed.]
35 U.S.C. 374 - Publication of international application.
35 U.S.C. 374 (pre‑AIA) - Publication of international application.
35 U.S.C. 375 - Patent issued on international application: Effect.
35 U.S.C. 375 (pre‑AIA) - Patent issued on international application: Effect.
35 U.S.C. 376 - Fees.
THE HAGUE AGREEMENT CONCERNING INTERNATIONAL REGISTRATION
OF INDUSTRIAL DESIGNS
35 U.S.C. 381 - Definitions.
35 U.S.C. 382 - Filing international design applications.
35 U.S.C. 383 - International design application.
35 U.S.C. 384 - Filing date.
35 U.S.C. 385 - Effect of international design application.
35 U.S.C. 386 - Right of priority.
35 U.S.C. 387 - Relief from prescribed time limits.
35 U.S.C. 388 - Withdrawn or abandoned international design application.
35 U.S.C. 389 - Examination of international design application.
35 U.S.C. 390 - Publication of international design application.
SELECT PROVISIONS OF TITLE 18, UNITED STATES
CODE
18 U.S.C. 1001 - Statements or entries generally.
18 U.S.C. 2071 - Concealment, removal, or mutilation generally.
SELECT UNCODIFIED AIA PROVISIONS
AIA § 14 (Related to 35 U.S.C. 102, 103) - Tax strategies deemed within the prior art.
AIA § 18 (Related to 35 U.S.C. 321) - Transitional program for covered business method patents.
AIA § 33 (Related to 35 U.S.C. 101) - —Limitation on issuance of patents.
U.S.C. INDEX -
Index INDEX OF PATENT LAWS
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