Editing 35 U.S.C.

__TOC__

'''<big>United States Code Title 35 – Patents'''</big>

==PART I — UNITED STATES PATENT AND TRADEMARK OFFICE==

===CHAPTER 1 — ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS===

====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).) 

====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) of this title; 
and 
(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; 
(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, title III of the Federal Property and 
Administrative Services Act of 1949 (41 U.S.C. 251 
et seq.), 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; 
(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.) 

====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 5 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. 
(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 this 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.) 

====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.) 

====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. Members of each Public 
Advisory Committee shall be appointed for a term of 
3 years, except that of the members first appointed, 
three shall be appointed for a term of 1 year, and three 
shall be appointed for a term of 2 years. In making 
appointments to each Committee, the Secretary of 
Commerce shall consider the risk of loss of competitive advantage in international commerce or other 
harm to United States companies as a result of such 
appointments. 

(2) CHAIR.— The Secretary shall designate 
a chair of each Advisory Committee, whose term as 
chair shall be for 3 years. 
(3) TIMING OF APPOINTMENTS.— Initial appointments to each Advisory Committee shall 
be made within 3 months after the effective date of the 
Patent and Trademark Office Efficiency Act. Vacancies shall be filled within 3 months after they occur. 
(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 4 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.) 

====35 U.S.C. 6 Board of Patent Appeals and Interferences.====

(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 Commissioner, 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 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.


(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.) 

====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 93596, 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)).) 

====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)).) 

====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 93596, 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)).) 

====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)).) 

====35 U.S.C. 11 Exchange of copies of patents and applications with foreign countries.====

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 NAFTA country or a WTO 
member country, without the express authorization of 
the Secretary of Commerce. For purposes of this section, the terms “NAFTA country” and “WTO member 
country” have the meanings given those terms in section 104(b). 

(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)).) 

====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) of this title. 

(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; Nov. 29, 1999, Public Law 
106-113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948 
sec. 4804(c)).) 

(Amended Nov. 29, 1999, Public Law 106-113, sec. 
1000(a)(9), 113 Stat. 1501A-565, 566, 582 (S. 1948 secs. 
4507(3)(A), 4507(3)(B), 4507(4), and 4732(a)(10)(A)).) 

====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).) 

===CHAPTER 2 — PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE===

====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)).) 

====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)).) 

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)).) 

====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.) 

====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)).) 

====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)).) 

===CHAPTER 3 — PRACTICE BEFORE PATENT===

====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)).) 

====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) of 
this title, 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. The 
United States District Court for the District of Columbia, 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)).) 

====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.) 

===CHAPTER 4 — PATENT FEES; FUNDING; SEARCH SYSTEMS===

====35 U.S.C. 41 Patent fees; patent and trademark search systems.====

*Editor’s Note: During fiscal years 2005 and 
2006, subsections (a) and (b) of section 41 of title 
35, United States Code, shall be administered as 
though subsections (a) and (b) read as follows: 

(a) GENERAL FEES. — The Director shall 
charge the following fees: 
(1) FILING AND BASIC NATIONAL 
FEES. — 
(A) On filing each application for an original patent, except for design, plant, or provisional 
applications, $300. 
(B) On filing each application for an original design patent, $200. 
(C) On filing each application for an original plant patent, $200. 
(D) On filing each provisional application 
for an original patent, $200. 
(E) On filing each application for the reissue of a patent, $300. 
(F) The basic national fee for each international application filed under the treaty defined in section 351(a) of this title entering the national stage 
under section 371 of this title, $300. 
(G) In addition, excluding any sequence 
listing or computer program listing filed in electronic 
medium as prescribed by the Director, for any application the specification and drawings of which exceed 
100 sheets of paper (or equivalent as prescribed by the 
Director if filed in an electronic medium), $250 for 
each additional 50 sheets of paper (or equivalent as 
prescribed by the Director if filed in an electronic 
medium) or fraction thereof. 
(2) EXCESS CLAIMS FEES. — In addition 
to the fee specified in paragraph (1) — 
(A) on filing or on presentation at any other 
time, $200 for each claim in independent form in 
excess of 3; 
(B) on filing or on presentation at any other 
time, $50 for each claim (whether dependent or independent) in excess of 20; and 
(C) for each application containing a multiple dependent claim, $360. 


For the purpose of computing fees under this 
paragraph, a multiple dependent claim referred to in 
section 112 of this title or any claim depending therefrom shall be considered as separate dependent claims 
in accordance with the number of claims to which reference is made. The Director may by regulation provide for a refund of any part of the fee specified in this 
paragraph for any claim that is canceled before an 
examination on the merits, as prescribed by the Director, has been made of the application under section 
131 of this title. Errors in payment of the additional 
fees under this paragraph may be rectified in accordance with regulations prescribed by the Director. 

(3) EXAMINATION FEES. — 

(A) For examination of each application 
for an original patent, except for design, plant, provisional, or international applications, $200. 
(B) For examination of each application 
for an original design patent, $130. 


(C) For examination of each application 
for an original plant patent, $160. 
(D) For examination of the national stage 
of each international application, $200. 
(E) For examination of each application 
for the reissue of a patent, $600.


 The provisions of section 111(a) of this title 
relating to the payment of the fee for filing the application shall apply to the payment of the fee specified 
in this paragraph with respect to an application filed 
under section 111(a) of this title. The provisions of 
section 371(d) of this title relating to the payment of 
the national fee shall apply to the payment of the fee 
specified in this paragraph with respect to an international application. 

(4) ISSUE FEES. — 

(A) For issuing each original patent, except 
for design or plant patents, $1,400. 
(B) For issuing each original design patent, 
$800. 
(C) For issuing each original plant patent, 
$1,100. 
(D) For issuing each reissue patent, $1,400. 


(5) DISCLAIMER FEE. — On filing each 
disclaimer, $130. 
(6) APPEAL FEES. — 


(A) On filing an appeal from the examiner 
to the Board of Patent Appeals and Interferences, 
$500. 
(B) In addition, on filing a brief in support 
of the appeal, $500, and on requesting an oral hearing 
in the appeal before the Board of Patent Appeals and 
Interferences, $1,000. 
(7) REVIVAL FEES. — On filing each petition for the revival of an unintentionally abandoned 
application for a patent, for the unintentionally 
delayed payment of the fee for issuing each patent, or 
for an unintentionally delayed response by the patent 
owner in any reexamination proceeding, $1,500, 
unless the petition is filed under section 133 or 151 of 
this title, in which case the fee shall be $500. 
(8) EXTENSION FEES. — For petitions for 
1-month extensions of time to take actions required 
by the Director in an application — 
(A) on filing a first petition, $120; 
(B) on filing a second petition, $330; and 
(C) on filing a third or subsequent petition, 
$570. 
(b) MAINTENANCE FEES. — The Director 
shall charge the following fees for maintaining in 
force all patents based on applications filed on or after 
December 12, 1980: 
(1) 3 years and 6 months after grant, $900. 
(2) 7 years and 6 months after grant, $2,300. 
(3) 11 years and 6 months after grant, $3,800. 
Unless payment of the applicable maintenance fee is 
received in the United States Patent and Trademark 
Office on or before the date the fee is due or within a 
grace period of 6 months thereafter, the patent will 
expire as of the end of such grace period. The Director 
may require the payment of a surcharge as a condition 
of accepting within such 6-month grace period the 
payment of an applicable maintenance fee. No fee 
may be established for maintaining a design or plant 
patent in force. 

(Dec. 8, 2004, Public Law 108-447, sec. 801, 118 
Stat. 2809.) 

The bracketed text below is the unamended text 
of 35 U.S.C. 41(a) and (b), which may continue to 
have effect following fiscal year 2006: 

[(a) The Director shall charge the following 
fees: 
(1)(A) On filing each application for an original patent, except in design or plant cases, $690. 

(B) In addition, on filing or on presentation 
at any other time, $78 for each claim in independent 
form which is in excess of 3, $18 for each claim 
(whether independent or dependent) which is in 
excess of 20, and $260 for each application containing 
a multiple dependent claim. 

(C) On filing each provisional application 
for an original patent, $150. 

(2) For issuing each original or reissue 
patent, except in design or plant cases, $1,210. 

(3) In design and plant cases

(A) on filing each design application, $310; 

(B) on filing each plant application, $480; 

(C) on issuing each design patent, $430; 
and 


(D) on issuing each plant patent, $580. 

(4)(A)On filing each application for the reissue 
of a patent, $690. 

(B) In addition, on filing or on presentation 
at any other time, $78 for each claim in independent 
form which is in excess of the number of independent 
claims of the original patent, and $18 for each claim 
(whether independent or dependent) which is in 
excess of 20 and also in excess of the number of 
claims of the original patent. 

(5) On filing each disclaimer, $110. 
(6)(A) On filing an appeal from the examiner 

to the Board of Patent Appeals and Interferences, 
$300. 

(B) In addition, on filing a brief in support 
of the appeal, $300, and on requesting an oral hearing 
in the appeal before the Board of Patent Appeals and 
Interferences, $260. 
(7) On filing each petition for the revival of 
an unintentionally abandoned application for a patent, 
for the unintentionally delayed payment of the fee for 
issuing each patent, or for an unintentionally delayed 
response by the patent owner in any reexamination 
proceeding, $1,210, unless the petition is filed under 
section 133 or 151 of this title, in which case the fee 
shall be $110. 

(8) For petitions for 1-month extensions of 
time to take actions required by the Director in an 
application

(A) on filing a first petition, $110; 

(B) on filing a second petition, $270; and 

(C) on filing a third or subsequent petition, 
$490. 

(9) Basic national fee for an international 
application where the Patent and Trademark Office 
was the International Preliminary Examining Authority and the International Searching Authority, $670. 
(10) Basic national fee for an international 
application where the Patent and Trademark Office 
was the International Searching Authority but not the 
International Preliminary Examining Authority, $690. 
(11) Basic national fee for an international 
application where the Patent and Trademark Office 
was neither the International Searching Authority nor 
the International Preliminary Examining Authority, 
$970. 

(12) Basic national fee for an international 
application where the international preliminary examination has been paid to the Patent and Trademark 
Office, and the international preliminary examination 
report states that the provisions of Article 33 (2), (3), 
and (4) of the Patent Cooperation Treaty have been 
satisfied for all claims in the application entering the 
national stage, $96. 

(13) For filing or later presentation of each 
independent claim in the national stage of an international application in excess of 3, $78. 
(14) For filing or later presentation of each 
claim (whether independent or dependent) in a 
national stage of an international application in excess 
of 20, $18. 
(15) For each national stage of an international 
application containing a multiple dependent claim, 
$260. 
For the purpose of computing fees, a multiple 
dependent claim as referred to in section 112 of this 
title or any claim depending therefrom shall be considered as separate dependent claims in accordance 
with the number of claims to which reference is made. 
Errors in payment of the additional fees may be rectified in accordance with regulations of the Director. 

(b) The Director shall charge the following fees 
for maintaining in force all patents based on applications filed on or after December 12, 1980: 

(1) 3 years and 6 months after grant, $830. 

(2) 7 years and 6 months after grant, $1,900. 

(3) 11 years and 6 months after grant, $2,910. 

Unless payment of the applicable maintenance fee is received in the Patent and Trademark 
Office on or before the date the fee is due or within a 
grace period of six months thereafter, the patent will 
expire as of the end of such grace period. The Director 
may require the payment of a surcharge as a condition 
of accepting within such 6-month grace period the 
payment of an applicable maintenance fee. No fee 
may be established for maintaining a design or plant 
patent in force.] 

(c)(1) The Director may accept the payment of 
any maintenance fee required by subsection (b) of this 
section which is made within twenty-four months 
after the six-month grace period if the delay is shown 
to the satisfaction of the Director to have been unintentional, or at any time after the six-month grace 
period if the delay is shown to the satisfaction of the 
Director to have been unavoidable. The Director may 
require the payment of a surcharge as a condition of 
accepting payment of any maintenance fee after the 
six-month grace period. If the Director accepts payment of a maintenance fee after the six-month grace 
period, the patent shall be considered as not having 
expired at the end of the grace period. 

(2) 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 6month 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. 

*Editor’s Note: During fiscal years 2005 and 
2006, subsection (d) of section 41 of title 35, United 
States Code, shall be administered as though subsection (d) reads as follows: 

(d) PATENT SEARCH AND OTHER FEES. — 

(1) PATENT SEARCH FEES. — 

(A) The Director shall charge a fee for the 
search of each application for a patent, except for provisional applications. The Director shall establish the 
fees charged under this paragraph to recover an 
amount not to exceed the estimated average cost to 
the Office of searching applications for patent either 
by acquiring a search report from a qualified search 
authority, or by causing a search by Office personnel 
to be made, of each application for patent. For the 3year period beginning on the date of enactment of this 

Act, the fee for a search by a qualified search authority of a patent application described in clause (i), (iv), 
or (v) of subparagraph (B) may not exceed $500, of a 
patent application described in clause (ii) of subparagraph (B) may not exceed $100, and of a patent application described in clause (iii) of subparagraph (B) 
may not exceed $300. The Director may not increase 
any such fee by more than 20 percent in each of the 
next three 1-year periods, and the Director may not 
increase any such fee thereafter. 

(B) For purposes of determining the fees to 
be established under this paragraph, the cost to the 
Office of causing a search of an application to be 
made by Office personnel shall be deemed to be — 
(i) $500 for each application for an 
original patent, except for design, plant, provisional, 
or international applications; 
(ii) $100 for each application for an 
original design patent; 

(iii) $300 for each application for an 
original plant patent; 

(iv) $500 for the national stage of each 
international application; and 
(v) $500 for each application for the 
reissue of a patent. 
(C) The provisions of section 111 (a)(3) of 
this title relating to the payment of the fee for filing 
the application shall apply to the payment of the fee 
specified in this paragraph with respect to an application filed under section 111(a) of this title. The provisions of section 371(d) of this title relating to the 
payment of the national fee shall apply to the payment 
of the fee specified in this paragraph with respect to 
an international application. 
(D) The Director may by regulation provide for a refund of any part of the fee specified in this 
paragraph for any applicant who files a written declaration of express abandonment as prescribed by the 
Director before an examination has been made of the 
application under section 131 of this title, and for any 
applicant who provides a search report that meets the 
conditions prescribed by the Director. 
(E) For purposes of subparagraph (A), a 
“qualified search authority” may not include a commercial entity unless — 
(i) the Director conducts a pilot program of limited scope, conducted over a period of not 
more than 18 months, which demonstrates that 
searches by commercial entities of the available prior 
art relating to the subject matter of inventions claimed 
in patent applications — 

(I) are accurate; and 

(II) meet or exceed the standards of 
searches conducted by and used by the Patent and 
Trademark Office during the patent examination process; 
(ii) the Director submits a report on the 
results of the pilot program to Congress and the Patent 
Public Advisory Committee that includes — 
(I) a description of the scope and 
duration o f the pilot program; 
(II) the identity of each commercial 
entity participating in the pilot program; 

(III) an explanation of the methodology used to evaluate the accuracy and quality of the 
search reports; and 

(IV) an assessment of the effects that 
the pilot program, as compared to searches conducted 
by the Patent and Trademark Office, had and will 
have on — 

(aa) patentability determinations; 
(bb) productivity of the Patent and 
Trademark Office; 

(cc) costs to the Patent and Trade

mark Office; 
(dd) costs to patent applicants; and 
(ee) other relevant factors; 

(iii) the Patent Public Advisory Committee reviews and analyzes the Director’s report under 
clause (ii) and the results of the pilot program and 
submits a separate report on its analysis to the Director and the Congress that includes — 

(I) an independent evaluation of the 
effects that the pilot program, as compared to searches 
conducted by the Patent and Trademark Office, had 
and will have on the factors set forth in clause 
(ii)(IV); and 
(II) an analysis of the reasonableness, 
appropriateness, and effectiveness of the methods 
used in the pilot program to make the evaluations 
required under clause (ii)(IV); and 
(iv) Congress does not, during the 1year period beginning on the date on which the Patent 
Public Advisory Committee submits its report to the 
Congress under clause (iii), enact a law prohibiting 
searches by commercial entities of the available prior 
art relating to the subject matter of inventions claimed 
in patent applications. 

(F) The Director shall require that any 
search by a qualified search authority that is a commercial entity is conducted in the United States by 
persons that — 

(i) if individuals, are United States citizens; and 

(ii) if business concerns, are organized 
under the laws of the United States or any State and 
employ United States citizens to perform the searches. 

(G) A search of an application that is the 
subject of a secrecy order under section 181 or otherwise involves classified information may only be conducted by Office personnel. 

(H) A qualified search authority that is a 
commercial entity may not conduct a search of a 
patent application if the entity has any direct or indirect financial interest in any patent or in any pending 
or imminent application for patent filed or to be filed 
in the Patent and Trademark Office. 

(2) OTHER FEES. — The Director shall 
establish fees for all other processing, services, or 
materials relating to patents not specified in this section to recover the estimated average cost to the 
Office of such processing, services; or materials, 
except that the Director shall charge the following 
fees for the following services: 

(A) For recording a document affecting 
title, $40 per property. 

(B) For each photocopy, $.25 per page. 

(C) For each black and white copy of a 
patent, $3. The yearly fee for providing a library specified in section 12 of this title with uncertified printed 
copies of the specifications and drawings for all patents in that year shall be $50. 

(Dec. 8, 2004, Public Law 108-447, sec. 801, 118 
Stat. 2809.) 

The bracketed text below is the unamended text 
of 35 U.S.C. 41(d), which may continue to have 
effect following fiscal year 2006: 

(d) 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: 

(1) For recording a document affecting title, $40 per property.

(2) For each photocopy, $.25 per page. 

(3) For each black and white copy of a 
patent, $3. 
The yearly fee for providing a library specified in section 13 of this title with uncertified printed 
copies of the specifications and drawings for all patents issued in that year shall be $50.] 


(e) 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 of this title 
with a copy of the specifications and drawings for all 
patents referred to in that notice without charge. 
(f) 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. 


*Editor’s Note: During fiscal years 2005 and 
2006, subsection (f) of section 41 of title 35, United 
States Code applies to the fees established under 
section 801 of Public Law 108-447. (Dec. 8, 2004, 
Public Law 108-447, sec. 801, 118 Stat. 2809.) 

(g) No fee established by the Director under 
this section shall take effect until at least 30 days after 
notice of the fee has been published in the Federal 
Register and in the Official Gazette of the Patent and 
Trademark Office. 

*Editor’s Note: During fiscal years 2005 and 
2006, subsection (h) of section 41 of title 35, United 
States Code, shall be administered as though subsection (h) reads as follows: 

(h)(1) Subject to paragraph (3), fees charged 
under subsections (a), (b) and (d)(1) shall be reduced 
by 50 percent with respect to their application to any 
small business concern as defined under section 3 of 
the Small Business Act, and to any independent 
inventor or nonprofit organization as defined in regulations issued by the Director. 

(2) 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) The fee charged under subsection 
(a)(l)(A) shall be reduced by 75 percent with respect 
to its application to any entity to which paragraph (1) 
applies, if the application is filed by electronic means 
as prescribed by the Director. 

(Dec. 8, 2004, Public Law 108-447, sec. 801, 118 
Stat. 2809.) 

The bracketed text below is the unamended text 
of 35 U.S.C. 41(h), which may continue to have 
effect following fiscal year 2006: 

[(h)(1) Fees charged under subsection (a) or (b) 
shall be reduced by 50 percent with respect to their 
application to any small business concern as defined 
under section 3 of the Small Business Act, and to any 
independent inventor or nonprofit organization as 
defined in regulations issued by the Director. 

(2) 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.] 
(i)(1) 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) 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) 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) 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.

 (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 99607, 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)).) 

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) 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 be available to the Director to carry out the activities of the 
Patent and Trademark Office. All fees available to the 
Director under section 31 of the Trademark Act of 
1946 shall be used only for the processing of trademark registrations and for other activities, services 
and materials relating to trademarks and to cover a 
proportionate share of the administrative costs of the 
Patent and Trademark Office. 

(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 102204, 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)).) 

==PART II — PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS==

===CHAPTER 10 — PATENTABILITY OF INVENTIONS===

Sec.

100 Definitions.

101 Inventions patentable. 

102 Conditions for patentability; novelty and loss of
right to patent. 

103 Conditions for patentability; non-obvious sub
ject matter. 

104 Invention made abroad. 

105 Inventions in outer space. 

====35 U.S.C. 100 Definitions.====

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 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).) 

====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. 

====35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.====

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.) 

====35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.====

(a) A patent may not be obtained though the 
invention is not identically disclosed or described as 
set forth in section 102 of this title, 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 of 
this title, 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.) 

====35 U.S.C. 104 Invention made abroad.====

(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 of 
this title. 
(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)).) 

====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.) 

===CHAPTER 11 — APPLICATION FOR PATENT===

Sec. 

111 Application. 

112 Specification. 

113 Drawings. 

114 Models, specimens. 

115 Oath of applicant. 

116 Inventors. 

117 Death or incapacity of inventor. 

118 Filing by other than inventor. 

119 Benefit of earlier filing date; right of priority. 

120 Benefit of earlier filing date in the United 
States. 

121 Divisional applications. 

122 Confidential status of applications; publication 

of patent applications. 

====35 U.S.C. 111 Application.====

(a) IN GENERAL.— 

{{tab1}}(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.</p>

{{tab1}}(2) CONTENTS.—Such application shall include— </p>

{{tab2}}(A) a specification as prescribed by section 112 of this title; </p>

{{tab2}}(B) a drawing as prescribed by section 113 of this title; and </p>

{{tab2}}(C) an oath by the applicant as prescribed by section 115 of this title. </p>

{{tab1}}(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. </p>

{{tab1}}(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. </p>

(b) PROVISIONAL APPLICATION.— 

{{tab1}}(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— </p>

{{tab2}}(A) a specification as prescribed by the first paragraph of section 112 of this title; and </p>

{{tab2}}(B) a drawing as prescribed by section 113 of this title. </p>

{{tab1}}(2) CLAIM.—A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application.</p>

{{tab1}}(3) FEE.— </p>

{{tab2}}(A) The application must be accompanied by the fee required by law. </p>

{{tab2}}(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.</p>

{{tab2}}(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.</p>

{{tab1}}(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.</p>

{{tab1}}(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.</p>

{{tab1}}(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.</p>

{{tab1}}(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. </p>

{{tab1}}(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.</p>

====35 U.S.C. 112 Specification.====

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.) 

====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)).) 

====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)).) 

====35 U.S.C. 115 Oath of applicant.====

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.) 

====35 U.S.C. 116 Inventors.====

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)).) 

====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. 

====35 U.S.C. 118 Filing by other than inventor.====

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)).) 

====35 U.S.C. 119 Benefit of earlier filing date; right of priority.====

(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. 

(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 payment of a surcharge, 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 of this title for an invention disclosed in the manner provided by the first paragraph 
of section 112 of this title in a provisional application 
filed under section 111(b) of this title, 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) of this title, if the application for patent filed under section 111(a) or section 
363 of this title 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. 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 a surcharge, to 
accept an unintentionally delayed submission of an 
amendment under this subsection during the pendency 
of the application 

(2) A provisional application filed under section 111(b) of this title 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) of this title 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. 
(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) of this title; 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).)

====35 U.S.C. 120 Benefit of earlier filing date in the United States.====

An application for patent for an invention disclosed 
in the manner provided by the first paragraph of section 112 of this title in an application previously filed 
in the United States, or as provided by section 363 of 
this title, 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)).) 

====35 U.S.C. 121 Divisional applications.====

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)).) 

====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 18month 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 of this title; 

(iii) a provisional application filed under 
section 111(b) of this title; or 

(iv) an application for a design patent 
filed under chapter 16 of this title. 
(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, unless it is 
shown to the satisfaction of the Director that the delay 
in submitting the notice was unintentional. 

(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 of this title. 

(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)).) 

===CHAPTER 12 — EXAMINATION OF APPLICATION===

Sec.
131 Examination of application. 
132 Notice of rejection; reexamination.
133 Time for prosecuting application.
134 Appeal to the Board of Patent Appeals and

Interferences. 
135 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)).) 

====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) of this title. 


(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)).) 

====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, unless it be shown to the satisfaction of 
the Director that such delay was unavoidable. 

(Amended Nov. 29, 1999, Public Law 106-113, sec. 
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 
4732(a)(10)(A)).) 

====35 U.S.C. 134 Appeal to the Board of Patent Appeals and Interferences.====

(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 106113, 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.) 

====35 U.S.C. 135 Interferences.====

(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) of this title 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 87831, 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 98622, sec. 202, 98 Stat. 3386.) 

(Subsection (d) added Nov. 8, 1984, Public Law 98622, 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)).) 

===CHAPTER 13 — REVIEW OF PATENT AND TRADEMARK OFFICE DECISION===

Sec.
141 Appeal to Court of Appeals for the Federal Cir


cuit. 
142 Notice of appeal. 
143 Proceedings on appeal. 
144 Decision on appeal. 
145 Civil action to obtain patent. 
146 Civil action in case of interference. 

====35 U.S.C. 141 Appeal to the Court of Appeals for the Federal Circuit.====

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.) 

====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)).) 

====35 U.S.C. 143 Proceedings on appeal.====

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 106113, 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.) 

====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 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 
4732(a)(10)(A)).) 

====35 U.S.C. 145 Civil action to obtain patent.====

An applicant dissatisfied with the decision of the 
Board of Patent Appeals and Interferences in an 
appeal under section 134(a) of this title 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 District of Columbia 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 106113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 
secs. 4605(e) and 4732(a)(10)(A).) 

====35 U.S.C. 146 Civil action in case of interference.====

Any party to an interference dissatisfied with the 
decision of the Board of Patent Appeals and Interferences 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 of this title, 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 District of Columbia 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 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 
4732(a)(10)(A)).) 

===CHAPTER 14 — ISSUE OF PATENT===

Sec.
151 Issue of patent.
152 Issue of patent to assignee.
153 How issued.
154 Contents and term of patent; provisional rights.
155 Patent term extension.
155A Patent term restoration.
156 Extension of patent term.
157 Statutory invention registration.


====35 U.S.C. 151 Issue of patent.====

If it appears that 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 or a portion thereof, which shall be paid within 
three months thereafter. 

Upon payment of this sum the patent shall issue, 
but if payment is not timely made, the application 
shall be regarded as abandoned. 

Any remaining balance of the issue fee shall be 
paid within three months from the sending of a notice 
thereof, and, if not paid, the patent shall lapse at the 
termination of this three-month period. In calculating 
the amount of a remaining balance, charges for a page 
or less may be disregarded. 

If any payment required by this section is not 
timely made, but is submitted with the fee for delayed 
payment and the delay in payment is shown to have 
been unavoidable, it may be accepted by the Director 
as though no abandonment or lapse had ever occurred. 

(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)).) 

====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.) 

====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.) 

====35 U.S.C. 154 Contents and term of patent; provisional rights.====

(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, or 365(c) of this title, from the date on which the 
earliest such application was filed. 

(3) PRIORITY.—Priority under section 119, 
365(a), or 365(b) of this title 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 of this title or a notice of 
allowance under section 151 of this title not later than 
14 months after— 
(I) the date on which an application 
was filed under section 111(a) of this title; or 
(II) the date on which an international 
application fulfilled the requirements of section 371 
of this title; 
(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 in the United States, 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. 

(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 with 
the written notice of allowance of the application 
under section 151; 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 a determination made by the Director under paragraph (3) 
shall have remedy by a civil action against the Director filed in the United States District Court for the 
District of Columbia within 180 days after the grant 
of the patent. 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 of this title 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)) of this title. 
(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, 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 106113, 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.) 

====35 U.S.C. 155 Patent term extension.====

Notwithstanding the provisions of section 154, the 
term of a patent which encompasses within its scope a 
composition of matter or a process for using such 
composition shall be extended if such composition or 
process has been subjected to a regulatory review by 
the Federal Food and Drug Administration pursuant 
to the Federal Food, Drug and Cosmetic Act leading 
to the publication of regulation permitting the interstate distribution and sale of such composition or process and for which there has thereafter been a stay of 
regulation of approval imposed pursuant to section 
409 of the Federal Food, Drug and Cosmetic Act, 
which stay was in effect on January 1, 1981, by a 
length of time to be measured from the date such stay 
of regulation of approval was imposed until such proceedings are finally resolved and commercial marketing permitted. The patentee, his heirs, successors, or 
assigns shall notify the Director within 90 days of the 
date of enactment of this section or the date the stay of 
regulation of approval has been removed, whichever 
is later, of the number of the patent to be extended and 
the date the stay was imposed and the date commercial marketing was permitted. On receipt of such 
notice, the Director shall promptly issue to the owner 
of record of the patent a certificate of extension, under 
seal, stating the fact and length of the extension and 
identifying the composition of matter or process for 
using such composition to which such extension is 
applicable. Such certificate shall be recorded in the 
official file of each patent extended and such certificate shall be considered as part of the original patent, 
and an appropriate notice shall be published in the 
Official Gazette of the Patent and Trademark Office. 

(Added Jan. 4, 1983, Public Law 97-414, sec. 11(a), 
96 Stat. 2065; amended Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 secs. 
4732(a)(6) and 4732(a)(10)(A)).) 

====35 U.S.C. 155A Patent term restoration.====

(a) Notwithstanding section 154 of this title, the 
term of each of the following patents shall be 
extended in accordance with this section: 
(1) Any patent which encompasses within its 
scope a composition of matter which is a new drug 
product, if during the regulatory review of the product 
by the Federal Food and Drug Administration — 
(A) the Federal Food and Drug Administration notified the patentee, by letter dated February 
20, 1976, that such product’s new drug application 
was not approvable under section 505(b)(1) of the 
Federal Food, Drug and Cosmetic Act; 
(B) in 1977 the patentee submitted to the 
Federal Food and Drug Administration the results of a 
health effects test to evaluate the carcinogenic potential of such product; 
(C) the Federal Food and Drug Administration approved, by letter dated December 18, 1979, 
the new drug application for such application; and 
(D) the Federal Food and Drug Administration approved, by letter dated May 26, 1981, a supplementary application covering the facility for the 
production of such product. 
(2) Any patent which encompasses within its 
scope a process for using the composition described 
in paragraph (1). 
(b) The term of any patent described in subsection (a) shall be extended for a period equal to the 
period beginning February 20, 1976, and ending May 
26, 1981, and such patent shall have the effect as if 
originally issued with such extended term. 
(c) The patentee of any patent described in subsection (a) of this section shall, within ninety days 
after the date of enactment of this section, notify the 
Director of the number of any patent so extended. On 
receipt of such notice, the Director shall confirm such 
extension by placing a notice thereof in the official 
file of such patent and publishing an appropriate 
notice of such extension in the Official Gazette of the 
Patent and Trademark Office. 

(Added Oct. 13, 1983, Public Law 98-127, sec. 4(a), 
97 Stat. 832; amended Nov. 29, 1999, Public Law 106-113, 
sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 secs. 
4732(a)(7) and 4732(a)(10)(A)).) 

====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 
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)(i) 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. 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; 
(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. 
(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 
reviewing 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 the 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 Commissioner 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 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 paragraphs 
(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 
regulating 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 day 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 peri-


 

ods 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 environment 
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 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. 

(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.) 

35 U.S.C. 157 Statutory invention registration. 

(a) Notwithstanding any other provision of this 
title, 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 of 
this title; 
(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 of this 
title. 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 of this title. 

(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 106113, sec. 1000(a)(9), 113 Stat. 1501A-582, 583 (S. 1948 
secs. 4732(a)(10)(A) and 4732(a)(11)).) 

===CHAPTER 15 — PLANT PATENTS===

Sec.
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.) 

35 U.S.C. 162 Description, claim. 

No plant patent shall be declared invalid for noncompliance with section 112 of this title 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. 

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.) 

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)).) 

===CHAPTER 16 — DESIGNS===

Sec.
171 Patents for designs.
172 Right of priority.
173 Term of design patent.


35 U.S.C. 171 Patents for designs. 

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. 

The provisions of this title relating to patents for 
inventions shall apply to patents for designs, except as 
otherwise provided. 

35 U.S.C. 172 Right of priority. 

The right of priority provided for by subsections (a) 
through (d) of section 119 of this title 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) of this title shall not apply to designs. 

(Amended Dec. 8, 1994, Public Law 103-465, sec. 
532(c)(2), 108 Stat. 4987.) 

35 U.S.C. 173 Term of design patent. 

Patents for designs shall be granted for the term of 
fourteen 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.) 

===CHAPTER 17 — SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN FOREIGN COUNTRIES===


Sec.
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. 
185 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 desig-

 

nated 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)).) 

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 of 
this title 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)).) 

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 of this 
title, 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.) 

35 U.S.C. 184 Filing of application 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 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 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 
4732(a)(10)(B)).) 

35 U.S.C. 185 Patent barred for filing without 
license. 

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 107273, sec. 13206, 116 Stat. 1904.) 

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 of this title, 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 of this title, 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.) 

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. 

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. 

===CHAPTER 18 — PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE===


Sec.
200 Policy and objective.
201 Definitions.
202 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.) 

 

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 98620, sec. 501(1), 98 Stat. 3364.) 

(Subsection (e) amended Nov. 8, 1984, Public Law 98620, sec. 501(2), 98 Stat. 3364.) 

(Subsection (i) amended Oct. 22, 1986, Public Law 99514, sec. 2, 100 Stat. 2095.) 

(Subsection (a) amended Nov. 2, 2002, Public Law 
107-273, sec. 13206, 116 Stat. 1904.) 

35 U.S.C. 202 Disposition of rights. 

(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 sub-

 

ject 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) At least once every 5 years, the Comptroller General shall transmit a report to the Committees on the Judiciary of the Senate and House of 
Representatives on the manner in which this chapter 
is being implemented by the agencies and on such 
other aspects of Government patent policies and practices with respect to federally funded inventions as the 
Comptroller General believes appropriate. 
(4) 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 the 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 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. 
(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-ownedcontractor-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 
proves infeasible after a reasonable inquiry, 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-ownedcontractor-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 75 percent of 
such excess shall be paid to the Treasury of the United 
States and the remaining 25 percent shall be used for 
the same purposes as described above in this clause 
(D); 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.) 

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 the Contract 
Disputes Act (41 U.S.C. § 601 et seq.). 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 102572, sec. 902(b)(1), 106 Stat. 4516; amended Nov. 2, 2002, 
Public Law 107-273, sec. 13206, 116 Stat. 1905.) 

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.) 

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.) 

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.) 

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 of this title 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.) 

 

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.) 

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 nontransferrable, 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.) 

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 305 of the National Aeronautics 
and Space Act of 1958 (42 U.S.C. 2457); 
(8) section 6 of the Coal Research 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 of this title. 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 98620, sec. 501(13), 98 Stat. 3367.) 

(Subsection (e) added Oct. 20, 1986, Public Law 99502, 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.) 

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.) 

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.) 

==PART III — PATENTS AND PROTECTION OF PATENT RIGHTS==


===CHAPTER 25 — AMENDMENT AND CORRECTION OF PATENTS===


Sec.
251 Reissue of defective patents.
252 Effect of reissue.
253 Disclaimer.
254 Certificate of correction of Patent and Trade


mark Office mistake. 
255 Certificate of correction of applicant’s mistake. 
256 Correction of named inventor. 

35 U.S.C. 251 Reissue of defective patents. 

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)).) 

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 106113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 
4507(8)).) 

35 U.S.C. 253 Disclaimer. 

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.) 

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 con-

 

sidered 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)).) 

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)).) 

35 U.S.C. 256 Correction of named inventor. 

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)).) 

===CHAPTER 26 — OWNERSHIP AND ASSIGNMENT===


Sec.
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. 

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 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.) 

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.) 

===CHAPTER 27 — GOVERNMENT INTERESTS IN PATENTS===


Sec.
266 [Repealed.]
267 Time for taking action in Government applica


tions. 

35 U.S.C. 266 [Repealed.] 

(Repealed July 24, 1965, Public Law 89-83, sec. 8, 79 
Stat. 261.) 

35 U.S.C. 267 Time for taking action in Government applications. 

Notwithstanding the provisions of sections 133 and 
151 of this title, 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)).) 

===CHAPTER 28 — INFRINGEMENT OF PATENTS===


Sec.
271 Infringement of patent.
272 Temporary presence in the United States.
273 Defense to infringement based on earlier inven


tor. 

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 non-
infringing 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, or 
(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, 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 or veterinary 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 or veterinary biological product, and 
(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 or veterinary biological product. 


The remedies prescribed by subparagraphs 
(A), (B), and (C) 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. 
(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 98417, sec. 202, 98 Stat. 1603.) 

(Subsection (f) added Nov. 8, 1984, Public Law 98622, sec. 101(a), 98 Stat. 3383.) 

(Subsection (g) added Aug. 23, 1988, Public Law 100418, 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 102560, 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 103465, sec. 533(a), 108 Stat. 4988.) 

(Subsection (e)(5) added Dec. 8, 2003, Public Law 
108-173, sec. 1101(d), 117 Stat. 2457.) 

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.) 

35 U.S.C. 273 Defense to infringement based on 
earlier inventor. 

(a) DEFINITIONS.— For purposes of this section— 
(1) the terms “commercially used” and 
“commercial use” mean use of a method in the United 
States, so long as such use is 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, whether or not the subject matter at issue is 
accessible to or otherwise known to the public, except 
that the 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 “commercially used” and in “commercial use” during such 
regulatory review period; 
(2) in the case of activities performed by a 
nonprofit research laboratory, or nonprofit entity such 
as a university, research center, or hospital, a use for 
which the public is the intended beneficiary shall be 
considered to be a use described in paragraph (1), 
except that the use— 
(A) may be asserted as a defense under this 
section only for continued use by and in the laboratory or nonprofit entity; and 
(B) may not be asserted as a defense with 
respect to any subsequent commercialization or use 
outside such laboratory or nonprofit entity; 
(3) the term “method” means a method of 
doing or conducting business; and 
(4) the “effective filing date” of a patent is 
the earlier of the actual filing date of the application 


 

for the patent or the filing date of any earlier United 
States, foreign, or international application to which 
the subject matter at issue is entitled under section 
119, 120, or 365 of this title. 

(b) DEFENSE TO INFRINGEMENT.— 

(1) IN GENERAL.— It shall be a defense to 
an action for infringement under section 271 of this 
title with respect to any subject matter that would otherwise infringe one or more claims for a method in the 
patent being asserted against a person, if such person 
had, acting in good faith, actually reduced the subject 
matter to practice at least 1 year before the effective 
filing date of such patent, and commercially used the 
subject matter before the effective filing date of such 
patent. 
(2) EXHAUSTION OF RIGHT.— The sale 
or other disposition of a useful end product produced 
by a patented method, by a person entitled to assert a 
defense under this section with respect to that useful 
end result shall exhaust the patent owner’s rights 
under the patent to the extent such rights would have 
been exhausted had such sale or other disposition 
been made by the patent owner. 
(3) LIMITATIONS AND QUALIFICATIONS OF DEFENSE.— The defense to infringement under this section is subject to the following: 
(A) PATENT.— A person may not assert 
the defense under this section unless the invention for 
which the defense is asserted is for a method. 
(B) DERIVATION.— A person may not 
assert the 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. 
(C) 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 claimed 
in the patent with respect to which the person can 
assert a defense under this chapter, 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) BURDEN OF PROOF.— A person 
asserting the defense under this section shall have the 


burden of establishing the defense by clear and convincing evidence. 

(5) ABANDONMENT OF USE.— A person 
who has abandoned commercial use 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 after the date 
of such abandonment. 
(6) PERSONAL DEFENSE.— The defense 
under this section may be asserted only by the person 
who performed the acts necessary to establish the 
defense and, except for any transfer to the patent 
owner, the right to assert the defense 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. 
(7) LIMITATION ON SITES.— A defense 
under this section, when acquired as part of a good 
faith assignment or transfer of an entire enterprise or 
line of business to which the defense relates, may only 
be asserted for uses at sites where the subject matter 
that would otherwise infringe one or more of the 
claims is in use before the later of the effective filing 
date of the patent or the date of the assignment or 
transfer of such enterprise or line of business. 
(8) UNSUCCESSFUL 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 285 of this title. 
(9) INVALIDITY.— A patent shall not be 
deemed to be invalid under section 102 or 103 of this 
title 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).) 

===CHAPTER 29 — REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS===


Sec.
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. 
289 Additional remedy for infringement of design 

patent. 
290 Notice of patent suits. 
291 Interfering patents. 
292 False marking. 
293 Nonresident patentee; service and notice. 
294 Voluntary arbitration. 
295 Presumptions: Product made by patented pro

cess. 
296 Liability of States, instrumentalities of States, 
and State officials for infringement of patents. 
297 Improper and deceptive invention promotion 

====35 U.S.C. 281 Remedy for infringement of patent.====

A patentee shall have remedy by civil action for 
infringement of his patent. 

====35 U.S.C. 282 Presumption of validity; defenses.====

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. Notwithstanding the preceding sentence, if a claim to a 
composition of matter is held invalid and that claim 
was the basis of a determination of nonobviousness 
under section 103(b)(1), the process shall no longer be 
considered nonobvious solely on the basis of section 
103(b)(1). The burden of establishing invalidity of a 
patent or any claim thereof shall rest on the party 
asserting such invalidity. 

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 of this title as a condition for patentability, 


(3) Invalidity of the patent or any claim in suit 
for failure to comply with any requirement of sections 
112 or 251 of this title, 
(4) Any other fact or act made a defense by this 
title. 


In actions 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 of this 
title 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 10441, sec. 2, 109 Stat. 352; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-560, 582 (S. 1948 
secs. 4402(b)(1) and 4732(a)(10)(A)).) 

====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. 

====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 that 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) of this title. 

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)).) 

35 U.S.C. 285 Attorney fees. 

The court in exceptional cases may award reasonable attorney fees to the prevailing party. 

====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. 

====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 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) of this title 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) of this title, 
the provisions of sections 281, 283, 284, and 285 of 
this title 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 the earliest 
effective filing date of which is prior to 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 104208, 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).) 

====35 U.S.C. 288 Action for infringement of a patent containing an invalid claim.====

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 dis-

 

claimer 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.) 

====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. 

====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)).) 

====35 U.S.C. 291 Interfering patents.====

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 of this 
title shall apply to actions brought under this section. 

====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 same 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. 

(b) Any person may sue for the penalty, in 
which event one-half shall go to the person suing and 
the other to the use of the United States. 

(Subsection (a) amended Dec. 8, 1994, Public Law 
103-465, sec. 533(b)(6), 108 Stat. 4990.) 

====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 District of Columbia 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.) 

====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 of this title 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.) 

====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.) 

====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.) 

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)).) 

===CHAPTER 30 — PRIOR ART CITATIONS TO OFFICE AND EX PARTE REEXAMINATION OF PATENTS===


Sec. 

301 Citation of prior art. 

302 Request for reexamination. 

303 Determination of issue by Director. 

304 Reexamination order by Director. 

305 Conduct of reexamination proceedings. 

306 Appeal. 

307 Certificate of patentability, unpatentability, and 
claim cancellation. 

====35 U.S.C. 301 Citation of prior art.====

Any person at any time may cite to the Office in 
writing 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. 
If the person explains in writing the pertinency and 
manner of applying such prior art to at least one claim 
of the patent, the citation of such prior art and the 
explanation thereof will become a part of the official 
file of the patent. At the written request of the person 
citing the prior art, his or her identity will be excluded 
from the patent file and kept confidential. 

(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 
94 Stat. 3015.) 

====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 of this title. 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 of this title. 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)).) 

====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 of this title, 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 of this title. 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 of this title. 

(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.) 

====35 U.S.C. 304 Reexamination order by Director.====

If, in a determination made under the provisions of 
subsection 303(a) of this title, 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 of 
this title. 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)).) 

====35 U.S.C. 305 Conduct of reexamination proceedings.====

After the times for filing the statement and reply 
provided for by section 304 of this title have expired, 
reexamination will be conducted according to the procedures established for initial examination under the 
provisions of sections 132 and 133 of this title. 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 
of this title, 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.) 

====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 of this title, and may seek court 
review under the provisions of sections 141 to 145 of 
this title, 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.) 

====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 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 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)).) 

===CHAPTER 31 — OPTIONAL INTER PARTES REEXAMINATION PROCEDURES===

Sec.
311 Request for inter partes reexamination. 
312 Determination of issue by Director.
313 Inter partes reexamination order by Director.
314 Conduct of inter partes reexamination proceed


ings. 
315 Appeal. 
316 Certificate of patentability, unpatentability, and 

claim cancellation. 
317 Inter partes reexamination prohibited. 
318 Stay of litigation. 

====35 U.S.C. 311 Request for inter partes reexamination====

(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.) 

====35 U.S.C. 312 Determination of issue by Director====

(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 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. 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) 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 no substantial new question of patentability has been raised, 
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.) 

====35 U.S.C. 313 Inter partes reexamination order by Director====

If, in a determination made under section 312(a), 
the Director finds that a substantial new question of 
patentability affecting a claim of a patent is raised, 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)).) 

====35 U.S.C. 314 Conduct of inter partes reexamination proceedings====

(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 107273, sec. 13202, 116 Stat. 1901.) 

====35 U.S.C. 315 Appeal====

(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.) 

====35 U.S.C. 316 Certificate of patentability, unpatentability and claim cancellation====

(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)).) 

 

====35 U.S.C. 317 Inter partes reexamination prohibited====

(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.) 

====35 U.S.C. 318 Stay of litigation====

 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)).) 

==PART IV — PATENT COOPERATION TREATY==


===CHAPTER 35 — DEFINITIONS===

Sec. 
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 
inter national 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 99616, 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)).) 

===CHAPTER 36 — INTERNATIONAL STAGE===

Sec. 

361 Receiving Office. 

362 International Searching Authority and International Preliminary Examining Authority. 

363 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 in the English language. 
(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)).) 

====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 99616, sec. 4, 100 Stat. 3485; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 
4732(a)(10)(A)).) 

====35 U.S.C. 363 International application designating the United States: Effect.====

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) of this title. 

(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.) 

====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 a pending international application may 
be excused upon a showing satisfactory to the Director of unavoidable delay, to the extent not precluded 
by the treaty and the Regulations, and provided the 
conditions imposed by the treaty and the Regulations 
regarding the excuse of such failure to act are complied with. 

(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 99616, 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)).) 

====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 of this title, 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) of this title 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. 
(c) In accordance with the conditions and 
requirements of section 120 of this title, an international application designating the United States shall 
be entitled to the benefit of the filing date of a prior 
national application or a prior international application 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, 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 103465, 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)).) 

====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, 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) of this part, 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.) 

====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 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 
4732(a)(10)(A)).) 

====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 of this title. 
(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 of this title, 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 99616, sec. 6, 100 Stat. 3486.) 

===CHAPTER 37 — NATIONAL STAGE===

Sec.
371 National stage: Commencement. 
372 National stage: Requirements and procedure.
373 Improper applicant.
374 Publication of international application: Effect.
375 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) 
of this title; 
(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 of this title) 
complying with the requirements of section 115 of 
this title 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, unless it be shown to the 
satisfaction of the Director that such failure to comply 
was unavoidable. 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.) 

====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 
of this title, 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)).) 

====35 U.S.C. 373 Improper applicant.====

An international application designating the United 
States, shall not be accepted by the Patent and Trademark Office for the national stage if it was filed by 
anyone not qualified under chapter 11 of this title to 
be an applicant for the purpose of filing a national 
application in the United States. Such international 
applications shall not serve as the basis for the benefit 
of an earlier filing date under section 120 of this title 
in a subsequently filed application, but may serve as 
the basis for a claim of the right of priority under subsections (a) through (d) of section 119 of this title, if 
the United States was not the sole country designated 
in such international application. 

(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 
89 Stat. 689; amended Nov. 8, 1984, Public Law 98-622, 
sec. 403(a), 98 Stat. 3392; Dec. 8, 1994, Public Law 103465, sec. 532(c)(5), 108 Stat. 4987.) 

====35 U.S.C. 374 Publication of international application.====

The publication under the treaty defined in section 
351(a) of this title, 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) of this title. 

 

(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.) 

====35 U.S.C. 375 Patent issued on international application: Effect.====

(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) 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 of this title. 
(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)).) 

====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.) 

==LAWS NOT IN TITLE 35, UNITED STATES CODE==


====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 or imprisoned not more than 
5 years, or both. 
(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.) 

====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 103322, sec. 330016(1)(I), 108 Stat. 2147.)