35 U.S.C.: Difference between revisions

Revision as of 20:40, June 30, 2007

Appendix L Patent Laws

United States Code Title 35 – Patents

PART I — UNITED STATES PATENT AND TRADEMARK OFFICE

CHAPTER 1 — ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS

Sec.

1 Establishment.

2 Powers and duties.

3 Officers and employees.

4 Restrictions on officers and employees as to interest in patents.

5 Patent and Trademark Office Public Advisory Committees.

6 Board of Patent and Appeals and Interferences. 7 Library. 8 Classification of patents. 9 Certified copies of records. 10 Publications. 11 Exchange of copies of patents and applications

with foreign countries.

12 Copies of patents and applications for public libraries.

13 Annual report to Congress.

35 U.S.C. 1 Establishment.

(a) ESTABLISHMENT.— The United States Patent and Trademark Office is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the United States Patent and Trademark Office shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law. Those operations designed to grant and issue patents and those operations which are designed to facilitate the registration of trademarks shall be treated as separate operating units within the Office. (b) OFFICES.— The United States Patent and Trademark Office shall maintain its principal office in the metropolitan Washington, D.C., area, for the service of process and papers and for the purpose of carrying out its functions. The United States Patent and Trademark Office shall be deemed, for purposes of venue in civil actions, to be a resident of the district in which its principal office is located, except where jurisdiction is otherwise provided by law. The United States Patent and Trademark Office may establish satellite offices in such other places in the United States as it considers necessary and appropriate in the conduct of its business. (c) REFERENCE.— For purposes of this title, the United States Patent and Trademark Office shall also be referred to as the “Office” and the “Patent and Trademark Office”.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4711).)

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

Sec. 21 Filing date and day for taking action. 22 Printing of papers filed. 23 Testimony in Patent and Trademark Office

cases. 24 Subpoenas, witnesses. 25 Declaration in lieu of oath. 26 Effect of defective execution.

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

AND TRADEMARK OFFICE Sec. 31 [Repealed] 32 Suspension or exclusion from practice. 33 Unauthorized representation as practitioner.

35 U.S.C. 31 [Repealed].

(Repealed Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4715(b)).)

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

Sec. 41 Patent fees; patent and trademark search systems. 42 Patent and Trademark Office funding.

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

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.—

(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be made, by the inventor, except as otherwise provided in this title, in writing to the Director. (2) CONTENTS.—Such application shall include— (A) a specification as prescribed by section 112 of this title; (B) a drawing as prescribed by section 113 of this title; and (C) an oath by the applicant as prescribed by section 115 of this title. (3) FEE AND OATH.—The application must be accompanied by the fee required by law. The fee and oath may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. (4) FAILURE TO SUBMIT.—Upon failure to submit the fee and oath within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee and oath was unavoidable or unintentional. The filing date of an application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office.

(b) PROVISIONAL APPLICATION.—

(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include— (A) a specification as prescribed by the first paragraph of section 112 of this title; and (B) a drawing as prescribed by section 113 of this title. (2) CLAIM.—A claim, as required by the second through fifth paragraphs of section 112, shall not be required in a provisional application. (3) FEE.—

(A) The application must be accompanied by the fee required by law. (B) The fee may be submitted after the specification and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. (C) Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the fee was unavoidable or unintentional. (4) FILING DATE.—The filing date of a provisional application shall be the date on which the specification and any required drawing are received in the Patent and Trademark Office. (5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period. (6) OTHER BASIS FOR PROVISIONAL APPLICATION.—Subject to all the conditions in this subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed under subsection (a) may be treated as a provisional application for patent. (7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) of this title or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c) of this title.

(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 115, 131, 135, and 157 of this title.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat. 319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108 Stat. 4986; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A), 4801(a)).)

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

PATENT LAWS 2071

(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.)

INDEX OF PATENT LAWS

A

Abandoned applications, fee on petition to revive.41(a)7 Abandonment of application by failure to prose cute. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .133, 371 Abandonment of invention: Bar to patent. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .102 By violation of secrecy . . . . . . . . . . . . . . . . . . . . .182 Adjustment of patent term . . . . . . . . . . . . . . . . . . . 154 Administrative Patent Judges . . . . . . . . . . . . . . . . . . . . .6 Administrator, executor, or guardian. . . . . . . . . . . . . . 117 Affidavits and depositions in contested cases, rules for taking. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .23 Agreement to terminate interference. . . . . . . . . . . . . .135 Agriculture, Secretary of, to furnish information, and detail employees to Director for plant patent . . 164 Allowance and issue of patents. . . . . . . . . . . . . . . . . .153 Allowance, notice of . . . . . . . . . . . . . . . . . . . . . . . . . .151 Amendment: Copying claim of issued patent. . . . . . . . . . . . . . .135 Time for. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .133, 135 Annual indexes of patents. . . . . . . . . . . . . . . . . . . . . . .10 Annual report of the Director . . . . . . . . . . . . . . . . . . . .13 Apostille on assignment . . . . . . . . . . . . . . . . . . . . . . .261 Appeals to Board of Patent Appeals and Interfer ences. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .134 Fee.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .41(a)6, 134 Hearing of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6 Reexamination proceedings. . . . . . . . . . . . . . . . . .306 Appeals to Court of Appeals for the Federal Cir cuit . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .141 Certificate of decision of Court recorded in the United States Patent and Trademark Office . . . . 144 Determination of Appeal; revision of decision . . . 144 From Board of Patent Appeals and Interfer ences . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .141 Grounds of decision to be furnished court. . . . . . . 143 Notice of appeal. . . . . . . . . . . . . . . . . . . . . . . . . . .142 Proceedings on appeal. . . . . . . . . . . . . . . . . . . . . .143 Applicant for foreign patent, license required. . . . . . .184 Applicant for international application . . . . . . . . . . . . 373 Applicant, notified of interference . . . . . . . . . . . . . . . 135 Application: Abandonment of, by failure to prosecute . . . . . . . 133 Assignment of . . . . . . . . . . . . . . . . . . . . . . . . . . . .261 Confidential while pending. . . . . . . . . . . . . . . . . .122 Continuing. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .120 Description; specification and claim . . . . . . . . . . . 112 Divisional. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .121

Drawings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 113 Effect of defective execution . . . . . . . . . . . . . . . . . 26 Effective as of date of earliest foreign applica tion in certain cases . . . . . . . . . . . . . . . . . . . . . . 119 Examination of invention.. . . . . . . . . . . . . . . . . . 131 Fee on filing. . . . . . . . . . . . . . . . . . . . . . . 41(a)1, 111 For deceased or insane inventors . . . . . . . . . . . . . 117 May be made by legal representative of deceased or incapacitated inventor. . . . . . . . . . . 117 Must be made within specified time after for eign application for right of priority. . . . . . . . . . 119 Oath of applicant (See Oath in patent applica tion) Owned by Government. . . . . . . . . . . . . . . . . . . . . 267 Provisional . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .111 Publication . . . . . . . . . . . . . . . . . . . . . . 102, 122, 181 Reissue . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 251 Secrecy order . . . . . . . . . . . . . . . . . . . . . . . . . . . . 181 What to contain. . . . . . . . . . . . . . . . . . . . . . . . . . . .111 When filed by other than inventor . . . . . . . . 118, 121 Appointments, how made. . . . . . . . . . . . . . . . . . . . . . . . 3 Arbitration of interferences . . . . . . . . . . . . . . . . . . . . 135 Arbitration, voluntary. . . . . . . . . . . . . . . . . . . . . . . . . 294 Article patented marked with number of patent. . . . . 287 Assignee: May file application in certain cases . . . . . . . . . . . . . 118 May file divisional application. . . . . . . . . . . . . . . 121 May file reissue application . . . . . . . . . . . . . . . . . 251 Patent may be issued to . . . . . . . . . . . . . . . . . . . . 152 Assignments, patent . . . . . . . . . . . . . . . . . . . . . . . . . . 261 Establishing prima facie execution of . . . . . . . . . . . . 261 Fees for recording. . . . . . . . . . . . . . . . . . . . . . 41(a)10 Must be recorded in United States Patent and Trademark Office to issue patent to assignee. . . 152 Patent may issue to assignee. . . . . . . . . . . . . . . . . 152 Recording in Patent and Trademark Office . . . . . 261 Attorney fees in infringement suit. . . . . . . . . . . . . . . 285 Attorneys and agents: May be refused recognition for misconduct. . . . . . 32 Petition toDistrict Court, DC. . . . . . . . . . . . . . . . . 32 Suspension or exclusion from practice. . . . . . . . . . 32 Unauthorized practitioners. . . . . . . . . . . . . . . . . . . 33

B

Bars to grant of a patent. . . . . . . . . . . . . . . . . . . 102, 103 Benefit of earlier filing date in foreign country . . . . . 119 Benefit of earlier filing date in United States. . . . . . . 120 Best mode required. . . . . . . . . . . . . . . . . . . . . . . . . . . 112 Bill in equity (See Civil action)

Board of Patent Appeals and Interferences, how constituted . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .6

C

Certificate of correction: Applicant’s mistake . . . . . . . . . . . . . . . . . . . . . . . .255 Fee for applicant’s mistake . . . . . . . . . . . . . . . .41(a)8 Office mistake . . . . . . . . . . . . . . . . . . . . . . . . . . . .254 Certified copies: Fee for certification . . . . . . . . . . . . . . . . . . . . .41(a)11 Of drawings and specifications of patents issued. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9 Of records, furnished to Court of Appeals for the Federal Circuit in appeals . . . . . . . . . . . . . . .143 Citation of prior art in patent. . . . . . . . . . . . . . . . . . . .301 Citizenship required in oath. . . . . . . . . . . . . . . . . . . . .115 Civil action: Election of in case of interference. . . . . . . . . . . . .141 Infringement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .291 In case of interference . . . . . . . . . . . . . . . . . . . . . .146 Jurisdiction, plurality of parties, foreign party . . . 146 To obtain patent. . . . . . . . . . . . . . . . . . . . . . . . . . .145 Claim of patent: Independent or dependent . . . . . . . . . . . . . . . .41, 112 Independent or dependent, validity . . . . . . . . . . . . 282 Invalid, effect of. . . . . . . . . . . . . . . . . . . . . . . . . . .253 Invalid, suits on patent with. . . . . . . . . . . . . . . . . .288 Notice of rejection. . . . . . . . . . . . . . . . . . . . . . . . .132 Too extensive or narrow, remedy. . . . . . . . . . . . . .251 What to cover. . . . . . . . . . . . . . . . . . . . . . . . . . . . .112 Classification of patents . . . . . . . . . . . . . . . . . . . . . . . . .8 Clerk of United States Court may summon witness in Interference cases. . . . . . . . . . . . . . . . . . . . . . . . . . .24 Must notify Director of patent suits. . . . . . . . . . . .290 Commerce, Department of, United States Patent and Trademark Office in . . . . . . . . . . . . . . . . . . . . . . .1 Commerce, Secretary of: Appointments by . . . . . . . . . . . . . . . . . . . . . . . . . . . .3 Commissioner for Patents: How appointed and duties . . . . . . . . . . . . . . . . . . . . .3 Member of Board. . . . . . . . . . . . . . . . . . . . . . . . . . . .6 Commonly owned invention and reference subject matter. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .103 Compensation, right to because of secrecy order . . . . 183 Composition of matter: Patentable. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .101 Specimens of ingredients may be required . . . . . . 114 Concealment of records. . . . . . . . . . . . . . 18 U.S.C. 2071 Confidential status of application . . . . . . . . . . . . 122, 205 Continuing application . . . . . . . . . . . . . . . . . . . . . . . .120 Contributory infringement. . . . . . . . . . . . . . . . . . . . . .271

Copies of records, fees. . . . . . . . . . . . . . . . . . . . . . . . . 41 Correction of inventors in patent . . . . . . . . . . . . . . . . 256 Correction of letters patent. . . . . . . . . . . . . . . . . 254, 255

D

Damages for infringement. . . . . . . . . . . . . . . . . . . . . 284 Day of taking any action or paying any fee falling on Saturday, Sunday, or holiday. . . . . . . . . . . . . . . . 21 Death or incapacity of inventor . . . . . . . . . . . . . . . . . 117 Decisions in patent cases, printing of. . . . . . . . . . . . . . 10 Declaration in lieu of oath . . . . . . . . . . . . . . . . . . . . . . 25 Dedication of term . . . . . . . . . . . . . . . . . . . . . . . . . . . 253 Defective execution of documents, effect of . . . . . . . . 26 Defenses in action for infringement. . . . . . . . . . . . . . 282 Definitions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100, 351 Deposit with United States Postal Service . . . . . . . . . . 21 Depositions, Director may establish rules for . . . . . . . 23 Deputy Commissioner . . . . . . . . . . . . . . . . . . . . . . . . . . 6 Member of Board. . . . . . . . . . . . . . . . . . . . . . . . . . . 6 Description of invention.. . . . . . . . . . . . . . . . . . . . . . 112 Design patents: Double recovery, not allowed.. . . . . . . . . . . . . . . 289 Fees. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41(a)3 For what granted.. . . . . . . . . . . . . . . . . . . . . . . . . 171 Liability for infringement of. . . . . . . . . . . . . . . . . 289 Penalty for unauthorized use of patented design . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 289 Prior foreign applications. . . . . . . . . . . . . . . . . . . 172 Right of priority . . . . . . . . . . . . . . . . . . . . . . . . . . 172 Subject to same provisions as other patents . . . . . 171 Term of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 173 Unauthorized use of . . . . . . . . . . . . . . . . . . . . . . . 289 Designated office . . . . . . . . . . . . 363, 366, 367, 371, 372 Determination of patent term adjustment . . . . . . . . . . 154 Director: Annual report to Congress . . . . . . . . . . . . . . . . . . . 13 Consult with Patent Public Advisory Committee.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Duties of. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 How appointed . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3 Intellectual Property Policy Issues, advises President, Federal Departments . . . . . . . . . . . . . . . 2 May disbar attorneys.. . . . . . . . . . . . . . . . . . . . . . . 32 May establish charges.. . . . . . . . . . . . . . . . . . . . . . 41 May make rules for taking affidavits and depositions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23 Member of Board. . . . . . . . . . . . . . . . . . . . . . . . . . . 6 Reexamination order.. . . . . . . . . . . . . . . . . . . . . . 304 Shall cause examination to be made. . . . . . . . . . . 131 To establish regulations . . . . . . . . . . . . . . . . . . . . . . 3 To furnish court with grounds of decision, on appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 143

To prescribe rules and regulations governing recognition of attorneys and agents. . . . . . . . . . . . . 2 To sign patents or have name printed thereon and attested . . . . . . . . . . . . . . . . . . . . . . . . . . . . .153 To superintend grant of patents . . . . . . . . . . . . . . . . .3 Disbarment of attorneys and agents . . . . . . . . . . . . . . .32 Disclaimer: Fee.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .41(a)5 How filed and by whom . . . . . . . . . . . . . . . . . . . .253 Must be filed before commencement of suit to recover costs . . . . . . . . . . . . . . . . . . . . . . . . . . . .288 Nature of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .253 District Court for District of Columbia: Jurisdiction. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .146 Review of disbarment of attorneys and agents . . . . 32 Division of application . . . . . . . . . . . . . . . . . . . . . . . .121 Division of patent on reissue. . . . . . . . . . . . . . . . . . . .251 Drawing: Attached to patent . . . . . . . . . . . . . . . . . . . . . . . . .154 Part of patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . .154 Printing of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10 When necessary. . . . . . . . . . . . . . . . . . . . . . . . . . .113 Duties of Director . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3

E

Elected office. . . . . . . . . . . . . . . . . . . . . . . . . . . .371, 372 Employees of United States Patent and Trademark Office. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3 How appointed. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3 Restrictions on as to interest in patents . . . . . . . . . . . 4 English language. . . . . . . . . . . . . . . . . . . . . . . . . . . . .361 Entry into national phase in United States . . . . . . . . . 371 Error in naming inventors . . . . . . . . . . . . . . . . . . . . . .116 Establishment of date of invention by reference to knowledge or use in foreign country. . . . . . . . . . . .104 Establishment, United States Patent and Trade mark Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1 Examination: Applicants shallbe notified of rejection on. . . . . .132 To be made of application and alleged inven tion. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .131 Exchange of United States Patent and Trademark Office Publications for other publications . . . . . . . . . 10 Exchange of printed copies of patents and pub lished application of patents with foreign coun tries. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11 Executors, administrators or guardians . . . . . . . . . . . . 117 Extension of patent term . . . . . . . . . . . . . . . . . . . . . . .155

Extension of time to reply fee . . . . . . . . . . . . . . . .41(a)8

F

Falsely making or labeling articles as patented . . . . . 292 Federal agency, defined . . . . . . . . . . . . . . . . . . . . . . . 200 Federal Assistance, inventions made with: Confidentiality . . . . . . . . . . . . . . . . . . . . . . . . . . . 205 Definitions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 201 Disposition of rights. . . . . . . . . . . . . . . . . . . . . . . 202 Domestic and foreign protection of federally owned inventions . . . . . . . . . . . . . . . . . . . . . . . . 207 Educational awards. . . . . . . . . . . . . . . . . . . . . . . . 212 March-in rights. . . . . . . . . . . . . . . . . . . . . . . . . . . 203 Policyand objective of. . . . . . . . . . . . . . . . . . . . . 200 Precedence of chapter over other Acts . . . . . . . . . 210 Preference for United States industry. . . . . . . . . . 204 Regulations governing Federal licensing . . . . . . . 208 Relationship to antitrust laws. . . . . . . . . . . . . . . . 211 Restrictions on licensing of federally owned inventions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 209 Uniform clausesand regulations . . . . . . . . . . . . . 206 Fees: Amount of. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41 For attorney awarded by court. . . . . . . . . . . . . . . 285 For records, publications, and services not specified in statute . . . . . . . . . . . . . . . . . . . . . . . . 41 How paid and refunded. . . . . . . . . . . . . . . . . . . . . . 42 Independent inventor, 50% reduction. . . . . . . . . 41(h) International. . . . . . . . . . . . . . . . . . . . . . . . . 361, 376 Nonprofit organization, 50% reduction . . . . . . . 41(h) Payable to Director. . . . . . . . . . . . . . . . . . . . . . . 42(a) Small business, 50% reduction. . . . . . . . . . . . . . 41(h) Small entity, 50% reduction . . . . . . . . . . . . 41(h), 133 To witness interference cases . . . . . . . . . . . . . . . . . 24 Filing application by other than inventor . . . . . . . . . . 118 Filing date requirements. . . . . . . . . . . . . . . . . . . . . . . .111 Filing fee, Amount of. . . . . . . . . . . . . . . . . . . . . . . 41(a)1 Foreign applications: License to file required. . . . . . . . . . . . . . . . . . . . . 184 Penalty for filing without license . . . . . . . . . 185, 186 Foreign countries, exchange of printed copies of patents and published application of patents with. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11 Foreign country, knowledge of use in, not used to establish date of invention . . . . . . . . . . . . . . . 102, 104 Foreign patentee: Jurisdiction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 293 Service . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 293 Foreign patents: Copies of, exchanged for United States patents and published application of patents . . . . . . . . . . 11

Prior, effect on United States application for patent. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .102 Foreign priority . . . . . . . . . . . . . . . . .119(a)-(d),365, 373 Fraudulent statements. . . . . . . . . . . . . . . 18 U.S.C. 1001 Funding agreement, defined . . . . . . . . . . . . . . . . . . . .200

G

Government interests in patents . . . . . . . . . . . . . . . . .267

H

Holiday, time for action expiring on . . . . . . . . . . . . . . .21

I

Importation of products made by a patented pro cess. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .295 Improvements, patents may be granted for . . . . . . . . . 101 Indexes of patents and patentees, printing of . . . . . . . . 10 Infringement, patent: Action for . . . . . . . . . . . . . . . . .281 Attorney fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . .285 By United States, time limitation in suit for . . . . . 286 Clerk of court to notify United States Patent and Trademark Office of suit. . . . . . . . . . . . . . . .290 Contributory. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .271 Damages for.. . . . . . . . . . . . . . . . . . . . . . . . . . . . .284 Defenses in suit for . . . . . . . . . . . . . . . . . . . .273, 282 Defined. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .271 Design patent. . . . . . . . . . . . . . . . . . . . . . . . . . . . .289 Injunction. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .283 Notice of, necessary to recovery of damages . . . . 287 Pleading defense and special matters to be proved in suit. . . . . . . . . . . . . . . . . . . . . . . . . . . .282 Suit for, when a claim is invalid . . . . . . . . . . . . . .288 Temporary presence in United States . . . . . . . . . . 272 Time limitation. . . . . . . . . . . . . . . . . . . . . . . . . . . .286 Injunctions may be granted by court having juris diction. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .283 Insane persons, patent applications of . . . . . . . . . . . . . 117 Interference, patent: Agreements, between parties, relating to ter mination, to be filed in Patent and Trademark Office. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .135 Appeal to court. . . . . . . . . . . . . . . . . . . . . . . . . . . .141 Arbitration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .135 Determination of priority. . . . . . . . . . . . . . . .102, 135 Parties to be notified of . . . . . . . . . . . . . . . . . . . . .135 Review of decision by civil action. . . . . . . . . 145, 146 Rules for taking testimony. . . . . . . . . . . . . . . . . . . .23 International application . . . . . . . 351, 365, 366, 367, 375 Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .376 National phase in United States. . . . . . . . . . . . . . .371 Priority rights. . . . . . . . . . . . . . . . . . . . . . . . . . . . .365

Interfering patent: How set aside. . . . . . . . . . . . . . . . . . . . . . . . . . . . 291 Jurisdiction, plurality of parties, foreign party146, 291 Relief against . . . . . . . . . . . . . . . . . . . . . . . . . . . . 291 International Bureau. . . . . . .. . . . . . . 351, 361, 362, 371 International Preliminary Examining Authority.. . . . . . . . . . . . . . . . . . . . . . . . 362, 364, 368 International Searching Authority . . . 351, 362, 364, 368 International studies . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 Intervening rights on reissue . . . . . . . . . . . . . . . . . . . 252 Invalid patent claim disclaimer . . . . . . . . . . . . . . . . . 288 Invalidityof term extension . . . . . . . . . . . . . . . . . . . . 282 Invention date as affected by activity abroad . . . . . . . 104 Invention, defined. . . . . . . . . . . . . . . . . . . . . . . . . . . . 100 Invention made abroad. . . . . . . . . . . . . . . . . . . . . . . . 104 Inventions promotion, improper and deceptive . . . . . 297 Inventions in outer space . . . . . . . . . . . . . . . . . . . . . . 105 Inventions patentable. . . . . . . . . . . . . . . . . . . . . . . . . 101 Inventions previously patented abroad. . . . . . . . . . . . 102 Inventive step . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103 Inventor: Correction of patent . . . . . . . . . . . . . . . . . . . . . . . 256 Death or incapacity. . . . . . . . . . . . . . . . . . . . . . . . 117 May obtain patent. . . . . . . . . . . . . . . . . . . . . . . . . 101 Oath for joint.. . . . . . . . . . . . . . . . . . . . . . . . . . . . 116 Refuses to sign . . . . . . . . . . . . . . . . . . . . . . . . . . . 118 To make application . . . . . . . . . . . . . . . . . . . . . . . 111 Inventor’s certificate as reference. . . . . . . . . . . . . . . . 102 Inventor’s certificate priority right . . . . . . . . . . . . . . . 119 Issue of patent. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 151 Issue fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41 If not paid within three months, patent withheld. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 151 Nonpayment. . . . . . . . . . . . . . . . . . . . . . . . . . 41, 151 Payment of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 151

J

Joint inventors . . . . . . . . . . . . . . . . . . . . . . . . . . 116, 256 Joint owners. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 262 Jurisdiction of District Court for District of Columbia. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32

K

Knowledge or use in foreign country no bar to patent. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102

L

Legal representative of dead or incapacitated inventor. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 117 Liability of States. . . . . . . . . . . . . . . . . . . . . . . . . . . . 296

Libraries, public, copies of patents and published applications for patents for.. . . . . . . . . . . . . . . . .12, 41 Library. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7 License for foreign filing. . . . . . . . . . . . . . . . . . . . . . .184 Limitation on damages . . . . . . . . . . . . . . . .154, 286, 287

M

Machines patentable . . . . . . . . . . . . . . . . . . . . . . . . . .100 Maintenance fees. . . . . . . . . . . . . . . . . . . . . . . . . . . 41(b) Late payment . . . . . . . . . . . . . . . . . . . . . . . . . . . .41(c) Manufactures patentable . . . . . . . . . . . . . . . . . . . . . . .101 Marking articles falsely as patented . . . . . . . . . . . . . .292 Marking articles patented . . . . . . . . . . . . . . . . . . . . . .287 Misjoinder of inventor. . . . . . . . . . . . . . . . .116, 202, 256 Mistake in patent, certificate thereof issued . . . . 254, 255 Model, shall be furnished if required. . . . . . . . . . . . . .114 Money: Paid by mistake or in excess, refunded . . . . . . . . . .42 Received for fees, etc. to be paid into Treasury. . . . 42 Multiple dependent claim . . . . . . . . . . . . . . . . . . . . . .112 Fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .41 Mutilation of records.. . . . . . . . . . . . . . . 18 U.S.C. 2071

N

National Security . . . . . . . . . . . . . . . . . . . . . .3, 122, 181 National stage of international application . 371, 372, 373 New matter inadmissible in reissue. . . . . . . . . . . . . . .251 New matter, may not be introduced by amendment . . 132 Nonjoinder of inventor . . . . . . . . . . . . . . . . . . . . . . . .256 Nonobviousness. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .103 Nonprofit organization, defined . . . . . . . . . . . . . . . . .200 Nonresident patentee. . . . . . . . . . . . . . . . . . . . . . . . . .293 Notice as regards patents: As to proof in infringement suits. . . . . . . . . . . . . .282 Of allowance of patent. . . . . . . . . . . . . . . . . . . . . .151 Of appeal to the Court of Appeals for the Fed eral Circuit.. . . . . . . . . . . . . . . . . . . . . . . . .142, 143 Of interference. . . . . . . . . . . . . . . . . . . . . . . . . . . .135 Of patent suit, decision to be given United States Patent and Trademark Office by clerk of court.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .290 Of rejection of an application . . . . . . . . . . . . . . . .132 Of suit to be entered on file of patent . . . . . . . . . .290 To the public by Federal agency . . . . . . . . . . . . . .209 To the public that invention is patented. . . . . . . . .287 Novelty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .102

O

Oath in patent application . . . . . . . . . . . . . . . . . .115, 152 Before whom taken in foreign countries . . . . . 25, 115 Before whom taken in the United States . . . . . . . . 115

Declaration in lieu of . . . . . . . . . . . . . . . . . . . . . . . 25 Joint inventors. . . . . . . . . . . . . . . . . . . . . . . . . . . . 116 Must be made by inventor, if living. . . . . . . . . . . 115 Requirements of . . . . . . . . . . . . . . . . . . . . . . . . . . 115 To be made by legal representative if inventor is dead or incapacitated . . . . . . . . . . . . . . . . . . . 117 Obviousness. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 103 Officer of United States Patent and Trademark Office may attest patents. . . . . . . . . . . . . . . . . . . . . 153 Officers and employees: Of United States Patent and Trademark Office . . . . 3 Of United States Patent and Trademark Office, restrictions on as to interests in patents . . . . . . . . . 4 Official Gazette: Exchange for publications . . . . . . . . . . . . . . . . . . . 11 Printing and distribution of. . . . . . . . . . . . . . . . . . . 11 Public Advisory Committee Report. . . . . . . . . . . . . 5 Owners, joint . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 262 Ownership assignment . . . . . . . . . . . . . . . . . . . . . . . . 261

P

Paris Convention . . . . . . . . . . . . . . . . . . . . . . . . . . . . 119 Patent and Trademark Office: See United States Patent and Trademark Office Patent Cooperation Treaty: Definitions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 351 Patent fees. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41 Disposition of. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 42 Patent laws, printing of. . . . . . . . . . . . . . . . . . . . . . . . . 10 Patent pending, false marking as . . . . . . . . . . . . . . . . 292 Patent Public Advisory Committee . . . . . . . . . . . . . . 3, 5 Appointment, timing and basis.. . . . . . . . . . . . . . . . 5 Duties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5 Consultation with Director. . . . . . . . . . . . . . . . . . 3, 5 Patent term adjustment. . . . . . . . . . . . . . . . . . . . . . . . 154 Patent term extension. . . . . . . . . . . . . . . . . . . . . . . . . 155 Patent term extensionapplication.. . . . . . . . . . . . . . . 156 Patent term restoration . . . . . . . . . . . . . . . . . . . . . . .155A Patentability, conditions for . . . . . . . . . . . . . . . . 102, 103 Patentable inventions. . . . . . . . . . . . . . . . . . . . . . . . . 101 Patented article, marked as such. . . . . . . . . . . . . . . . . 287 Patentee: Defined.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100 Notified of interference. . . . . . . . . . . . . . . . . . . . . 135 Patents: Application for . . . . . . . . . . . . . . . . . . . . . . . . . . . 111 Assignment of. . . . . . . . . . . . . . . . . . . . . . . . . . . . 261 Based on international application . . . . . . . . . . . . 375 Certified copies of. . . . . . . . . . . . . . . . . . . . . . . . . . . 9 Classification of . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8 Contents and duration of. . . . . . . . . . . . . . . . . . . . 154 Copies supplied to public libraries . . . . . . . . . . 12, 41

Copying claim of. . . . . . . . . . . . . . . . . . . . . . . . . .135 Date, duration, and form . . . . . . . . . . . . . . . . . . . .154 Design (See Design patents) Effect of adverse interference decision . . . . . . . . . 135 Exchange of printed copies with foreign coun tries . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11 Fee on issuing . . . . . . . . . . . . . . . . . . . . . . . . . . . . .41 Filing application in foreign country . . . . . . . . . . . 184 For what granted . . . . . . . . . . . . . . . . . . . . . . . . . .101 Foreign knowledge or use no bar to grant of. . . . .102 How issued, attested, and recorded . . . . . . . . . . . . 153 May be granted to assignee . . . . . . . . . . . . . . . . . .152 May be withheld in certain cases. . . . . . . . . . . . . .181 Obtainable by civil action . . . . . . . . . . . . . . . . . . .145 Personal property.. . . . . . . . . . . . . . . . . . . . . . . . .261 Presumption of validity . . . . . . . . . . . . . . . . . . . . .282 Price of copies . . . . . . . . . . . . . . . . . . . . . . . . . .41(a)9 Printing of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10 Reissuing of, when defective. . . . . . . . . . . . . . . . .251 Rights of invention made with federal assis tance. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 200 - 212 Restrictions on officers and employees of United States Patent and Trademark Office as to interest in. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4 Surrender of, to take effect on reissue . . . . . . . . . . 251 Term. . . . . . . . . . . . . . . . . . . . . . 154, 155, 166A, 156 Term adjustment . . . . . . . . . . . . . . . . . . . . . . . . . .154 Term extension. . . . . . . . . . . . . . . . . . . . . . . .155, 156 Term restoration.. . . . . . . . . . . . . . . . . . . . . . . . 155A Time of issue, payment of issue fee. . . . . . . . . . . .151 To be authenticated by seal of United States Patent and Trademark Office. . . . . . . . . . . . . . . . . .2 When to issue. . . . . . . . . . . . . . . . . . . . . . . . . . . . .151 Withheld for nonpayment of issue fee. . . . . . . . . .151 Patent rights in inventions made with Federal assistance . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 200-212 Confidentiality. . . . . . . . . . . . . . . . . . . . . . . . . . . .205 Definitions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .201 Disposition of rights. . . . . . . . . . . . . . . . . . . . . . . .202 Domestic and foreign protection of federally owned inventions. . . . . . . . . . . . . . . . . . . . . . . . .207 Educational awards . . . . . . . . . . . . . . . . . . . . . . . .212 March-in rights . . . . . . . . . . . . . . . . . . . . . . . . . . .203 Policy and objective of . . . . . . . . . . . . . . . . . . . . .200 Precedence of chapter over other Acts . . . . . . . . . 210 Preference for United States industry . . . . . . . . . . 204 Regulations governing federal licensing . . . . . . . . 208 Relationship to antitrust laws. . . . . . . . . . . . . . . . .211 Restrictions on licensing of federally owned inventions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .209 Uniform clauses and regulations . . . . . . . . . . . . . .206 Period for response . . . . . . . . . . . . . . . . . . . . . . . .21, 133

Photolithography, Headings of drawings printed . . . . . 10 Plant patents: Claim. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 162, 164 Description . . . . . . . . . . . . . . . . . . . . . . . . . . 162, 163 Fees. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41 Nature of right. . . . . . . . . . . . . . . . . . . . . . . . . . . . 163 Plants patentable. . . . . . . . . . . . . . . . . . . . . . . . . . 161 Secretary of Agriculture to furnish information and detail employees . . . . . . . . . . . . . . . . . . . . . 164 Pleading and proof in action for infringement . . . . . . 282 Postal Service deposit. . . . . . . . . . . . . . . . . . . . . . . . . . 21 Practical application, defined. . . . . . . . . . . . . . . . . . . 200 Pre-issuance opposition, when prohibited . . . . . . . . . 122 Presumption of product made by patented process . . 295 Presumption of validity of patents. . . . . . . . . . . . . . . 282 Printed publication bar to a patent. . . . . . . . . . . . . . . 102 Printing: Decisions in patent cases . . . . . . . . . . . . . . . . . . . . 10 Of papers filed . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22 United States Patent and Trademark Office . . . . . . 10 Printing headings of drawings by United States Patent and Trademark Office . . . . . . . . . . . . . . . . . . 10 Prior art, citation of. . . . . . . . . . . . . . . . . . . . . . . . . . . 301 Prior patenting or publication bar to patent . . . . . . . . 102 Priority, foreign.. . . . . . . . . . . . . . . . . . . . . . . . . 119, 365 Priority of invention.. . . . . . . . . . . . . . . . . . . . . . . . . 102 Priority of invention, determined by Board of Patent Appeals and Interferences . . . . . . . . . . . . . . 135 Priority, right of, under treaty or law . . . . . . . . . . . . . 119 For design applications. . . . . . . . . . . . . . . . . . . . . 172 Process defined.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 100 Process Patent Amendment Act of 1988 . . . . . . . . . . 287 Process patentable . . . . . . . . . . . . . . . . . . . . . . . . . . . 101 Product made by patent process. . . . . . . . . . . . . . . . . 295 Property of United States Patent and Trademark Office. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2 Provisional applications . . . . . . . . . . . . . . . . . . . .111, 119 Provisional rights. . . . . . . . . . . . . . . . . . . . . . . . . . . . 154 Protest and pre-issuance opposition, when prohibited . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 122 Public use or sale. . . . . . . . . . . . . . . . . . . . . . . . . . . . 102 Of invention bar to a patent . . . . . . . . . . . . . . . . . 102 Publication of international application, effect. . . . . . 374 Publication of patent applications . . . . . . . . . . . 122, 181 Publications regarding patents and trademarks . . . . . . 10

R Receiving Office. . . . . . . . . . . . . 351, 361, 364, 367, 368 Recording of assignments. . . . . . . . . . . . . . . . . . . . . . 261 Reexamination order by Director . . . . . . . . . . . . 304, 313 Reexamination procedure

Appeal. . . . . . . . . . . . . . . . . . . . . . 134, 141, 306, 315

Certificate of patentability, unpatentability, and claim cancellation. . . . . . . . . . . . . . . . .307, 316 Conduct of reexamination proceedings . . . . . 305, 314 Determination of issue by Director . . . . . . . . 303, 312 Determination of new question . . . . . . . . . . . 303, 312 Ex Parte . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 302-307 Inter Partes. . . . . . . . . . . . . . . . . . . . . . . . . . . 311-318 When prohibited. . . . . . . . . . . . . . . . . . . . . . . . .317 Request. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .302, 311 Special dispatch. . . . . . . . . . . . . . . . . . . . . . .305, 314 Stay of litigation.. . . . . . . . . . . . . . . . . . . . . . . . . .318 Reexamination to be made after first rejection, if desired . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .132 References, to be cited on examination. . . . . . . . . . . .132 Refund of money paid by mistake or in excess. . . . . . .42 Reissue of patents: Application fee. . . . . . . . . . . . . . . . . . . . . . . . . .41(a)4 Application may be made by assignee in cer tain cases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .251 By reason of defective claims . . . . . . . . . . . . . . . .251 Effect of. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .252 For unexpired term of original patent . . . . . . . . . . 251 Intervening rights. . . . . . . . . . . . . . . . . . . . . . . . . .252 Of defective patents. . . . . . . . . . . . . . . . . . . . . . . .251 To contain no new matter.. . . . . . . . . . . . . . . . . . .251 Rejection, applicant shall be notified of reasons for. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .132 Remedy for infringement of patent. . . . . . . . . . . . . . .281 Removal of records . . . . . . . . . . . . . . . . . 18 U.S.C. 2071 Report to Congress, annual . . . . . . . . . . . . . . . . . . . . . .13 Request for reexamination proceeding . . . . . . . . 302, 311 Restoration of patent. . . . . . . . . . . . . . . . . . . . . . . . 155A Restrictions on officers and employees of United States Patent and Trademark Office as to inter est in patents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4 Retention of revenue . . . . . . . . . . . . . . . . . . . . . . . . . . . .2 Revival if delay unavoidable. . . . . . . . . . . . . . . . . . . .133 Right of foreign priority . . . . . . . . . . . . . . . . . . . . . . .365 Right to compensation because of secrecy order. . . . . 183 Rules for taking testimony, Director to establish . . . . . 23 Rules of practice: Authority for . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2 Printing of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10

S

Saturday, time for action expiring on . . . . . . . . . . . . . .21 Seal of United States Patent and Trademark Office . . . . 2 Secrecy of applications . . . . . . . . . . . . . . . . . . . . . . . .122 Secrecy of certain inventions. . . . . . . . . . . . . . . 181 - 188 Secrecy of international application . . . . . . . . . . . . . . 368

Secrecy order . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 181 Small business firm, defined . . . . . . . . . . . . . . . . . . . 200 Small entity status. . . . . . . . . . . . . . . . . . . . . . . . . . . 2, 41 Specification(s): Contents of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 112 If defective, reissue to correct. . . . . . . . . . . . . . . . 251 Part of patent. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 154 Printing of. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10, 41 Uncertified copies, price of. . . . . . . . . . . . . . . . . . . 41 Specimens, may be required. . . . . . . . . . . . . . . . . . . . 114 Statutory invention registration . . . . . . . . . . . . . . . . . 157 Subpoenas to witnesses . . . . . . . . . . . . . . . . . . . . . . . . 24 Suit against the United States. . . . . . . . . . . . . . . . . . . 286 Suit in equity (See Civil action) Sunday,time for action expiring on . . . . . . . . . . . . . . . 21 Surcharge for later filing of fee or oath . . . . . . . . . . . 111

T

Term extension: For administrative delays . . . . . . . . . . . . . . . . . . . 154 For delays due to interference, secrecy orders, and/or appellate review. . . . . . . . . . . . . . . . . . . . 154 Regulatory review. . . . . . . . . . . . . . . . . . . . . . . . . 156 Term of patent: Design. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 173 Disclaimer of . . . . . . . . . . . . . . . . . . . . . . . . . . . . 253 Extension . . . . . . . . . . . . . . . . . . . . . . . . . . . 155, 156 Period . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 154 Restoration . . . . . . . . . . . . . . . . . . . . . . . . . . . . .155A Testimony,rules for taking. . . . . . . . . . . . . . . . . . . . . . 23 Time: Expiring on Saturday, Sunday, or holiday . . . . . . . 21 For payment of issue fee. . . . . . . . . . . . . . . . . . . . 151 For taking action in Government cases . . . . . . . . 267 Limitation on damages. . . . . . . . . . . . . . . . . . . . . 286 Within which action must be taken.. . . . . . . . . . . 133 Title of invention . . . . . . . . . . . . . . . . . . . . . . . . . . . . 154 Trademark fees. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 42(c) Trademarks, reference to . . . . . . . . . . . . . . . . . 1, 2, 3, 10 Translation error in international application . . . . . . . 375

U

Unauthorized disclosure. . . .. . .. . . . . . . . . . . . . . . . 182 Unauthorized person may not lawfully assist per sons in transaction of business before the Office . . . 33 Under Secretary of Commerce for Intellectual Property. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6 United States as designated office . . . . . . . . . . . . . . . 363 United States, defined. . . . . . . . . . . . . . . . . . . . . . . . . 100

United States Patent and Trademark Office: In Department of Commerce. . . . . . . . . . . . . . . . . . .1 Library. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .7 Printing. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10 Rules, authority for . . . . . . . . . . . . . . . . . . . . . . . . . .2 Seal of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2

Unpatented article, penalty for deceptive marking . . . 292 Use in foreign countries, no bar to grant of patent . . . 102

V

Verified translation requirement . . . . . . . . . . . . . . . . .372

Voluntary arbitration.. . . . . . . . . . . . . . . . . . . . . . . . . 294

W

Withdrawal of international application . . . . . . . . . . . 366 Withholding of patent. . . . . . . . . . . . . . . . . . . . . . . . . 181 Witness:

Failing to attend or refusing to testify. . . . . . . . . . . 24 Fees of, interference cases . . . . . . . . . . . . . . . . . . . 24 In interference summoned by clerk of United

States court.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24 Whenin contempt, punishment . . . . . . . . . . . . . . . 24

@@ Line 2: / Line 2: @@
 __TOC__
-United States Code Title 35 - Patents
+United States Code Title 35 – Patents
 ==PART I — UNITED STATES PATENT AND TRADEMARK OFFICE==
+===CHAPTER 1 — ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS===
-===CHAPTER 1 — ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS===
 Sec.
 Establishment.
-Powers and Duties.
-Officers and employees.
-Restrictions on officers and employees as to interest in
-patents.
-Patent and Trademark Office Public Advisory
-Committees.
-Board of Patent Appeals and Interferences.
-Library.
-Classification of patents.
-Certified copies of records.
-Publications.
-Exchange of copies of patents and applications with
-foreign countries.
-Copies of patents and applications for public libraries.
-Annual report to Congress.
-CHAPTER 2 — PROCEEDINGS IN THE
-PATENT AND TRADEMARK OFFICE
-Filing date and day for taking action.
-Printing of papers filed.
-Testimony in Patent and Trademark Office cases.
-Subpoenas, witnesses.
-Declaration in lieu of oath.
-Effect of defective execution.
-CHAPTER 11 — APPLICATION FOR PATENT
-CHAPTER 3 — PRACTICE BEFORE PATENT
+Powers and duties.
-AND TRADEMARK OFFICE
-[Repealed].
+Officers and employees.
-Suspension or exclusion from practice.
-Unauthorized representation as practitioner.
+Restrictions on officers and employees as to
+interest in patents.
-CHAPTER 4 — PATENT FEES; FUNDING;
+Patent and Trademark Office Public Advisory
-SEARCH SYSTEMS
+Committees.
-Patent fees; patent and trademark search systems.
-Patent and Trademark Office funding.
-PART II — PATENTABILITY OF
+Board of Patent and Appeals and Interferences.
-INVENTIONS AND GRANT OF PATENTS
+Library.
+Classification of patents.
+Certified copies of records.
+Publications.
+Exchange of copies of patents and applications
-CHAPTER 10 — PATENTABILITY
+with foreign countries.
-OF INVENTIONS
+Copies of patents and applications for public
+libraries.
-Definitions.
+Annual report to Congress.
-Inventions patentable.
+====35 U.S.C. 1 Establishment.====
-Conditions for patentability; novelty and loss of right
+(a) ESTABLISHMENT.— The United States
-to patent.
+Patent and Trademark Office is established as an
+agency of the United States, within the Department of
-Conditions for patentability; non-obvious subject
+Commerce. In carrying out its functions, the United
-matter.
+States Patent and Trademark Office shall be subject to
+the policy direction of the Secretary of Commerce,
-Invention made abroad.
+but otherwise shall retain responsibility for decisions
+regarding the management and administration of its
-Inventions in outer space.
+operations and shall exercise independent control of
+its budget allocations and expenditures, personnel
-Application.
+decisions and processes, procurements, and other
+administrative and management functions in accordance with this title and applicable provisions of law.
-Specification.
+Those operations designed to grant and issue patents
+and those operations which are designed to facilitate
-Drawings.
+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”.
-Models, specimens.
+(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).)
-Oath of applicant.
+====35 U.S.C. 2 Powers and duties.====
-Inventors.
+(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—
-Death or incapacity of inventor.
+(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
-Filing by other than inventor.
+papers issued by the Office shall be authenticated;
+(2) may establish regulations, not inconsistent with law, which—
-Benefit of earlier filing date; right of priority.
+(A) shall govern the conduct of proceedings in the Office;
+(B) shall be made in accordance with section 553 of title 5;
-Benefit of earlier filing date in the United States.
+(C) shall facilitate and expedite the processing of patent applications, particularly those
+which can be filed, stored, processed, searched, and
-Divisional applications.
+retrieved electronically, subject to the provisions of
+section 122 relating to the confidential status of applications;
-Confidential status of applications; publication of
+(D) may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office, and
-patent applications.
+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
+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.);
-CHAPTER 12 — EXAMINATION
-OF APPLICATION
+(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;
-Examination of application.
-Notice of rejection; reexamination.
-Time for prosecuting application.
+(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
-Appeal to the Board of Patent Appeals and
-Interferences.
-Interferences.
+(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
-CHAPTER 13 — REVIEW OF PATENT AND
-TRADEMARK OFFICE DECISION
-Appeal to Court of Appeals for the Federal Circuit.
+(B) with the concurrence of the Secretary
-Notice of appeal.
+of State, may authorize the transfer of not to exceed
-Proceedings on appeal.
+$100,000 in any year to the Department of State for
-Decision on appeal.
+the purpose of making special payments to international intergovernmental organizations for studies and
-Civil action to obtain patent.
+programs for advancing international cooperation
-Civil action in case of interference.
+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.
-CHAPTER 14 — ISSUE OF PATENT
-Issue of patent.
-Issue of patent to assignee.
-How issued.
-Contents and term of patent; provisional rights.
-Patent term extension.
-A Patent term restoration.
-Extension of patent term.
-Statutory invention registration.
+(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).
-CHAPTER 15 — PLANT PATENTS
+(3) Nothing in subsection (b) shall derogate
+from the duties and functions of the Register of Copyrights or otherwise alter current authorities relating to
-Patents for plants.
+copyright matters.
-Description, claim.
+(4) In exercising the Director’s powers under
-Grant.
+paragraphs (3) and (4)(A) of subsection (b), the Director shall consult with the Administrator of General
-Assistance of the Department of Agriculture.
+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.
- CHAPTER 16 — DESIGNS
+(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
+-400, sec. 2, 114 Stat. 1675; subsections (b)(2)(B) and
+(b)(4)(B) amended Nov. 2, 2002, Public Law 107-273, sec.
+, 116 Stat. 1904; subsection (b)(4)(A) amended Dec.
+, 2003, Public Law 108-178, sec. 4(g), 117 Stat. 2641.)
-Patents for designs.
+====35 U.S.C. 3 Officers and employees.====
-Right of priority.
-Term of design patent.
-CHAPTER 17 — SECRECY OF CERTAIN
+(a) UNDER SECRETARY AND DIRECTOR.—
-INVENTIONS AND FILING APPLICATIONS
+(1) IN GENERAL.— The powers and duties
-IN FOREIGN COUNTRIES
+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.
-Secrecy of certain inventions and withholding of
+(B) CONSULTING WITH THE PUBLIC
-patent.
+ADVISORY COMMITTEES.— The Director shall
+consult with the Patent Public Advisory Committee
-Abandonment of invention for unauthorized
+established in section 5 on a regular basis on matters
-disclosure.
+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,
-Right to compensation.
+and shall consult with the respective Public Advisory
+Committee before submitting budgetary proposals to
-Filing of application in foreign country.
+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.—
-Patent barred for filing without license.
+(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
+. 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.
-Penalty.
+(B) SALARY AND PERFORMANCE
+AGREEMENT.— The Commissioners shall be paid
-Nonapplicability to certain persons.
+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
-Rules and regulations, delegation of power.
+payment that may be authorized under section
+(h)(2)(C) of title 5. The compensation of the
-CHAPTER 18 — PATENT RIGHTS
+Commissioners shall be considered, for purposes of
-IN INVENTIONS MADE WITH
+section 207(c)(2)(A) of title 18, to be the equivalent of
-FEDERAL ASSISTANCE
+that described under clause (ii) of section
+(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
-Policy and objective.
-Definitions.
+(4) TRAINING OF EXAMINERS.— The
-Disposition of rights.
+Office shall submit to the Congress a proposal to provide an incentive program to retain as employees
-March-in rights.
+patent and trademark examiners of the primary examiner grade or higher who are eligible for retirement,
-Preference for United States industry.
+for the sole purpose of training patent and trademark
-Confidentiality.
+examiners.
-Uniform clauses and regulations.
+(5) NATIONAL SECURITY POSITIONS.— The Director, in consultation with the
-Domestic and foreign protection of federally owned
+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
-inventions.
+prevent disclosure of sensitive and strategic information in the interest of national security.
+(c) CONTINUED APPLICABILITY OF
-Regulations governing Federal licensing.
+TITLE 5. — Officers and employees of the Office
+shall be subject to the provisions of title 5, relating to
-Licensing federally owned inventions.
+Federal employees.
+(d) ADOPTION OF EXISTING LABOR
-Precedence of chapter.
+AGREEMENTS.— The Office shall adopt all labor
+agreements which are in effect, as of the day before
-Relationship to antitrust laws.
+the effective date of the Patent and Trademark Office
+Efficiency Act, with respect to such Office (as then in
+effect).
+(e) CARRYOVER OF PERSONNEL.—
-Disposition of rights in educational awards.
+(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.
-PART III — PATENTS AND PROTECTION
+(2) OTHER PERSONNEL.— Any individual who, on the day before the effective date of the
-OF PATENT RIGHTS
+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.
-CHAPTER 25 — AMENDMENT AND
-CORRECTION OF PATENTS
+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.
-Reissue of defective patents.
+(f) TRANSITION PROVISIONS.—
-Effect of reissue.
+(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
-Disclaimer.
-Certificate of correction of Patent and Trademark
+Trademarks until the date on which a Commissioner
-Office mistake.
+for Trademarks is appointed under subsection (b).
-Certificate of correction of applicant’s mistake.
+ (Amended Sept. 6, 1958, Public Law 85-933, sec. 1,
+Stat. 1793; Sept. 23, 1959, Public Law 86-370, sec. 1(a),
+Stat. 650; Aug. 14, 1964, Public Law 88-426, sec.
+(26), 78 Stat. 425; Jan. 2, 1975, Public Law 93-596, sec.
+, 88 Stat. 1949; Jan. 2, 1975, Public Law 93-601, sec. 1,
+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.
+; Nov. 8, 1984, Public Law 98-622, sec. 405, 98 Stat.
+; Oct. 28, 1998, Public Law 105-304, sec. 401(a)(1),
+Stat. 2887; Nov. 29, 1999, Public Law 106-113, sec.
+(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.)
-Correction of named inventor.
+====35 U.S.C. 4 Restrictions on officers and employees as to interest in patents. ====
-CHAPTER 26 — OWNERSHIP AND
+Officers and employees of the Patent and Trademark Office shall be incapable, during the period of
-ASSIGNMENT
+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.)
-Ownership; assignment.
+====35 U.S.C. 5 Patent and Trademark Office Public Advisory Committees.====
-Joint owners.
-CHAPTER 27 — GOVERNMENT
-INTERESTS IN PATENTS
+(a) ESTABLISHMENT OF PUBLIC ADVISORY COMMITTEES.—
-[Repealed.]
+(1) APPOINTMENT.— The United States
-Time for taking action in Government applications.
+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
-CHAPTER 28 — INFRINGEMENT OF PATENTS
+Secretary of Commerce. Members of each Public
+Advisory Committee shall be appointed for a term of
-Infringement of patent.
+years, except that of the members first appointed,
-Temporary presence in the United States.
+three shall be appointed for a term of 1 year, and three
-Defense to infringement based on earlier inventor.
+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
-CHAPTER 29 — REMEDIES FOR
+harm to United States companies as a result of such
-INFRINGEMENT OF PATENT, AND
+appointments.
-OTHER ACTIONS
+(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
-Remedy for infringement of patent.
-Presumption of validity; defenses.
-Injunction.
-Damages.
-Attorney fees.
-Time limitation on damages.
-Limitation on damages and other remedies; marking
+Public Advisory Committee, and advise the Director
-and notice.
+on these matters;
-Action for infringement of a patent containing an
+(2) within 60 days after the end of each fiscal
-invalid claim.
+year—
+(A) prepare an annual report on the matters
-Additional remedy for infringement of design patent.
+referred to in paragraph (1);
+(B) transmit the report to the Secretary of
-Notice of patent suits.
+Commerce, the President, and the Committees on the
+Judiciary of the Senate and the House of Representatives; and
-Interfering patents.
+(C) publish the report in the Official
+Gazette of the United States Patent and Trademark
-False marking.
+Office.
+(e) COMPENSATION.— Each member of
-Nonresident patentee; service and notice.
+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.
-Voluntary arbitration.
-Presumptions: Product made by patented process.
-Liability of States, instrumentalities of States, and
+(j) INAPPLICABILITY OF PATENT PROHIBITION.— Section 4 shall not apply to voting members of the Advisory Committees.
-State officials for infringement of patents.
-Improper and deceptive invention promotion.
+ (Added Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-578 (S. 1948 sec. 4714); subsections (e) and (g) amended Nov. 2, 2002, Public Law
+-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.)
-CHAPTER 30 — PRIOR ART CITATIONS TO
+U.S.C. 6 Board of Patent Appeals and Interferences.
-OFFICE AND EX PARTE REEXAMINATION
-OF PATENTS
+(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.
-Citation of prior art.
-Request for reexamination.
-Determination of issue by Director.
-Reexamination order by Director.
-Conduct of reexamination proceedings.
-Appeal.
+ (Repealed by Public Law 106-113, sec. 1000(a)(9),
+Stat. 1501A-580 (S. 1948 sec. 4715(a).)
-Certificate of patentability, unpatentability, and claim
+(Added Nov. 29, 1999, Public Law 106-113, sec.
-cancellation.
+(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(2)).)
-CHAPTER 31 — OPTIONAL INTER PARTES
+(Subsection (a) amended Nov. 2, 2002, Public Law
-REEXAMINATION PROCEDURES
+-273, sec. 13203, 116 Stat. 1902.)
+U.S.C. 7 Library.
-Request for inter partes reexamination.
+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.
-Determination of issue by Director.
+(Repealed Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
-Inter partes reexamination order by Director.
+(Transferred from 35 U.S.C. 8 Nov. 29, 1999, Public
+Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S.
-Conduct of inter partes reexamination proceedings.
+sec. 4717(1)); amended Jan. 2, 1975, Public Law 93596, sec. 1, 88 Stat. 1949.)
-Appeal.
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
-Certificate of patentability, unpatentability, and claim
+U.S.C. 8 Classification of patents.
-cancellation.
-Inter partes reexamination prohibited.
+The Director may revise and maintain the classification by subject matter of United States letters
-Stay of litigation.
+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.
-PART IV — PATENT
+(Transferred to 35 U.S.C. 7 Nov. 29, 1999, Public Law
-COOPERATION TREATY
+-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.
+sec. 4717(1)).)
-CHAPTER 35 — DEFINITIONS
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
-Definitions.
+U.S.C. 9 Certified copies of records.
-CHAPTER 36 — INTERNATIONAL STAGE
+The Director may furnish certified copies of specifications and drawings of patents issued by the Patent
+and Trademark Office, and of other records available
-Receiving Office.
+either to the public or to the person applying therefor.
-International Searching Authority and International
+(Transferred to 35 U.S.C. 8 Nov. 29, 1999, Public Law
-Preliminary Examining Authority.
+-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948
+sec. 4717(1)).)
-International application designating the United
+(Transferred from 35 U.S.C. 10 Nov. 29, 1999, Public
-States: Effect.
+Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S.
+sec. 4717(1)); amended Jan. 2, 1975, Public Law 93596, sec. 1, 88 Stat. 1949.)
-International stage: Procedure.
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
-Right of priority; benefit of the filing date of a prior
+U.S.C. 10 Publications.
-application.
-Withdrawn international application.
+(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.
-Actions of other authorities: Review.
-Secrecy of certain inventions; filing international
-applications in foreign countries.
-CHAPTER 37 — NATIONAL STAGE
+(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.
-National stage: Commencement.
-National stage: Requirements and procedure.
-Improper applicant.
-Publication of international application.
-Patent issued on international application: Effect.
-Fees.
+(Transferred to 35 U.S.C. 9 Nov. 29, 1999, Public Law
+-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948
+sec. 4717(1)).)
-==PART I — UNITED STATES PATENT AND TRADEMARK OFFICE==
+(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
+-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law
+-113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948
+sec. 4804(b)).)
-===CHAPTER 1 — ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS===
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-565, 582 (S. 1948 secs.
+(1) and 4732(a)(10)(A)).)
+U.S.C. 11 Exchange of copies of patents and
+applications with foreign countries.
-Sec.
+The Director may exchange copies of specifications
+and drawings of United States patents and published
+applications for patents for those of foreign countries.
-Establishment.
+ 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).
-Powers and duties.
+(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)).)
-Officers and employees.
+(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
+-113, sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948
+sec. 4808).)
-Restrictions on officers and employees as to
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
-interest in patents.
+(a)(9), 113 Stat. 1501A-565, 582 (S. 1948 secs.
+(2)(A), 4507(2)(B), and 4732(a)(10)(A)).)
-Patent and Trademark Office Public Advisory
+U.S.C. 12 Copies of patents and applications
-Committees.
+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.
-Board of Patent and Appeals and Interferences.
+(Transferred to 35 U.S.C. 11 Nov. 29, 1999, Public
-Library.
+Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S.
-Classification of patents.
+sec. 4717(1)).)
-Certified copies of records.
-Publications.
-Exchange of copies of patents and applications
+(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
+-247, sec. 15, 96 Stat. 321; Nov. 29, 1999, Public Law
+-113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948
+sec. 4804(c)).)
-with foreign countries.
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-565, 566, 582 (S. 1948 secs.
-Copies of patents and applications for public
+(3)(A), 4507(3)(B), 4507(4), and 4732(a)(10)(A)).)
-libraries.
-Annual report to Congress.
+U.S.C. 13 Annual report to Congress.
-====35 U.S.C. 1 Establishment.====
+ 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.
-(a) ESTABLISHMENT.— The United States
+(Transferred to 35 U.S.C. 12 Nov. 29, 1999, Public
-Patent and Trademark Office is established as an
+Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
-agency of the United States, within the Department of
+(S 1948 sec. 4717(1)).)
-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
+(Transferred from 35 U.S.C. 14 Nov. 29, 1999, Public
-Stat. 1949; amended Nov. 29, 1999, Public Law 106-113,
+Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
-sec. 1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4711).)
+(S 1948 sec. 4717(1)).)
-====35 U.S.C. 2 Powers and duties.====
-(a) IN GENERAL.— The United States Patent
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
-and Trademark Office, subject to the policy direction
+(a)(9), 113 Stat. 1501A-565, 581 (S. 1948 secs.
-of the Secretary of Commerce—
+(2), 4718).)
-(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,
+===CHAPTER 2 — PROCEEDINGS IN THE PATENT AND TRADEMARK 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
-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
+Sec.
-the process of composition, platemaking, presswork,
+Filing date and day for taking action.
-silk screen processes, binding, microform, and the
+Printing of papers filed.
-products of such processes, as it considers necessary
+Testimony in Patent and Trademark Office
-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
+cases.
-Secretary of Commerce, on national and certain international intellectual property policy issues;
+Subpoenas, witnesses.
-(9) shall advise Federal departments and
+Declaration in lieu of oath.
-agencies on matters of intellectual property policy in
+Effect of defective execution.
-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
+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.
-(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
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
+Stat. 1949; Aug. 27, 1982, Public Law 97-247, sec. 12,
+Stat. 321; Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
-(B) with the concurrence of the Secretary
+U.S.C. 22 Printing of papers filed.
-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.
+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.
+(a)(9), 113 Stat. 1501A-582, 589 (S. 1948 secs.
+(a)(10)(A), 4804(a)).)
-(2) Nothing in subsection (b) shall derogate
+U.S.C. 23 Testimony in Patent and Trademark Office cases.
-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
+The Director may establish rules for taking affidavits and depositions required in cases in the Patent
-from the duties and functions of the Register of Copyrights or otherwise alter current authorities relating to
+and Trademark Office. Any officer authorized by law
-copyright matters.
+to take depositions to be used in the courts of the
-(4) In exercising the Director’s powers under
+United States, or of the State where he resides, may
-paragraphs (3) and (4)(A) of subsection (b), the Director shall consult with the Administrator of General
+take such affidavits and depositions.
-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,
+Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
-(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
+U.S.C. 24 Subpoenas, witnesses.
-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
--400, sec. 2, 114 Stat. 1675; subsections (b)(2)(B) and
-(b)(4)(B) amended Nov. 2, 2002, Public Law 107-273, sec.
-, 116 Stat. 1904; subsection (b)(4)(A) amended Dec.
-, 2003, Public Law 108-178, sec. 4(g), 117 Stat. 2641.)
-====35 U.S.C. 3 Officers and employees.====
+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.
-(a) UNDER SECRETARY AND DIRECTOR.—
+Every witness subpoenaed and in attendance shall
-(1) IN GENERAL.— The powers and duties
+be allowed the fees and traveling expenses allowed to
-of the United States Patent and Trademark Office
+witnesses attending the United States district courts.
-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
+A judge of a court whose clerk issued a subpoena
-be responsible for providing policy direction and
+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
-management supervision for the Office and for the
+to appear or to testify. No witness shall be deemed
-issuance of patents and the registration of trademarks.
+guilty of contempt for disobeying such subpoena
-The Director shall perform these duties in a fair,
+unless his fees and traveling expenses in going to, and
-impartial, and equitable manner.
+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,
+Stat. 1949.)
-(B) CONSULTING WITH THE PUBLIC
+U.S.C. 25 Declaration in lieu of oath.
-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.—
+(a) The Director may by rule prescribe that any
-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
+document to be filed in the Patent and Trademark
-. The Commissioner for Patents shall be a citizen of
+Office and which is required by any law, rule, or other
-the United States with demonstrated management
+regulation to be under oath may be subscribed to by a
-ability and professional background and experience in
+written declaration in such form as the Director may
-patent law and serve for a term of 5 years. The Commissioner for Trademarks shall be a citizen of the
+prescribe, such declaration to be in lieu of the oath
-United States with demonstrated management ability
+otherwise required.
-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
+(b) Whenever such written declaration is used,
-AGREEMENT.— The Commissioners shall be paid
+the document must warn the declarant that willful
-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,
+false statements and the like are punishable by fine or
-including any applicable locality-based comparability
+imprisonment, or both (18 U.S.C. 1001).
-payment that may be authorized under section
-(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
-(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—
+(Added Mar. 26, 1964, Public Law 88-292, sec. 1,
-(A) appoint such officers, employees
+Stat. 171; amended Jan. 2, 1975, Public Law 93-596,
-(including attorneys), and agents of the Office as the
+sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113,
-Director considers necessary to carry out the functions
+sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-of the Office; and
+(a)(10)(A)).)
-(B) define the title, authority, and duties of
-such officers and employees and delegate to them
+U.S.C. 26 Effect of defective execution.
-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
+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.
-(4) TRAINING OF EXAMINERS.— The
+(Added Mar. 26, 1964, Public Law 88-292, sec. 1,
-Office shall submit to the Congress a proposal to provide an incentive program to retain as employees
+Stat. 171; amended Jan. 2, 1975, Public Law 93-596,
-patent and trademark examiners of the primary examiner grade or higher who are eligible for retirement,
+sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113,
-for the sole purpose of training patent and trademark
+sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-examiners.
+(a)(10)(A)).)
-(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
+===CHAPTER 3 — PRACTICE BEFORE PATENT===
-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
+AND TRADEMARK OFFICE
-Patent and Trademark Office Efficiency Act, is an
+Sec.
-officer or employee of the Department of Commerce
+[Repealed]
-(other than an officer or employee under paragraph
+Suspension or exclusion from practice.
-(1)) shall be transferred to the Office, as necessary to
+Unauthorized representation as practitioner.
-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.
+U.S.C. 31 [Repealed].
-Any transfer under this paragraph shall be
+(Repealed Nov. 29, 1999, Public Law 106-113, sec.
-effective as of the same effective date as referred to in
+(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4715(b)).)
-paragraph (1), and shall be made without a break in
-service.
-(f) TRANSITION PROVISIONS.—
+U.S.C. 32 Suspension or exclusion from practice.
-(1) INTERIM APPOINTMENT OF DIRECTOR.— On or after the effective date of the Patent
+The Director may, after notice and opportunity for a
-and Trademark Office Efficiency Act, the President
+hearing, suspend or exclude, either generally or in any
-shall appoint an individual to serve as the Director
+particular case, from further practice before the Patent
-until the date on which a Director qualifies under subsection (a). The President shall not make more than
+and Trademark Office, any person, agent, or attorney
-one such appointment under this subsection.
+shown to be incompetent or disreputable, or guilty of
-(2) CONTINUATION IN OFFICE OF CERTAIN OFFICERS.—
+gross misconduct, or who does not comply with the
-(A) The individual serving as the Assistant
+regulations established under section 2(b)(2)(D) of
-Commissioner for Patents on the day before the effective date of the Patent and Trademark Office Efficiency Act may serve as the Commissioner for
+this title, or who shall, by word, circular, letter, or
-Patents until the date on which a Commissioner for
+advertising, with intent to defraud in any manner,
-Patents is appointed under subsection (b).
+deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate
-(B) The individual serving as the Assistant
+or prospective business before the Office. The reasons
-Commissioner for Trademarks on the day before the
+for any such suspension or exclusion shall be duly
-effective date of the Patent and Trademark Office
+recorded. The Director shall have the discretion to
-Efficiency Act may serve as the Commissioner for
+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,
+Stat.1949; Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-580, 581, 582 (S. 1948 secs.
+(c), 4719, 4732(a)(10)(A)).)
-Trademarks until the date on which a Commissioner
+====35 U.S.C. 33 Unauthorized representation as practitioner.====
-for Trademarks is appointed under subsection (b).
- (Amended Sept. 6, 1958, Public Law 85-933, sec. 1,
+Whoever, not being recognized to practice before
-Stat. 1793; Sept. 23, 1959, Public Law 86-370, sec. 1(a),
+the Patent and Trademark Office, holds himself out or
-Stat. 650; Aug. 14, 1964, Public Law 88-426, sec.
+permits himself to be held out as so recognized, or as
-(26), 78 Stat. 425; Jan. 2, 1975, Public Law 93-596, sec.
+being qualified to prepare or prosecute applications
-, 88 Stat. 1949; Jan. 2, 1975, Public Law 93-601, sec. 1,
+for patent, shall be fined not more than $1,000 for
-Stat. 1956; Aug. 27, 1982, Public Law 97-247, sec. 4, 96
+each offense.
-Stat. 319; Oct. 25, 1982, Public Law 97-366, sec. 4, 96 Stat.
-; Nov. 8, 1984, Public Law 98-622, sec. 405, 98 Stat.
-; Oct. 28, 1998, Public Law 105-304, sec. 401(a)(1),
-Stat. 2887; Nov. 29, 1999, Public Law 106-113, sec.
-(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. ====
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
+Stat. 1949.)
-Officers and employees of the Patent and Trademark Office shall be incapable, during the period of
+===CHAPTER 4 — PATENT FEES; FUNDING; SEARCH SYSTEMS===
-their appointments and for one year thereafter, of
+Sec.
-applying for a patent and of acquiring, directly or
+Patent fees; patent and trademark search systems.
-indirectly, except by inheritance or bequest, any
+Patent and Trademark Office funding.
-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
+U.S.C. 41 Patent fees; patent and trademark
-Stat. 1949.)
+search systems.
-====35 U.S.C. 5 Patent and Trademark Office Public Advisory Committees.====
+*Editor’s Note: During fiscal years 2005 and
+, subsections (a) and (b) of section 41 of title
+, United States Code, shall be administered as
+though subsections (a) and (b) read as follows:
-(a) ESTABLISHMENT OF PUBLIC ADVISORY COMMITTEES.—
+(a) GENERAL FEES. — The Director shall
-(1) APPOINTMENT.— The United States
+charge the following fees:
-Patent and Trademark Office shall have a Patent Public Advisory Committee and a Trademark Public
+(1) FILING AND BASIC NATIONAL
-Advisory Committee, each of which shall have nine
+FEES. —
-voting members who shall be appointed by the Secretary of Commerce and serve at the pleasure of the
+(A) On filing each application for an original patent, except for design, plant, or provisional
-Secretary of Commerce. Members of each Public
+applications, $300.
-Advisory Committee shall be appointed for a term of
+(B) On filing each application for an original design patent, $200.
-years, except that of the members first appointed,
+(C) On filing each application for an original plant patent, $200.
-three shall be appointed for a term of 1 year, and three
+(D) On filing each provisional application
-shall be appointed for a term of 2 years. In making
+for an original patent, $200.
-appointments to each Committee, the Secretary of
+(E) On filing each application for the reissue of a patent, $300.
-Commerce shall consider the risk of loss of competitive advantage in international commerce or other
+(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
+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
+of this title. Errors in payment of the additional
+fees under this paragraph may be rectified in accordance with regulations prescribed by the Director.
-harm to United States companies as a result of such
+(3) EXAMINATION FEES. —
-appointments.
+(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.
-(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
+(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.
-Public Advisory Committee, and advise the Director
-on these matters;
-(2) within 60 days after the end of each fiscal
+ The provisions of section 111(a) of this title
-year—
+relating to the payment of the fee for filing the application shall apply to the payment of the fee specified
-(A) prepare an annual report on the matters
+in this paragraph with respect to an application filed
-referred to in paragraph (1);
+under section 111(a) of this title. The provisions of
-(B) transmit the report to the Secretary of
+section 371(d) of this title relating to the payment of
-Commerce, the President, and the Committees on the
+the national fee shall apply to the payment of the fee
-Judiciary of the Senate and the House of Representatives; and
+specified in this paragraph with respect to an international application.
-(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.
+(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.
-(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.
+(5) DISCLAIMER FEE. — On filing each
-(a)(9), 113 Stat. 1501A-578 (S. 1948 sec. 4714); subsections (e) and (g) amended Nov. 2, 2002, Public Law
+disclaimer, $130.
--273, sec. 13206, 116 Stat. 1904; subsection (i)
+(6) APPEAL FEES. —
-amended and subsection (j) added Nov. 2, 2002, Public
-Law 107-273, sec. 13203, 116 Stat. 1902.)
-U.S.C. 6 Board of Patent Appeals and Interferences.
-(a) ESTABLISHMENT AND COMPOSITION.— There shall be in the United States Patent
+(A) On filing an appeal from the examiner
-and Trademark Office a Board of Patent Appeals and
+to the Board of Patent Appeals and Interferences,
-Interferences. The Director, the Deputy Commissioner, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent
+$500.
-judges shall constitute the Board. The administrative
+(B) In addition, on filing a brief in support
-patent judges shall be persons of competent legal
+of the appeal, $500, and on requesting an oral hearing
-knowledge and scientific ability who are appointed by
+in the appeal before the Board of Patent Appeals and
-the Director.
+Interferences, $1,000.
-(b) DUTIES.— The Board of Patent Appeals
+(7) REVIVAL FEES. — On filing each petition for the revival of an unintentionally abandoned
-and Interferences shall, on written appeal of an applicant, review adverse decisions of examiners upon
+application for a patent, for the unintentionally
-applications for patents and shall determine priority
+delayed payment of the fee for issuing each patent, or
-and patentability of invention in interferences
+for an unintentionally delayed response by the patent
-declared under section 135(a). Each appeal and interference shall be heard by at least three members of the
+owner in any reexamination proceeding, $1,500,
-Board, who shall be designated by the Director. Only
+unless the petition is filed under section 133 or 151 of
-the Board of Patent Appeals and Interferences may
+this title, in which case the fee shall be $500.
-grant rehearings.
+(8) EXTENSION FEES. — For petitions for
+-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
- (Repealed by Public Law 106-113, sec. 1000(a)(9),
-Stat. 1501A-580 (S. 1948 sec. 4715(a).)
-(Added Nov. 29, 1999, Public Law 106-113, sec.
-(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(2)).)
-(Subsection (a) amended Nov. 2, 2002, Public Law
+(C) on filing a third or subsequent petition,
--273, sec. 13203, 116 Stat. 1902.)
+$570.
-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.
+(b) MAINTENANCE FEES. — The Director
-(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
+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.
-(Transferred from 35 U.S.C. 8 Nov. 29, 1999, Public
-Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S.
-sec. 4717(1)); amended Jan. 2, 1975, Public Law 93596, sec. 1, 88 Stat. 1949.)
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(A)).)
-U.S.C. 8 Classification of patents.
+(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.
-The Director may revise and maintain the classification by subject matter of United States letters
+(Dec. 8, 2004, Public Law 108-447, sec. 801, 118
-patent, and such other patents and printed publications
+Stat. 2809.)
-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
+The bracketed text below is the unamended text
--113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948
+of 35 U.S.C. 41(a) and (b), which may continue to
-sec. 4717(1)).)
+have effect following fiscal year 2006:
-(Transferred from 35 U.S.C. 9 Nov. 29, 1999, Public
+[(a) The Director shall charge the following
-Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S.
+fees:
-sec. 4717(1)).)
+(1)(A) On filing each application for an original patent, except in design or plant cases, $690.
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(B) In addition, on filing or on presentation
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+at any other time, $78 for each claim in independent
-(a)(10)(A)).)
+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.
-U.S.C. 9 Certified copies of records.
+(2) For issuing each original or reissue
+patent, except in design or plant cases, $1,210.
-The Director may furnish certified copies of specifications and drawings of patents issued by the Patent
+(3) In design and plant cases
-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
+(A) on filing each design application, $310;
--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
+(B) on filing each plant application, $480;
-Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S.
-sec. 4717(1)); amended Jan. 2, 1975, Public Law 93596, sec. 1, 88 Stat. 1949.)
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(C) on issuing each design patent, $430;
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+and
-(a)(10)(A)).)
-U.S.C. 10 Publications.
-(a) The Director may publish in printed, typewritten, or electronic form, the following:
+(D) on issuing each plant patent, $580.
-(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.
+(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.
-(2) Certificates of trademark registrations,
+(5) On filing each disclaimer, $110.
-including statements and drawings, together with copies of the same.
+(6)(A) On filing an appeal from the examiner
-(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.
+to the Board of Patent Appeals and Interferences,
+$300.
-(Transferred to 35 U.S.C. 9 Nov. 29, 1999, Public Law
+(B) In addition, on filing a brief in support
--113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948
+of the appeal, $300, and on requesting an oral hearing
-sec. 4717(1)).)
+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.
-(Transferred from 35 U.S.C. 11 Nov. 29, 1999, Public
+(8) For petitions for 1-month extensions of
-Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
+time to take actions required by the Director in an
-(S 1948 sec. 4717(1)); amended Jan. 2, 1975, Public Law
+application
--596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law
--113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948
-sec. 4804(b)).)
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(A) on filing a first petition, $110;
-(a)(9), 113 Stat. 1501A-565, 582 (S. 1948 secs.
-(1) and 4732(a)(10)(A)).)
-U.S.C. 11 Exchange of copies of patents and
+(B) on filing a second petition, $270; and
-applications with foreign countries.
-The Director may exchange copies of specifications
+(C) on filing a third or subsequent petition,
-and drawings of United States patents and published
+$490.
-applications for patents for those of foreign countries.
- The Director shall not enter into an agreement to
+(9) Basic national fee for an international
-provide such copies of specifications and drawings of
+application where the Patent and Trademark Office
-United States patents and applications to a foreign
+was the International Preliminary Examining Authority and the International Searching Authority, $670.
-country, other than a NAFTA country or a WTO
+(10) Basic national fee for an international
-member country, without the express authorization of
+application where the Patent and Trademark Office
-the Secretary of Commerce. For purposes of this section, the terms “NAFTA country” and “WTO member
+was the International Searching Authority but not the
-country” have the meanings given those terms in section 104(b).
+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.
-(Transferred to 35 U.S.C. 10 Nov. 29, 1999, Public
+(12) Basic national fee for an international
-Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
+application where the international preliminary examination has been paid to the Patent and Trademark
-(S 1948 sec. 4717(1)).)
+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.
-(Transferred from 35 U.S.C. 12 Nov. 29, 1999, Public
+(13) For filing or later presentation of each
-Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
+independent claim in the national stage of an international application in excess of 3, $78.
-(S 1948 sec. 4717(1)); amended Nov. 29, 1999, Public Law
+(14) For filing or later presentation of each
--113, sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948
+claim (whether independent or dependent) in a
-sec. 4808).)
+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.
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(b) The Director shall charge the following fees
-(a)(9), 113 Stat. 1501A-565, 582 (S. 1948 secs.
+for maintaining in force all patents based on applications filed on or after December 12, 1980:
-(2)(A), 4507(2)(B), and 4732(a)(10)(A)).)
-U.S.C. 12 Copies of patents and applications
+(1) 3 years and 6 months after grant, $830.
-for public libraries.
-The Director may supply copies of specifications
+(2) 7 years and 6 months after grant, $1,900.
-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
+(3) 11 years and 6 months after grant, $2,910.
-Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S.
-sec. 4717(1)).)
-(Transferred from 35 U.S.C. 13 Nov. 29, 1999, Public
+Unless payment of the applicable maintenance fee is received in the Patent and Trademark
-Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
+Office on or before the date the fee is due or within a
-(S 1948 sec. 4717(1)); amended Aug. 27, 1982, Public Law
+grace period of six months thereafter, the patent will
--247, sec. 15, 96 Stat. 321; Nov. 29, 1999, Public Law
+expire as of the end of such grace period. The Director
--113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948
+may require the payment of a surcharge as a condition
-sec. 4804(c)).)
+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.]
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(c)(1) The Director may accept the payment of
-(a)(9), 113 Stat. 1501A-565, 566, 582 (S. 1948 secs.
+any maintenance fee required by subsection (b) of this
-(3)(A), 4507(3)(B), 4507(4), and 4732(a)(10)(A)).)
+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.
-U.S.C. 13 Annual report to Congress.
+(2) A patent, the term of which has been
+maintained as a result of the acceptance of a payment
- The Director shall report to the Congress, not later
+of a maintenance fee under this subsection, shall not
-than 180 days after the end of each fiscal year, the
+abridge or affect the right of any person or that person’s successors in business who made, purchased,
-moneys received and expended by the Office, the purposes for which the moneys were spent, the quality
+offered to sell, or used anything protected by the
-and quantity of the work of the Office, the nature of
+patent within the United States, or imported anything
-training provided to examiners, the evaluation of the
+protected by the patent into the United States after the
-Commissioner of Patents and the Commissioner of
+-month grace period but prior to the acceptance of a
-Trademarks by the Secretary of Commerce, the compensation of the Commissioners, and other information relating to the Office.
+maintenance fee under this subsection, to continue the
+use of, to offer for sale, or to sell to others to be used,
-(Transferred to 35 U.S.C. 12 Nov. 29, 1999, Public
+offered for sale, or sold, the specific thing so made,
-Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
+purchased, offered for sale, used, or imported. The
-(S 1948 sec. 4717(1)).)
+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.
-(Transferred from 35 U.S.C. 14 Nov. 29, 1999, Public
+*Editor’s Note: During fiscal years 2005 and
-Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
+, subsection (d) of section 41 of title 35, United
-(S 1948 sec. 4717(1)).)
+States Code, shall be administered as though subsection (d) reads as follows:
+(d) PATENT SEARCH AND OTHER FEES. —
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(1) PATENT SEARCH FEES. —
-(a)(9), 113 Stat. 1501A-565, 581 (S. 1948 secs.
-(2), 4718).)
-CHAPTER 2 — PROCEEDINGS IN THE
+(A) The Director shall charge a fee for the
-PATENT AND TRADEMARK OFFICE
+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.
-Sec.
+(B) For purposes of determining the fees to
-Filing date and day for taking action.
+be established under this paragraph, the cost to the
-Printing of papers filed.
+Office of causing a search of an application to be
-Testimony in Patent and Trademark Office
+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;
-cases.
+(iv) $500 for the national stage of each
-Subpoenas, witnesses.
+international application; and
-Declaration in lieu of oath.
+(v) $500 for each application for the
-Effect of defective execution.
+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 —
-U.S.C. 21 Filing date and day for taking
+(I) are accurate; and
-action.
-(a) The Director may by rule prescribe that any
+(II) meet or exceed the standards of
-paper or fee required to be filed in the Patent and
+searches conducted by and used by the Patent and
-Trademark Office will be considered filed in the
+Trademark Office during the patent examination process;
-Office on the date on which it was deposited with the
+(ii) the Director submits a report on the
-United States Postal Service or would have been
+results of the pilot program to Congress and the Patent
-deposited with the United States Postal Service but for
+Public Advisory Committee that includes —
-postal service interruptions or emergencies designated
+(I) a description of the scope and
-by the Director.
+duration o f the pilot program;
-(b) When the day, or the last day, for taking any
+(II) the identity of each commercial
-action or paying any fee in the United States Patent
+entity participating in the pilot program;
-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,
+(III) an explanation of the methodology used to evaluate the accuracy and quality of the
-Stat. 1949; Aug. 27, 1982, Public Law 97-247, sec. 12,
+search reports; and
-Stat. 321; Nov. 29, 1999, Public Law 106-113, sec.
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(A)).)
-U.S.C. 22 Printing of papers filed.
+(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 —
-The Director may require papers filed in the Patent
+(aa) patentability determinations;
-and Trademark Office to be printed, typewritten, or on
+(bb) productivity of the Patent and
-an electronic medium.
+Trademark Office;
-(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
+(cc) costs to the Patent and Trade
-Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
-(a)(9), 113 Stat. 1501A-582, 589 (S. 1948 secs.
-(a)(10)(A), 4804(a)).)
-U.S.C. 23 Testimony in Patent and Trademark Office cases.
+mark Office;
+(dd) costs to patent applicants; and
+(ee) other relevant factors;
-The Director may establish rules for taking affidavits and depositions required in cases in the Patent
+(iii) the Patent Public Advisory Committee reviews and analyzes the Director’s report under
-and Trademark Office. Any officer authorized by law
+clause (ii) and the results of the pilot program and
-to take depositions to be used in the courts of the
+submits a separate report on its analysis to the Director and the Congress that includes —
-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,
+(I) an independent evaluation of the
-Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
+effects that the pilot program, as compared to searches
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+conducted by the Patent and Trademark Office, had
-(a)(10)(A)).)
+and will have on the factors set forth in clause
+(ii)(IV); and
-U.S.C. 24 Subpoenas, witnesses.
+(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.
-The clerk of any United States court for the district
+(F) The Director shall require that any
-wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall,
+search by a qualified search authority that is a commercial entity is conducted in the United States by
-upon the application of any party thereto, issue a subpoena for any witness residing or being within such
+persons that —
-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
+(i) if individuals, are United States citizens; and
-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
+(ii) if business concerns, are organized
-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
+under the laws of the United States or any State and
-to appear or to testify. No witness shall be deemed
+employ United States citizens to perform the searches.
-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,
+(G) A search of an application that is the
-Stat. 1949.)
+subject of a secrecy order under section 181 or otherwise involves classified information may only be conducted by Office personnel.
-U.S.C. 25 Declaration in lieu of oath.
+(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.
-(a) The Director may by rule prescribe that any
+(2) OTHER FEES. — The Director shall
-document to be filed in the Patent and Trademark
+establish fees for all other processing, services, or
-Office and which is required by any law, rule, or other
+materials relating to patents not specified in this section to recover the estimated average cost to the
-regulation to be under oath may be subscribed to by a
+Office of such processing, services; or materials,
-written declaration in such form as the Director may
+except that the Director shall charge the following
-prescribe, such declaration to be in lieu of the oath
+fees for the following services:
-otherwise required.
+(A) For recording a document affecting
+title, $40 per property.
-(b) Whenever such written declaration is used,
+(B) For each photocopy, $.25 per page.
-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,
+(C) For each black and white copy of a
-Stat. 171; amended Jan. 2, 1975, Public Law 93-596,
+patent, $3. The yearly fee for providing a library specified in section 12 of this title with uncertified printed
-sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113,
+copies of the specifications and drawings for all patents in that year shall be $50.
-sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(A)).)
-U.S.C. 26 Effect of defective execution.
+(Dec. 8, 2004, Public Law 108-447, sec. 801, 118
+Stat. 2809.)
-Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or
+The bracketed text below is the unamended text
-other regulation to be executed in a specified manner
+of 35 U.S.C. 41(d), which may continue to have
-may be provisionally accepted by the Director despite
+effect following fiscal year 2006:
-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,
+(d) The Director shall establish fees for all other
-Stat. 171; amended Jan. 2, 1975, Public Law 93-596,
+processing, services, or materials relating to patents
-sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law 106-113,
+not specified in this section to recover the estimated
-sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+average cost to the Office of such processing, services, or materials, except that the Director shall
-(a)(10)(A)).)
+charge the following fees for the following services:
-CHAPTER 3 — PRACTICE BEFORE PATENT
+(1) For recording a document affecting title, $40 per property.
-AND TRADEMARK OFFICE
+(2) For each photocopy, $.25 per page.
-Sec.
-[Repealed]
-Suspension or exclusion from practice.
-Unauthorized representation as practitioner.
-U.S.C. 31 [Repealed].
+(3) For each black and white copy of a
+patent, $3.
-(Repealed Nov. 29, 1999, Public Law 106-113, sec.
+The yearly fee for providing a library specified in section 13 of this title with uncertified printed
-(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4715(b)).)
+copies of the specifications and drawings for all patents issued in that year shall be $50.]
-U.S.C. 32 Suspension or exclusion from practice.
-The Director may, after notice and opportunity for a
+(e) The Director may waive the payment of any
-hearing, suspend or exclude, either generally or in any
+fee for any service or material related to patents in
-particular case, from further practice before the Patent
+connection with an occasional or incidental request
-and Trademark Office, any person, agent, or attorney
+made by a department or agency of the Government,
-shown to be incompetent or disreputable, or guilty of
+or any officer thereof. The Director may provide any
-gross misconduct, or who does not comply with the
+applicant issued a notice under section 132 of this title
-regulations established under section 2(b)(2)(D) of
+with a copy of the specifications and drawings for all
-this title, or who shall, by word, circular, letter, or
+patents referred to in that notice without charge.
-advertising, with intent to defraud in any manner,
+(f) The fees established in subsections (a) and
-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,
-Stat.1949; Nov. 29, 1999, Public Law 106-113, sec.
-(a)(9), 113 Stat. 1501A-580, 581, 582 (S. 1948 secs.
-(c), 4719, 4732(a)(10)(A)).)
-===35 U.S.C. 33 Unauthorized representation as practitioner.===
+(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.
-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,
+*Editor’s Note: During fiscal years 2005 and
-Stat. 1949.)
+, 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.
-CHAPTER 4 — PATENT FEES; FUNDING;
+*Editor’s Note: During fiscal years 2005 and
+, subsection (h) of section 41 of title 35, United
+States Code, shall be administered as though subsection (h) reads as follows:
-SEARCH SYSTEMS
+(h)(1) Subject to paragraph (3), fees charged
-Sec.
+under subsections (a), (b) and (d)(1) shall be reduced
-Patent fees; patent and trademark search systems.
+by 50 percent with respect to their application to any
-Patent and Trademark Office funding.
+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
-U.S.C. 41 Patent fees; patent and trademark
+than the surcharge or fee required of any other entity
-search systems.
+under the same or substantially similar circumstances.
-*Editor’s Note: During fiscal years 2005 and
+(3) The fee charged under subsection
-, subsections (a) and (b) of section 41 of title
+(a)(l)(A) shall be reduced by 75 percent with respect
-, United States Code, shall be administered as
+to its application to any entity to which paragraph (1)
-though subsections (a) and (b) read as follows:
+applies, if the application is filed by electronic means
+as prescribed by the Director.
-(a) GENERAL FEES. — The Director shall
+(Dec. 8, 2004, Public Law 108-447, sec. 801, 118
-charge the following fees:
+Stat. 2809.)
-(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
-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.
+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:
-For the purpose of computing fees under this
+[(h)(1) Fees charged under subsection (a) or (b)
-paragraph, a multiple dependent claim referred to in
+shall be reduced by 50 percent with respect to their
-section 112 of this title or any claim depending therefrom shall be considered as separate dependent claims
+application to any small business concern as defined
-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
+under section 3 of the Small Business Act, and to any
-paragraph for any claim that is canceled before an
+independent inventor or nonprofit organization as
-examination on the merits, as prescribed by the Director, has been made of the application under section
+defined in regulations issued by the Director.
-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. —
+(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.
-(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.
+(2) The Director shall provide for the full
-(C) For examination of each application
+deployment of the automated search systems of the
-for an original plant patent, $160.
+Patent and Trademark Office so that such systems are
-(D) For examination of the national stage
+available for use by the public, and shall assure full
-of each international application, $200.
+access by the public to, and dissemination of, patent
-(E) For examination of each application
+and trademark information, using a variety of automated methods, including electronic bulletin boards
-for the reissue of a patent, $600.
+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
- The provisions of section 111(a) of this title
+by this subsection upon a showing of need or hardship, and if such waiver is in the public interest.
-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. —
+(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.
-(A) For issuing each original patent, except
+ (Amended July 24, 1965, Public Law 89-83, sec. 1, 2,
-for design or plant patents, $1,400.
+Stat. 259; Jan. 2, 1975, Public Law 93-596, sec. 1, Jan.
-(B) For issuing each original design patent,
+, 1975, 88 Stat. 1949; Nov. 14, 1975, Public Law 94-131,
-$800.
+sec. 3, 89 Stat. 690.)
-(C) For issuing each original plant patent,
-$1,100.
-(D) For issuing each reissue patent, $1,400.
+(Subsection (g) amended Dec. 12, 1980, Public Law
+-517, sec. 2, 94 Stat. 3017; Aug. 27, 1982, Public Law
+-247, sec. 3(a)-(e), 96 Stat. 317.)
-(5) DISCLAIMER FEE. — On filing each
+(Subsections (a)-(d) amended Sept. 8, 1982, Public
-disclaimer, $130.
+Law 97-256, sec. 101, 96 Stat. 816.)
-(6) APPEAL FEES. —
+(Subsection (a)(6) amended Nov. 8, 1984, Public Law
+-622, sec. 204(a), 98 Stat. 3388.)
-(A) On filing an appeal from the examiner
+(Subsection (h) added Nov. 6, 1986, Public Law 99607, sec. 1(b)(2), 100 Stat. 3470.)
-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
--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
+(Subsections (a), (b), (d), (f), and (g) amended Dec. 10,
+, 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
+-444, sec. 1, 106 Stat. 2245.)
-(C) on filing a third or subsequent petition,
+(Subsection (a)(1)(C) added Dec. 8, 1994, Public Law
-$570.
+-465, sec. 532(b)(2), 108 Stat. 4986.)
+(Subsection (c)(2) amended, Dec. 8, 1994, Public Law
+-465, sec. 533(b)(1), 108 Stat. 4988.)
+(Subsections (a)-(b) revised Nov. 10, 1998, Public Law
+-358, sec. 3, 112 Stat. 3272.)
-(b) MAINTENANCE FEES. — The Director
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
-shall charge the following fees for maintaining in
+(a)(9), 113 Stat. 1501A-554, 570, 582, 589 (S. 1948
-force all patents based on applications filed on or after
+secs. 4202, 4605(a), 4732(a)(5), 4732(a)(10)(A)) and
-December 12, 1980:
+(d)).)
-(1) 3 years and 6 months after grant, $900.
-(2) 7 years and 6 months after grant, $2,300.
+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.
-(3) 11 years and 6 months after grant, $3,800.
+(c) To the extent and in the amounts provided in
-Unless payment of the applicable maintenance fee is
+advance in appropriations Acts, fees authorized in this
-received in the United States Patent and Trademark
+title or any other Act to be charged or established by
-Office on or before the date the fee is due or within a
+the Director shall be collected by and shall be available to the Director to carry out the activities of the
-grace period of 6 months thereafter, the patent will
+Patent and Trademark Office. All fees available to the
-expire as of the end of such grace period. The Director
+Director under section 31 of the Trademark Act of
-may require the payment of a surcharge as a condition
+shall be used only for the processing of trademark registrations and for other activities, services
-of accepting within such 6-month grace period the
+and materials relating to trademarks and to cover a
-payment of an applicable maintenance fee. No fee
+proportionate share of the administrative costs of the
-may be established for maintaining a design or plant
+Patent and Trademark Office.
-patent in force.
-(Dec. 8, 2004, Public Law 108-447, sec. 801, 118
+(d) The Director may refund any fee paid by
-Stat. 2809.)
+mistake or any amount paid in excess of that required.
-The bracketed text below is the unamended text
+(e) The Secretary of Commerce shall, on the
-of 35 U.S.C. 41(a) and (b), which may continue to
+day each year on which the President submits the
-have effect following fiscal year 2006:
+annual budget to the Congress, provide to the Committees on the Judiciary of the Senate and the House
+of Representatives:
-[(a) The Director shall charge the following
+(1) a list of patent and trademark fee collections by the Patent and Trademark Office during the
-fees:
+preceding fiscal year;
-(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
+(2) a list of activities of the Patent and Trademark Office during the preceding fiscal year which
-at any other time, $78 for each claim in independent
+were supported by patent fee expenditures, trademark
-form which is in excess of 3, $18 for each claim
+fee expenditures, and appropriations;
-(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
+(3) budget plans for significant programs,
-for an original patent, $150.
+projects, and activities of the Office, including out-
+year funding estimates;
-(2) For issuing each original or reissue
+(4) any proposed disposition of surplus fees
-patent, except in design or plant cases, $1,210.
+by the Office; and
-(3) In design and plant cases
+(5) such other information as the committees
+consider necessary.
-(A) on filing each design application, $310;
-(B) on filing each plant application, $480;
+(Amended Nov. 14, 1975, Public Law 94-131, sec. 4,
+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.)
-(C) on issuing each design patent, $430;
+(Subsection (c) amended Dec. 10, 1991, Public Law
-and
+-204, sec. 5(e), 105 Stat. 1640.)
+(Subsection (e) added Dec. 10, 1991, Public Law 102204, sec. 4, 105 Stat. 1637.)
-(D) on issuing each plant patent, $580.
+(Subsection (c) revised Nov. 10, 1998, Public Law
+-358, sec. 4, 112 Stat. 3274.)
-(4)(A)On filing each application for the reissue
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
-of a patent, $690.
+(a)(9), 113 Stat. 1501A-555, 582 (S. 1948 secs. 4205
+and 4732(a)(10)(A)).)
-(B) In addition, on filing or on presentation
+==PART II — PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS==
-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.
+===CHAPTER 10 — PATENTABILITY OF INVENTIONS===
-(6)(A) On filing an appeal from the examiner
-to the Board of Patent Appeals and Interferences,
+Sec.
-$300.
-(B) In addition, on filing a brief in support
+Definitions.
-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
+Inventions patentable.
-time to take actions required by the Director in an
-application
-(A) on filing a first petition, $110;
+Conditions for patentability; novelty and loss of
+right to patent.
-(B) on filing a second petition, $270; and
+Conditions for patentability; non-obvious sub
+ject matter.
-(C) on filing a third or subsequent petition,
+Invention made abroad.
-$490.
-(9) Basic national fee for an international
+Inventions in outer space.
-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
+====35 U.S.C. 100 Definitions.====
-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
+When used in this title unless the context otherwise
-independent claim in the national stage of an international application in excess of 3, $78.
+indicates
-(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
+(a) The term “invention” means invention or
-for maintaining in force all patents based on applications filed on or after December 12, 1980:
+discovery.
-(1) 3 years and 6 months after grant, $830.
+(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.
-(2) 7 years and 6 months after grant, $1,900.
+(c) The terms “United States” and “this country” mean the United States of America, its territories
+and possessions.
-(3) 11 years and 6 months after grant, $2,910.
+(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
+who is not the patent owner.
+(Subsection (e) added Nov. 29, 1999, Public Law
+-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.
-Unless payment of the applicable maintenance fee is received in the Patent and Trademark
+====35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.====
-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
+A person shall be entitled to a patent unless —
-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
+(a) the invention was known or used by others
-maintained as a result of the acceptance of a payment
+in this country, or patented or described in a printed
-of a maintenance fee under this subsection, shall not
+publication in this or a foreign country, before the
-abridge or affect the right of any person or that person’s successors in business who made, purchased,
+invention thereof by the applicant for patent, or
-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
--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
+(b) the invention was patented or described in a
-, subsection (d) of section 41 of title 35, United
+printed publication in this or a foreign country or in
-States Code, shall be administered as though subsection (d) reads as follows:
+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
-(d) PATENT SEARCH AND OTHER FEES. —
+(c) he has abandoned the invention, or
-(1) PATENT SEARCH FEES. —
+(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
-(A) The Director shall charge a fee for the
+(e) the invention was described in — (1) an
-search of each application for a patent, except for provisional applications. The Director shall establish the
+application for patent, published under section 122(b),
-fees charged under this paragraph to recover an
+by another filed in the United States before the invention by the applicant for patent or (2) a patent granted
-amount not to exceed the estimated average cost to
+on an application for patent by another filed in the
-the Office of searching applications for patent either
+United States before the invention by the applicant for
-by acquiring a search report from a qualified search
+patent, except that an international application filed
-authority, or by causing a search by Office personnel
+under the treaty defined in section 351(a) shall have
-to be made, of each application for patent. For the 3year period beginning on the date of enactment of this
+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
-Act, the fee for a search by a qualified search authority of a patent application described in clause (i), (iv),
+was published under Article 21(2) of such treaty in
-or (v) of subparagraph (B) may not exceed $500, of a
+the English language; or
-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
+(f) he did not himself invent the subject matter
-any such fee by more than 20 percent in each of the
+sought to be patented, or
-next three 1-year periods, and the Director may not
-increase any such fee thereafter.
+(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.
-(B) For purposes of determining the fees to
+(Amended July 28, 1972, Public Law 92-358, sec. 2,
-be established under this paragraph, the cost to the
+Stat. 501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89
-Office of causing a search of an application to be
+Stat. 691.)
-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
+(Subsection (e) amended Nov. 29, 1999, Public Law
-original plant patent;
+-113, sec. 1000(a)(9), 113 Stat. 1501A-565 (S. 1948
+sec. 4505).)
-(iv) $500 for the national stage of each
+(Subsection (g) amended Nov. 29, 1999, Public Law
-international application; and
+-113, sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948
-(v) $500 for each application for the
+sec. 4806).)
-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
+(Subsection (e) amended Nov. 2, 2002, Public Law
+-273, sec. 13205, 116 Stat. 1903.)
-(II) meet or exceed the standards of
+====35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.====
-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;
+(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.
-(III) an explanation of the methodology used to evaluate the accuracy and quality of the
+(b)(1) Notwithstanding subsection (a), and upon
-search reports; and
+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
-(IV) an assessment of the effects that
+(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
-the pilot program, as compared to searches conducted
+same effective filing date; and
-by the Patent and Trademark Office, had and will
-have on —
-(aa) patentability determinations;
+(B) the composition of matter, and the process at the time it was invented, were owned by the
-(bb) productivity of the Patent and
+same person or subject to an obligation of assignment
-Trademark Office;
+to the same person.
-(cc) costs to the Patent and Trade
+(2) A patent issued on a process under paragraph (1)
-mark Office;
+(A) shall also contain the claims to the
-(dd) costs to patent applicants; and
+composition of matter used in or made by that process, or
-(ee) other relevant factors;
-(iii) the Patent Public Advisory Committee reviews and analyzes the Director’s report under
+(B) shall, if such composition of matter is
-clause (ii) and the results of the pilot program and
+claimed in another patent, be set to expire on the same
-submits a separate report on its analysis to the Director and the Congress that includes —
+date as such other patent, notwithstanding section
-(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
+(3) For purposes of paragraph (1), the term
-search by a qualified search authority that is a commercial entity is conducted in the United States by
+“biotechnological process” means
-persons that —
+(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
-(i) if individuals, are United States citizens; and
-(ii) if business concerns, are organized
+(iii) express a specific physiological
-under the laws of the United States or any State and
+characteristic not naturally associated with said organism;
-employ United States citizens to perform the searches.
-(G) A search of an application that is the
+(B) cell fusion procedures yielding a cell
-subject of a secrecy order under section 181 or otherwise involves classified information may only be conducted by Office personnel.
+line that expresses a specific protein, such as a monoclonal antibody; and
+(C) a method of using a product produced
-(H) A qualified search authority that is a
+by a process defined by subparagraph (A) or (B), or a
-commercial entity may not conduct a search of a
+combination of subparagraphs (A) and (B).
-patent application if the entity has any direct or indirect financial interest in any patent or in any pending
+(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or
-or imminent application for patent filed or to be filed
+more of subsections (e), (f), and (g) of section 102 of
-in the Patent and Trademark Office.
+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) 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
+(2) For purposes of this subsection, subject
-title, $40 per property.
+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 —
-(B) For each photocopy, $.25 per page.
+(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;
-(C) For each black and white copy of a
+(B) the claimed invention was made as a
-patent, $3. The yearly fee for providing a library specified in section 12 of this title with uncertified printed
+result of activities undertaken within the scope of the
-copies of the specifications and drawings for all patents in that year shall be $50.
+joint research agreement; and
-(Dec. 8, 2004, Public Law 108-447, sec. 801, 118
+(C) the application for patent for the
-Stat. 2809.)
+claimed invention discloses or is amended to disclose
+the names of the parties to the joint research agreement.
-The bracketed text below is the unamended text
+(3) For purposes of paragraph (2), the term
-of 35 U.S.C. 41(d), which may continue to have
+“joint research agreement” means a written contract,
-effect following fiscal year 2006:
+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.
-(d) The Director shall establish fees for all other
+(Amended Nov. 8, 1984, Public Law 98-622, sec. 103,
-processing, services, or materials relating to patents
+Stat. 3384; Nov. 1, 1995, Public Law 104-41, sec.1, 109
-not specified in this section to recover the estimated
+Stat. 3511.)
-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.
+(Subsection (c) amended Nov. 29, 1999, Public Law
+-113, sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948
+sec. 4807).)
-(2) For each photocopy, $.25 per page.
+ (Subsection (c) amended Dec. 10, 2004, Public Law
+-453 , sec. 2, 118 Stat. 3596.)
-(3) For each black and white copy of a
+====35 U.S.C. 104 Invention made abroad.====
-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.]
+(a) IN GENERAL.—
-(e) The Director may waive the payment of any
+(1) PROCEEDINGS.—In proceedings in the
-fee for any service or material related to patents in
+Patent and Trademark Office, in the courts, and before
-connection with an occasional or incidental request
+any other competent authority, an applicant for a
-made by a department or agency of the Government,
+patent, or a patentee, may not establish a date of
-or any officer thereof. The Director may provide any
+invention by reference to knowledge or use thereof, or
-applicant issued a notice under section 132 of this title
+other activity with respect thereto, in a foreign country other than a NAFTA country or a WTO member
-with a copy of the specifications and drawings for all
+country, except as provided in sections 119 and 365 of
-patents referred to in that notice without charge.
+this title.
-(f) The fees established in subsections (a) and
+(2) RIGHTS.—If an invention was made by
+a person, civil or military—
+(A) while domiciled in the United States,
-(b) of this section may be adjusted by the Director on
+and serving in any other country in connection with
-October 1, 1992, and every year thereafter, to reflect
+operations by or on behalf of the United States,
-any fluctuations occurring during the previous 12
+(B) while domiciled in a NAFTA country
-months in the Consumer Price Index, as determined
+and serving in another country in connection with
-by the Secretary of Labor. Changes of less than 1 per
+operations by or on behalf of that NAFTA country, or
-centum may be ignored.
+(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
-*Editor’s Note: During fiscal years 2005 and
+country, that person shall be entitled to the same rights
-, subsection (f) of section 41 of title 35, United
+of priority in the United States with respect to such
-States Code applies to the fees established under
+invention as if such invention had been made in the
-section 801 of Public Law 108-447. (Dec. 8, 2004,
+United States, that NAFTA country, or that WTO
-Public Law 108-447, sec. 801, 118 Stat. 2809.)
+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.
-(g) No fee established by the Director under
+(b) DEFINITIONS.—As used in this section—
-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
+(1) The term “NAFTA country” has the
-, subsection (h) of section 41 of title 35, United
+meaning given that term in section 2(4) of the North
-States Code, shall be administered as though subsection (h) reads as follows:
+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.
-(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
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
-entity described in paragraph (1), any surcharge or fee
+Stat. 1949; Nov. 14, 1975, Public Law 94-131, sec. 6,
-charged under subsection (c) or (d) shall not be higher
+Stat. 691; Nov. 8, 1984, Public Law 98-622, sec. 403(a),
+Stat. 3392; Dec. 8, 1993, Public Law 103-182, sec. 331,
+Stat. 2113; Dec. 8, 1994, Public Law 103-465, sec.
+(a), 108 Stat. 4982; Nov. 29, 1999, Public Law 106-113,
+sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(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),
+Stat. 2863.)
-than the surcharge or fee required of any other entity
+===CHAPTER 11 — APPLICATION FOR PATENT===
-under the same or substantially similar circumstances.
-(3) The fee charged under subsection
+Sec.
-(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
+Application.
-Stat. 2809.)
-The bracketed text below is the unamended text
+Specification.
-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)
+Drawings.
-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
+Models, specimens.
-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.
+Oath of applicant.
-(2) The Director shall provide for the full
+Inventors.
-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
+Death or incapacity of inventor.
-by this subsection upon a showing of need or hardship, and if such waiver is in the public interest.
+Filing by other than inventor.
-(4) The Director shall submit to the Congress
+Benefit of earlier filing date; right of priority.
-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,
+Benefit of earlier filing date in the United
-Stat. 259; Jan. 2, 1975, Public Law 93-596, sec. 1, Jan.
+States.
-, 1975, 88 Stat. 1949; Nov. 14, 1975, Public Law 94-131,
-sec. 3, 89 Stat. 690.)
-(Subsection (g) amended Dec. 12, 1980, Public Law
+Divisional applications.
--517, sec. 2, 94 Stat. 3017; Aug. 27, 1982, Public Law
--247, sec. 3(a)-(e), 96 Stat. 317.)
-(Subsections (a)-(d) amended Sept. 8, 1982, Public
+Confidential status of applications; publication
-Law 97-256, sec. 101, 96 Stat. 816.)
-(Subsection (a)(6) amended Nov. 8, 1984, Public Law
+of patent applications.
--622, sec. 204(a), 98 Stat. 3388.)
-(Subsection (h) added Nov. 6, 1986, Public Law 99607, sec. 1(b)(2), 100 Stat. 3470.)
+====35 U.S.C. 111 Application.====
-(Subsections (a), (b), (d), (f), and (g) amended Dec. 10,
+(a) IN GENERAL.—
-, Public Law 102-204, sec. 5, 105 Stat. 1637.)
-(Subsections (a)(9) - (15) and (i) added Dec. 10, 1991,
+(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be
-Public Law 102-204, sec. 5, 105 Stat. 1637.)
+made, by the inventor, except as otherwise provided
+in this title, in writing to the Director.
+(2) CONTENTS.—Such application shall
+include—
+(A) a specification as prescribed by section
+of this title;
+(B) a drawing as prescribed by section 113
+of this title; and
+(C) an oath by the applicant as prescribed
+by section 115 of this title.
+(3) FEE AND OATH.—The application must
+be accompanied by the fee required by law. The fee
+and oath may be submitted after the specification and
+any required drawing are submitted, within such
+period and under such conditions, including the payment of a surcharge, as may be prescribed by the
+Director.
+(4) FAILURE TO SUBMIT.—Upon failure
+to submit the fee and oath within such prescribed
+period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the
+Director that the delay in submitting the fee and oath
+was unavoidable or unintentional. The filing date of
+an application shall be the date on which the specification and any required drawing are received in the
+Patent and Trademark Office.
-(Subsection (c)(1) amended Oct. 23, 1992, Public Law
+(b) PROVISIONAL APPLICATION.—
--444, sec. 1, 106 Stat. 2245.)
-(Subsection (a)(1)(C) added Dec. 8, 1994, Public Law
+(1) AUTHORIZATION.—A provisional
--465, sec. 532(b)(2), 108 Stat. 4986.)
+application for patent shall be made or authorized to
+be made by the inventor, except as otherwise provided
+in this title, in writing to the Director. Such application shall include—
+(A) a specification as prescribed by the
+first paragraph of section 112 of this title; and
+(B) a drawing as prescribed by section 113
+of this title.
+(2) CLAIM.—A claim, as required by the
+second through fifth paragraphs of section 112, shall
+not be required in a provisional application.
+(3) FEE.—
-(Subsection (c)(2) amended, Dec. 8, 1994, Public Law
+(A) The application must be accompanied
--465, sec. 533(b)(1), 108 Stat. 4988.)
+by the fee required by law.
+(B) The fee may be submitted after the
-(Subsections (a)-(b) revised Nov. 10, 1998, Public Law
+specification and any required drawing are submitted,
--358, sec. 3, 112 Stat. 3272.)
+within such period and under such conditions, including the payment of a surcharge, as may be prescribed
+by the Director.
+(C) Upon failure to submit the fee within
+such prescribed period, the application shall be
+regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the
+fee was unavoidable or unintentional.
+(4) FILING DATE.—The filing date of a
+provisional application shall be the date on which the
+specification and any required drawing are received in
+the Patent and Trademark Office.
+(5) ABANDONMENT.—Notwithstanding
+the absence of a claim, upon timely request and as
+prescribed by the Director, a provisional application
+may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no
+such request is made, the provisional application shall
+be regarded as abandoned 12 months after the filing
+date of such application and shall not be subject to
+revival after such 12-month period.
+(6) OTHER BASIS FOR PROVISIONAL
+APPLICATION.—Subject to all the conditions in this
+subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed
+under subsection (a) may be treated as a provisional
+application for patent.
+(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional
+application shall not be entitled to the right of priority
+of any other application under section 119 or 365(a)
+of this title or to the benefit of an earlier filing date in
+the United States under section 120, 121, or 365(c) of
+this title.
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(8) APPLICABLE PROVISIONS.—The
-(a)(9), 113 Stat. 1501A-554, 570, 582, 589 (S. 1948
+provisions of this title relating to applications for
-secs. 4202, 4605(a), 4732(a)(5), 4732(a)(10)(A)) and
+patent shall apply to provisional applications for
-(d)).)
+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.
-U.S.C. 42 Patent and Trademark Office funding.
+(Amended Aug. 27, 1982, Public Law 97-247, sec. 5,
+Stat. 319; Dec. 8, 1994, Public Law 103-465, sec.
+(b)(3), 108 Stat. 4986; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588 (S. 1948
+secs. 4732(a)(10)(A), 4801(a)).)
-(a) All fees for services performed by or materials furnished by the Patent and Trademark Office
+====35 U.S.C. 112 Specification.====
-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
+The specification shall contain a written description
-Patent and Trademark Office will be credited to the
+of the invention, and of the manner and process of
-Patent and Trademark Office Appropriation Account
+making and using it, in such full, clear, concise, and
-in the Treasury of the United States.
+exact terms as to enable any person skilled in the art
+to which it pertains, or with which it is most nearly
-(c) To the extent and in the amounts provided in
+connected, to make and use the same, and shall set
-advance in appropriations Acts, fees authorized in this
+forth the best mode contemplated by the inventor of
-title or any other Act to be charged or established by
+carrying out his invention.
-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
-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
+The specification shall conclude with one or more
-mistake or any amount paid in excess of that required.
+claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as
+his invention.
-(e) The Secretary of Commerce shall, on the
+A claim may be written in independent or, if the
-day each year on which the President submits the
+nature of the case admits, in dependent or multiple
-annual budget to the Congress, provide to the Committees on the Judiciary of the Senate and the House
+dependent form.
-of Representatives:
-(1) a list of patent and trademark fee collections by the Patent and Trademark Office during the
+Subject to the following paragraph, a claim in
-preceding fiscal year;
+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.
-(2) a list of activities of the Patent and Trademark Office during the preceding fiscal year which
+A claim in multiple dependent form shall contain a
-were supported by patent fee expenditures, trademark
+reference, in the alternative only, to more than one
-fee expenditures, and appropriations;
+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.
-(3) budget plans for significant programs,
+An element in a claim for a combination may be
-projects, and activities of the Office, including out-
+expressed as a means or step for performing a specified function without the recital of structure, material,
-year funding estimates;
+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.
-(4) any proposed disposition of surplus fees
+(Amended July 24, 1965, Public Law 89-83, sec. 9,
-by the Office; and
+Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 7,
+Stat. 691.)
-(5) such other information as the committees
+====35 U.S.C. 113 Drawings.====
-consider necessary.
+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. 4,
+(Amended Nov. 14, 1975, Public Law 94-131, sec. 8,
-Stat. 690; Dec. 12, 1980, Public Law 96-517, sec. 3, 94
+Stat. 691; Nov. 29, 1999, Public Law 106-113, sec.
-Stat. 3018; Aug. 27, 1982, Public Law 97-247, sec. 3(g), 96
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-Stat. 319; Sept. 13, 1982, Public Law 97-258, sec. 3(i), 96
+(a)(10)(A)).)
-Stat. 1065.)
-(Subsection (c) amended Dec. 10, 1991, Public Law
+====35 U.S.C. 114 Models, specimens.====
--204, sec. 5(e), 105 Stat. 1640.)
-(Subsection (e) added Dec. 10, 1991, Public Law 102204, sec. 4, 105 Stat. 1637.)
+The Director may require the applicant to furnish a
+model of convenient size to exhibit advantageously
+the several parts of his invention.
-(Subsection (c) revised Nov. 10, 1998, Public Law
+When the invention relates to a composition of matter, the Director may require the applicant to furnish
--358, sec. 4, 112 Stat. 3274.)
+specimens or ingredients for the purpose of inspection
+or experiment.
 (Amended Nov. 29, 1999, Public Law 106-113, sec.
-(a)(9), 113 Stat. 1501A-555, 582 (S. 1948 secs. 4205
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-and 4732(a)(10)(A)).)
+(a)(10)(A)).)
-PART II — PATENTABILITY OF
+====35 U.S.C. 115 Oath of applicant.====
-INVENTIONS AND GRANT OF
-PATENTS
-CHAPTER 10 — PATENTABILITY OF
+The applicant shall make oath that he believes himself to be the original and first inventor of the process,
-INVENTIONS
+machine, manufacture, or composition of matter, or
+improvement thereof, for which he solicits a patent;
-Sec.
+and shall state of what country he is a citizen. Such
+oath may be made before any person within the
-Definitions.
+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
-Inventions patentable.
+an official seal and authorized to administer oaths in
+the foreign country in which the applicant may be,
-Conditions for patentability; novelty and loss of
+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
-right to patent.
+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).
-Conditions for patentability; non-obvious sub
+(Amended Aug. 27, 1982, Public Law 97-247, sec.
-ject matter.
+(a), 96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec.
+(d), 112 Stat. 2681-818.)
-Invention made abroad.
+====35 U.S.C. 116 Inventors.====
-Inventions in outer space.
+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.
-===35 U.S.C. 100 Definitions.===
+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.
-When used in this title unless the context otherwise
+Whenever through error a person is named in an
-indicates
+application for patent as the inventor, or through an
+error an inventor is not named in an application, and
-(a) The term “invention” means invention or
-discovery.
-(b) The term “process” means process, art, or
+such error arose without any deceptive intention on
-method, and includes a new use of a known process,
+his part, the Director may permit the application to be
-machine, manufacture, composition of matter, or
+amended accordingly, under such terms as he prescribes.
-material.
-(c) The terms “United States” and “this country” mean the United States of America, its territories
+(Amended Aug. 27, 1982, Public Law 97-247, sec.
-and possessions.
+(a), 96 Stat. 320; Nov. 8, 1984, Public Law 98-622, sec.
+(a), 98 Stat. 3384; Nov. 29, 1999, Public Law 106-113,
+sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
-(d) The word “patentee” includes not only the
+====35 U.S.C. 117 Death or incapacity of inventor.====
-patentee to whom the patent was issued but also the
-successors in title to the patentee.
-(e) The term “third-party requester” means a
+Legal representatives of deceased inventors and of
-person requesting ex parte reexamination under section 302 or inter partes reexamination under section
+those under legal incapacity may make application for
-who is not the patent owner.
+patent upon compliance with the requirements and on
+the same terms and conditions applicable to the inventor.
-(Subsection (e) added Nov. 29, 1999, Public Law
+====35 U.S.C. 118 Filing by other than inventor.====
--113, sec. 1000(a)(9), 113 Stat. 1501A-567 (S. 1948
-sec. 4603).)
-===35 U.S.C. 101 Inventions patentable.===
+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.
-Whoever invents or discovers any new and useful
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
-process, machine, manufacture, or composition of
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-matter, or any new and useful improvement thereof,
+(a)(10)(A)).)
-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.===
+U.S.C. 119 Benefit of earlier filing date; right
+of priority.
-A person shall be entitled to a patent unless —
+(a) An application for patent for an invention
+filed in this country by any person who has, or whose
-(a) the invention was known or used by others
+legal representatives or assigns have, previously regularly filed an application for a patent for the same
-in this country, or patented or described in a printed
+invention in a foreign country which affords similar
-publication in this or a foreign country, before the
+privileges in the case of applications filed in the
-invention thereof by the applicant for patent, or
+United States or to citizens of the United States, or in
+a WTO member country, shall have the same effect as
-(b) the invention was patented or described in a
+the same application would have if filed in this country on the date on which the application for patent for
-printed publication in this or a foreign country or in
+the same invention was first filed in such foreign
-public use or on sale in this country, more than one
+country, if the application in this country is filed
-year prior to the date of the application for patent in
+within twelve months from the earliest date on which
-the United States, or
+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.
-(c) he has abandoned the invention, or
+(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.
-(d) the invention was first patented or caused to
+(2) The Director may consider the failure of
-be patented, or was the subject of an inventor’s certificate, by the applicant or his legal representatives or
+the applicant to file a timely claim for priority as a
-assigns in a foreign country prior to the date of the
+waiver of any such claim. The Director may establish
-application for patent in this country on an application
+procedures, including the payment of a surcharge, to
-for patent or inventor’s certificate filed more than
+accept an unintentionally delayed claim under this
-twelve months before the filing of the application in
+section.
-the United States, or
+(3) The Director may require a certified copy
+of the original foreign application, specification, and
-(e) the invention was described in — (1) an
+drawings upon which it is based, a translation if not in
-application for patent, published under section 122(b),
+the English language, and such other information as
-by another filed in the United States before the invention by the applicant for patent or (2) a patent granted
+the Director considers necessary. Any such certification shall be made by the foreign intellectual property
-on an application for patent by another filed in the
+authority in which the foreign application was filed
-United States before the invention by the applicant for
+and show the date of the application and of the filing
-patent, except that an international application filed
+of the specification and other papers.
-under the treaty defined in section 351(a) shall have
+(c) In like manner and subject to the same conditions and requirements, the right provided in this
-the effects for the purposes of this subsection of an
+section may be based upon a subsequent regularly
-application filed in the United States only if the international application designated the United States and
+filed application in the same foreign country instead
-was published under Article 21(2) of such treaty in
+of the first filed foreign application, provided that any
-the English language; or
+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.
-(f) he did not himself invent the subject matter
+(e)(1)An application for patent filed under section
-sought to be patented, or
+(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
+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
+(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)
-(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,
+through (c) of this section as applications for patents,
-Stat. 501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89
+subject to the same conditions and requirements of
-Stat. 691.)
+this section as apply to applications for patents.
-(Subsection (e) amended Nov. 29, 1999, Public Law
+(g) As used in this section—
--113, sec. 1000(a)(9), 113 Stat. 1501A-565 (S. 1948
-sec. 4505).)
-(Subsection (g) amended Nov. 29, 1999, Public Law
+(1) the term “WTO member country” has the
--113, sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948
+same meaning as the term is defined in section
-sec. 4806).)
+(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.
-(Subsection (e) amended Nov. 2, 2002, Public Law
--273, sec. 13205, 116 Stat. 1903.)
-===35 U.S.C. 103 Conditions for patentability; non-
+(Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75
-obvious subject matter.===
+Stat. 748; July 28, 1972, Public Law 92-358, sec. 1, 86 Stat.
+; 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.
+.)
-(a) A patent may not be obtained though the
+(Subsection (b) amended Nov. 29, 1999, Public Law
-invention is not identically disclosed or described as
+-113, sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948
-set forth in section 102 of this title, if the differences
+sec.4503(a)).)
-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
+(Subsection (e) amended Nov. 29, 1999, Public Law
-timely election by the applicant for patent to proceed
+-113, sec. 1000(a)(9), 113 Stat. 1501A-564, 588, 589
-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
+(S. 1948 secs. 4503(b)(2), 4801 and 4802).)
-same effective filing date; and
+(Subsections (f) and (g) added Nov. 29, 1999, Public
+Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-589
-(B) the composition of matter, and the process at the time it was invented, were owned by the
+(S. 1948 sec. 4802).)
-same person or subject to an obligation of assignment
-to the same person.
-(2) A patent issued on a process under paragraph (1)
+====35 U.S.C. 120 Benefit of earlier filing date in the United States.====
-(A) shall also contain the claims to the
+An application for patent for an invention disclosed
-composition of matter used in or made by that process, or
+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.
-(B) shall, if such composition of matter is
+(Amended Nov. 14, 1975, Public Law 94-131, sec. 9,
-claimed in another patent, be set to expire on the same
+Stat. 691; Nov. 8, 1984, Public Law 98-622, sec. 104(b),
-date as such other patent, notwithstanding section
+Stat. 3385; Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.
+(b)(1)).)
-.
+====35 U.S.C. 121 Divisional applications.====
-(3) For purposes of paragraph (1), the term
+If two or more independent and distinct inventions
-“biotechnological process” means
+are claimed in one application, the Director may
-(A) a process of genetically altering or otherwise inducing a single- or multi-celled organism to
+require the application to be restricted to one of the
-(i) express an exogenous nucleotide
+inventions. If the other invention is made the subject
-sequence,
+of a divisional application which complies with the
-(ii) inhibit, eliminate, augment, or alter
+requirements of section 120 of this title it shall be
-expression of an endogenous nucleotide sequence, or
+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,
+Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
-(iii) express a specific physiological
+====35 U.S.C. 122 Confidential status of applications; publication of patent applications.====
-characteristic not naturally associated with said organism;
-(B) cell fusion procedures yielding a cell
+(a) CONFIDENTIALITY.— Except as provided in subsection (b), applications for patents shall
-line that expresses a specific protein, such as a monoclonal antibody; and
+be kept in confidence by the Patent and Trademark
-(C) a method of using a product produced
+Office and no information concerning the same given
-by a process defined by subparagraph (A) or (B), or a
+without authority of the applicant or owner unless
-combination of subparagraphs (A) and (B).
+necessary to carry out the provisions of an Act of
-(c)(1) Subject matter developed by another person, which qualifies as prior art only under one or
+Congress or in such special circumstances as may be
-more of subsections (e), (f), and (g) of section 102 of
+determined by the Director.
-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.
+(b) PUBLICATION.—
-(2) For purposes of this subsection, subject
+(1) IN GENERAL.—
-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
+(A) Subject to paragraph (2), each application for a patent shall be published, in accordance
-on behalf of parties to a joint research agreement that
+with procedures determined by the Director, promptly
-was in effect on or before the date the claimed invention was made;
+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.—
-(B) the claimed invention was made as a
+(A) An application shall not be published if
-result of activities undertaken within the scope of the
+that application is—
-joint research agreement; and
+(i) no longer pending;
-(C) the application for patent for the
+(ii) subject to a secrecy order under section 181 of this title;
-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
+(iii) a provisional application filed under
-“joint research agreement” means a written contract,
+section 111(b) of this title; or
-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,
+(iv) an application for a design patent
-Stat. 3384; Nov. 1, 1995, Public Law 104-41, sec.1, 109
+filed under chapter 16 of this title.
-Stat. 3511.)
+(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).
-(Subsection (c) amended Nov. 29, 1999, Public Law
+(ii) An applicant may rescind a request
--113, sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948
+made under clause (i) at any time.
-sec. 4807).)
- (Subsection (c) amended Dec. 10, 2004, Public Law
+(iii) An applicant who has made a
--453 , sec. 2, 118 Stat. 3596.)
+request under clause (i) but who subsequently files, in
+a foreign country or under a multilateral international
-===35 U.S.C. 104 Invention made abroad.===
+agreement specified in clause (i), an application
+directed to the invention disclosed in the application
-(a) IN GENERAL.—
+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.
-(1) PROCEEDINGS.—In proceedings in the
+(iv) If an applicant rescinds a request
-Patent and Trademark Office, in the courts, and before
+made under clause (i) or notifies the Director that an
-any other competent authority, an applicant for a
+application was filed in a foreign country or under a
-patent, or a patentee, may not establish a date of
+multilateral international agreement specified in
-invention by reference to knowledge or use thereof, or
+clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as
-other activity with respect thereto, in a foreign country other than a NAFTA country or a WTO member
+soon as is practical after the date that is specified in
-country, except as provided in sections 119 and 365 of
+clause (i).
-this title.
+(v) If an applicant has filed applications
-(2) RIGHTS.—If an invention was made by
+in one or more foreign countries, directly or through a
-a person, civil or military—
+multilateral international agreement, and such foreign
-(A) while domiciled in the United States,
+filed applications corresponding to an application
-and serving in any other country in connection with
+filed in the Patent and Trademark Office or the
-operations by or on behalf of the United States,
+description of the invention in such foreign filed
-(B) while domiciled in a NAFTA country
+applications is less extensive than the application or
-and serving in another country in connection with
+description of the invention in the application filed in
-operations by or on behalf of that NAFTA country, or
+the Patent and Trademark Office, the applicant may
-(C) while domiciled in a WTO member
+submit a redacted copy of the application filed in the
-country and serving in another country in connection
+Patent and Trademark Office eliminating any part or
-with operations by or on behalf of that WTO member
+description of the invention in such application that is
-country, that person shall be entitled to the same rights
+not also contained in any of the corresponding applications filed in a foreign country. The Director may
-of priority in the United States with respect to such
+only publish the redacted copy of the application
-invention as if such invention had been made in the
+unless the redacted copy of the application is not
-United States, that NAFTA country, or that WTO
+received within 16 months after the earliest effective
-member country, as the case may be.
+filing date for which a benefit is sought under this
-(3) USE OF INFORMATION.—To the
+title. The provisions of section 154(d) shall not apply
-extent that any information in a NAFTA country or a
+to a claim if the description of the invention published
-WTO member country concerning knowledge, use, or
+in the redacted application filed under this clause with
-other activity relevant to proving or disproving a date
+respect to the claim does not enable a person skilled in
-of invention has not been made available for use in a
+the art to make and use the subject matter of the claim.
-proceeding in the Patent and Trademark Office, a
+(c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall establish appropriate
-court, or any other competent authority to the same
+procedures to ensure that no protest or other form of
-extent as such information could be made available in
+pre-issuance opposition to the grant of a patent on an
-the United States, the Director, court, or such other
+application may be initiated after publication of the
-authority shall draw appropriate inferences, or take
+application without the express written consent of the
-other action permitted by statute, rule, or regulation,
+applicant.
-in favor of the party that requested the information in
+(d) NATIONAL SECURITY.— No application
-the proceeding.
+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.
+(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.
+(b)(1)).)
-(b) DEFINITIONS.—As used in this section—
+===CHAPTER 12 — EXAMINATION OF APPLICATION===
-(1) The term “NAFTA country” has the
+Sec.
-meaning given that term in section 2(4) of the North
+Examination of application.
-American Free Trade Agreement Implementation
+Notice of rejection; reexamination.
-Act; and
+Time for prosecuting application.
-(2) The term “WTO member country” has
+Appeal to the Board of Patent Appeals and
-the meaning given that term in section 2(10) of the
-Uruguay Round Agreements Act.
+Interferences.
+Interferences.
-(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
+====35 U.S.C. 131 Examination of application.====
-Stat. 1949; Nov. 14, 1975, Public Law 94-131, sec. 6,
-Stat. 691; Nov. 8, 1984, Public Law 98-622, sec. 403(a),
-Stat. 3392; Dec. 8, 1993, Public Law 103-182, sec. 331,
-Stat. 2113; Dec. 8, 1994, Public Law 103-465, sec.
-(a), 108 Stat. 4982; Nov. 29, 1999, Public Law 106-113,
-sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(A)).)
-===35 U.S.C. 105 Inventions in outer space.===
+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.
-(a) Any invention made, used, or sold in outer
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
-space on a space object or component thereof under
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-the jurisdiction or control of the United States shall be
+(a)(10)(A)).)
-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.
+====35 U.S.C. 132 Notice of rejection; reexamination.====
-(Added Nov. 15, 1990, Public Law 101-580, sec. 1(a),
+(a) Whenever, on examination, any claim for a
-Stat. 2863.)
+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.
-==CHAPTER 11 — APPLICATION FOR PATENT==
-Sec.
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-560, 582 (S. 1948 secs. 4403
+and 4732(a)(10)(A)).)
-Application.
+====35 U.S.C. 133 Time for prosecuting application.====
-Specification.
+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.
-Drawings.
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
-Models, specimens.
+====35 U.S.C. 134 Appeal to the Board of Patent Appeals and Interferences.====
-Oath of applicant.
+(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.
-Inventors.
+(Amended Nov. 8, 1984, Public Law 98-622, sec.
+(b)(1), 98 Stat. 3388; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec.
+(b)); subsections (a)-(c) amended Nov. 2, 2002, Public
+Law 107-273, secs. 13106 and 13202, 116 Stat. 1901.)
-Death or incapacity of inventor.
+====35 U.S.C. 135 Interferences.====
-Filing by other than inventor.
+(a) Whenever an application is made for a
+patent which, in the opinion of the Director, would
-Benefit of earlier filing date; right of priority.
+interfere with any pending application, or with any
+unexpired patent, an interference may be declared and
-Benefit of earlier filing date in the United
+the Director shall give notice of such declaration to
-States.
+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
-Divisional applications.
+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.
-Confidential status of applications; publication
+(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.
-of patent applications.
+(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
+(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.
-===35 U.S.C. 111 Application.===
+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.
-(a) IN GENERAL.—
+Any discretionary action of the Director under
+this subsection shall be reviewable under section 10
+of the Administrative Procedure Act.
-(1) WRITTEN APPLICATION.—An application for patent shall be made, or authorized to be
+(d) Parties to a patent interference, within such
-made, by the inventor, except as otherwise provided
+time as may be specified by the Director by regulation, may determine such contest or any aspect thereof
-in this title, in writing to the Director.
+by arbitration. Such arbitration shall be governed by
-(2) CONTENTS.—Such application shall
+the provisions of title 9 to the extent such title is not
-include—
+inconsistent with this section. The parties shall give
-(A) a specification as prescribed by section
+notice of any arbitration award to the Director, and
-of this title;
+such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates.
-(B) a drawing as prescribed by section 113
+The arbitration award shall be unenforceable until
-of this title; and
+such notice is given. Nothing in this subsection shall
-(C) an oath by the applicant as prescribed
+preclude the Director from determining patentability
-by section 115 of this title.
+of the invention involved in the interference.
-(3) FEE AND OATH.—The application must
-be accompanied by the fee required by law. The fee
+(Subsection (c) added Oct. 15, 1962, Public Law 87831, 76 Stat. 958.)
-and oath may be submitted after the specification and
-any required drawing are submitted, within such
-period and under such conditions, including the payment of a surcharge, as may be prescribed by the
-Director.
-(4) FAILURE TO SUBMIT.—Upon failure
-to submit the fee and oath within such prescribed
-period, the application shall be regarded as abandoned, unless it is shown to the satisfaction of the
-Director that the delay in submitting the fee and oath
-was unavoidable or unintentional. The filing date of
-an application shall be the date on which the specification and any required drawing are received in the
-Patent and Trademark Office.
-(b) PROVISIONAL APPLICATION.—
+(Subsections (a) and (c) amended, Jan. 2, 1975, Public
+Law 93-596, sec. 1, 88 Stat. 1949.)
-(1) AUTHORIZATION.—A provisional
+(Subsection (a) amended Nov. 8, 1984, Public Law 98622, sec. 202, 98 Stat. 3386.)
-application for patent shall be made or authorized to
-be made by the inventor, except as otherwise provided
-in this title, in writing to the Director. Such application shall include—
-(A) a specification as prescribed by the
-first paragraph of section 112 of this title; and
-(B) a drawing as prescribed by section 113
-of this title.
-(2) CLAIM.—A claim, as required by the
-second through fifth paragraphs of section 112, shall
-not be required in a provisional application.
-(3) FEE.—
-(A) The application must be accompanied
+(Subsection (d) added Nov. 8, 1984, Public Law 98622, sec. 105, 98 Stat. 3385.)
-by the fee required by law.
-(B) The fee may be submitted after the
-specification and any required drawing are submitted,
-within such period and under such conditions, including the payment of a surcharge, as may be prescribed
-by the Director.
-(C) Upon failure to submit the fee within
-such prescribed period, the application shall be
-regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the
-fee was unavoidable or unintentional.
-(4) FILING DATE.—The filing date of a
-provisional application shall be the date on which the
-specification and any required drawing are received in
-the Patent and Trademark Office.
-(5) ABANDONMENT.—Notwithstanding
-the absence of a claim, upon timely request and as
-prescribed by the Director, a provisional application
-may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no
-such request is made, the provisional application shall
-be regarded as abandoned 12 months after the filing
-date of such application and shall not be subject to
-revival after such 12-month period.
-(6) OTHER BASIS FOR PROVISIONAL
-APPLICATION.—Subject to all the conditions in this
-subsection and section 119(e) of this title, and as prescribed by the Director, an application for patent filed
-under subsection (a) may be treated as a provisional
-application for patent.
-(7) NO RIGHT OF PRIORITY OR BENEFIT OF EARLIEST FILING DATE.—A provisional
-application shall not be entitled to the right of priority
-of any other application under section 119 or 365(a)
-of this title or to the benefit of an earlier filing date in
-the United States under section 120, 121, or 365(c) of
-this title.
-(8) APPLICABLE PROVISIONS.—The
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
-provisions of this title relating to applications for
+(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs.
-patent shall apply to provisional applications for
+(11) and 4732(a)(10)(A)).)
-patent, except as otherwise provided, and except that
-provisional applications for patent shall not be subject
-to sections 115, 131, 135, and 157 of this title.
-(Amended Aug. 27, 1982, Public Law 97-247, sec. 5,
+===CHAPTER 13 — REVIEW OF PATENT AND TRADEMARK OFFICE DECISION===
-Stat. 319; Dec. 8, 1994, Public Law 103-465, sec.
-(b)(3), 108 Stat. 4986; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588 (S. 1948
-secs. 4732(a)(10)(A), 4801(a)).)
-===35 U.S.C. 112 Specification.===
+Sec.
+Appeal to Court of Appeals for the Federal Cir
-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
+cuit.
-claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as
+Notice of appeal.
-his invention.
+Proceedings on appeal.
+Decision on appeal.
+Civil action to obtain patent.
+Civil action in case of interference.
-A claim may be written in independent or, if the
+====35 U.S.C. 141 Appeal to the Court of Appeals for the Federal Circuit.====
-nature of the case admits, in dependent or multiple
-dependent form.
-Subject to the following paragraph, a claim in
+An applicant dissatisfied with the decision in an
-dependent form shall contain a reference to a claim
+appeal to the Board of Patent Appeals and Interferences under section 134 of this title may appeal the
-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
+decision to the United States Court of Appeals for the
-refers.
+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.
-A claim in multiple dependent form shall contain a
+(Amended Apr. 2, 1982, Public Law 97-164, sec.
-reference, in the alternative only, to more than one
+(a)(7), (b)(2), 96 Stat. 49, 50; Nov. 8, 1984, Public Law
-claim previously set forth and then specify a further
+-622, sec. 203(a), 98 Stat. 3387; Nov. 29, 1999, Public
-limitation of the subject matter claimed. A multiple
+Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582
-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
+(S. 1948 secs. 4605(c) and 4732(a)(10)(A)); Nov. 2, 2002,
-expressed as a means or step for performing a specified function without the recital of structure, material,
+Public Law 107-273, sec. 13106, 116 Stat. 1901.)
-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,
+====35 U.S.C. 142 Notice of appeal.====
-Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 7,
-Stat. 691.)
-===35 U.S.C. 113 Drawings.===
+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.
-The applicant shall furnish a drawing where necessary for the understanding of the subject matter
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
-sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the
+Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
-applicant has not furnished such a drawing, the Director may require its submission within a time period of
+(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-620,
-not less than two months from the sending of a notice
+sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law 106
-thereof. Drawings submitted after the filing date of
+, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-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,
-Stat. 691; Nov. 29, 1999, Public Law 106-113, sec.
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
 (a)(10)(A)).)
-===35 U.S.C. 114 Models, specimens.===
+====35 U.S.C. 143 Proceedings on appeal.====
-The Director may require the applicant to furnish a
+With respect to an appeal described in section 142
-model of convenient size to exhibit advantageously
+of this title, the Director shall transmit to the United
-the several parts of his invention.
+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.
-When the invention relates to a composition of matter, the Director may require the applicant to furnish
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
-specimens or ingredients for the purpose of inspection
+Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
-or experiment.
+(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.)
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+====35 U.S.C. 144 Decision on appeal.====
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(A)).)
-===35 U.S.C. 115 Oath of applicant.===
+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.
-The applicant shall make oath that he believes himself to be the original and first inventor of the process,
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
-machine, manufacture, or composition of matter, or
+Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
-improvement thereof, for which he solicits a patent;
+(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-620,
-and shall state of what country he is a citizen. Such
+sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-oath may be made before any person within the
+(a)(10)(A)).)
-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.
+====35 U.S.C. 145 Civil action to obtain patent.====
-(a), 96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec.
-(d), 112 Stat. 2681-818.)
-===35 U.S.C. 116 Inventors.===
+An applicant dissatisfied with the decision of the
+Board of Patent Appeals and Interferences in an
-When an invention is made by two or more persons
+appeal under section 134(a) of this title may, unless
-jointly, they shall apply for patent jointly and each
+appeal has been taken to the United States Court of
-make the required oath, except as otherwise provided
+Appeals for the Federal Circuit, have remedy by civil
-in this title. Inventors may apply for a patent jointly
+action against the Director in the United States District Court for the District of Columbia if commenced
-even though (1) they did not physically work together
+within such time after such decision, not less than
-or at the same time, (2) each did not make the same
+sixty days, as the Director appoints. The court may
-type or amount of contribution, or (3) each did not
+adjudge that such applicant is entitled to receive a
-make a contribution to the subject matter of every
+patent for his invention, as specified in any of his
-claim of the patent.
+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.
-If a joint inventor refuses to join in an application
+(Amended Apr. 2, 1982, Public Law 97-164, sec.
-for patent or cannot be found or reached after diligent
+(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622,
-effort, the application may be made by the other
+sec. 203(b), 98 Stat. 3387; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948
-inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and
+secs. 4605(e) and 4732(a)(10)(A).)
-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
+====35 U.S.C. 146 Civil action in case of interference.====
-such error arose without any deceptive intention on
+Any party to an interference dissatisfied with the
-his part, the Director may permit the application to be
+decision of the Board of Patent Appeals and Interferences may have remedy by civil action, if commenced
-amended accordingly, under such terms as he prescribes.
+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.
-(Amended Aug. 27, 1982, Public Law 97-247, sec.
+Such suit may be instituted against the party in
-(a), 96 Stat. 320; Nov. 8, 1984, Public Law 98-622, sec.
+interest as shown by the records of the Patent and
-(a), 98 Stat. 3384; Nov. 29, 1999, Public Law 106-113,
+Trademark Office at the time of the decision complained of, but any party in interest may become a
-sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+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,
+Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
+(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.
 (a)(10)(A)).)
-===35 U.S.C. 117 Death or incapacity of inventor.===
+===CHAPTER 14 — ISSUE OF PATENT===
-Legal representatives of deceased inventors and of
+Sec.
-those under legal incapacity may make application for
+Issue of patent.
-patent upon compliance with the requirements and on
+Issue of patent to assignee.
-the same terms and conditions applicable to the inventor.
+How issued.
+Contents and term of patent; provisional rights.
+Patent term extension.
+A Patent term restoration.
+Extension of patent term.
+Statutory invention registration.
-===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
+====35 U.S.C. 151 Issue of patent.====
-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.
+If it appears that applicant is entitled to a patent
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+under the law, a written notice of allowance of the
-(a)(10)(A)).)
+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.
-U.S.C. 119 Benefit of earlier filing date; right
+Upon payment of this sum the patent shall issue,
-of priority.
+but if payment is not timely made, the application
+shall be regarded as abandoned.
-(a) An application for patent for an invention
+Any remaining balance of the issue fee shall be
-filed in this country by any person who has, or whose
+paid within three months from the sending of a notice
-legal representatives or assigns have, previously regularly filed an application for a patent for the same
+thereof, and, if not paid, the patent shall lapse at the
-invention in a foreign country which affords similar
+termination of this three-month period. In calculating
-privileges in the case of applications filed in the
+the amount of a remaining balance, charges for a page
-United States or to citizens of the United States, or in
+or less may be disregarded.
-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
+If any payment required by this section is not
-this right of priority unless a claim is filed in the
+timely made, but is submitted with the fee for delayed
-Patent and Trademark Office, identifying the foreign
+payment and the delay in payment is shown to have
-application by specifying the application number on
+been unavoidable, it may be accepted by the Director
-that foreign application, the intellectual property
+as though no abandonment or lapse had ever occurred.
-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
+(Amended July 24, 1965, Public Law 89-83, sec. 4,
-the applicant to file a timely claim for priority as a
+Stat. 260; Jan. 2, 1975, Public Law 93-601, sec. 3, 88
-waiver of any such claim. The Director may establish
+Stat. 1956; Nov. 29, 1999, Public Law 106-113, sec.
-procedures, including the payment of a surcharge, to
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-accept an unintentionally delayed claim under this
+(a)(10)(A)); Nov. 29, 1999, Public Law 106-113, sec.
-section.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(3) The Director may require a certified copy
+(a)(10)(A)).)
-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
+====35 U.S.C. 152 Issue of patent to assignee.====
-(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
-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
+Patents may be granted to the assignee of the inventor of record in the Patent and Trademark Office, upon
-proceeding in the Patent and Trademark Office unless
+the application made and the specification sworn to
-the fee set forth in subparagraph (A) or (C) of section
+by the inventor, except as otherwise provided in this
-(a)(1) of this title has been paid.
+title.
-(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)
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
+Stat. 1949.)
-through (c) of this section as applications for patents,
+====35 U.S.C. 153 How issued.====
-subject to the same conditions and requirements of
-this section as apply to applications for patents.
-(g) As used in this section—
+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.
-(1) the term “WTO member country” has the
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
-same meaning as the term is defined in section
+Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
-(b)(2) of this title; and
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(2) the term “UPOV Contracting Party”
+(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec.
-means a member of the International Convention for
+, 116 Stat. 1902.)
-the Protection of New Varieties of Plants.
+====35 U.S.C. 154 Contents and term of patent; provisional rights.====
-(Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75
+(a) IN GENERAL.—
-Stat. 748; July 28, 1972, Public Law 92-358, sec. 1, 86 Stat.
-; 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.
-.)
-(Subsection (b) amended Nov. 29, 1999, Public Law
+(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
--113, sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948
+others from making, using, offering for sale, or selling
-sec.4503(a)).)
+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
-(Subsection (e) amended Nov. 29, 1999, Public Law
+from using, offering for sale or selling throughout the
--113, sec. 1000(a)(9), 113 Stat. 1501A-564, 588, 589
+United States, or importing into the United States,
+products made by that process, referring to the specification for the particulars thereof.
-(S. 1948 secs. 4503(b)(2), 4801 and 4802).)
+(2) TERM.—Subject to the payment of fees
-(Subsections (f) and (g) added Nov. 29, 1999, Public
+under this title, such grant shall be for a term beginning on the date on which the patent issues and ending
-Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-589
+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,
+, or 365(c) of this title, from the date on which the
+earliest such application was filed.
+(3) PRIORITY.—Priority under section 119,
+(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.—
-(S. 1948 sec. 4802).)
+(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
+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
+months after the date on which the reply was filed or
+the appeal was taken;
-===35 U.S.C. 120 Benefit of earlier filing date in the United States.===
+(iii) act on an application within
+months after the date of a decision by the Board of
+Patent Appeals and Interferences under section 134 or
+or a decision by a Federal court under section
+, 145, or 146 in a case in which allowable claims
+remain in the application; or
-An application for patent for an invention disclosed
+(iv) issue a patent within 4 months after
-in the manner provided by the first paragraph of section 112 of this title in an application previously filed
+the date on which the issue fee was paid under section
-in the United States, or as provided by section 363 of
+and all outstanding requirements were satisfied,
-this title, which is filed by an inventor or inventors
+the term of the patent shall be extended 1 day for each
-named in the previously filed application shall have
+day after the end of the period specified in clause (i),
-the same effect, as to such invention, as though filed
+(ii), (iii), or (iv), as the case may be, until the action
-on the date of the prior application, if filed before the
+described in such clause is taken.
-patenting or abandonment of or termination of proceedings on the first application or on an application
+(B) GUARANTEE OF NO MORE THAN
-similarly entitled to the benefit of the filing date of the
+-YEAR APPLICATION PENDENCY.— Subject to
-first application and if it contains or is amended to
+the limitations under paragraph (2), if the issue of an
-contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of
+original patent is delayed due to the failure of the
-an earlier filed application under this section unless an
+United States Patent and Trademark Office to issue a
-amendment containing the specific reference to the
+patent within 3 years after the actual filing date of the
-earlier filed application is submitted at such time during the pendency of the application as required by the
+application in the United States, not including—
-Director. The Director may consider the failure to
-submit such an amendment within that time period as
+(i) any time consumed by continued
-a waiver of any benefit under this section. The Director may establish procedures, including the payment
+examination of the application requested by the applicant under section 132(b);
-of a surcharge, to accept an unintentionally delayed
+(ii) any time consumed by a proceeding
-submission of an amendment under this section.
+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.
-(Amended Nov. 14, 1975, Public Law 94-131, sec. 9,
+(C) GUARANTEE OR ADJUSTMENTS
-Stat. 691; Nov. 8, 1984, Public Law 98-622, sec. 104(b),
+FOR DELAYS DUE TO INTERFERENCES,
-Stat. 3385; Nov. 29, 1999, Public Law 106-113, sec.
+SECRECY ORDERS, AND APPEALS.— Subject to
-(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.
+the limitations under paragraph (2), if the issue of an
-(b)(1)).)
+original patent is delayed due to—
+(i) a proceeding under section 135(a);
-===35 U.S.C. 121 Divisional applications.===
+(ii) the imposition of an order under section 181; or
-If two or more independent and distinct inventions
+(iii) appellate review by the Board of
-are claimed in one application, the Director may
+Patent Appeals and Interferences or by a Federal court
-require the application to be restricted to one of the
+in a case in which the patent was issued under a decision in the review reversing an adverse determination
-inventions. If the other invention is made the subject
+of patentability, the term of the patent shall be
-of a divisional application which complies with the
+extended 1 day for each day of the pendency of the
-requirements of section 120 of this title it shall be
+proceeding, order, or review, as the case may 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,
+(2) LIMITATIONS.—
-Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(A)).)
-===35 U.S.C. 122 Confidential status of applications; publication of patent applications.===
+(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.
-(a) CONFIDENTIALITY.— Except as provided in subsection (b), applications for patents shall
+(ii) With respect to adjustments to patent
-be kept in confidence by the Patent and Trademark
+term made under the authority of paragraph (1)(B), an
-Office and no information concerning the same given
+applicant shall be deemed to have failed to engage in
-without authority of the applicant or owner unless
+reasonable efforts to conclude processing or examination of an application for the cumulative total of any
-necessary to carry out the provisions of an Act of
+periods of time in excess of 3 months that are taken to
-Congress or in such special circumstances as may be
+respond to a notice from the Office making any rejection, objection, argument, or other request, measuring
-determined by the Director.
+such 3-month period from the date the notice was
+given or mailed to the applicant.
-(b) PUBLICATION.—
+(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.
-(1) IN GENERAL.—
+(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.
-(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
+(4) APPEAL OF PATENT TERM ADJUSTMENT DETERMINATION.—
-that application is—
+(A) An applicant dissatisfied with a determination made by the Director under paragraph (3)
-(i) no longer pending;
+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
-(ii) subject to a secrecy order under section 181 of this title;
+of the patent. Chapter 7 of title 5 shall apply to such
+action. Any final judgment resulting in a change to the
-(iii) a provisional application filed under
+period of adjustment of the patent term shall be served
-section 111(b) of this title; or
+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.—
-(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
+(1) DETERMINATION.—The term of a
-made under clause (i) at any time.
+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
+, 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
+and chapter 29 (other than those provisions
+excluded by paragraph (2)) of this title.
+(d) PROVISIONAL RIGHTS.—
-(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
+(1) IN GENERAL.— In addition to other
-made under clause (i) or notifies the Director that an
+rights provided by this section, a patent shall include
-application was filed in a foreign country or under a
+the right to obtain a reasonable royalty from any person who, during the period beginning on the date of
-multilateral international agreement specified in
+publication of the application for such patent under
-clause (i), the application shall be published in accordance with the provisions of paragraph (1) on or as
+section 122(b), or in the case of an international application filed under the treaty defined in section 351(a)
-soon as is practical after the date that is specified in
+designating the United States under Article 21(2)(a)
-clause (i).
+of such treaty, the date of publication of the application, and ending on the date the patent is issued—
-(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
+(A) (i) makes, uses, offers for sale, or sells
-Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
+in the United States the invention as claimed in the
-(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.
+published patent application or imports such an invention into the United States; or
-(b)(1)).)
+(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.
-==CHAPTER 12 — EXAMINATION OF APPLICATION==
+(B) COPIES.— The Director may require
+the applicant to provide a copy of the international
+application and a translation thereof.
-Sec.
+(Amended July 24, 1965, Public Law 89-83, sec. 5, 79
-Examination of application.
+Stat. 261; Dec. 12, 1980, Public Law 96-517, sec. 4, 94
-Notice of rejection; reexamination.
+Stat. 3018; Aug. 23, 1988, Public Law 100-418, sec. 9002,
-Time for prosecuting application.
+Stat. 1563; Dec. 8, 1994, Public Law 103-465, sec. 532
-Appeal to the Board of Patent Appeals and
+(a)(1), 108 Stat. 4983; Oct. 11, 1996, Public Law 104-295,
+sec. 20(e)(1), 110 Stat. 3529.)
-Interferences.
+(Subsection (b) amended Nov. 29, 1999, Public Law
-Interferences.
+-113, sec. 1000(a)(9), 113 Stat. 1501A-557 (S. 1948
+sec. 4402(a)).)
-===35 U.S.C. 131 Examination of application.===
+(Subsection (d) added Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-564 (S. 1948 sec.
+).)
-The Director shall cause an examination to be made
+(Subsection (b)(4) amended Nov. 2, 2002, Public Law
-of the application and the alleged new invention; and
+-273, sec. 13206, 116 Stat. 1904; subsection (d)(4)(A)
-if on such examination it appears that the applicant is
+amended Nov. 2, 2002, Public Law 107-273, sec. 13204,
-entitled to a patent under the law, the Director shall
+Stat. 1902.)
-issue a patent therefor.
+====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
+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.
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(Added Jan. 4, 1983, Public Law 97-414, sec. 11(a),
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+Stat. 2065; amended Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 secs.
-(a)(10)(A)).)
+(a)(6) and 4732(a)(10)(A)).)
-U.S.C. 132 Notice of rejection; reexamination.
+====35 U.S.C. 155A Patent term restoration.====
-(a) Whenever, on examination, any claim for a
+(a) Notwithstanding section 154 of this title, the
-patent is rejected, or any objection or requirement
+term of each of the following patents shall be
-made, the Director shall notify the applicant thereof,
+extended in accordance with this section:
-stating the reasons for such rejection, or objection or
+(1) Any patent which encompasses within its
-requirement, together with such information and references as may be useful in judging of the propriety of
+scope a composition of matter which is a new drug
-continuing the prosecution of his application; and if
+product, if during the regulatory review of the product
-after receiving such notice, the applicant persists in
+by the Federal Food and Drug Administration —
-his claim for a patent, with or without amendment, the
+(A) the Federal Food and Drug Administration notified the patentee, by letter dated February
-application shall be reexamined. No amendment shall
+, 1976, that such product’s new drug application
-introduce new matter into the disclosure of the invention.
+was not approvable under section 505(b)(1) of the
-(b) The Director shall prescribe regulations to
+Federal Food, Drug and Cosmetic Act;
-provide for the continued examination of applications
+(B) in 1977 the patentee submitted to the
-for patent at the request of the applicant. The Director
+Federal Food and Drug Administration the results of a
-may establish appropriate fees for such continued
+health effects test to evaluate the carcinogenic potential of such product;
-examination and shall provide a 50 percent reduction
+(C) the Federal Food and Drug Administration approved, by letter dated December 18, 1979,
-in such fees for small entities that qualify for reduced
+the new drug application for such application; and
-fees under section 41(h)(1) of this title.
+(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
+, 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),
+Stat. 832; amended Nov. 29, 1999, Public Law 106-113,
+sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 secs.
+(a)(7) and 4732(a)(10)(A)).)
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+====35 U.S.C. 156 Extension of patent term.====
-(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.===
+(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
-Upon failure of the applicant to prosecute the application within six months after any action therein, of
+the patent, which shall include any patent term adjustment granted under section 154(b) if —
-which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty
+(1) the term of the patent has not expired
-days, as fixed by the Director in such action, the
+before an application is submitted under subsection
-application shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of
+(d)(1) for its extension;
-the Director that such delay was unavoidable.
+(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;
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(B) in the case of a patent which claims a
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+method of manufacturing the product which primarily
-(a)(10)(A)).)
+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
-===35 U.S.C. 134 Appeal to the Board of Patent Appeals and Interferences.===
+(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
-(a) PATENT APPLICANT.— An applicant for
+(4) and (5) is hereinafter in this section referred to as
-a patent, any of whose claims has been twice rejected,
+the “approved product.”
-may appeal from the decision of the primary examiner
+(b) Except as provided in subsection (d)(5)(F),
-to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
+the rights derived from any patent the term of which is
-(b) PATENT OWNER.— A patent owner in
+extended under this section shall during the period
-any reexamination proceeding may appeal from the
+during which the term of the patent is extended —
-final rejection of any claim by the primary examiner
+(1) in the case of a patent which claims a
-to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal.
+product, be limited to any use approved for the product —
-(c) THIRD-PARTY.— A third-party requester
+(A) before the expiration of the term of the
-in an inter partes proceeding may appeal to the Board
+patent —
-of Patent Appeals and Interferences from the final
+(i) under the provision of law under
-decision of the primary examiner favorable to the patentability of any original or proposed amended or new
+which the applicable regulatory review occurred, or
-claim of a patent, having once paid the fee for such
+(ii) under the provision of law under
-appeal.
+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
-(Amended Nov. 8, 1984, Public Law 98-622, sec.
+(B) the product if it has been subject to a
-(b)(1), 98 Stat. 3388; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec.
+regulatory review period described in paragraph (1),
-(b)); subsections (a)-(c) amended Nov. 2, 2002, Public
+(4), or (5) of subsection (g).
-Law 107-273, secs. 13106 and 13202, 116 Stat. 1901.)
-===35 U.S.C. 135 Interferences.===
+As used in this subsection, the term “product” includes an approved product.
-(a) Whenever an application is made for a
+(c) The term of a patent eligible for extension
-patent which, in the opinion of the Director, would
+under subsection (a) shall be extended by the time
-interfere with any pending application, or with any
+equal to the regulatory review period for the approved
-unexpired patent, an interference may be declared and
+product which period occurs after the date the patent
-the Director shall give notice of such declaration to
+is issued, except that—
-the applicants, or applicant and patentee, as the case
+(1) each period of the regulatory review
-may be. The Board of Patent Appeals and Interferences shall determine questions of priority of the
+period shall be reduced by any period determined
-inventions and may determine questions of patentability. Any final decision, if adverse to the claim of an
+under subsection (d)(2)(B) during which the applicant
-applicant, shall constitute the final refusal by the
+for the patent extension did not act with due diligence
-Patent and Trademark Office of the claims involved,
+during such period of the regulatory review period;
-and the Director may issue a patent to the applicant
+(2) after any reduction required by paragraph
-who is adjudged the prior inventor. A final judgment
+(1), the period of extension shall include only one-half
-adverse to a patentee from which no appeal or other
+of the time remaining in the periods described in paragraphs (1)(B)(i), (2)(B)(i), (3)(B)(i), (4)(B)(i), and
-review has been or can be taken or had shall constitute
+(5)(B)(i) of subsection (g);
-cancellation of the claims involved in the patent, and
+(3) if the period remaining in the term of a
-notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by
+patent after the date of the approval of the approved
-the Patent and Trademark Office.
+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 —
-(b)(1)A claim which is the same as, or for the
+(A) the identity of the approved product
-same or substantially the same subject matter as, a
+and the Federal statute under which regulatory review
-claim of an issued patent may not be made in any
+occurred;
-application unless such a claim is made prior to one
+(B) the identity of the patent for which an
-year from the date on which the patent was granted.
+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);
-(2) A claim which is the same as, or for the
+(D) a brief description of the activities
-same or substantially the same subject matter as, a
+undertaken by the applicant during the applicable regulatory review period with respect to the approved
-claim of an application published under section
+product and the significant dates applicable to such
-(b) of this title may be made in an application filed
+activities; and
-after the application is published only if the claim is
+(E) such patent or other information as the
-made before 1 year after the date on which the application is published.
+Director may require.
-(c) Any agreement or understanding between
+(2)(A) Within 60 days of the submittal of an
-parties to an interference, including any collateral
+application for extension of the term of a patent under
-agreements referred to therein, made in connection
+paragraph (1), the Director shall notify —
-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
+(i) the Secretary of Agriculture if the
-their attorneys of record, a reasonable time prior to
+patent claims a drug product or a method of using or
-said termination, of the filing requirement of this section. If the Director gives such notice at a later time,
+manufacturing a drug product and the drug product is
-irrespective of the right to file such agreement or
+subject to the Virus-Serum-Toxin Act, and
-understanding within the six-month period on a showing of good cause, the parties may file such agreement
+(ii) the Secretary of Health and Human
-or understanding within sixty days of the receipt of
+Services if the patent claims any other drug product, a
-such notice.
+medical device, or a food additive or color additive or
+a method of using or manufacturing such a product,
-Any discretionary action of the Director under
+device, or additive and if the product, device, and
-this subsection shall be reviewable under section 10
+additive are subject to the Federal Food, Drug and
-of the Administrative Procedure Act.
+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.
-(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.)
+(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.
-(Subsections (a) and (c) amended, Jan. 2, 1975, Public
+(ii) The Secretary making a determination under clause (i) shall notify the Director of the
-Law 93-596, sec. 1, 88 Stat. 1949.)
+determination and shall publish in the Federal Register a notice of such determination together with the
+factual and legal basis for such determination. Any
-(Subsection (a) amended Nov. 8, 1984, Public Law 98622, sec. 202, 98 Stat. 3386.)
+interested person may request, within the 60-day
+period beginning on the publication of a determination, the Secretary making the determination to hold
-(Subsection (d) added Nov. 8, 1984, Public Law 98622, sec. 105, 98 Stat. 3385.)
+an informal hearing on the determination. If such a
+request is made within such period, such Secretary
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+shall hold such hearing not later than 30 days after the
-(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs.
+date of the request, or at the request of the person
-(11) and 4732(a)(10)(A)).)
+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
+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
-==CHAPTER 13 — REVIEW OF PATENT AND TRADEMARK OFFICE DECISION==
-Sec.
+interim extension during the period beginning 6
-Appeal to Court of Appeals for the Federal Cir
+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;
-cuit.
-Notice of appeal.
-Proceedings on appeal.
-Decision on appeal.
-Civil action to obtain patent.
-Civil action in case of interference.
-===35 U.S.C. 141 Appeal to the Court of Appeals for the Federal Circuit.===
+(iii) information to enable the Director to
+determine under subsection (a)(1), (2), and (3) the eligibility of a patent for extension;
-An applicant dissatisfied with the decision in an
+(iv) a brief description of the activities
-appeal to the Board of Patent Appeals and Interferences under section 134 of this title may appeal the
+undertaken by the applicant during the applicable regulatory review period to date with respect to the product under review and the significant dates applicable
-decision to the United States Court of Appeals for the
+to such activities; and
-Federal Circuit. By filing such an appeal the applicant
+(v) such patent or other information as
-waives his or her right to proceed under section 145 of
+the Director may require.
-this title. A patent owner, or a third-party requester in
+(B) If the Director determines that, except
-an inter partes reexamination proceeding, who is in
+for permission to market or use the product commercially, the patent would be eligible for an extension of
-any reexamination proceeding dissatisfied with the
+the patent term under this section, the Director shall
-final decision in an appeal to the Board of Patent
+publish in the Federal Register a notice of such determination, including the identity of the product under
-Appeals and Interferences under section 134 may
+regulatory review, and shall issue to the applicant a
-appeal the decision only to the United States Court of
+certificate of interim extension for a period of not
-Appeals for the Federal Circuit. A party to an interference dissatisfied with the decision of the Board of
+more than 1 year.
-Patent Appeals and Interferences on the interference
+(C) The owner of record of a patent, or its
-may appeal the decision to the United States Court of
+agent, for which an interim extension has been
-Appeals for the Federal Circuit, but such appeal shall
+granted under subparagraph (B), may apply for not
-be dismissed if any adverse party to such interference,
+more than 4 subsequent interim extensions under this
-within twenty days after the appellant has filed notice
+paragraph, except that, in the case of a patent subject
-of appeal in accordance with section 142 of this title,
+to subsection (g)(6)(C), the owner of record of the
-files notice with the Director that the party elects to
+patent, or its agent, may apply for only 1 subsequent
-have all further proceedings conducted as provided in
+interim extension under this paragraph. Each such
-section 146 of this title. If the appellant does not,
+subsequent application shall be made during the
-within thirty days after filing of such notice by the
+period beginning 60 days before, and ending 30 days
-adverse party, file a civil action under section 146, the
+before, the expiration of the preceding interim extension.
-decision appealed from shall govern the further proceedings in the case.
+(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
-(Amended Apr. 2, 1982, Public Law 97-164, sec.
-(a)(7), (b)(2), 96 Stat. 49, 50; Nov. 8, 1984, Public Law
--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,
+period beginning on the day on which the product
-Public Law 107-273, sec. 13106, 116 Stat. 1901.)
+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—
-===35 U.S.C. 142 Notice of appeal.===
+(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
-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
+(iii) in the case of a patent which claims a
-Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
+method of manufacturing a product, be limited to the
-(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-620,
+method of manufacturing as used to make the product
-sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law 106
+then under regulatory review.
-, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(A)).)
-===35 U.S.C. 143 Proceedings on appeal.===
+(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
-With respect to an appeal described in section 142
+(a) and that the requirements of paragraphs (1)
-of this title, the Director shall transmit to the United
+through (4) of subsection (d) have been complied
-States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the
+with, the Director shall issue to the applicant for the
-Patent and Trademark Office. The court may request
+extension of the term of the patent a certificate of
-that the Director forward the original or certified copies of such documents during the pendency of the
+extension, under seal, for the period prescribed by
-appeal. In an ex parte case or any reexamination case,
+subsection (c). Such certificate shall be recorded in
-the Director shall submit to the court in writing the
+the official file of the patent and shall be considered as
-grounds for the decision of the Patent and Trademark
+part of the original patent.
-Office, addressing all the issues involved in the
+(2) If the term of a patent for which an application has been submitted under subsection (d)(1)
-appeal. The court shall, before hearing an appeal, give
+would expire before a certificate of extension is
-notice of the time and place of the hearing to the
+issued or denied under paragraph (1) respecting the
-Director and the parties in the appeal.
+application, the Director shall extend, until such
+determination is made, the term of the patent for peri-
-(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
-Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
-(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
+ods of up to one year if he determines that the patent
-Circuit shall review the decision from which an
+is eligible for extension.
-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
+(f) For purposes of this section:
-Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
-(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.
-(a)(10)(A)).)
-===35 U.S.C. 145 Civil action to obtain patent.===
+(1) The term “product” means:
-An applicant dissatisfied with the decision of the
+(A) A drug product.
-Board of Patent Appeals and Interferences in an
-appeal under section 134(a) of this title may, unless
+(B) Any medical device, food additive, or
-appeal has been taken to the United States Court of
+color additive subject to regulation under the Federal
-Appeals for the Federal Circuit, have remedy by civil
+Food, Drug, and Cosmetic Act.
-action against the Director in the United States District Court for the District of Columbia if commenced
+(2) The term “drug product” means the active
-within such time after such decision, not less than
+ingredient of—
-sixty days, as the Director appoints. The court may
+(A) a new drug, antibiotic drug, or human
-adjudge that such applicant is entitled to receive a
+biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Public
-patent for his invention, as specified in any of his
+Health Service Act) or
-claims involved in the decision of the Board of Patent
+(B) a new animal drug or veterinary biological product (as those terms are used in the Federal
-Appeals and Interferences, as the facts in the case may
+Food, Drug, and Cosmetic Act and the Virus-Serum-
-appear, and such adjudication shall authorize the
+Toxin Act) which is not primarily manufactured using
-Director to issue such patent on compliance with the
+recombinant DNA, recombinant RNA, hybridoma
-requirements of law. All the expenses of the proceedings shall be paid by the applicant.
+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.
-(Amended Apr. 2, 1982, Public Law 97-164, sec.
-(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.===
+(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
-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
+drug product, a medical device, food additive, or color
-interest as shown by the records of the Patent and
+additive.
-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,
+(8) The term “date of enactment” as used in
-Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
+this section means the date of enactment of the
-(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622,
+Generic Animal Drug and Patent Term Restoration
-sec. 203(c), 98 Stat. 3387; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+Act for an animal drug or a veterinary biological
-(a)(10)(A)).)
+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.
-==CHAPTER 14 — ISSUE OF PATENT==
-Sec.
+(B) The regulatory review period for a new
-Issue of patent.
+drug, antibiotic drug, or human biological product is
-Issue of patent to assignee.
+the sum of —
-How issued.
+(i) the period beginning on the date an
-Contents and term of patent; provisional rights.
+exemption under subsection (i) of section 505 or subsection (d) of section 507 became effective for the
-Patent term extension.
+approved product and ending on the date an application was initially submitted for such drug product
-A Patent term restoration.
+under section 351, 505, or 507, and
-Extension of patent term.
+(ii) the period beginning on the date the
-Statutory invention registration.
+application was initially submitted for the approved
+product under section 351, subsection (b) of section
+, 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.
-===35 U.S.C. 151 Issue of patent.===
+(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
-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
+resolved and commercial marketing was permitted or,
-paid within three months from the sending of a notice
+if commercial marketing was permitted and later
-thereof, and, if not paid, the patent shall lapse at the
+revoked pending further proceedings as a result of
-termination of this three-month period. In calculating
+such objections, ending on the date such proceedings
-the amount of a remaining balance, charges for a page
+were finally resolved and commercial marketing was
-or less may be disregarded.
+permitted.
-If any payment required by this section is not
+(3)(A) In the case of a product which is a
-timely made, but is submitted with the fee for delayed
+medical device, the term means the period described
-payment and the delay in payment is shown to have
+in subparagraph (B) to which the limitation described
-been unavoidable, it may be accepted by the Director
+in paragraph (6) applies.
-as though no abandonment or lapse had ever occurred.
-(Amended July 24, 1965, Public Law 89-83, sec. 4,
+(B) The regulatory review period for a
-Stat. 260; Jan. 2, 1975, Public Law 93-601, sec. 3, 88
+medical device is the sum of —
-Stat. 1956; Nov. 29, 1999, Public Law 106-113, sec.
+(i) the period beginning on the date a
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+clinical investigation on humans involving the device
-(a)(10)(A)); Nov. 29, 1999, Public Law 106-113, sec.
+was begun and ending on the date an application was
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+initially submitted with respect to the device under
-(a)(10)(A)).)
+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
+(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.
-===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
+(B) The regulatory review period for a new
-the application made and the specification sworn to
+animal drug product is the sum of —
-by the inventor, except as otherwise provided in this
+(i) the period beginning on the earlier of
-title.
+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
+and ending on the date such application was
+approved under such section.
-(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
-Stat. 1949.)
-===35 U.S.C. 153 How issued.===
+(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
-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,
+(iii) no clinical investigation described in
-Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
+paragraph (3) was begun or product development protocol described in such paragraph was submitted,
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+before such date for the approved product the period
-(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec.
+of extension determined on the basis of the regulatory
-, 116 Stat. 1902.)
+review period determined under any such paragraph
+may not exceed five years.
-===35 U.S.C. 154 Contents and term of patent; provisional rights.===
+(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
-(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
+those terms are used in the Federal Food, Drug, and
-others from making, using, offering for sale, or selling
+Cosmetic Act or the Virus-Serum-Toxin Act), three
-the invention throughout the United States or importing the invention into the United States, and, if the
+years.
-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
-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,
-, or 365(c) of this title, from the date on which the
-earliest such application was filed.
-(3) PRIORITY.—Priority under section 119,
+(h) The Director may establish such fees as the
-(a), or 365(b) of this title shall not be taken into
+Director determines appropriate to cover the costs to
-account in determining the term of a patent.
+the Office of receiving and acting upon applications
-(4) SPECIFICATION AND DRAWING.—A
+under this section.
-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
+(Added Sept. 24, 1984, Public Law 98-417, sec.
-AND TRADEMARK OFFICE RESPONSES.— Subject to the limitations under paragraph (2), if the issue
+(a), 98 Stat. 1598; amended Nov. 16, 1988, Public Law
-of an original patent is delayed due to the failure of
+-670, sec. 201(a)-(h), 102 Stat. 3984; Dec. 3, 1993,
-the Patent and Trademark Office to—
+Public Law 103-179, secs. 5, 6, 107 Stat. 2040, 2042; Dec.
-(i) provide at least one of the notifications under section 132 of this title or a notice of
+, 1994, Public Law 103-465, sec. 532(c)(1), 108 Stat.
-allowance under section 151 of this title not later than
+.)
-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
-months after the date on which the reply was filed or
-the appeal was taken;
-(iii) act on an application within
+(Subsection (f) amended Nov. 21, 1997, Public Law
-months after the date of a decision by the Board of
+-115, sec. 125(b)(2)(P), 111 Stat. 2326.)
-Patent Appeals and Interferences under section 134 or
-or a decision by a Federal court under section
-, 145, or 146 in a case in which allowable claims
-remain in the application; or
-(iv) issue a patent within 4 months after
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
-the date on which the issue fee was paid under section
+(a)(9), 113 Stat. 1501A-560, 582 (S. 1948 secs. 4404
-and all outstanding requirements were satisfied,
+and 4732(a)(10)(A)).)
-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
--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
+(Subsections (b)(3)(B), (d)(2)(B)(i), and (g)(6)(B)(iii)
-examination of the application requested by the applicant under section 132(b);
+amended Nov. 2, 2002, Public Law 107-273, sec. 13206,
-(ii) any time consumed by a proceeding
+Stat. 1904.)
-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
+U.S.C. 157 Statutory invention registration.
-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
+(a) Notwithstanding any other provision of this
-FOR DELAYS DUE TO INTERFERENCES,
+title, the Director is authorized to publish a statutory
-SECRECY ORDERS, AND APPEALS.— Subject to
+invention registration containing the specification and
-the limitations under paragraph (2), if the issue of an
+drawings of a regularly filed application for a patent
-original patent is delayed due to—
+without examination if the applicant —
-(i) a proceeding under section 135(a);
+(1) meets the requirements of section 112 of
+this title;
-(ii) the imposition of an order under section 181; or
+(2) has complied with the requirements for
+printing, as set forth in regulations of the Director;
-(iii) appellate review by the Board of
+(3) waives the right to receive a patent on the
-Patent Appeals and Interferences or by a Federal court
+invention within such period as may be prescribed by
-in a case in which the patent was issued under a decision in the review reversing an adverse determination
+the Director; and
-of patentability, the term of the patent shall be
+(4) pays application, publication, and other
-extended 1 day for each day of the pendency of the
+processing fees established by the Director.
-proceeding, order, or review, as the case may be.
+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.
-(2) LIMITATIONS.—
-(A) IN GENERAL.— To the extent that
+(b) The waiver under subsection (a)(3) of this
-periods of delay attributable to grounds specified in
+section by an applicant shall take effect upon publication of the statutory invention registration.
-paragraph (1) overlap, the period of any adjustment
+(c) A statutory invention registration published
-granted under this subsection shall not exceed the
+pursuant to this section shall have all of the attributes
-actual number of days the issuance of the patent was
+specified for patents in this title except those specified
-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
+in section 183 and sections 271 through 289 of this
-failure of an applicant to engage in reasonable efforts
+title. A statutory invention registration shall not have
-to conclude processing or examination of an application.
+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.
-(3) PROCEDURES FOR PATENT TERM
+(d) The Director shall report to the Congress
-ADJUSTMENT DETERMINATION.—
+annually on the use of statutory invention registrations. Such report shall include an assessment of the
-(A) The Director shall prescribe regulations establishing procedures for the application for
+degree to which agencies of the federal government
-and determination of patent term adjustments under
+are making use of the statutory invention registration
-this subsection.
+system, the degree to which it aids the management of
-(B) Under the procedures established
+federally developed technology, and an assessment of
-under subparagraph (A), the Director shall—
+the cost savings to the Federal Government of the
-(i) make a determination of the period
+uses of such procedures.
-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.
+(Added Nov. 8, 1984, Public Law 98-622, sec. 102(a),
+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)).)
-(4) APPEAL OF PATENT TERM ADJUSTMENT DETERMINATION.—
+===CHAPTER 15 — PLANT PATENTS===
-(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.—
+Sec.
+Patents for plants.
+Description, claim.
+Grant.
+Assistance of the Department of Agriculture.
-(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
-, 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
-and chapter 29 (other than those provisions
-excluded by paragraph (2)) of this title.
-(d) PROVISIONAL RIGHTS.—
+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.)
+U.S.C. 162 Description, claim.
-(1) IN GENERAL.— In addition to other
+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.
-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 claim in the specification shall be in formal
-the applicant to provide a copy of the international
+terms to the plant shown and described.
-application and a translation thereof.
-(Amended July 24, 1965, Public Law 89-83, sec. 5, 79
+U.S.C. 163 Grant.
-Stat. 261; Dec. 12, 1980, Public Law 96-517, sec. 4, 94
-Stat. 3018; Aug. 23, 1988, Public Law 100-418, sec. 9002,
-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
+In the case of a plant patent, the grant shall include
--113, sec. 1000(a)(9), 113 Stat. 1501A-557 (S. 1948
+the right to exclude others from asexually reproducing
-sec. 4402(a)).)
+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.
-(Subsection (d) added Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-564 (S. 1948 sec.
+(Amended Oct. 27, 1998, Public Law 105-289, sec. 3,
-).)
+Stat. 2781.)
-(Subsection (b)(4) amended Nov. 2, 2002, Public Law
+U.S.C. 164 Assistance of the Department of
--273, sec. 13206, 116 Stat. 1904; subsection (d)(4)(A)
+Agriculture.
-amended Nov. 2, 2002, Public Law 107-273, sec. 13204,
-Stat. 1902.)
-===35 U.S.C. 155 Patent term extension.===
+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.
-Notwithstanding the provisions of section 154, the
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
-term of a patent which encompasses within its scope a
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-composition of matter or a process for using such
+(a)(10)(A)).)
-composition shall be extended if such composition or
-process has been subjected to a regulatory review by
+===CHAPTER 16 — DESIGNS===
-the Federal Food and Drug Administration pursuant
-to the Federal Food, Drug and Cosmetic Act leading
+Sec.
-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
+Patents for designs.
-regulation of approval imposed pursuant to section
+Right of priority.
-of the Federal Food, Drug and Cosmetic Act,
+Term of design patent.
-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),
-Stat. 2065; amended Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 secs.
-(a)(6) and 4732(a)(10)(A)).)
-===35 U.S.C. 155A Patent term restoration.===
+U.S.C. 171 Patents for designs.
-(a) Notwithstanding section 154 of this title, the
+Whoever invents any new, original, and ornamental
-term of each of the following patents shall be
+design for an article of manufacture may obtain a
-extended in accordance with this section:
+patent therefor, subject to the conditions and requirements of this title.
-(1) Any patent which encompasses within its
-scope a composition of matter which is a new drug
+The provisions of this title relating to patents for
-product, if during the regulatory review of the product
+inventions shall apply to patents for designs, except as
-by the Federal Food and Drug Administration —
+otherwise provided.
-(A) the Federal Food and Drug Administration notified the patentee, by letter dated February
-, 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
-, 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),
+U.S.C. 172 Right of priority.
-Stat. 832; amended Nov. 29, 1999, Public Law 106-113,
-sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 secs.
-(a)(7) and 4732(a)(10)(A)).)
-===35 U.S.C. 156 Extension of patent term.===
+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.
-(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
+(Amended Dec. 8, 1994, Public Law 103-465, sec.
-with this section from the original expiration date of
+(c)(2), 108 Stat. 4987.)
-the patent, which shall include any patent term adjustment granted under section 154(b) if —
-(1) the term of the patent has not expired
+U.S.C. 173 Term of design patent.
-before an application is submitted under subsection
-(d)(1) for its extension;
+Patents for designs shall be granted for the term of
-(2) the term of the patent has never been
+fourteen years from the date of grant.
-extended under subsection (e)(1) of this section;
-(3) an application for extension is submitted
+(Amended Aug. 27, 1982, Public Law 97-247, sec. 16,
-by the owner of record of the patent or its agent and in
+Stat. 321; Dec. 8, 1994, Public Law 103-465, sec.
-accordance with the requirements of paragraphs (1)
+(c)(3), 108 Stat. 4987.)
-through (4) of subsection (d);
-(4) the product has been subject to a regulatory review period before its commercial marketing or
+===CHAPTER 17 — SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN FOREIGN COUNTRIES===
-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
+Sec.
-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
+Secrecy of certain inventions and withholding
-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
+of patent.
-regulatory review period described in paragraph (1),
+Abandonment of invention for unauthorized
-(4), or (5) of subsection (g).
+disclosure.
+Right to compensation.
+Filing of application in foreign country.
+Patent barred for filing without license.
+Penalty.
+Nonapplicability to certain persons.
+Rules and regulations, delegation of power.
-As used in this subsection, the term “product” includes an approved product.
+U.S.C. 181 Secrecy of certain inventions and
+withholding of patent.
-(c) The term of a patent eligible for extension
+Whenever publication or disclosure by the publication of an application or by the grant of a patent on an
-under subsection (a) shall be extended by the time
+invention in which the Government has a property
-equal to the regulatory review period for the approved
+interest might, in the opinion of the head of the interested Government agency, be detrimental to the
-product which period occurs after the date the patent
+national security, the Commissioner of Patents upon
-is issued, except that—
+being so notified shall order that the invention be kept
-(1) each period of the regulatory review
+secret and shall withhold the publication of an application or the grant of a patent therefor under the conditions set forth hereinafter.
-period shall be reduced by any period determined
-under subsection (d)(2)(B) during which the applicant
+Whenever the publication or disclosure of an invention by the publication of an application or by the
-for the patent extension did not act with due diligence
+granting of a patent, in which the Government does
-during such period of the regulatory review period;
+not have a property interest, might, in the opinion of
-(2) after any reduction required by paragraph
+the Commissioner of Patents, be detrimental to the
-(1), the period of extension shall include only one-half
+national security, he shall make the application for
-of the time remaining in the periods described in paragraphs (1)(B)(i), (2)(B)(i), (3)(B)(i), (4)(B)(i), and
+patent in which such invention is disclosed available
-(5)(B)(i) of subsection (g);
+for inspection to the Atomic Energy Commission, the
-(3) if the period remaining in the term of a
+Secretary of Defense, and the chief officer of any
-patent after the date of the approval of the approved
+other department or agency of the Government desig-
-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
+nated by the President as a defense agency of the
-undertaken by the applicant during the applicable regulatory review period with respect to the approved
+United States.
-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
+Each individual to whom the application is disclosed shall sign a dated acknowledgment thereof,
-patent claims a drug product or a method of using or
+which acknowledgment shall be entered in the file of
-manufacturing a drug product and the drug product is
+the application. If, in the opinion of the Atomic
-subject to the Virus-Serum-Toxin Act, and
+Energy Commission, the Secretary of a Defense
-(ii) the Secretary of Health and Human
+Department, or the chief officer of another department
-Services if the patent claims any other drug product, a
+or agency so designated, the publication or disclosure
-medical device, or a food additive or color additive or
+of the invention by the publication of an application
-a method of using or manufacturing such a product,
+or by the granting of a patent therefor would be detrimental to the national security, the Atomic Energy
-device, or additive and if the product, device, and
+Commission, the Secretary of a Defense Department,
-additive are subject to the Federal Food, Drug and
+or such other chief officer shall notify the Commissioner of Patents and the Commissioner of Patents
-Cosmetic Act, of the extension application and shall
+shall order that the invention be kept secret and shall
-submit to the Secretary who is so notified a copy of
+withhold the publication of the application or the
-the application. Not later than 30 days after the receipt
+grant of a patent for such period as the national interest requires, and notify the applicant thereof. Upon
-of an application from the Director, the Secretary
+proper showing by the head of the department or
-reviewing the application shall review the dates contained in the application pursuant to paragraph (1)(C)
+agency who caused the secrecy order to be issued that
-and determine the applicable regulatory review
+the examination of the application might jeopardize
-period, shall notify the Director of the determination,
+the national interest, the Commissioner of Patents
-and shall publish in the Federal Register a notice of
+shall thereupon maintain the application in a sealed
-such determination.
+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.
+(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs.
+(7) and 4732(a)(10)(B)).)
+U.S.C. 182 Abandonment of invention for
+unauthorized disclosure.
-(B)(i) If a petition is submitted to the Secretary making the determination under subparagraph
+The invention disclosed in an application for patent
-(A), not later than 180 days after the publication of the
+subject to an order made pursuant to section 181 of
-determination under subparagraph (A), upon which it
+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
-may reasonably be determined that the applicant did
+disclosed or that an application for a patent therefor
-not act with due diligence during the applicable regulatory review period, the Secretary making the determination shall, in accordance with regulations
+has been filed in a foreign country by the inventor, his
-promulgated by the Secretary, determine if the applicant acted with due diligence during the applicable
+successors, assigns, or legal representatives, or anyone in privity with him or them, without the consent
-regulatory review period. The Secretary making the
+of the Commissioner of Patents. The abandonment
-determination shall make such determination not later
+shall be held to have occurred as of the time of violation. The consent of the Commissioner of Patents
-than 90 days after the receipt of such a petition. For a
+shall not be given without the concurrence of the
-drug product, device, or additive subject to the Federal Food, Drug, and Cosmetic Act or the Public
+heads of the departments and the chief officers of the
-Health Service Act, the Secretary may not delegate
+agencies who caused the order to be issued. A holding
-the authority to make the determination prescribed by
+of abandonment shall constitute forfeiture by the
-this clause to an office below the Office of the Commissioner of Food and Drugs. For a product subject to
+applicant, his successors, assigns, or legal representatives, or anyone in privity with him or them, of all
-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
+claims against the United States based upon such
-the Office of the Assistant Secretary for Marketing
+invention.
-and Inspection Services.
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
-(ii) The Secretary making a determination under clause (i) shall notify the Director of the
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-determination and shall publish in the Federal Register a notice of such determination together with the
+(a)(10)(B)).)
-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
-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.
+U.S.C. 183 Right to compensation.
-(5)(A) If the owner of record of the patent or
+An applicant, his successors, assigns, or legal representatives, whose patent is withheld as herein provided, shall have the right, beginning at the date the
-its agent reasonably expects that the applicable regulatory review period described in paragraphs
+applicant is notified that, except for such order, his
-(1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii)
+application is otherwise in condition for allowance, or
-of subsection (g) that began for a product that is the
+February 1, 1952, whichever is later, and ending six
-subject of such patent may extend beyond the expiration of the patent term in effect, the owner or its agent
+years after a patent is issued thereon, to apply to the
-may submit an application to the Director for an
+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
-interim extension during the period beginning 6
+claim, to enter into an agreement with the applicant,
-months, and ending 15 days before such term is due to
+his successors, assigns, or legal representatives, in full
-expire. The application shall contain—
+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,
-(i) the identity of the product subject to
+the head of the department or agency may award and
-regulating review and the Federal statute under which
+pay to such applicant, his successors, assigns, or legal
-such review is occurring;
+representatives, a sum not exceeding 75 per centum of
-(ii) the identity of the patent for which
+the sum which the head of the department or agency
-interim extension is being sought and the identity of
+considers just compensation for the damage and/or
-each claim of such patent which claims the product
+use. A claimant may bring suit against the United
-under regulatory review or a method of using or manufacturing the product;
+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.
+(a)(12), 96 Stat. 48; Oct. 29, 1992, Public Law 102-572,
+sec. 902 (b)(1), 106 Stat. 4516.)
-(iii) information to enable the Director to
+U.S.C. 184 Filing of application in foreign
-determine under subsection (a)(1), (2), and (3) the eligibility of a patent for extension;
+country.
-(iv) a brief description of the activities
+Except when authorized by a license obtained from
-undertaken by the applicant during the applicable regulatory review period to date with respect to the product under review and the significant dates applicable
+the Commissioner of Patents a person shall not file or
-to such activities; and
+cause or authorize to be filed in any foreign country
-(v) such patent or other information as
+prior to six months after filing in the United States an
-the Director may require.
+application for patent or for the registration of a utility
-(B) If the Director determines that, except
+model, industrial design, or model in respect of an
-for permission to market or use the product commercially, the patent would be eligible for an extension of
+invention made in this country. A license shall not be
-the patent term under this section, the Director shall
+granted with respect to an invention subject to an
-publish in the Federal Register a notice of such determination, including the identity of the product under
+order issued by the Commissioner of Patents pursuant
-regulatory review, and shall issue to the applicant a
+to section 181 of this title without the concurrence of
-certificate of interim extension for a period of not
+the head of the departments and the chief officers of
-more than 1 year.
+the agencies who caused the order to be issued.
-(C) The owner of record of a patent, or its
+The license may be granted retroactively where an
-agent, for which an interim extension has been
+application has been filed abroad through error and
-granted under subparagraph (B), may apply for not
+without deceptive intent and the application does not
-more than 4 subsequent interim extensions under this
+disclose an invention within the scope of section 181
-paragraph, except that, in the case of a patent subject
+of this title.
-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
+The term “application” when used in this chapter
+includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.
-period beginning on the day on which the product
+The scope of a license shall permit subsequent
-involved receives permission for commercial marketing or use, except that, if within that 60-day period,
+modifications, amendments, and supplements containing additional subject matter if the application
-the applicant notifies the Director of such permission
+upon which the request for the license is based is not,
-and submits any additional information under paragraph (1) of this subsection not previously contained
+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
-in the application for interim extension, the patent
+the general nature of the invention in a manner which
-shall be further extended, in accordance with the provisions of this section—
+would require such application to be made available
+for inspection under such section 181. In any case in
-(i) for not to exceed 5 years from the
+which a license is not, or was not, required in order to
-date of expiration of the original patent term; or
+file an application in any foreign country, such subsequent modifications, amendments, and supplements
-(ii) if the patent is subject to subsection
+may be made, without a license, to the application
-(g)(6)(C), from the date on which the product
+filed in the foreign country if the United States application was not required to be made available for
-involved receives approval for commercial marketing
+inspection under section 181 and if such modifications, amendments, and supplements do not, or did
-or use.
+not, change the general nature of the invention in a
-(F) The rights derived from any patent the
+manner which would require the United States application to have been made available for inspection
-term of which is extended under this paragraph shall,
+under such section 181.
-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
+(Amended Aug. 23, 1988, Public Law 100-418, sec.
+(b)(1), 102 Stat. 1567; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(B)).)
-(iii) in the case of a patent which claims a
+U.S.C. 185 Patent barred for filing without
-method of manufacturing a product, be limited to the
+license.
-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-
+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
-ods of up to one year if he determines that the patent
+made, or consented to or assisted another’s making,
-is eligible for extension.
+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.
+(b)(2), 102 Stat. 1568; Nov. 2, 2002, Public Law 107273, sec. 13206, 116 Stat. 1904.)
+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
+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.
+(b)(3), 102 Stat. 1568.)
-(f) For purposes of this section:
+U.S.C. 187 Nonapplicability to certain persons.
-(1) The term “product” means:
+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.
-(A) A drug product.
+U.S.C. 188 Rules and regulations, delegation of
+power.
-(B) Any medical device, food additive, or
+The Atomic Energy Commission, the Secretary of a
-color additive subject to regulation under the Federal
+defense department, the chief officer of any other
-Food, Drug, and Cosmetic Act.
+department or agency of the Government designated
-(2) The term “drug product” means the active
+by the President as a defense agency of the United
-ingredient of—
+States, and the Secretary of Commerce, may separately issue rules and regulations to enable the respective department or agency to carry out the provisions
-(A) a new drug, antibiotic drug, or human
+of this chapter, and may delegate any power conferred
-biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Public
+by this chapter.
-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.
+===CHAPTER 18 — PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE===
-(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
+Sec.
+Policy and objective.
+Definitions.
+Disposition of rights.
+March-in rights.
+Preference for United States industry.
+Confidentiality.
+Uniform clauses and regulations.
+Domestic and foreign protection of federally
-drug product, a medical device, food additive, or color
-additive.
-(8) The term “date of enactment” as used in
+owned inventions.
-this section means the date of enactment of the
+Regulations governing Federal licensing.
-Generic Animal Drug and Patent Term Restoration
+Licensing federally owned inventions.
-Act for an animal drug or a veterinary biological
+Precedence of chapter.
-product.
+Relationship to antitrust laws.
-(g) For purposes of this section, the term “regulatory review period” has the following meanings:
+Disposition of rights in educational awards.
-(1)(A)In the case of a product which is a new
-drug, antibiotic drug, or human biological product, the
+U.S.C. 200 Policy and objective.
-term means the period described in subparagraph (B)
-to which the limitation described in paragraph (6)
+It is the policy and objective of the Congress to use
-applies.
+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),
+Stat. 3018; amended Nov. 1, 2000, Public Law 106-404,
+sec. 5, 114 Stat. 1745.)
-(B) The regulatory review period for a new
+U.S.C. 201 Definitions.
-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
-, 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.
+As used in this chapter —
-(B) The regulatory review period for a
+(a) The term “Federal agency” means any executive agency as defined in section 105 of title 5, and
-food or color additive is the sum of —
+the military departments as defined by section 102 of
-(i) the period beginning on the date a
+title 5.
-major health or environmental effects test on the additive was initiated and ending on the date a petition
+(b) The term “funding agreement” means any
-was initially submitted with respect to the product
+contract, grant, or cooperative agreement entered into
-under the Federal Food, Drug, and Cosmetic Act
+between any Federal agency, other than the Tennessee
-requesting the issuance of a regulation for use of the
+Valley Authority, and any contractor for the performance of experimental, developmental, or research
-product, and
+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
-(ii) the period beginning on the date a
+into for the performance of experimental, developmental, or research work under a funding agreement
-petition was initially submitted with respect to the
+as herein defined.
-product under the Federal Food, Drug, and Cosmetic
+(c) The term “contractor” means any person,
-Act requesting the issuance of a regulation for use of
+small business firm, or nonprofit organization that is a
-the product, and ending on the date such regulation
+party to a funding agreement.
-became effective or, if objections were filed to such
+(d) The term “invention” means any invention
-regulation, ending on the date such objections were
+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.
-resolved and commercial marketing was permitted or,
+(f) The term “practical application” means to
-if commercial marketing was permitted and later
+manufacture in the case of a composition or product,
-revoked pending further proceedings as a result of
+to practice in the case of a process or method, or to
-such objections, ending on the date such proceedings
+operate in the case of a machine or system; and, in
-were finally resolved and commercial marketing was
+each case, under such conditions as to establish that
-permitted.
+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
-(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
+regulations of the Administrator of the Small Business Administration.
-medical device is the sum of —
-(i) the period beginning on the date a
+(i) The term “nonprofit organization” means
-clinical investigation on humans involving the device
+universities and other institutions of higher education
-was begun and ending on the date an application was
+or an organization of the type described in section
-initially submitted with respect to the device under
+(c)(3) of the Internal Revenue Code of 1986 (26
-section 515, and
-(ii) the period beginning on the date an
+U.S.C. 501(c)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C.
-application was initially submitted with respect to the
+(a)) or any nonprofit scientific or educational
-device under section 515 and ending on the date such
+organization qualified under a State nonprofit organization statute.
-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
-(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.
+(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
+Stat. 3019.)
-(B) The regulatory review period for a new
+(Subsection (d) amended Nov. 8, 1984, Public Law 98620, sec. 501(1), 98 Stat. 3364.)
-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
-and ending on the date such application was
-approved under such section.
+(Subsection (e) amended Nov. 8, 1984, Public Law 98620, sec. 501(2), 98 Stat. 3364.)
-(5)(A) In the case of a product which is a veterinary biological product, the term means the period
+(Subsection (i) amended Oct. 22, 1986, Public Law 99514, sec. 2, 100 Stat. 2095.)
-described in subparagraph (B) to which the limitation
-described in paragraph (6) applies.
-(B) The regulatory period for a veterinary
+(Subsection (a) amended Nov. 2, 2002, Public Law
-biological product is the sum of —
+-273, sec. 13206, 116 Stat. 1904.)
-(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
+U.S.C. 202 Disposition of rights.
-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
+(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-
-(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
+ject invention are limited to inventions occurring
-before the date of the enactment of this section and if
+under the above two programs of the Department of
-an action described in subparagraph (B) was taken
+Energy. The rights of the nonprofit organization or
-before the date of enactment of this section with
+small business firm shall be subject to the provisions
-respect to the approved product and the commercial
+of paragraph (c) of this section and the other provisions of this chapter.
-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
+(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.
-those terms are used in the Federal Food, Drug, and
+(2) Whenever the Administrator of the Office
-Cosmetic Act or the Virus-Serum-Toxin Act), three
+of Federal Procurement Policy has determined that
-years.
+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
-(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.
+agency, the determination shall be subject to the section 203(b).
-(a), 98 Stat. 1598; amended Nov. 16, 1988, Public Law
--670, sec. 201(a)-(h), 102 Stat. 3984; Dec. 3, 1993,
-Public Law 103-179, secs. 5, 6, 107 Stat. 2040, 2042; Dec.
-, 1994, Public Law 103-465, sec. 532(c)(1), 108 Stat.
-.)
-(Subsection (f) amended Nov. 21, 1997, Public Law
+(c) Each funding agreement with a small business firm or nonprofit organization shall contain
--115, sec. 125(b)(2)(P), 111 Stat. 2326.)
+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
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
-(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,
-Stat. 1904.)
-U.S.C. 157 Statutory invention registration.
+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.
-(a) Notwithstanding any other provision of this
+(5) The right of the Federal agency to require
-title, the Director is authorized to publish a statutory
+periodic reporting on the utilization or efforts at
-invention registration containing the specification and
+obtaining utilization that are being made by the contractor or his licensees or assignees: Provided, That
-drawings of a regularly filed application for a patent
+any such information, as well as any information on
-without examination if the applicant —
+utilization or efforts at obtaining utilization obtained
-(1) meets the requirements of section 112 of
+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
-this title;
+and privileged and confidential and not subject to disclosure under section 552 of title 5.
-(2) has complied with the requirements for
+(6) An obligation on the part of the contractor, in the event a United States patent application is
-printing, as set forth in regulations of the Director;
+filed by or on its behalf or by any assignee of the contractor, to include within the specification of such
-(3) waives the right to receive a patent on the
+application and any patent issuing thereon, a statement specifying that the invention was made with
-invention within such period as may be prescribed by
+Government support and that the Government has certain rights in the invention.
-the Director; and
+(7) In the case of a nonprofit organization,
-(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
+(A) a prohibition upon the assignment of rights to a
-section by an applicant shall take effect upon publication of the statutory invention registration.
+subject invention in the United States without the
-(c) A statutory invention registration published
+approval of the Federal agency, except where such
-pursuant to this section shall have all of the attributes
+assignment is made to an organization which has as
-specified for patents in this title except those specified
+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
-in section 183 and sections 271 through 289 of this
+to inventors, and other expenses incidental to the
-title. A statutory invention registration shall not have
+administration of subject inventions, 100 percent of
-any of the attributes specified for patents in any other
+the balance of any royalties or income earned and
-provision of law other than this title. A statutory
+retained by the contractor during any fiscal year, up to
-invention registration published pursuant to this section shall give appropriate notice to the public, pursuant to regulations which the Director shall issue, of
+an amount equal to 5 percent of the annual budget of
-the preceding provisions of this subsection. The
+the facility, shall be used by the contractor for scientific research, development, and education consistent
-invention with respect to which a statutory invention
+with the research and development mission and objectives of the facility, including activities that increase
-certificate is published is not a patented invention for
+the licensing potential of other inventions of the facility provided that if said balance exceeds 5 percent of
-purposes of section 292 of this title.
+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.
-(d) The Director shall report to the Congress
+(8) The requirements of sections 203 and 204
-annually on the use of statutory invention registrations. Such report shall include an assessment of the
+of this chapter.
-degree to which agencies of the federal government
+(d) If a contractor does not elect to retain title to
-are making use of the statutory invention registration
+a subject invention in cases subject to this section, the
-system, the degree to which it aids the management of
+Federal agency may consider and after consultation
-federally developed technology, and an assessment of
+with the contractor grant requests for retention of
-the cost savings to the Federal Government of the
+rights by the inventor subject to the provisions of this
-uses of such procedures.
+Act and regulations promulgated hereunder.
+(e) In any case when a Federal employee is a
-(Added Nov. 8, 1984, Public Law 98-622, sec. 102(a),
+coinventor of any invention made with a nonprofit
-Stat. 3383; amended Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582, 583 (S. 1948
+organization, a small business firm, or a non-Federal
-secs. 4732(a)(10)(A) and 4732(a)(11)).)
+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.
-CHAPTER 15 — PLANT PATENTS
-Sec.
+(f)(1) No funding agreement with a small business firm or nonprofit organization shall contain a
-Patents for plants.
+provision allowing a Federal agency to require the
-Description, claim.
+licensing to third parties of inventions owned by the
-Grant.
-Assistance of the Department of Agriculture.
-U.S.C. 161 Patents for plants.
+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.
-Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including
+(2) A Federal agency shall not require the
-cultivated sports, mutants, hybrids, and newly found
+licensing of third parties under any such provision
-seedlings, other than a tuber propagated plant or a
+unless the head of the agency determines that the use
-plant found in an uncultivated state, may obtain a
+of the invention by others is necessary for the practice
-patent therefor, subject to the conditions and requirements of this title.
+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.
-The provisions of this title relating to patents for
+(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
-inventions shall apply to patents for plants, except as
+Stat. 3020; subsection (b)(4) added and subsections (a),
-otherwise provided.
+(b)(1), (b)(2), (c)(4), (c)(5), and (c)(7) amended Nov. 8,
+, 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,
+, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
+A-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.
+.)
-(Amended Sept. 3, 1954, 68 Stat. 1190.)
+U.S.C. 203 March-in rights.
-U.S.C. 162 Description, claim.
+(a) With respect to any subject invention in
+which a small business firm or nonprofit organization
-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.
+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.
-The claim in the specification shall be in formal
-terms to the plant shown and described.
-U.S.C. 163 Grant.
+(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
+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.)
-In the case of a plant patent, the grant shall include
+U.S.C. 204 Preference for United States industry.
-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,
+Notwithstanding any other provision of this chapter, no small business firm or nonprofit organization
-Stat. 2781.)
+which receives title to any subject invention and no
+assignee of any such small business firm or nonprofit
-U.S.C. 164 Assistance of the Department of
-Agriculture.
-The President may by Executive order direct the
+organization shall grant to any person the exclusive
-Secretary of Agriculture, in accordance with the
+right to use or sell any subject invention in the United
-requests of the Director, for the purpose of carrying
+States unless such person agrees that any products
-into effect the provisions of this title with respect to
+embodying the subject invention or produced through
-plants (1) to furnish available information of the
+the use of the subject invention will be manufactured
-Department of Agriculture, (2) to conduct through the
+substantially in the United States. However, in individual cases, the requirement for such an agreement
-appropriate bureau or division of the Department
+may be waived by the Federal agency under whose
-research upon special problems, or (3) to detail to the
+funding agreement the invention was made upon a
-Director officers and employees of the Department.
+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.
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+Stat. 3023.)
-(a)(10)(A)).)
-CHAPTER 16 — DESIGNS
+U.S.C. 205 Confidentiality.
-Sec.
+Federal agencies are authorized to withhold from
-Patents for designs.
+disclosure to the public information disclosing any
-Right of priority.
+invention in which the Federal Government owns or
-Term of design patent.
+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),
+Stat. 3023.)
-U.S.C. 171 Patents for designs.
+U.S.C. 206 Uniform clauses and regulations.
-Whoever invents any new, original, and ornamental
+The Secretary of Commerce may issue regulations
-design for an article of manufacture may obtain a
+which may be made applicable to Federal agencies
-patent therefor, subject to the conditions and requirements of this title.
+implementing the provisions of sections 202 through
+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.
-The provisions of this title relating to patents for
+(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
-inventions shall apply to patents for designs, except as
+Stat. 3023; amended Nov. 8, 1984, Public Law 98-620,
-otherwise provided.
+sec. 501(10), 98 Stat. 3367.)
-U.S.C. 172 Right of priority.
+U.S.C. 207 Domestic and foreign protection of
+federally owned inventions.
-The right of priority provided for by subsections (a)
+(a) Each Federal agency is authorized to —
-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.
+(1) apply for, obtain, and maintain patents or
-(c)(2), 108 Stat. 4987.)
+other forms of protection in the United States and in
+foreign countries on inventions in which the Federal
-U.S.C. 173 Term of design patent.
+Government owns a right, title, or interest;
+(2) grant nonexclusive, exclusive, or partially
-Patents for designs shall be granted for the term of
+exclusive licenses under federally owned inventions,
-fourteen years from the date of grant.
+royalty-free or for royalties or other consideration,
+and on such terms and conditions, including the grant
-(Amended Aug. 27, 1982, Public Law 97-247, sec. 16,
+to the licensee of the right of enforcement pursuant to
-Stat. 321; Dec. 8, 1994, Public Law 103-465, sec.
+the provisions of chapter 29 of this title as determined
-(c)(3), 108 Stat. 4987.)
+appropriate in the public interest;
+(3) undertake all other suitable and necessary
-CHAPTER 17 — SECRECY OF CERTAIN
+steps to protect and administer rights to federally
-INVENTIONS AND FILING APPLICATIONS
+owned inventions on behalf of the Federal Government either directly or through contract, including
-IN FOREIGN COUNTRIES
+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
-Sec.
+voluntarily enters into the transaction, to facilitate the
-Secrecy of certain inventions and withholding
+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.
-of patent.
+(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
-Abandonment of invention for unauthorized
+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.)
-disclosure.
-Right to compensation.
-Filing of application in foreign country.
-Patent barred for filing without license.
-Penalty.
-Nonapplicability to certain persons.
-Rules and regulations, delegation of power.
-U.S.C. 181 Secrecy of certain inventions and
+U.S.C. 208 Regulations governing Federal
-withholding of patent.
+licensing.
-Whenever publication or disclosure by the publication of an application or by the grant of a patent on an
+The Secretary of Commerce is authorized to promulgate regulations specifying the terms and conditions upon which any federally owned invention,
-invention in which the Government has a property
+other than inventions owned by the Tennessee Valley
-interest might, in the opinion of the head of the interested Government agency, be detrimental to the
+Authority, may be licensed on a nonexclusive, partially exclusive, or exclusive basis.
-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
+(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
-granting of a patent, in which the Government does
+Stat. 3024; amended Nov. 8, 1984, Public Law 98-620,
-not have a property interest, might, in the opinion of
+sec. 501(12), 98 Stat. 3367.)
-the Commissioner of Patents, be detrimental to the
-national security, he shall make the application for
+U.S.C. 209 Licensing federally owned inventions.
-patent in which such invention is disclosed available
-for inspection to the Atomic Energy Commission, the
+(a) AUTHORITY.—A Federal agency may
-Secretary of Defense, and the chief officer of any
+grant an exclusive or partially exclusive license on a
-other department or agency of the Government desig-
+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.
-nated by the President as a defense agency of the
+(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
+(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
+(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.
-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.
+(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
-(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs.
+Stat. 3024; amended Nov. 1, 2000, Public Law 106-404,
-(7) and 4732(a)(10)(B)).)
+sec. 4, 114 Stat. 1743; subsections (d)(2) and (f) amended
+Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat.
+.)
-U.S.C. 182 Abandonment of invention for
+U.S.C. 210 Precedence of chapter.
-unauthorized disclosure.
+(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
-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.
+U.S.C. 427i(a); 60 Stat. 1085);
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(B)).)
-U.S.C. 183 Right to compensation.
+(2) section 205(a) of the Act of August 14,
+(7 U.S.C. 1624(a); 60 Stat. 1090);
-An applicant, his successors, assigns, or legal representatives, whose patent is withheld as herein provided, shall have the right, beginning at the date the
+(3) section 501(c) of the Federal Mine Safety
-applicant is notified that, except for such order, his
+and Health Act of 1977 (30 U.S.C. 951(c); 83 Stat.
-application is otherwise in condition for allowance, or
+);
-February 1, 1952, whichever is later, and ending six
+(4) section 30168(e) of title 49;
-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,
+(5) section 12 of the National Science Foundation Act of 1950 (42 U.S.C. 1871(a); 82 Stat. 360);
-his successors, assigns, or legal representatives, in full
+(6) section 152 of the Atomic Energy Act of
-settlement for the damage and/or use. This settlement
+(42 U.S.C. 2182; 68 Stat. 943);
-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,
+(7) section 305 of the National Aeronautics
-the head of the department or agency may award and
+and Space Act of 1958 (42 U.S.C. 2457);
-pay to such applicant, his successors, assigns, or legal
+(8) section 6 of the Coal Research Development Act of 1960 (30 U.S.C. 666; 74 Stat. 337);
-representatives, a sum not exceeding 75 per centum of
+(9) section 4 of the Helium Act Amendments
-the sum which the head of the department or agency
+of 1960 (50 U.S.C. 167b; 74 Stat. 920);
-considers just compensation for the damage and/or
+(10) section 32 of the Arms Control and Disarmament Act of 1961 (22 U.S.C. 2572; 75 Stat. 634);
-use. A claimant may bring suit against the United
+(11) section 9 of the Federal Nonnuclear
-States in the United States Court of Federal Claims or
+Energy Research and Development Act of 1974 (42
-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.
-(a)(12), 96 Stat. 48; Oct. 29, 1992, Public Law 102-572,
-sec. 902 (b)(1), 106 Stat. 4516.)
-U.S.C. 184 Filing of application in foreign
+U.S.C. 5908; 88 Stat. 1878);
-country.
-Except when authorized by a license obtained from
+(12) section 5(d) of the Consumer Product
-the Commissioner of Patents a person shall not file or
+Safety Act (15 U.S.C. 2054(d); 86 Stat. 1211);
-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
+(13) section 3 of the Act of April 5, 1944 (30
-includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.
-The scope of a license shall permit subsequent
+U.S.C. 323; 58 Stat. 191);
-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.
+(14) section 8001(c)(3) of the Solid Waste
-(b)(1), 102 Stat. 1567; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+Disposal Act (42 U.S.C. 6981(c); 90 Stat. 2829);
-(a)(10)(B)).)
+(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.
+);
+(17) section 306(d) of the Surface Mining and
+Reclamation Act of 1977 (30 U.S.C. 1226(d); 91 Stat.
+);
+(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.
+).
-U.S.C. 185 Patent barred for filing without
-license.
-Notwithstanding any other provisions of law any
+The Act creating this chapter shall be construed to take precedence over any future Act unless
-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,
+that Act specifically cites this Act and provides that it
-application in a foreign country for a patent or for the
+shall take precedence over this Act.
-registration of a utility model, industrial design, or
-model in respect of the invention. A United States
+(b) Nothing in this chapter is intended to alter
-patent issued to such person, his successors, assigns,
+the effect of the laws cited in paragraph (a) of this section or any other laws with respect to the disposition
-or legal representatives shall be invalid, unless the
+of rights in inventions made in the performance of
-failure to procure such license was through error and
+funding agreements with persons other than nonprofit
-without deceptive intent, and the patent does not disclose subject matter within the scope of section 181 of
+organizations or small business firms.
-this title.
+(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
+(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.
-(Amended Aug. 23, 1988, Public Law 100-418, sec.
-(b)(2), 102 Stat. 1568; Nov. 2, 2002, Public Law 107273, sec. 13206, 116 Stat. 1904.)
-U.S.C. 186 Penalty.
+(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
+Stat. 3026.)
-Whoever, during the period or periods of time an
+(Subsection (c) amended Nov. 8, 1984, Public Law 98620, sec. 501(13), 98 Stat. 3367.)
-invention has been ordered to be kept secret and the
-grant of a patent thereon withheld pursuant to section
-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.
+(Subsection (e) added Oct. 20, 1986, Public Law 99502, sec. 9(c), 100 Stat. 1796.)
-(b)(3), 102 Stat. 1568.)
-U.S.C. 187 Nonapplicability to certain persons.
+(Subsection (a)(4) amended July 5, 1994, Public Law
+-272, sec. 5(j), 108 Stat. 1375.)
-The prohibitions and penalties of this chapter shall
+(Subsection (e) amended Mar. 7, 1996, Public Law
-not apply to any officer or agent of the United States
+-113, sec. 7, 110 Stat. 779.)
-acting within the scope of his authority, nor to any
-person acting upon his written instructions or permission.
-U.S.C. 188 Rules and regulations, delegation of
+(Subsection (a) amended Nov. 13, 1998, Public Law
-power.
+-393, sec. 220(c)(2), 112 Stat. 3625.)
-The Atomic Energy Commission, the Secretary of a
+(Subsections (a)(11), (a)(20), and (c) amended Nov. 2,
-defense department, the chief officer of any other
+, Public Law 107-273, sec. 13206, 116 Stat. 1905.)
-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
+U.S.C. 211 Relationship to antitrust laws.
-INVENTIONS MADE WITH FEDERAL
-ASSISTANCE
+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.
-Sec.
+(Added Dec.12, 1980, Public Law 96-517, sec. 6(a), 94
-Policy and objective.
+Stat. 3027.)
-Definitions.
-Disposition of rights.
-March-in rights.
-Preference for United States industry.
-Confidentiality.
-Uniform clauses and regulations.
-Domestic and foreign protection of federally
+U.S.C. 212 Disposition of rights in educational
+awards.
-owned inventions.
+No scholarship, fellowship, training grant, or other
-Regulations governing Federal licensing.
+funding agreement made by a Federal agency primarily to an awardee for educational purposes will contain any provision giving the Federal agency any
-Licensing federally owned inventions.
+rights to inventions made by the awardee.
-Precedence of chapter.
-Relationship to antitrust laws.
-Disposition of rights in educational awards.
-U.S.C. 200 Policy and objective.
+(Added Nov. 8, 1984, Public Law 98-620, sec.
+(14), 98 Stat. 3368.)
-It is the policy and objective of the Congress to use
+==PART III — PATENTS AND PROTECTION OF PATENT RIGHTS==
-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),
-Stat. 3018; amended Nov. 1, 2000, Public Law 106-404,
-sec. 5, 114 Stat. 1745.)
+===CHAPTER 25 — AMENDMENT AND CORRECTION OF PATENTS===
-U.S.C. 201 Definitions.
-As used in this chapter —
+Sec.
+Reissue of defective patents.
+Effect of reissue.
+Disclaimer.
+Certificate of correction of Patent and Trade
-(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
+mark Office mistake.
+Certificate of correction of applicant’s mistake.
+Correction of named inventor.
-U.S.C. 2401(d)) must also occur during the period of
+U.S.C. 251 Reissue of defective patents.
-contract performance.
-(f) The term “practical application” means to
+Whenever any patent is, through error without any
-manufacture in the case of a composition or product,
+deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification
-to practice in the case of a process or method, or to
+or drawing, or by reason of the patentee claiming
-operate in the case of a machine or system; and, in
+more or less than he had a right to claim in the patent,
-each case, under such conditions as to establish that
+the Director shall, on the surrender of such patent and
-the invention is being utilized and that its benefits are
+the payment of the fee required by law, reissue the
-to the extent permitted by law or Government regulations available to the public on reasonable terms.
+patent for the invention disclosed in the original
-(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.
+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.
-(i) The term “nonprofit organization” means
+The Director may issue several reissued patents for
-universities and other institutions of higher education
+distinct and separate parts of the thing patented, upon
-or an organization of the type described in section
+demand of the applicant, and upon payment of the
-(c)(3) of the Internal Revenue Code of 1986 (26
+required fee for a reissue for each of such reissued
+patents.
-U.S.C. 501(c)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C.
+The provisions of this title relating to applications
-(a)) or any nonprofit scientific or educational
+for patent shall be applicable to applications for reissue of a patent, except that application for reissue may
-organization qualified under a State nonprofit organization statute.
+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.
-(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
+No reissued patent shall be granted enlarging the
-Stat. 3019.)
+scope of the claims of the original patent unless
+applied for within two years from the grant of the
+original patent.
-(Subsection (d) amended Nov. 8, 1984, Public Law 98620, sec. 501(1), 98 Stat. 3364.)
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
-(Subsection (e) amended Nov. 8, 1984, Public Law 98620, sec. 501(2), 98 Stat. 3364.)
+U.S.C. 252 Effect of reissue.
-(Subsection (i) amended Oct. 22, 1986, Public Law 99514, sec. 2, 100 Stat. 2095.)
+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.
-(Subsection (a) amended Nov. 2, 2002, Public Law
+A reissued patent shall not abridge or affect the
--273, sec. 13206, 116 Stat. 1904.)
+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.
-U.S.C. 202 Disposition of rights.
+(Amended Dec. 8, 1994, Public Law 103-465, sec.
+(b)(2), 108 Stat. 4989; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec.
+(8)).)
-(a) Each nonprofit organization or small business firm may, within a reasonable time after disclosure as required by paragraph (c)(1) of this section,
+U.S.C. 253 Disclaimer.
-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-
+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.
-ject invention are limited to inventions occurring
+In like manner any patentee or applicant may disclaim or dedicate to the public the entire term, or any
-under the above two programs of the Department of
+terminal part of the term, of the patent granted or to be
-Energy. The rights of the nonprofit organization or
+granted.
-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
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
-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
+Stat. 1949.)
-(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
+U.S.C. 254 Certificate of correction of Patent
-of Federal Procurement Policy has determined that
+and Trademark Office mistake.
-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
+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-
-obligations of the United States under any treaty,
+sidered as part of the original patent. Every such
-international agreement, arrangement of cooperation,
+patent, together with such certificate, shall have the
-memorandum of understanding, or similar arrangement, including military agreements relating to weapons development and production.
+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,
+Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
-(5) The right of the Federal agency to require
+U.S.C. 255 Certificate of correction of applicant’s mistake.
-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,
+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.
-(A) a prohibition upon the assignment of rights to a
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
-subject invention in the United States without the
+Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
-approval of the Federal agency, except where such
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-assignment is made to an organization which has as
+(a)(10)(A)).)
-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
+U.S.C. 256 Correction of named inventor.
-to inventors, and other expenses incidental to the
+Whenever through error a person is named in an
-administration of subject inventions, 100 percent of
+issued patent as the inventor, or through error an
-the balance of any royalties or income earned and
+inventor is not named in an issued patent and such
-retained by the contractor during any fiscal year, up to
+error arose without any deceptive intention on his
-an amount equal to 5 percent of the annual budget of
+part, the Director may, on application of all the parties
-the facility, shall be used by the contractor for scientific research, development, and education consistent
+and assignees, with proof of the facts and such other
-with the research and development mission and objectives of the facility, including activities that increase
+requirements as may be imposed, issue a certificate
-the licensing potential of other inventions of the facility provided that if said balance exceeds 5 percent of
+correcting such error.
-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
+The error of omitting inventors or naming persons
-of this chapter.
+who are not inventors shall not invalidate the patent in
-(d) If a contractor does not elect to retain title to
+which such error occurred if it can be corrected as
-a subject invention in cases subject to this section, the
+provided in this section. The court before which such
-Federal agency may consider and after consultation
+matter is called in question may order correction of
-with the contractor grant requests for retention of
+the patent on notice and hearing of all parties concerned and the Director shall issue a certificate
-rights by the inventor subject to the provisions of this
+accordingly.
-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.
+(Amended Aug. 27, 1982, Public Law 97-247, sec.
+(b), 96 Stat. 320; Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
-(f)(1) No funding agreement with a small business firm or nonprofit organization shall contain a
+===CHAPTER 26 — OWNERSHIP AND ASSIGNMENT===
-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
+Sec.
-provision has been approved by the head of the
+Ownership; assignment.
-agency and a written justification has been signed by
+Joint owners.
-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),
+U.S.C. 261 Ownership; assignment.
-Stat. 3020; subsection (b)(4) added and subsections (a),
-(b)(1), (b)(2), (c)(4), (c)(5), and (c)(7) amended Nov. 8,
-, 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,
-, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
-A-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.
-.)
-U.S.C. 203 March-in rights.
+Subject to the provisions of this title, patents shall
+have the attributes of personal property.
-(a) With respect to any subject invention in
+Applications for patent, patents, or any interest
-which a small business firm or nonprofit organization
+therein, shall be assignable in law by an instrument in
-has acquired title under this chapter, the Federal
+writing. The applicant, patentee, or his assigns or
-agency under whose funding agreement the subject
+legal representatives may in like manner grant and
-invention was made shall have the right, in accordance with such procedures as are provided in regulations promulgated hereunder, to require the
+convey an exclusive right under his application for
-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
+patent, or patents, to the whole or any specified part of
-responsible applicant or applicants, upon terms that
+the United States.
-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
+A certificate of acknowledgment under the hand
-or assignee has not taken, or is not expected to take
+and official seal of a person authorized to administer
-within a reasonable time, effective steps to achieve
+oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United
-practical application of the subject invention in such
+States or an officer authorized to administer oaths
-field of use;
+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
-(2) action is necessary to alleviate health or
+which, by treaty or convention, accords like effect to
-safety needs which are not reasonably satisfied by the
+apostilles of designated officials in the United States,
-contractor, assignee, or their licensees;
+shall be prima facie evidence of the execution of an
-(3) action is necessary to meet requirements
+assignment, grant, or conveyance of a patent or application for patent.
-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.
+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.
-(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
-Stat. 3022; amended Nov. 8, 1984, Public Law 98-620,
+Stat. 1949; Aug. 27, 1982, Public Law 97-247, sec.
-sec. 501(9), 98 Stat. 3367; Oct. 29, 1992, Public Law 102572, sec. 902(b)(1), 106 Stat. 4516; amended Nov. 2, 2002,
+(b), 96 Stat. 321.)
-Public Law 107-273, sec. 13206, 116 Stat. 1905.)
-U.S.C. 204 Preference for United States industry.
+U.S.C. 262 Joint owners.
-Notwithstanding any other provision of this chapter, no small business firm or nonprofit organization
+In the absence of any agreement to the contrary,
-which receives title to any subject invention and no
+each of the joint owners of a patent may make, use,
-assignee of any such small business firm or nonprofit
+offer to sell, or sell the patented invention within the
+United States, or import the patented invention into
-organization shall grant to any person the exclusive
+the United States, without the consent of and without
-right to use or sell any subject invention in the United
+accounting to the other owners.
-States unless such person agrees that any products
-embodying the subject invention or produced through
+(Amended Dec. 8, 1994, Public Law 103-465, sec.
-the use of the subject invention will be manufactured
+(b)(3), 108 Stat. 4989.)
-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),
+===CHAPTER 27 — GOVERNMENT INTERESTS IN PATENTS===
-Stat. 3023.)
-U.S.C. 205 Confidentiality.
-Federal agencies are authorized to withhold from
+Sec.
-disclosure to the public information disclosing any
+[Repealed.]
-invention in which the Federal Government owns or
+Time for taking action in Government applica
-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),
-Stat. 3023.)
-U.S.C. 206 Uniform clauses and regulations.
+tions.
-The Secretary of Commerce may issue regulations
+U.S.C. 266 [Repealed.]
-which may be made applicable to Federal agencies
-implementing the provisions of sections 202 through
+(Repealed July 24, 1965, Public Law 89-83, sec. 8, 79
-of this chapter and shall establish standard funding agreement provisions required under this chapter.
+Stat. 261.)
-The regulations and the standard funding agreement
-shall be subject to public comment before their issuance.
+U.S.C. 267 Time for taking action in Government applications.
+Notwithstanding the provisions of sections 133 and
+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.
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+(a)(10)(A)).)
+===CHAPTER 28 — INFRINGEMENT OF PATENTS===
+Sec.
+Infringement of patent.
+Temporary presence in the United States.
+Defense to infringement based on earlier inven
-(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
-Stat. 3023; amended Nov. 8, 1984, Public Law 98-620,
-sec. 501(10), 98 Stat. 3367.)
-U.S.C. 207 Domestic and foreign protection of
+tor.
-federally owned inventions.
-(a) Each Federal agency is authorized to —
+U.S.C. 271 Infringement of patent.
-(1) apply for, obtain, and maintain patents or
+(a) Except as otherwise provided in this title,
-other forms of protection in the United States and in
+whoever without authority makes, uses, offers to sell,
-foreign countries on inventions in which the Federal
+or sells any patented invention, within the United
-Government owns a right, title, or interest;
+States, or imports into the United States any patented
-(2) grant nonexclusive, exclusive, or partially
+invention during the term of the patent therefor,
-exclusive licenses under federally owned inventions,
+infringes the patent.
-royalty-free or for royalties or other consideration,
+(b) Whoever actively induces infringement of a
-and on such terms and conditions, including the grant
+patent shall be liable as an infringer.
-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),
+(c) Whoever offers to sell or sells within the
-Stat. 3023; amended Nov. 8, 1984, Public Law 98-620,
+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
-sec. 501(11), 98 Stat. 3367; subsections (a)(2) and (a)(3)
+in practicing a patented process, constituting a material part of the invention, knowing the same to be
-amended Nov. 1, 2000, Public Law 106-404, sec. 6(2), 114
+especially made or especially adapted for use in an
-Stat. 1745.)
+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.
-U.S.C. 208 Regulations governing Federal
+(d) No patent owner otherwise entitled to relief
-licensing.
+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
-The Secretary of Commerce is authorized to promulgate regulations specifying the terms and conditions upon which any federally owned invention,
+his having done one or more of the following: (1)
-other than inventions owned by the Tennessee Valley
+derived revenue from acts which if performed by
-Authority, may be licensed on a nonexclusive, partially exclusive, or exclusive basis.
+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.
-(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
-Stat. 3024; amended Nov. 8, 1984, Public Law 98-620,
-sec. 501(12), 98 Stat. 3367.)
-U.S.C. 209 Licensing federally owned inventions.
+(2) It shall be an act of infringement to submit —
-(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
+(A) an application under section 505(j) of
-STATES.—A Federal agency shall normally grant a
+the Federal Food, Drug, and Cosmetic Act or
-license under section 207(a)(2) to use or sell any federally owned invention in the United States only to a
+described in section 505(b)(2) of such Act for a drug
-licensee who agrees that any products embodying
+claimed in a patent or the use of which is claimed in a
-the invention or produced through the use of the
+patent, or
-invention will be manufactured substantially in the
+(B) an application under section 512 of
-United States.
+such Act or under the Act of March 4, 1913 (21
-(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
+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.
-requirements are not reasonably satisfied by the licensee; or
+(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.
-(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
-(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
-(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.
+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.
-(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
+(5) Where a person has filed an application
-Stat. 3024; amended Nov. 1, 2000, Public Law 106-404,
+described in paragraph (2) that includes a certification
-sec. 4, 114 Stat. 1743; subsections (d)(2) and (f) amended
+under subsection (b)(2)(A)(iv) or (j)(2)(A)(vii)(IV) of
-Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat.
+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.
-U.S.C. 210 Precedence of chapter.
-(a) This chapter shall take precedence over any
+(2) Whoever without authority supplies or
-other Act which would require a disposition of rights
+causes to be supplied in or from the United States any
-in subject inventions of small business firms or nonprofit organizations contractors in a manner that is
+component of a patented invention that is especially
-inconsistent with this chapter, including but not necessarily limited to the following:
+made or especially adapted for use in the invention
-(1) section 10(a) of the Act of June 29, 1935,
+and not a staple article or commodity of commerce
-as added by title I of the Act of August 14, 1946 (7
+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
-U.S.C. 427i(a); 60 Stat. 1085);
-(2) section 205(a) of the Act of August 14,
+patent, no remedy may be granted for infringement on
-(7 U.S.C. 1624(a); 60 Stat. 1090);
+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 —
-(3) section 501(c) of the Federal Mine Safety
+(1) it is materially changed by subsequent
-and Health Act of 1977 (30 U.S.C. 951(c); 83 Stat.
+processes; or
-);
+(2) it becomes a trivial and nonessential component of another product.
-(4) section 30168(e) of title 49;
+(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.
-(5) section 12 of the National Science Foundation Act of 1950 (42 U.S.C. 1871(a); 82 Stat. 360);
+(Subsection (e) added Sept. 24, 1984, Public Law 98417, sec. 202, 98 Stat. 1603.)
-(6) section 152 of the Atomic Energy Act of
-(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
+(Subsection (f) added Nov. 8, 1984, Public Law 98622, sec. 101(a), 98 Stat. 3383.)
-U.S.C. 5908; 88 Stat. 1878);
+(Subsection (g) added Aug. 23, 1988, Public Law 100418, sec. 9003, 102 Stat. 1564.)
-(12) section 5(d) of the Consumer Product
+(Subsection (e) amended Nov. 16, 1988, Public Law
-Safety Act (15 U.S.C. 2054(d); 86 Stat. 1211);
+-670, sec. 201(i), 102 Stat. 3988.)
-(13) section 3 of the Act of April 5, 1944 (30
+(Subsection (d) amended Nov. 19, 1988, Public Law
+-703, sec. 201, 102 Stat. 4676.)
-U.S.C. 323; 58 Stat. 191);
+(Subsection (h) added Oct. 28, 1992, Public Law 102560, sec. 2(a)(1), 106 Stat. 4230.)
-(14) section 8001(c)(3) of the Solid Waste
+(Subsections (a), (c), (e), and (g) amended Dec. 8,
-Disposal Act (42 U.S.C. 6981(c); 90 Stat. 2829);
+, Public Law 103-465, sec. 533(a), 108 Stat. 4988.)
-(15) section 219 of the Foreign Assistance Act
-of 1961 (22 U.S.C. 2179; 83 Stat. 806);
+(Subsection (i) added Dec. 8, 1994, Public Law 103465, sec. 533(a), 108 Stat. 4988.)
-(16) section 427(b) of the Federal Mine Health
-and Safety Act of 1977 (30 U.S.C. 937(b); 86 Stat.
+(Subsection (e)(5) added Dec. 8, 2003, Public Law
-);
+-173, sec. 1101(d), 117 Stat. 2457.)
-(17) section 306(d) of the Surface Mining and
-Reclamation Act of 1977 (30 U.S.C. 1226(d); 91 Stat.
-);
-(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.
-).
+U.S.C. 272 Temporary presence in the United
+States.
-The Act creating this chapter shall be construed to take precedence over any future Act unless
+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.
+(b)(4), 108 Stat. 4989.)
-that Act specifically cites this Act and provides that it
+U.S.C. 273 Defense to infringement based on
-shall take precedence over this Act.
+earlier inventor.
-(b) Nothing in this chapter is intended to alter
+(a) DEFINITIONS.— For purposes of this section—
-the effect of the laws cited in paragraph (a) of this section or any other laws with respect to the disposition
+(1) the terms “commercially used” and
-of rights in inventions made in the performance of
+“commercial use” mean use of a method in the United
-funding agreements with persons other than nonprofit
+States, so long as such use is in connection with an
-organizations or small business firms.
+internal commercial use or an actual arm’s-length sale
-(c) Nothing in this chapter is intended to limit
+or other arm’s-length commercial transfer of a useful
-the authority of agencies to agree to the disposition of
+end result, whether or not the subject matter at issue is
-rights in inventions made in the performance of work
+accessible to or otherwise known to the public, except
-under funding agreements with persons other than
+that the subject matter for which commercial marketing or use is subject to a premarketing regulatory
-nonprofit organizations or small business firms in
+review period during which the safety or efficacy of
-accordance with the Statement of Government Patent
+the subject matter is established, including any period
-Policy issued on February 18, 1983, agency regulations, or other applicable regulations or to otherwise
+specified in section 156(g), shall be deemed “commercially used” and in “commercial use” during such
-limit the authority of agencies to allow such persons
+regulatory review period;
-to retain ownership of inventions, except that all funding agreements, including those with other than small
+(2) in the case of activities performed by a
-business firms and nonprofit organizations, shall
+nonprofit research laboratory, or nonprofit entity such
-include the requirements established in section
+as a university, research center, or hospital, a use for
-(c)(4) and section 203 of this title. Any disposition
+which the public is the intended beneficiary shall be
-of rights in inventions made in accordance with the
+considered to be a use described in paragraph (1),
-Statement or implementing regulations, including any
+except that the use—
-disposition occurring before enactment of this section,
+(A) may be asserted as a defense under this
-are hereby authorized.
+section only for continued use by and in the laboratory or nonprofit entity; and
-(d) Nothing in this chapter shall be construed to
+(B) may not be asserted as a defense with
-require the disclosure of intelligence sources or methods or to otherwise affect the authority granted to the
+respect to any subsequent commercialization or use
-Director of Central Intelligence by statute or Executive order for the protection of intelligence sources or
+outside such laboratory or nonprofit entity;
-methods.
+(3) the term “method” means a method of
-(e) The provisions of the Stevenson-Wydler
+doing or conducting business; and
-Technology Innovation Act of 1980 shall take precedence over the provisions of this chapter to the extent
+(4) the “effective filing date” of a patent is
-that they permit or require a disposition of rights in
+the earlier of the actual filing date of the application
-subject inventions which is inconsistent with this
-chapter.
-(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a),
-Stat. 3026.)
-(Subsection (c) amended Nov. 8, 1984, Public Law 98620, sec. 501(13), 98 Stat. 3367.)
+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
+, 120, or 365 of this title.
-(Subsection (e) added Oct. 20, 1986, Public Law 99502, sec. 9(c), 100 Stat. 1796.)
+(b) DEFENSE TO INFRINGEMENT.—
-(Subsection (a)(4) amended July 5, 1994, Public Law
+(1) IN GENERAL.— It shall be a defense to
--272, sec. 5(j), 108 Stat. 1375.)
+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
-(Subsection (e) amended Mar. 7, 1996, Public Law
--113, sec. 7, 110 Stat. 779.)
-(Subsection (a) amended Nov. 13, 1998, Public Law
+burden of establishing the defense by clear and convincing evidence.
--393, sec. 220(c)(2), 112 Stat. 3625.)
-(Subsections (a)(11), (a)(20), and (c) amended Nov. 2,
+(5) ABANDONMENT OF USE.— A person
-, Public Law 107-273, sec. 13206, 116 Stat. 1905.)
+who has abandoned commercial use of subject matter
+may not rely on activities performed before the date
-U.S.C. 211 Relationship to antitrust laws.
+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.
-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
+ (Added Nov. 29, 1999, Public Law 106-113, sec.
-Stat. 3027.)
+(a)(9), 113 Stat. 1501A-555 (S. 1948 sec. 4302).)
-U.S.C. 212 Disposition of rights in educational
+===CHAPTER 29 — REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS===
-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.
+Sec.
-(14), 98 Stat. 3368.)
+Remedy for infringement of patent.
+Presumption of validity; defenses.
+Injunction.
-PART III — PATENTS AND
-PROTECTION OF PATENT RIGHTS
-CHAPTER 25 — AMENDMENT AND
+Damages.
-CORRECTION OF PATENTS
+Attorney fees.
+Time limitation on damages.
+Limitation on damages and other remedies;
-Sec.
-Reissue of defective patents.
-Effect of reissue.
-Disclaimer.
-Certificate of correction of Patent and Trade
+marking and notice.
+Action for infringement of a patent containing
+an invalid claim.
+Additional remedy for infringement of design
-mark Office mistake.
+patent.
-Certificate of correction of applicant’s mistake.
+Notice of patent suits.
-Correction of named inventor.
+Interfering patents.
+False marking.
+Nonresident patentee; service and notice.
+Voluntary arbitration.
+Presumptions: Product made by patented pro
-U.S.C. 251 Reissue of defective patents.
+cess.
+Liability of States, instrumentalities of States,
-Whenever any patent is, through error without any
+and State officials for infringement of patents.
-deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification
+Improper and deceptive invention promotion
-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
+====35 U.S.C. 281 Remedy for infringement of patent.====
-patent, and in accordance with a new and amended
+A patentee shall have remedy by civil action for
-application, for the unexpired part of the term of the
+infringement of his patent.
-original patent. No new matter shall be introduced
-into the application for reissue.
-The Director may issue several reissued patents for
+====35 U.S.C. 282 Presumption of validity; defenses.====
-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
+A patent shall be presumed valid. Each claim of a
-for patent shall be applicable to applications for reissue of a patent, except that application for reissue may
+patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or
-be made and sworn to by the assignee of the entire
+multiple dependent claims shall be presumed valid
-interest if the application does not seek to enlarge the
+even though dependent upon an invalid claim. Notwithstanding the preceding sentence, if a claim to a
-scope of the claims of the original patent.
+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
+(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:
-No reissued patent shall be granted enlarging the
+(1) Noninfringement, absence of liability for
-scope of the claims of the original patent unless
+infringement, or unenforceability,
-applied for within two years from the grant of the
+(2) Invalidity of the patent or any claim in suit
-original patent.
+on any ground specified in part II of this title as a condition for patentability,
-(Amended Nov. 29, 1999, Public Law 106-113, sec.
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(A)).)
-U.S.C. 252 Effect of reissue.
+(3) Invalidity of the patent or any claim in suit
+for failure to comply with any requirement of sections
+or 251 of this title,
+(4) Any other fact or act made a defense by this
+title.
-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
+In actions involving the validity or infringement of
-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
+a patent the party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in
-States, or imported into the United States, anything
+writing to the adverse party at least thirty days before
-patented by the reissued patent, to continue the use of,
+the trial, of the country, number, date, and name of the
-to offer to sell, or to sell to others to be used, offered
+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
-for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported unless the
+United States Court of Federal Claims, as showing the
-making, using, offering for sale, or selling of such
+state of the art, and the name and address of any person who may be relied upon as the prior inventor or as
-thing infringes a valid claim of the reissued patent
+having prior knowledge of or as having previously
-which was in the original patent. The court before
+used or offered for sale the invention of the patent in
-which such matter is in question may provide for the
+suit. In the absence of such notice proof of the said
-continued manufacture, use, offer for sale, or sale of
+matters may not be made at the trial except on such
-the thing made, purchased, offered for sale, used, or
+terms as the court requires.
-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.
+Invalidity of the extension of a patent term or any
-(b)(2), 108 Stat. 4989; Nov. 29, 1999, Public Law 106113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec.
+portion thereof under section 154(b) or 156 of this
-(8)).)
+title because of the material failure—
-U.S.C. 253 Disclaimer.
+(1) by the applicant for the extension, or
-Whenever, without any deceptive intention, a claim
+(2) by the Director, to comply with the requirements of such section shall be a defense in any action
-of a patent is invalid the remaining claims shall not
+involving the infringement of a patent during the
-thereby be rendered invalid. A patentee, whether of
+period of the extension of its term and shall be
-the whole or any sectional interest therein, may, on
+pleaded. A due diligence determination under section
-payment of the fee required by law, make disclaimer
+(d)(2) is not subject to review in such an action.
-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
+(Amended July 24, 1965, Public Law 89-83, sec. 10,
-terminal part of the term, of the patent granted or to be
+Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 10,
-granted.
+Stat. 692; Apr. 2, 1982, Public Law 97-164, sec. 161(7),
+Stat. 49; Sept. 24, 1984, Public Law 98-417, sec. 203,
+Stat. 1603; Oct. 29, 1992, Public Law 102-572, sec.
+(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)).)
-(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
+====35 U.S.C. 283 Injunction.====
-Stat. 1949.)
-U.S.C. 254 Certificate of correction of Patent
+The several courts having jurisdiction of cases
-and Trademark Office mistake.
+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.
-Whenever a mistake in a patent, incurred through
+====35 U.S.C. 284 Damages.====
-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-
+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.
-sidered as part of the original patent. Every such
+When the damages are not found by a jury, the
-patent, together with such certificate, shall have the
+court shall assess them. In either event the court may
-same effect and operation in law on the trial of actions
+increase the damages up to three times the amount
-for causes thereafter arising as if the same had been
+found or assessed. Increased damages under this paragraph shall not apply to provisional rights under section 154(d) of this title.
-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,
+The court may receive expert testimony as an aid to
-Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
+the determination of damages or of what royalty
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+would be reasonable under the circumstances.
-(a)(10)(A)).)
-U.S.C. 255 Certificate of correction of applicant’s mistake.
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(9)).)
-Whenever a mistake of a clerical or typographical
+U.S.C. 285 Attorney fees.
-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,
+The court in exceptional cases may award reasonable attorney fees to the prevailing party.
-Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(A)).)
-U.S.C. 256 Correction of named inventor.
+====35 U.S.C. 286 Time limitation on damages.====
-Whenever through error a person is named in an
+Except as otherwise provided by law, no recovery
-issued patent as the inventor, or through error an
+shall be had for any infringement committed more
-inventor is not named in an issued patent and such
+than six years prior to the filing of the complaint or
-error arose without any deceptive intention on his
+counterclaim for infringement in the action.
-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
+In the case of claims against the United States Government for use of a patented invention, the period
-who are not inventors shall not invalidate the patent in
+before bringing suit, up to six years, between the date
-which such error occurred if it can be corrected as
+of receipt of a written claim for compensation by the
-provided in this section. The court before which such
+department or agency of the Government having
-matter is called in question may order correction of
+authority to settle such claim, and the date of mailing
-the patent on notice and hearing of all parties concerned and the Director shall issue a certificate
+by the Government of a notice to the claimant that his
-accordingly.
+claim has been denied shall not be counted as a part of
+the period referred to in the preceding paragraph.
-(Amended Aug. 27, 1982, Public Law 97-247, sec.
+====35 U.S.C. 287 Limitation on damages and other remedies; marking and notice.====
-(b), 96 Stat. 320; Nov. 29, 1999, Public Law 106-113, sec.
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(A)).)
-CHAPTER 26 — OWNERSHIP AND
+(a) Patentees, and persons making, offering for
-ASSIGNMENT
+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
+of the Process Patent Amendments Act of 1988.
+The modifications of remedies provided in this subsection shall not be available to any person who —
-Sec.
+(A) practiced the patented process;
-Ownership; assignment.
-Joint owners.
-U.S.C. 261 Ownership; assignment.
+(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—
-Subject to the provisions of this title, patents shall
-have the attributes of personal property.
-Applications for patent, patents, or any interest
+(i) the good faith demonstrated by the
-therein, shall be assignable in law by an instrument in
+defendant with respect to a request for disclosure;
-writing. The applicant, patentee, or his assigns or
+(ii) the good faith demonstrated by the
-legal representatives may in like manner grant and
+plaintiff with respect to a request for disclosure, 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
+(iii) the need to restore the exclusive
-as against any subsequent purchaser or mortgagee for
+rights secured by the patent.
-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,
+(B) For purposes of subparagraph (A), the
-Stat. 1949; Aug. 27, 1982, Public Law 97-247, sec.
+following are evidence of good faith:
-(b), 96 Stat. 321.)
+(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
-U.S.C. 262 Joint owners.
-In the absence of any agreement to the contrary,
+(iii) the submission of the response by
-each of the joint owners of a patent may make, use,
+the defendant to the manufacturer, or if the manufacturer is not known, to the supplier, of the product to be
-offer to sell, or sell the patented invention within the
+purchased by the defendant, together with a request
-United States, or import the patented invention into
+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.
-the United States, without the consent of and without
+(4)(A) For purposes of this subsection, a
-accounting to the other owners.
+“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 —
-(Amended Dec. 8, 1994, Public Law 103-465, sec.
+(i) which is made by a person regularly
-(b)(3), 108 Stat. 4989.)
+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
-CHAPTER 27 — GOVERNMENT
-INTERESTS IN PATENTS
+(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.
-Sec.
+(B) In the case of a request for disclosure
-[Repealed.]
+received by a person to whom a patent is licensed, that
-Time for taking action in Government applica
+person shall either identify the patent or promptly
+notify the licensor of the request for disclosure.
-tions.
+(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.
-U.S.C. 266 [Repealed.]
+(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.
-(Repealed July 24, 1965, Public Law 89-83, sec. 8, 79
+(6) A person who receives a response to a
-Stat. 261.)
+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.
-U.S.C. 267 Time for taking action in Government applications.
+(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.
-Notwithstanding the provisions of sections 133 and
+(2) For the purposes of this subsection:
-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.
+(A) the term “medical activity” means the
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
+performance of a medical or surgical procedure on a
-(a)(10)(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.
-CHAPTER 28 — INFRINGEMENT OF
-PATENTS
+(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,
+.
-Sec.
+(Amended Aug. 23, 1988, Public Law 100-418, sec.
-Infringement of patent.
+(a), 102 Stat. 1564; Dec. 8, 1994, Public Law 103-465,
-Temporary presence in the United States.
+sec. 533(b)(5), 108 Stat. 4989.)
-Defense to infringement based on earlier inven
-tor.
+(Subsection (c) added Sept. 30, 1996, Public Law 104208, sec. 616, 110 Stat. 3009-67.)
-U.S.C. 271 Infringement of patent.
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
+(a)(9), 113 Stat. 1501A-589 (S. 1948 sec. 4803).)
-(a) Except as otherwise provided in this title,
+====35 U.S.C. 288 Action for infringement of a patent containing an invalid claim.====
-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.
+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-
-(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.
+claimer of the invalid claim has been entered at the
+Patent and Trademark Office before the commencement of the suit.
-(2) It shall be an act of infringement to submit —
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
+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.
-(A) an application under section 505(j) of
+Nothing in this section shall prevent, lessen, or
-the Federal Food, Drug, and Cosmetic Act or
+impeach any other remedy which an owner of an
-described in section 505(b)(2) of such Act for a drug
+infringed patent has under the provisions of this title,
-claimed in a patent or the use of which is claimed in a
+but he shall not twice recover the profit made from the
-patent, or
+infringement.
-(B) an application under section 512 of
-such Act or under the Act of March 4, 1913 (21
+====35 U.S.C. 290 Notice of patent suits.====
-U.S.C. 151 - 158) for a drug or veterinary biological
+The clerks of the courts of the United States, within
-product which is not primarily manufactured using
+one month after the filing of an action under this title,
-recombinant DNA, recombinant RNA, hybridoma
+shall give notice thereof in writing to the Director, setting forth so far as known the names and addresses of
-technology, or other processes involving site specific
+the parties, name of the inventor, and the designating
-genetic manipulation techniques and which is claimed
+number of the patent upon which the action has been
-in a patent or the use of which is claimed in a patent, if
+brought. If any other patent is subsequently included
-the purpose of such submission is to obtain approval
+in the action he shall give like notice thereof. Within
-under such Act to engage in the commercial manufacture, use, or sale of a drug or veterinary biological
+one month after the decision is rendered or a judgment issued the clerk of the court shall give notice
-product claimed in a patent or the use of which is
+thereof to the Director. The Director shall, on receipt
-claimed in a patent before the expiration of such
+of such notices, enter the same in the file of such
 patent.
-(3) In any action for patent infringement
+(Amended Nov. 29, 1999, Public Law 106-113, sec.
-brought under this section, no injunctive or other
+(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-relief may be granted which would prohibit the making, using, offering to sell, or selling within the United
+(a)(10)(A)).)
-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.
+====35 U.S.C. 291 Interfering patents.====
-The remedies prescribed by subparagraphs
+The owner of an interfering patent may have relief
-(A), (B), and (C) are the only remedies which may be
+against the owner of another by civil action, and the
-granted by a court for an act of infringement
+court may adjudge the question of validity of any of
-described in paragraph (2), except that a court may
+the interfering patents, in whole or in part. The provisions of the second paragraph of section 146 of this
-award attorney fees under section 285.
+title shall apply to actions brought under this section.
+====35 U.S.C. 292 False marking.====
-(5) Where a person has filed an application
+(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in
-described in paragraph (2) that includes a certification
+connection with anything made, used, offered for sale,
-under subsection (b)(2)(A)(iv) or (j)(2)(A)(vii)(IV) of
+or sold by same person within the United States, or
-section 505 of the Federal Food, Drug, and Cosmetic
+imported by the person into the United States, the
-Act (21 U.S.C. 355), and neither the owner of the
+name or any imitation of the name of the patentee, the
-patent that is the subject of the certification nor the
+patent number, or the words “patent,” “patentee,” or
-holder of the approved application under subsection
+the like, with the intent of counterfeiting or imitating
-(b) of such section for the drug that is claimed by the
+the mark of the patentee, or of deceiving the public
-patent or a use of which is claimed by the patent
+and inducing them to believe that the thing was made,
-brought an action for infringement of such patent
+offered for sale, sold, or imported into the United
-before the expiration of 45 days after the date on
+States by or with the consent of the patentee; or
-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.
+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
-(2) Whoever without authority supplies or
+Whoever marks upon, or affixes to, or uses in
-causes to be supplied in or from the United States any
+advertising in connection with any article the words
-component of a patented invention that is especially
+“patent applied for,” “patent pending,” or any word
-made or especially adapted for use in the invention
+importing that an application for patent has been
-and not a staple article or commodity of commerce
+made, when no application for patent has been made,
-suitable for substantial noninfringing use, where such
+or if made, is not pending, for the purpose of deceiving the public —
-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
+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.
-patent, no remedy may be granted for infringement on
+(Subsection (a) amended Dec. 8, 1994, Public Law
-account of the noncommercial use or retail sale of a
+-465, sec. 533(b)(6), 108 Stat. 4990.)
-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
+====35 U.S.C. 293 Nonresident patentee; service and notice.====
-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.
+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.
-(Subsection (e) added Sept. 24, 1984, Public Law 98417, sec. 202, 98 Stat. 1603.)
+(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
+Stat. 1949.)
-(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
+====35 U.S.C. 294 Voluntary arbitration.====
--670, sec. 201(i), 102 Stat. 3988.)
-(Subsection (d) amended Nov. 19, 1988, Public Law
+(a) A contract involving a patent or any right
--703, sec. 201, 102 Stat. 4676.)
+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
+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
-(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,
+not filed with the Director, any party to the proceeding
-, Public Law 103-465, sec. 533(a), 108 Stat. 4988.)
+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.
+(b)(1), 96 Stat. 322; amended Nov. 29, 1999, Public Law
+-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
+sec. 4732(a)(10)(A)); subsections (b) and (c) amended Nov.
+, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905.)
-(Subsection (i) added Dec. 8, 1994, Public Law 103465, sec. 533(a), 108 Stat. 4988.)
+====35 U.S.C. 295 Presumption: Product made by patented process.====
-(Subsection (e)(5) added Dec. 8, 2003, Public Law
+In actions alleging infringement of a process patent
--173, sec. 1101(d), 117 Stat. 2457.)
+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—
-U.S.C. 272 Temporary presence in the United
+(1) that a substantial likelihood exists that the
-States.
+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.
-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.
+(Added Aug. 23, 1988, Public Law 100-418, sec.
-(b)(4), 108 Stat. 4989.)
+(a), 102 Stat. 1566; amended Dec. 8, 1994, Public Law
+-465, sec. 533(b)(7), 108 Stat. 4990.)
-U.S.C. 273 Defense to infringement based on
+====35 U.S.C. 296 Liability of States, instrumentalities of States, and State officials for infringement of patents.====
-earlier inventor.
-(a) DEFINITIONS.— For purposes of this section—
+(a) IN GENERAL. - Any State, any instrumentality of a State, and any officer or employee of a State
-(1) the terms “commercially used” and
+or instrumentality of a State, acting in his official
-“commercial use” mean use of a method in the United
+capacity, shall not be immune, under the eleventh
-States, so long as such use is in connection with an
+amendment of the Constitution of the United States or
-internal commercial use or an actual arm’s-length sale
+under any other doctrine of sovereign immunity, from
-or other arm’s-length commercial transfer of a useful
+suit in Federal court by any person, including any
-end result, whether or not the subject matter at issue is
+governmental or nongovernmental entity, for infringement of a patent under section 271, or for any other
-accessible to or otherwise known to the public, except
+violation under this title.
-that the subject matter for which commercial marketing or use is subject to a premarketing regulatory
+(b) REMEDIES. - In a suit described in subsection (a) for a violation described in that subsection,
-review period during which the safety or efficacy of
+remedies (including remedies both at law and in
-the subject matter is established, including any period
+equity) are available for the violation to the same
-specified in section 156(g), shall be deemed “commercially used” and in “commercial use” during such
+extent as such remedies are available for such a violation in a suit against any private entity. Such remedies
-regulatory review period;
+include damages, interest, costs, and treble damages
-(2) in the case of activities performed by a
+under section 284, attorney fees under section 285,
-nonprofit research laboratory, or nonprofit entity such
+and the additional remedy for infringement of design
-as a university, research center, or hospital, a use for
+patents under section 289.
-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
+(Added Oct. 28, 1992, Public Law 102-560, sec.
+(a)(2), 106 Stat. 4230.)
+U.S.C. 297 Improper and deceptive invention
+promotion.
-for the patent or the filing date of any earlier United
+(a) IN GENERAL.— An invention promoter
-States, foreign, or international application to which
+shall have a duty to disclose the following information to a customer in writing, prior to entering into a
-the subject matter at issue is entitled under section
+contract for invention promotion services:
-, 120, or 365 of this title.
+(1) the total number of inventions evaluated
+by the invention promoter for commercial potential in
-(b) DEFENSE TO INFRINGEMENT.—
+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;
-(1) IN GENERAL.— It shall be a defense to
+(2) the total number of customers who have
-an action for infringement under section 271 of this
+contracted with the invention promoter in the past
-title with respect to any subject matter that would otherwise infringe one or more claims for a method in the
+years, not including customers who have purchased
-patent being asserted against a person, if such person
+trade show services, research, advertising, or other
-had, acting in good faith, actually reduced the subject
+nonmarketing services from the invention promoter,
-matter to practice at least 1 year before the effective
+or who have defaulted in their payment to the invention promoter;
-filing date of such patent, and commercially used the
+(3) the total number of customers known by
-subject matter before the effective filing date of such
+the invention promoter to have received a net financial profit as a direct result of the invention promotion
-patent.
+services provided by such invention promoter;
-(2) EXHAUSTION OF RIGHT.— The sale
+(4) the total number of customers known by
-or other disposition of a useful end product produced
+the invention promoter to have received license agreements for their inventions as a direct result of the
-by a patented method, by a person entitled to assert a
+invention promotion services provided by such invention promoter; and
-defense under this section with respect to that useful
+(5) the names and addresses of all previous
-end result shall exhaust the patent owner’s rights
+invention promotion companies with which the invention promoter or its officers have collectively or individually been affiliated in the previous 10 years.
-under the patent to the extent such rights would have
+(b) CIVIL ACTION.—
-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.
+(1) Any customer who enters into a contract
+with an invention promoter and who is found by a
-(5) ABANDONMENT OF USE.— A person
+court to have been injured by any material false or
-who has abandoned commercial use of subject matter
+fraudulent statement or representation, or any omission of material fact, by that invention promoter (or
-may not rely on activities performed before the date
+any agent, employee, director, officer, partner, or
-of such abandonment in establishing a defense under
+independent contractor of such invention promoter),
-this section with respect to actions taken after the date
+or by the failure of that invention promoter to disclose
-of such abandonment.
+such information as required under subsection (a),
-(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.
+may recover in a civil action against the invention
-(a)(9), 113 Stat. 1501A-555 (S. 1948 sec. 4302).)
+promoter (or the officers, directors, or partners of such
+invention promoter), in addition to reasonable costs
-CHAPTER 29 — REMEDIES FOR
+and attorneys’ fees-
-INFRINGEMENT OF PATENT, AND OTHER
-ACTIONS
+(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.—
-Sec.
-Remedy for infringement of patent.
-Presumption of validity; defenses.
-Injunction.
+(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
-Damages.
+with any response of the invention promoters. The
-Attorney fees.
+Commissioner of Patents shall notify the invention
-Time limitation on damages.
+promoter of a complaint and provide a reasonable
-Limitation on damages and other remedies;
+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.
-marking and notice.
+ (Added Nov. 29, 1999, Public Law 106-113, sec.
-Action for infringement of a patent containing
+(a)(9), 113 Stat. 1501A-552 (S. 1948 sec. 4102(a)).)
-an invalid claim.
-Additional remedy for infringement of design
-patent.
+===CHAPTER 30 — PRIOR ART CITATIONS TO OFFICE AND EX PARTE REEXAMINATION OF PATENTS===
-Notice of patent suits.
-Interfering patents.
-False marking.
-Nonresident patentee; service and notice.
-Voluntary arbitration.
-Presumptions: Product made by patented pro
-cess.
-Liability of States, instrumentalities of States,
-and State officials for infringement of patents.
-Improper and deceptive invention promotion
-U.S.C. 281 Remedy for infringement of patent.
+Sec.
-A patentee shall have remedy by civil action for
+Citation of prior art.
-infringement of his patent.
-U.S.C. 282 Presumption of validity; defenses.
+Request for reexamination.
-A patent shall be presumed valid. Each claim of a
+Determination of issue by Director.
-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
-(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
+Reexamination order by Director.
-involving the validity or infringement of a patent and
-shall be pleaded:
-(1) Noninfringement, absence of liability for
+Conduct of reexamination proceedings.
-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,
+Appeal.
-(3) Invalidity of the patent or any claim in suit
+Certificate of patentability, unpatentability, and
-for failure to comply with any requirement of sections
+claim cancellation.
-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
-(d)(2) is not subject to review in such an action.
-(Amended July 24, 1965, Public Law 89-83, sec. 10,
-Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 10,
-Stat. 692; Apr. 2, 1982, Public Law 97-164, sec. 161(7),
-Stat. 49; Sept. 24, 1984, Public Law 98-417, sec. 203,
-Stat. 1603; Oct. 29, 1992, Public Law 102-572, sec.
-(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)).)
-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.
-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.
-(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(9)).)
-U.S.C. 285 Attorney fees.
-The court in exceptional cases may award reasonable attorney fees to the prevailing party.
-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.
-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
-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,
-.
-(Amended Aug. 23, 1988, Public Law 100-418, sec.
-(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.
-(a)(9), 113 Stat. 1501A-589 (S. 1948 sec. 4803).)
-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,
-Stat. 1949.)
-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.
-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.
-(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
-(a)(10)(A)).)
-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.
-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
--465, sec. 533(b)(6), 108 Stat. 4990.)
-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,
-Stat. 1949.)
-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
-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.
-(b)(1), 96 Stat. 322; amended Nov. 29, 1999, Public Law
--113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
-sec. 4732(a)(10)(A)); subsections (b) and (c) amended Nov.
-, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905.)
-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.
-(a), 102 Stat. 1566; amended Dec. 8, 1994, Public Law
--465, sec. 533(b)(7), 108 Stat. 4990.)
-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.
-(a)(2), 106 Stat. 4230.)
-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
-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.
-(a)(9), 113 Stat. 1501A-552 (S. 1948 sec. 4102(a)).)
-CHAPTER 30 — PRIOR ART CITATIONS TO
+====35 U.S.C. 301 Citation of prior art.====
-OFFICE AND EX PARTE REEXAMINATION
-OF PATENTS
-Sec.
-Citation of prior art.
-Request for reexamination.
-Determination of issue by Director.
-Reexamination order by Director.
-Conduct of reexamination proceedings.
-Appeal.
-Certificate of patentability, unpatentability, and
-claim cancellation.
-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.
-writing prior art consisting of patents or printed publi
-cations 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
@@ Line 6,767: / Line 6,355: @@
 Stat. 3015.)
-U.S.C. 302 Request for reexamination.
+====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
@@ Line 6,785: / Line 6,373: @@
 (a)(8) and 4732(a)(10)(A)).)
-U.S.C. 303 Determination of issue by Director.
+====35 U.S.C. 303 Determination of issue by Director.====
 (a) Within three months following the filing of
@@ Line 6,804: / Line 6,392: @@
 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.
@@ Line 6,825: / Line 6,409: @@
 .)
-U.S.C. 304 Reexamination order by Director.
+====35 U.S.C. 304 Reexamination order by Director.====
 If, in a determination made under the provisions of
@@ Line 6,852: / Line 6,436: @@
 (a)(10)(A)).)
-U.S.C. 305 Conduct of reexamination proceedings.
+====35 U.S.C. 305 Conduct of reexamination proceedings.====
 After the times for filing the statement and reply
@@ Line 6,873: / Line 6,457: @@
 (c), 98 Stat. 3388.)
-U.S.C. 306 Appeal.
+====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
@@ Line 6,884: / Line 6,468: @@
 Stat. 3016.)
-U.S.C. 307 Certificate of patentability, unpatentability, and claim cancellation.
+====35 U.S.C. 307 Certificate of patentability, unpatentability, and claim cancellation.====
 (a) In a reexamination proceeding under this
@@ Line 6,902: / Line 6,486: @@
 of a certificate under the provisions of subsection (a)
 of this section.
 (Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94
@@ Line 6,912: / Line 6,493: @@
 sec. 4732(a)(10)(A)).)
-CHAPTER 31 — OPTIONAL INTER PARTES
+===CHAPTER 31 — OPTIONAL INTER PARTES REEXAMINATION PROCEDURES===
-REEXAMINATION PROCEDURES
 Sec.
@@ Line 6,930: / Line 6,510: @@
 Stay of litigation.
-U.S.C. 311 Request for inter partes reexamination
+====35 U.S.C. 311 Request for inter partes reexamination====
 (a) IN GENERAL.— Any third-party requester
@@ Line 6,954: / Line 6,534: @@
 -273, sec. 13202, 116 Stat. 1901.)
-U.S.C. 312 Determination of issue by Director
+====35 U.S.C. 312 Determination of issue by Director====
 (a) REEXAMINATION.— Not later than
@@ Line 6,982: / Line 6,562: @@
 -273, secs. 13105 and 13202, 116 Stat.1900-1901.)
-U.S.C. 313 Inter partes reexamination order by
+====35 U.S.C. 313 Inter partes reexamination order by Director====
-Director
 If, in a determination made under section 312(a),
@@ Line 6,996: / Line 6,575: @@
 (a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)).)
-U.S.C. 314 Conduct of inter partes reexamination proceedings
+====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
@@ Line 7,036: / Line 6,615: @@
 subsection (b)(1) amended Nov. 2, 2002, Public Law 107273, sec. 13202, 116 Stat. 1901.)
-U.S.C. 315 Appeal
+====35 U.S.C. 315 Appeal====
 (a) PATENT OWNER.— The patent owner
@@ Line 7,075: / Line 6,654: @@
 , Public Law 107-273, sec. 13202, 116 Stat. 1901.)
-U.S.C. 316 Certificate of patentability, unpatentability and claim cancellation
+====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
@@ Line 7,100: / Line 6,679: @@
-U.S.C. 317 Inter partes reexamination prohibited
+====35 U.S.C. 317 Inter partes reexamination prohibited====
 (a) ORDER FOR REEXAMINATION.— Notwithstanding any provision of this chapter, once an
@@ Line 7,134: / Line 6,713: @@
 -273, sec. 13202, 116 Stat. 1901.)
-U.S.C. 318 Stay of litigation
+====35 U.S.C. 318 Stay of litigation====
   Once an order for inter partes reexamination of a
@@ Line 7,148: / Line 6,727: @@
 (a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)).)
-PART IV — PATENT COOPERATION
+==PART IV — PATENT COOPERATION TREATY==
-TREATY
-CHAPTER 35 — DEFINITIONS
+===CHAPTER 35 — DEFINITIONS===
 Sec.
@@ Line 7,185: / Line 6,763: @@
 recognized as the coordinating body under the treaty
 and the Regulations.
 (i) Terms and expressions not defined in this
@@ Line 7,200: / Line 6,775: @@
 (S. 1948 sec. 4732(a)(10)(A)).)
-CHAPTER 36 — INTERNATIONAL STAGE
+===CHAPTER 36 — INTERNATIONAL STAGE===
 Sec.
@@ Line 7,222: / Line 6,797: @@
 Secrecy of certain inventions; filing international applications in foreign countries.
-U.S.C. 361 Receiving Office.
+====35 U.S.C. 361 Receiving Office.====
 (a) The Patent and Trademark Office shall act
@@ Line 7,251: / Line 6,826: @@
 (S. 1948 sec. 4732(a)(10)(A)).)
-U.S.C. 362 International Searching Authority
+====35 U.S.C. 362 International Searching Authority and International Preliminary Examining Authority.====
-and International Preliminary
-Examining Authority.
 (a) The Patent and Trademark Office may act as
@@ Line 7,274: / Line 6,845: @@
 (a)(10)(A)).)
-U.S.C. 363 International application designating the United States: Effect.
+====35 U.S.C. 363 International application designating the United States: Effect.====
 An international application designating the United
@@ Line 7,286: / Line 6,857: @@
 sec. 403(a), 98 Stat. 3392.)
-U.S.C. 364 International stage: Procedure.
+====35 U.S.C. 364 International stage: Procedure.====
 (a) International applications shall be processed
@@ Line 7,294: / Line 6,865: @@
 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
@@ Line 7,314: / Line 6,883: @@
 (a)(10)(A)).)
-U.S.C. 365 Right of priority; benefit of the filing date of a prior application.
+====35 U.S.C. 365 Right of priority; benefit of the filing date of a prior application.====
 (a) In accordance with the conditions and
@@ Line 7,337: / Line 6,906: @@
 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.
@@ Line 7,348: / Line 6,915: @@
 sec. 4732(a)(10)(A)).)
-U.S.C. 366 Withdrawn international application.
+====35 U.S.C. 366 Withdrawn international application.====
 Subject to section 367 of this part, if an international application designating the United States is
@@ Line 7,370: / Line 6,937: @@
 sec. 401(b), 98 Stat. 3391.)
-U.S.C. 367 Actions of other authorities:
+====35 U.S.C. 367 Actions of other authorities: Review.====
-Review.
 (a) Where a Receiving Office other than the
@@ Line 7,386: / Line 6,952: @@
 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.
@@ Line 7,397: / Line 6,959: @@
 (a)(10)(A)).)
-U.S.C. 368 Secrecy of certain inventions; filing
+====35 U.S.C. 368 Secrecy of certain inventions; filing international applications in foreign countries.====
-international applications in foreign
-countries.
 (a) International applications filed in the Patent
@@ Line 7,424: / Line 6,984: @@
 sec. 403(a), 98 Stat. 3392; Nov. 6, 1986, Public Law 99616, sec. 6, 100 Stat. 3486.)
-CHAPTER 37 — NATIONAL STAGE
+===CHAPTER 37 — NATIONAL STAGE===
 Sec.
@@ Line 7,437: / Line 6,997: @@
 Fees.
-U.S.C. 371 National stage: Commencement.
+====35 U.S.C. 371 National stage: Commencement.====
 (a) Receipt from the International Bureau of
@@ Line 7,480: / Line 7,040: @@
 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
@@ Line 7,525: / Line 7,081: @@
 -273, sec. 13206, 116 Stat. 1905.)
-U.S.C. 372 National stage: Requirements and
+====35 U.S.C. 372 National stage: Requirements and procedure.====
-procedure.
 (a) All questions of substance and, within the
@@ Line 7,554: / Line 7,109: @@
 (S. 1948 sec. 4732(a)(10)(A)).)
-U.S.C. 373 Improper applicant.
+====35 U.S.C. 373 Improper applicant.====
 An international application designating the United
@@ Line 7,572: / Line 7,127: @@
 sec. 403(a), 98 Stat. 3392; Dec. 8, 1994, Public Law 103465, sec. 532(c)(5), 108 Stat. 4987.)
-U.S.C. 374 Publication of international application.
+====35 U.S.C. 374 Publication of international application.====
 The publication under the treaty defined in section
@@ Line 7,586: / Line 7,141: @@
 sec.13205, 116 Stat. 1903.)
-U.S.C. 375 Patent issued on international
+====35 U.S.C. 375 Patent issued on international application: Effect.====
-application: Effect.
 (a) A patent may be issued by the Director
@@ Line 7,609: / Line 7,163: @@
 (a)(10)(A)).)
-U.S.C. 376 Fees.
+====35 U.S.C. 376 Fees.====
 (a) The required payment of the international
@@ Line 7,651: / Line 7,205: @@
 sec. 13206, 116 Stat. 1905.)
-LAWS NOT IN TITLE 35, UNITED STATES
+==LAWS NOT IN TITLE 35, UNITED STATES CODE==
-CODE
-U.S.C. 1001 Statements or entries generally.
+====18 U.S.C. 1001 Statements or entries generally.====
 (a) Except as otherwise provided in this section, whoever, in any matter within the jurisdiction of
@@ Line 7,682: / Line 7,235: @@
-PATENT LAWS 2071
+===PATENT LAWS 2071===
 (2) any investigation or review, conducted
@@ Line 7,691: / Line 7,244: @@
 -292, Sec. 2, 110 Stat. 3459.)
-U.S.C. 2071 Concealment, removal, or mutilation generally.
+====18 U.S.C. 2071 Concealment, removal, or mutilation generally.====
 (a) Whoever willfully and unlawfully conceals, removes, mutilates, obliterates, or destroys, or
@@ Line 7,720: / Line 7,273: @@
-INDEX OF PATENT LAWS
+==INDEX OF PATENT LAWS==
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35 U.S.C.: Difference between revisions

Revision as of 20:40, June 30, 2007

PART I — UNITED STATES PATENT AND TRADEMARK OFFICE

CHAPTER 1 — ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS

35 U.S.C. 1 Establishment.

35 U.S.C. 2 Powers and duties.

35 U.S.C. 3 Officers and employees.

35 U.S.C. 4 Restrictions on officers and employees as to interest in patents.

35 U.S.C. 5 Patent and Trademark Office Public Advisory Committees.

CHAPTER 2 — PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE

CHAPTER 3 — PRACTICE BEFORE PATENT

35 U.S.C. 33 Unauthorized representation as practitioner.

CHAPTER 4 — PATENT FEES; FUNDING; SEARCH SYSTEMS

PART II — PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 10 — PATENTABILITY OF INVENTIONS

35 U.S.C. 100 Definitions.

35 U.S.C. 101 Inventions patentable.

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

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

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

35 U.S.C. 105 Inventions in outer space.

CHAPTER 11 — APPLICATION FOR PATENT

35 U.S.C. 111 Application.

35 U.S.C. 112 Specification.

35 U.S.C. 113 Drawings.

35 U.S.C. 114 Models, specimens.

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

35 U.S.C. 116 Inventors.

35 U.S.C. 117 Death or incapacity of inventor.

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

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

35 U.S.C. 121 Divisional applications.

35 U.S.C. 122 Confidential status of applications; publication of patent applications.

CHAPTER 12 — EXAMINATION OF APPLICATION

35 U.S.C. 131 Examination of application.

35 U.S.C. 132 Notice of rejection; reexamination.

35 U.S.C. 133 Time for prosecuting application.

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

35 U.S.C. 135 Interferences.

CHAPTER 13 — REVIEW OF PATENT AND TRADEMARK OFFICE DECISION

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

35 U.S.C. 142 Notice of appeal.

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

35 U.S.C. 144 Decision on appeal.

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

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

CHAPTER 14 — ISSUE OF PATENT

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

35 U.S.C. 152 Issue of patent to assignee.

35 U.S.C. 153 How issued.

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

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

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

35 U.S.C. 156 Extension of patent term.

CHAPTER 15 — PLANT PATENTS

CHAPTER 16 — DESIGNS

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

CHAPTER 18 — PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE

PART III — PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 25 — AMENDMENT AND CORRECTION OF PATENTS

CHAPTER 26 — OWNERSHIP AND ASSIGNMENT

CHAPTER 27 — GOVERNMENT INTERESTS IN PATENTS

CHAPTER 28 — INFRINGEMENT OF PATENTS

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

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

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

35 U.S.C. 283 Injunction.

35 U.S.C. 284 Damages.

35 U.S.C. 286 Time limitation on damages.

35 U.S.C. 287 Limitation on damages and other remedies; marking and notice.

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

35 U.S.C. 289 Additional remedy for infringement of design patent.

35 U.S.C. 290 Notice of patent suits.

35 U.S.C. 291 Interfering patents.

35 U.S.C. 292 False marking.

35 U.S.C. 293 Nonresident patentee; service and notice.

35 U.S.C. 294 Voluntary arbitration.

35 U.S.C. 295 Presumption: Product made by patented process.