APPENDIX L      Patent Laws

United States Code Title 35 - Patents
---SECTION---PATENT AND TRADEMARK OFFICE

Chapter

ESTABLISHMENT, OFFICERS, FUNCTIONS

USC 35 1

Establishment.

The Patent and Trademark Office shall continue as an office in the
Department of Commerce, where records, books, drawings, specifications,
and other papers and things pertaining to patents and to trademark
registrations shall be kept and preserved, except as otherwise provided
by law.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)

USC 35 2

Seal.

The Patent and Trademark Office shall have a seal with which letters
patent, certificates of trademark registrations, and papers issued from
the Office shall be authenticated.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)

USC 35 3

Officers and employees.

There shall be in the Patent and Trademark Office a Commissioner of
Patents and Trademarks, a Deputy Commissioner, two Assistant
Commissioners, and examiners-in-chief appointed under section 7 of this
title. The Deputy Commissioner, or, in the event of a vacancy in that
office, the Assistant Commissioner senior in date of appointment, shall
fill the office of Commissioner during a vacancy in that office until
the Commissioner is appointed and takes office. The Commissioner of
Patents and Trademarks, the Deputy Commissioner, and the Assistant
Commissioners shall be appointed by the President, by and with the
advice and consent of the Senate. The Secretary of Commerce, upon the
nomination of the Commissioner, in accordance with law shall appoint all
other officers and employees.

The Secretary of Commerce may vest in himself the functions of the
Patent and Trademark Office and its officers and employees specified in
this title and may from time to time authorize their performance by any
other officer or employee.

The Secretary of Commerce is authorized to fix the per annum rate of
basic compensation of each examiner-in-chief in the Patent and Trademark
Office at not in excess of the maximum scheduled rate provided for
positions in grade 17 of the General Schedule of the Classification Act
of 1949, as amended.

The Commissioner of Patents and Trademarks shall be an Assistant
Secretary of Commerce and shall receive compensation at the rate
prescribed by law for Assistant Secretaries of Commerce.

The members of the Trademark Trial and Appeal Board of the Patent and
Trademark Office shall each be paid at a rate not to exceed the maximum
rate of basic pay payable for GS-16 of the General Schedule under
section 5332 of title 5.

(Subsection (c) amended Sept. 6, 1958, Public Law 85-933, sec. 1, 72
Stat. 1793; Sept. 23, 1959, Public Law 85-370, 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.)

(Subsection (d) added Oct. 25, 1982, Public Law 97-366, 96 Stat. 1760.)

(Subsection (e) added Nov. 8, 1984, Public Law 98-622, sec. 405, 98
Stat. 3392.)

USC 35 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.)

USC 35 5

[Repealed]

(June 6, 1972, Public Law 92-310, sec. 208(a), 86 Stat. 203.)

USC 35 6

Duties of Commissioner.

The Commissioner, under the direction of the Secretary of Commerce,
shall superintend or perform all duties required by law respecting the
granting and issuing of patents and the registration of trademarks;
shall have the authority to carry on studies, programs, or exchanges of
items or services regarding domestic and international patent and
trademark law or the administration of the Patent and Trademark Office,
including programs to recognize, identify, assess, and forecast the
technology of patented inventions and their utility to industry; and
shall have charge of property belonging to the Patent and Trademark
Office. He may, subject to the approval of the Secretary of Commerce,
establish regulations, not inconsistent with law, for the conduct of
proceedings in the Patent and Trademark Office.

The Commissioner, under the direction of the Secretary of Commerce, may,
in coordination with the Department of State, carry on programs and
studies cooperatively with foreign patent offices and international
intergovernmental organizations, or may authorize such programs and
studies to be carried on, in connection with the performance of duties
stated in subsection (a) of this section.

The Commissioner, under the direction of the Secretary of Commerce, may,
with the concurrence of the Secretary of State, transfer funds
appropriated to the Patent and Trademark Office, 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 related matters. These special payments may be
in in addition to any other payments or contributions to the
international organization and shall not be subject to any limitations
imposed by law on the amounts of such other payments or contributions by
the Government of the United States.

(Subsection (c) amended Oct. 5, 1971, Public Law 92-132, 85 Stat. 364;
Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Aug. 27, 1982,
Public Law 97-247, sec. 13, 96 Stat. 321.)

(Subsection (d) repealed Aug. 27, 1982, Public Law 97-247, sec. 7, 96
Stat. 320.)

(Subsection (a) amended Dec. 10, 1991, Public Law 102-204, sec. 8, 105
Stat. 1641.)

USC 35 7

Board of Patent Appeals and Interferences.

The examiners-in-chief shall be persons of competent legal knowledge and
scientific ability, who shall be appointed to the competitive service.
The Commissioner, the Deputy Commissioner, the Assistant Commissioners,
and the examiners-in-chief shall constitute the Board of Patent Appeals
and Interferences.

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) of this title. Each
appeal and interference shall be heard by at least three members of the
Board of Patent Appeals and Interferences, who shall be designated by
the Commissioner. Only the Board of Patent Appeals and Interferences has
the authority to grant rehearings.

Whenever the Commissioner considers it necessary, in order to keep
current the work of the Board of Patent Appeals and Interferences, the
Commissioner may designate any patent examiner of the primary examiner
grade or higher, having the requisite ability, to serve as
examiner-in-chief for periods not exceeding six months each. An examiner
so designated shall be qualified to act as a member of the Board of
Patent Appeals and Interferences. Not more than one of the members of
the Board of Patent Appeals and Interferences hearing an appeal or
determining an interference may be an examiner so designated. The
Secretary of Commerce is authorized to fix the pay of each designated
examiner-in-chief in the Patent and Trademark Office at not to exceed
the maximum rate of basic pay payable for grade GS-16 of the General
Schedule under section 5332 of title 5. The rate of basic pay of each
individual designated examiner-in-chief shall be adjusted, at the close
of the period for which that individual was designated to act
examiner-in-chief, to the rate of basic pay that individual would have
been receiving at the close of such period if such designation had not
been made.

(Amended Nov. 8, 1984, Public Law 98-622, sec. 201(a), 98 Stat. 3386.)

USC 35 8

Library.

The Commissioner 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.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)

USC 35 9

Classification of patents.

The Commissioner 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.

USC 35 10

Certified copies of records.

The Commissioner 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.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)

USC 35 11

Publications.

The Commissioner may print, or cause to be printed, the following:

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.

Certificates of trademark registrations, including statements and
drawings, together with copies of the same.

The Official Gazette of the United States Patent and Trademark Office.

Annual indexes of patents and patentees, and of trademarks and
registrants.

Annual volumes of decisions in patent and trademark cases.

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.

The Commissioner 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.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)

USC 35 12

Exchange of copies of patents with foreign countries.

The Commissioner may exchange copies of specifications and drawings of
United States patents for those of foreign countries.

USC 35 13

Copies of patents for public libraries.

The Commissioner may supply printed copies of specifications and
drawings of patents 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.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 15, 96 Stat. 321.)

USC 35 14

Annual report to Congress.

The Commissioner shall report to Congress annually the moneys received
and expended, statistics concerning the work of the Office, and other
information relating to the Office as may be useful to the Congress or
the public.

Chapter

PROCEEDINGS IN THE PATENTS AND TRADEMARK OFFICE

USC 35 21

Filing date and day for taking action.

The Commissioner 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 Commissioner.

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.)

USC 35 22

Printing of papers filed.

The Commissioner may require papers filed in the Patent and Trademark
Office to be printed or typewritten.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)

USC 35 23

Testimony in Patent and Trademark Office cases.

The Commissioner 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.)

USC 35 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.)

USC 35 25

Declaration in lieu of oath.

The Commissioner 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 Commissioner may prescribe, such
declaration to be in lieu of the oath otherwise required.

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.)

USC 35 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 Commissioner
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.)

Chapter

PRACTICE BEFORE PATENT AND TRADEMARK OFFICE

USC 35 31

Regulations for agents and attorneys.

The Commissioner, subject to the approval of the Secretary of Commerce,
may prescribe regulations governing the recognition and conduct of
agents, attorneys, or other persons representing applicants or other
parties before the Patent and Trademark 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.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)

USC 35 32

Suspension or exclusion from practice.

The Commissioner 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 31 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 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 Commissioner 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.)

USC 35 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

PATENT FEES; FUNDING; SEARCH SYSTEMS

USC 35 41

Patent fees; patent and trademark search systems.

The Commissioner shall charge the following fees:

On filing each application for an original patent, except in design or
plant cases, $500 [$790].

In addition, on filing or on presentation at any other time, $52 [$82]
for each claim in independent form which is in excess of 3, $14 [$22]
for each claim (whether independent or dependent) which is in excess of
20, and $160 [$270] for each application containing a multiple dependent
claim.

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

For issuing each original or reissue patent, except in design or plant
cases, $820 [$1,320].

In design and plant cases:

on filing each design application, $200 [$330];

on filing each plant application, $330 [$540];

on issuing each design patent, $290 [$450]; and

on issuing each plant patent, $410 [$670];

On filing each application for the reissue of a patent, $500 [$790].

In addition, on filing or on presentation at any other time, $52 [$82]
for each claim in independent form which is in excess of the number of
independent claims of the original patent, and $14 [$22] 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.

On filing each disclaimer, $78 [$110].

On filing an appeal from the examiner to the Board of Patent Appeals and
Interferences, $190 [$310].

In addition, on filing a brief in support of the appeal, $190 [$310],
and on requesting an oral hearing in the appeal before the Board of
Patent Appeals and Interferences, $160 [$270].

On filing each petition for the revival of an unintentionally abandoned
application for a patent or for the unintentionally delayed payment of
the fee for issuing each patent, $820 [$1,320], unless the petition is
filed under section 133 or 151 of this title, in which case the fee
shall be $78 [$110].

For petitions for 1-month extensions of time to take actions required by
the Commissioner in an application:

on filing a first petition, $78 [$110];

on filing a second petition, $172 [$400]; and

on filing a third or subsequent petition, $340 [$950].

Basic national fee for an international application where the Patent and
Trademark Office was the International Preliminary Examining Authority
and the International Searching Authority, $450 [$720].

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, $500 [$790].

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, $670 [$1,070].

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, $66 [$98].

For filing or later presentation of each independent claim in the
national stage of an international application in excess of 3, $52
[$82].

For filing or later presentation of each claim (whether independent or
dependent) in a national stage of an international application in excess
of 20, $14 [$22].

For each national stage of an international application containing a
multiple dependent claim, $160 [$270].

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 Commissioner.

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

3 years and 6 months after grant, $650 [$1,050].

7 years and 6 months after grant, $1,310 [$2,100].

11 years and 6 months after grant, $1,980 [$3,160].

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 Commissioner may require the
payment of a surcharge as a condition of accepting within such 6-month
grace period the late payment of the applicable maintenance fee. No fee
will be established for maintaining a design or plant patent in force.

The Commissioner 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 Commissioner to have been unintentional, or at any
time after the six-month grace period if the delay is shown to the
satisfaction of the Commissioner to have been unavoidable. The
Commissioner 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 Commissioner 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.

A patent, the term of which has been maintained as a result of the
acceptance of a payment of a maintenance fee under this subsection,
shall not abridge or affect the right of any person or that person's
successors in business who made, purchased, offered to sell, or used
anything protected by the patent within the United States, or imported
anything protected by the patent into the United States after the
6-month grace period but prior to the acceptance of a maintenance fee
under this subsection, to continue the use of, to offer for sale, or to
sell to others to be used, offered for sale, or sold, the specific thing
so made, purchased, offered for sale, used, or imported. The court
before which such matter is in question may provide for the continued
manufacture, use, offer for sale, or sale of the thing made, purchased,
offered for sale, or used within the United States, or imported into the
United States, as specified, or for the manufacture, use, offer for
sale, or sale in the United States of which substantial preparation was
made after the 6-month grace period but before the acceptance of a
maintenance fee under this subsection, and the court may also provide
for the continued practice of any process that is practiced, or for the
practice of which substantial preparation was made, after the 6-month
grace period but before the acceptance of a maintenance fee under this
subsection, to the extent and under such terms as the court deems
equitable for the protection of investments made or business commenced
after the 6-month grace period but before the acceptance of a
maintenance fee under this subsection.

The Commissioner 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 Commissioner shall charge the
following fees for the following services:

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

For each photocopy, $.25 per page.

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.

The Commissioner 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 Commissioner 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.

The fees established in subsections (a) and (b) of this section may be
adjusted by the Commissioner 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.

No fee established by the Commissioner 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.

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 Commissioner of Patents and Trademarks.

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.

The Commissioner shall maintain, for use by the public, paper or
microform collections of United States patents, foreign patent
documents, and United States trademark registrations arranged to permit
search for and retrieval of information. The Commissioner 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.

The Commissioner 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.

The Commissioner 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 Commissioner 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.

The Commissioner 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 Commissioner shall also
publish such report in the Federal Register. The Commissioner shall
provide an opportunity for the submission of comments by interested
persons on each such report.

(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. 8162.)

(Subsection (a)(6) amended Nov. 8, 1984, Public Law 98-622, sec. 204(a),
98 Stat. 3388.)

(Subsection (h) added Nov. 6, 1986, Public Law 99-607, sec. 1(b)(2), 100
Stat. 3470.)

(Subsections (a), (b), (d), (f), and (g) amended Dec. 10, 1991, Public
Law 102-204, sec. 5, 105 Stat. 1637.)

(Subsections (a)(9) - (15) and (i) added Dec. 10, 1991, Public Law
102-204, sec. 5, 105 Stat. 1637.)

(Subsection (c)(1) amended Oct. 23, 1992, Public Law 102-444, sec. 1,
106 Stat. 2245.)

(Subsection (a)(1)(C) added Dec. 8, 1994, Public Law 103-465, sec.
532(b)(2), 108 Stat. 4986.)

(Subsection (c)(2) amended, Dec. 8, 1994, Public Law 103-465, sec.
533(b)(1), 108 Stat. 4988.)

(* Ed. Note: The amounts in brackets are the new fees that went into
effect on October 1, 1997.)

USC 35 42

Patent and Trademark Office funding.

All fees for services performed by or materials furnished by the Patent
and Trademark Office will be payable to the Commissioner.

All fees paid to the Commissioner 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.

Revenues from fees shall be available to the Commissioner to carry out,
to the extent provided in appropriation Acts, the activities of the
Patent and Trademark Office. Fees available to the Commissioner under
section 31 of the Trademark Act of 1946 may 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.

The Commissioner may refund any fee paid by mistake or any amount paid
in excess of that required.

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:

a list of patent and trademark fee collections by the Patent and
Trademark Office during the preceding fiscal year;

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;

budget plans for significant programs, projects, and activities of the
Office, including out-year funding estimates;

any proposed disposition of surplus fees by the Office; and

such other information as the committees consider necessary.

(Amended Nov. 14, 1975, Public Law 94-131, sec. 4, 89 Stat. 690; Dec.
12, 1980, Public Law 96-517, sec. 3, 94 Stat. 3018; Aug. 27, 1982,
Public Law 97-247, sec. 3(g), 96 Stat. 319 Sept. 13, 1982, Public Law
97-258, sec. 3(i), 96 Stat. 1065.)

(Subsection (c) amended Dec. 10, 1991, Public Law 102-204, sec. 5(e),
105 Stat. 1640.)

(Subsection (e) added Dec. 10, 1991, Public Law 102-204, sec. 4, 105
Stat. 1637.)

 ---SECTION---PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

Chapter

PATENTABILITY OF INVENTIONS

USC 35 100

Definitions.

When used in this title unless the context otherwise indicates -

The term "invention" means invention or discovery.

The term "process" means process, art, or method, and includes a new use
of a known process, machine, manufacture, composition of matter, or
material.

The terms "United States" and "this country" mean the United States of
America, its territories and possessions.

The word "patentee" includes not only the patentee to whom the patent
was issued but also the successors in title to the patentee.

USC 35 101

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.

USC 35 102

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

A person shall be entitled to a patent unless -

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

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

he has abandoned the invention, or

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

the invention was described in a patent granted on an application for
patent by another filed in the United States before the invention
thereof by the applicant for patent, or on an international application
by another who has fulfilled the requirements of paragraphs (1), (2),
and (4) of section 371(c) of this title before the invention thereof by
applicant for patent, or

he did not himself invent the subject matter sought to be patented, or

before the applicant's invention thereof the invention was made in this
country by another who had not abandoned, suppressed, or concealed it.
In determining priority of invention 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. 3, 89 Stat. 691.)

USC 35 103

Conditions for patentability; non-obvious subject matter.

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.

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-

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

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.

A patent issued on a process under paragraph (1)-

shall also contain the claims to the composition of matter used in or
made by that process, or

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.

For purposes of paragraph (1), the term "biotechnological process"
means-

a process of genetically altering or otherwise inducing a single- or
multi-celled organism to-

express an exogenous nucleotide sequence,

inhibit, eliminate, augment, or alter expression of an endogenous
nucleotide sequence, or

express a specific physiological characteristic not naturally associated
with said organism;

cell fusion procedures yielding a cell line that expresses a specific
protein, such as a monoclonal antibody; and

a method of using a product produced by a process defined by
subparagraph (A) or (B), or a combination of subparagraphs (A) and (B).

Subject matter developed by another person, which qualifies as prior art
only under subsection (f) or (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 invention was made, owned by
the same person or subject to an obligation of assignment to the same
person.

(Amended Nov. 8, 1984, Public Law 98-622, sec. 103, 98 Stat. 3384; Nov.
1, 1995, Public Law 104-41, sec.1, 109 Stat. 351.)

USC 35 104

Invention made abroad.

IN GENERAL.-

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.

RIGHTS.-If an invention was made by a person, civil or military-

while domiciled in the United States, and serving in any other country
in connection with operations by or on behalf of the United States,

while domiciled in a NAFTA country and serving in another country in
connection with operations by or on behalf of that NAFTA country, or

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.

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
Commissioner, 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.

DEFINITIONS.-As used in this section-

The term "NAFTA country" has the meaning given that term in section 2(4)
of the North American Free Trade Agreement Implementation Act; and

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.)

USC 35 105

Inventions in outer space.

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.

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

APPLICATION FOR PATENT

USC 35 111

Application.

IN GENERAL.-

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 Commissioner.

CONTENTS.-Such application shall include-

a specification as prescribed by section 112 of this title;

a drawing as prescribed by section 113 of this title; and

an oath by the applicant as prescribed by section 115 of this title.

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 Commissioner.

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 Commissioner 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.

PROVISIONAL APPLICATION.-

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 Commissioner. Such application shall
include-

a specification as prescribed by the first paragraph of section 112 of
this title; and

a drawing as prescribed by section 113 of this title.

CLAIM.-A claim, as required by the second through fifth paragraphs of
section 112, shall not be required in a provisional application.

FEE.-

The application must be accompanied by the fee required by law.

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
Commissioner.

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 Commissioner that the delay in submitting the fee
was unavoidable or unintentional.

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.

ABANDONMENT.-The provisional application shall be regarded as abandoned
12 months after the filing date of such application and shall not be
subject to revival thereafter.

OTHER BASIS FOR PROVISIONAL APPLICATION.-Subject to all the conditions
in this sub section and section 119(e) of this title, and as prescribed
by the Commissioner, an application for patent filed under subsection
(a) may be treated as a provisional application for patent.

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.

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.)

USC 35 112

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.)

USC 35 113

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 Commissioner 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.)

USC 35 114

Models, specimens.

The Commissioner 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 Commissioner
may require the applicant to furnish specimens or ingredients for the
purpose of inspection or experiment.

USC 35 115

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.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 14(a), 96 Stat. 321.)

USC 35 116

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 Commissioner, 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 Commissioner 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.)

USC 35 117

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.

USC 35 118

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 Commissioner may grant a patent
to such inventor upon such notice to him as the Commissioner deems
sufficient, and on compliance with such regulations as he prescribes.

USC 35 119

Benefit of earlier filing date; right of priority.

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, 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.

No application for patent shall be entitled to this right of priority
unless a claim therefor and a certified copy of the original foreign
application, specification, and drawings upon which it is based are
filed in the Patent and Trademark Office before the patent is granted,
or at such time during the pendency of the application as required by
the Commissioner not earlier than six months after the filing of the
application in this country. Such certification shall be made by the
patent office of the foreign country in which filed and show the date of
the application and of the filing of the specification and other papers.
The Commissioner may require a translation of the papers filed if not in
the English language and such other information as he deems necessary.

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.

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.

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.

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 and the provisional application was pending
on the filing date of the application for patent under section 111(a) or
section 363 of this title.

(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.)

USC 35 120

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.

(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.)

USC 35 121

Divisional applications.

If two or more independent and distinct inventions are claimed in one
application, the Commissioner 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 Commissioner may dispense with
signing and execution by the inventor. The validity of a patent shall
not be questioned for failure of the Commissioner to require the
application to be restricted to one invention.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)

USC 35 122

Confidential status of applications.

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 any Act of Congress or in such special circumstances as
may be determined by the Commissioner.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)

Chapter

EXAMINATION OF APPLICATION

USC 35 131

Examination of application.

The Commissioner 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
Commissioner shall issue a patent therefor.

USC 35 132

Notice of rejection; reexamination.

Whenever, on examination, any claim for a patent is rejected, or any
objection or requirement made, the Commissioner 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.

USC 35 133

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 Commissioner in such action, the
application shall be regarded as abandoned by the parties thereto,
unless it be shown to the satisfaction of the Commissioner that such
delay was unavoidable.

USC 35 134

Appeal to the Board of Patent Appeals and Interferences.

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.

(Amended Nov. 8, 1984, Public Law 98-622, sec. 204(b)(1), 98 Stat.
3388.)

USC 35 135

Interferences.

Whenever an application is made for a patent which, in the opinion of
the Commissioner, would interfere with any pending application, or with
any unexpired patent, an interference may be declared and the
Commissioner 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 Commissioner 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.

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.

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
Commissioner 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 Commissioner 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 Commissioner 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 Commissioner under this subsection shall
be reviewable under section 10 of the Administrative Procedure Act.

Parties to a patent interference, within such time as may be specified
by the Commissioner 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 Commissioner, 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 Commissioner from
determining patentability of the invention involved in the interference.

(Subsection (c) added Oct. 15, 1962, Public Law 87-831, 76 Stat. 958.)

(Subsections (a) and (c) amended, Jan. 2, 1975, Public Law 93-596, sec.
1, 88 Stat. 1949.)

(Subsection (a) amended Nov. 8, 1984, Public Law 98-622, sec. 202, 98
Stat. 3386.)

(Subsection (d) added Nov. 8, 1984, Public Law 98-622, sec. 105, 98
Stat. 3385.)

Chapter

REVIEW OF PATENT AND TRADEMARK OFFICE DECISION

USC 35 141

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 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
Commissioner 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.)

USC 35 142

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 Commissioner, within
such time after the date of the decision from which the appeal is taken
as the Commissioner 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.)

USC 35 143

Proceedings on appeal.

With respect to an appeal described in section 142 of this title, the
Commissioner 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 Commissioner forward the original or certified copies of such
documents during the pendency of the appeal. In an ex parte case, the
Commissioner 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 Commissioner 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.)

USC 35 144

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 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.)

USC 35 145

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 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
Commissioner 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 Commissioner 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 Commissioner 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 98-620, sec. 203(b), 98 Stat. 3387.)

USC 35 146

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 Commissioner 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 Commissioner 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 Commissioner 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.)

Chapter

ISSUE OF PATENT

USC 35 151

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 Commissioner
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.)

USC 35 152

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.)

USC 35 153

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 Commissioner or have his signature placed thereon and attested by
an officer of the Patent and Trademark Office designated by the
Commissioner, and shall be recorded in the Patent and Trademark Office.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)

USC 35 154

Contents and term of patent.

IN GENERAL.-

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.

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.

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.

SPECIFICATION AND DRAWING.-A copy of the specification and drawing shall
be annexed to the patent and be a part of such patent.

TERM EXTENSION.-

INTERFERENCE DELAY OR SECRECY ORDERS.-If the issue of an original patent
is delayed due to a proceeding under section 135(a) of this title, or
because the application for patent is placed under an order pursuant to
section 181 of this title, the term of the patent shall be extended for
the period of delay, but in no case more than 5 years.

EXTENSION FOR APPELLATE REVIEW.-If the issue of a patent is delayed due
to appellate review by the Board of Patent Appeals and Interferences or
by a Federal court and the patent is issued pursuant to a decision in
the review reversing an adverse determination of patentability, the term
of the patent shall be extended for a period of time but in no case more
than 5 years. A patent shall not be eligible for extension under this
paragraph if it is subject to a terminal disclaimer due to the issue of
another patent claiming subject matter that is not patentably distinct
from that under appellate review.

LIMITATIONS.-The period of extension referred to in paragraph (2)-

shall include any period beginning on the date on which an appeal is
filed under section 134 or 141 of this title, or on which an action is
commenced under section 145 of this title, and ending on the date of a
final decision in favor of the applicant;

shall be reduced by any time attributable to appellate review before the
expiration of 3 years from the filing date of the application for
patent; and

shall be reduced for the period of time during which the applicant for
patent did not act with due diligence, as determined by the
Commissioner.

LENGTH OF EXTENSION.-The total duration of all extensions of a patent
under this subsection shall not exceed 5 years.

CONTINUATION.-

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.

REMEDIES.-The remedies of sections 283, 284, and 285 of this title shall
not apply to acts which -

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

became infringing by reason of paragraph (1).

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.

(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.)

USC 35 155

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
Commissioner of Patents and Trademarks 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 Commissioner
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.)

USC 35 155A

Patent term restoration.

Notwithstanding section 154 of this title, the term of each of the
following patents shall be extended in accordance with this section:

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 -

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;

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;

the Federal Food and Drug Administration approved, by letter dated
December 18, 1979, the new drug application for such application; and

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.

Any patent which encompasses within its scope a process for using the
composition described in paragraph (1).

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.

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 Commissioner of Patents and Trademarks of the number of any
patent so extended. On receipt of such notice, the Commissioner 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.)

USC 35 156

Extension of patent term.

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 if -

the term of the patent has not expired before an application is
submitted under subsection (d)(1) for its extension;

the term of the patent has never been extended under subsection (e)(1)
of this section;

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);

the product has been subject to a regulatory review period before its
commercial marketing or use;

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;

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

for purposes of subparagraph (A), in the case of a patent which -

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

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."

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 -

in the case of a patent which claims a product, be limited to any use
approved for the product -

before the expiration of the term of the patent -

under the provision of law under which the applicable regulatory review
occurred, or

under the provision of law under which any regulatory review described
in paragraph (1), (4), or (5) of subsection (g) occurred, and

on or after the expiration of the regulatory review period upon which
the extension of the patent was based;

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 -

before the expiration of the term of the patent -

under any provision of law under which an applicable regulatory review
occurred, and

under the provision of law under which any regulatory review described
in paragraph (1), (4), or (5) of subsection (g) occurred, and

on or after the expiration of the regulatory review period upon which
the extension of the patent was based; and

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 approved product, or

the product if it has been subject to a regulatory review period
described in paragraphs (1), (4), or (5) of subsection (g).

As used in this subsection, the term "product" includes an approved
product.

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-

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;

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);

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

in no event shall more than one patent be extended under subsection
(e)(i) for the same regulatory review period for any product.

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 Commissioner. 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 -

the identity of the approved product and the Federal statute under which
regulatory review occurred;

the identity of the patent for which an extension is being sought and
the identity of each claim of such patent;

information to enable the Commissioner 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
Commissioner and the Secretary of Health and Human Services or the
Secretary of Agriculture to determine the period of the extension under
subsection (g);

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

such patent or other information as the Commissioner may require.

Within 60 days of the submittal of an application for extension of the
term of a patent under paragraph (1), the Commissioner shall notify -

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

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 Commissioner, 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 Commissioner of the determination, and shall publish in the
Federal Register a notice of such determination.

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.

The Secretary making a determination under clause (i) shall notify the
Commissioner 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 Commissioner of any
revision of the determination and shall publish any such revision in the
Federal Register.

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.

An application for the extension of the term of a patent is subject to
the disclosure requirements prescribed by the Commissioner.

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 Commissioner 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-

the identity of the product subject to regulating review and the Federal
statute under which such review is occurring;

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;

information to enable the Commissioner to determine under subsection
(a)(1), (2), and (3) the eligibility of a patent for extension;

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

such patent or other information as the Commissioner may require.

If the Commissioner 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 Commissioner 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.

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.

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.

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
Commissioner 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-

for not to exceed 5 years from the date of expiration of the original
patent term; or

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.

The rights derived from any patent the term of which is extended under
this paragraph shall, during the period of interim extension-

in the case of a patent which claims a product, be limited to any use
then under regulatory review;

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

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.

A determination that a patent is eligible for extension may be made by
the Commissioner solely on the basis of the representations contained in
the application for the extension. If the Commissioner 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 Commissioner 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.

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
Commissioner shall extend, until such determination is made, the term of
the patent for periods of up to one year if he determines that the
patent is eligible for extension.

For purposes of this section:

The term "product" means:

A drug product.

Any medical device, food additive, or color additive subject to
regulation under the Federal Food, Drug, and Cosmetic Act.

The term "drug product" means the active ingredient of-

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

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.

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.

Any reference to section 351 is a reference to section 351 of the Public
Health Service Act.

Any reference to section 503, 505, 507, 512, or 515 is a reference to
section 503, 505, 507, 512, or 515 of the Federal Food, Drug and
Cosmetic Act.

Any reference to the Virus-Serum-Toxin Act is a reference to the Act of
March 4, 1913 (21 U.S.C. 151 - 158).

The term "informal hearing" has the meaning prescribed for such term by
section 201(y) of the Federal Food, Drug and Cosmetic Act.

The term "patent" means a patent issued by the United States Patent and
Trademark Office.

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.

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.

For purposes of this section, the term "regulatory review period" has
the following meanings:

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.

The regulatory review period for a new drug, antibiotic drug, or human
biological product is the sum of -

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

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.

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.

The regulatory review period for a food or color additive is the sum of
-

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

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.

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.

The regulatory review period for a medical device is the sum of -

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

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).

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.

The regulatory review period for a new animal drug product is the sum of
-

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

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.

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.

The regulatory period for a veterinary biological product is the sum of
-

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

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.

A period determined under any of the preceding paragraphs is subject to
the following limitations:

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.

If the patent involved was issued before the date of the enactment of
this section and -

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,

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

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.

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.

The Commissioner may establish such fees as the Commissioner 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.)

USC 35 157

Statutory invention registration.

Notwithstanding any other provision of this title, the Commissioner 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 -

meets the requirements of section 112 of this title;

has complied with the requirements for printing, as set forth in
regulations of the Commissioner;

waives the right to receive a patent on the invention within such period
as may be prescribed by the Commissioner; and

pays application, publication, and other processing fees established by
the Commissioner.

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.

The waiver under subsection (a)(3) of this section by an applicant shall
take effect upon publication of the statutory invention registration.

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 Commissioner 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.

The Secretary of Commerce 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 98-662, sec. 102(a), 98 Stat. 3383.)

Chapter

PLANT PATENTS

USC 35 161

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.)

USC 35 162

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.

USC 35 163

Grant.

In the case of a plant patent the grant shall be of the right to exclude
others from asexually reproducing the plant or selling or using the
plant so reproduced.

USC 35 164

Assistance of the Department of Agriculture.

The President may by Executive order direct the Secretary of
Agriculture, in accordance with the requests of the Commissioner, 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 Commissioner officers and employees of the Department.

Chapter

DESIGNS

USC 35 171

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.

USC 35 172

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.)

USC 35 173

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

SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN FOREIGN
COUNTRIES

USC 35 181

Secrecy of certain inventions and withholding of patent.

Whenever publication or disclosure 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 upon being so notified shall
order that the invention be kept secret and shall withhold the grant of
a patent therefor under the conditions set forth hereinafter.

Whenever the publication or disclosure of an invention by the granting
of a patent, in which the Government does not have a property interest,
might, in the opinion of the Commissioner, be detrimental to the
national security, he shall make the application for patent in which
such invention is disclosed available for inspection to the Atomic
Energy Commission, the Secretary of Defense, and the chief officer of
any other department or agency of the Government designated by the
President as a defense agency of the United States.

Each individual to whom the application is disclosed shall sign a dated
acknowledgment thereof, which acknowledgment shall be entered in the
file of the application. If, in the opinion of the Atomic Energy
Commission, the Secretary of a Defense Department, or the chief officer
of another department or agency so designated, the publication or
disclosure of the invention by the 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 and the Commissioner shall order that the
invention be kept secret and shall withhold 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
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 grant of a patent
withheld for a period of more than one year. The Commissioner 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 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.

USC 35 182

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 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. The abandonment shall be held to have occurred as of the
time of violation. The consent of the Commissioner 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.

USC 35 183

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.)

USC 35 184

Filing of application in foreign country.

Except when authorized by a license obtained from the Commissioner 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 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.)

USC 35 185

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.)

USC 35 186

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.)

USC 35 187

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.

USC 35 188

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

PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE

USC 35 200

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; 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.)

USC 35 201

Definitions.

As used in this chapter -

The term "Federal agency" means any executive agency as defined in
section 105 of title 5, United States Code, and the military departments
as defined by section 102 of title 5, United States Code.

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.

The term "contractor" means any person, small business firm, or
nonprofit organization that is a party to a funding agreement.

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.).

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.

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.

The term "made" when used in relation to any invention means the
conception or first actual reduction to practice of such invention.

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.

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.

(Subsection (i) added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3019.)

(Subsection (d) amended Nov. 8, 1984, Public Law 98-620, sec. 501(1), 98
Stat. 3364.)

(Subsection (e) amended Nov. 8, 1984, Public Law 98-620, sec. 501(2), 98
Stat. 3364.)

(Subsection (i) amended Oct. 22, 1986, Public Law 99-514, sec. 2, 100
Stat. 2095.)

USC 35 202

Disposition of rights.

Each nonprofit organization or small business firm may, within a
reasonable time after disclosure as required by paragraph (c)(1) of this
section, elect to retain title to any subject invention: Provided,
however, That a funding agreement may provide otherwise (i) when the
contractor is not located in the United States or does not have a place
of business located in the United States or is subject to the control of
a foreign government, (ii) in exceptional circumstances when it is
determined by the agency that restriction or elimination of the right to
retain title to any subject invention will better promote the policy and
objectives of this chapter, (iii) when it is determined by a Government
authority which is authorized by statute or Executive order to conduct
foreign intelligence or counterintelligence activities that the
restriction or elimination of the right to retain title to any subject
invention is necessary to protect the security of such activities, or
(iv) when the funding agreement includes the operation of a
Government-owned, contractor-operated facility of the Department of
Energy primarily dedicated to that Department's naval nuclear propulsion
or weapons related programs and all funding agreement limitations under
this subparagraph on the contractor's right to elect title to a subject
invention are limited to inventions occurring under the above two
programs of the Department of Energy. The rights of the nonprofit
organization or small business firm shall be subject to the provisions
of paragraph (c) of this section and the other provisions of this
chapter.

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.

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.

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.

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 last
paragraph of section 203(2).

Each funding agreement with a small business firm or nonprofit
organization shall contain appropriate provisions to effectuate the
following:

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.

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.

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.

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.

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
of the United States Code.

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.

In the case of a nonprofit organization, (A) a prohibition upon the
assignment of rights to a subject invention in the United States without
the approval of the Federal agency, except where such assignment is made
to an organization which has as one of its primary functions the
management of inventions (provided that such assignee shall be subject
to the same provisions as the contractor); (B) a requirement that the
contractor share royalties with the inventor; (C) except with respect to
a funding agreement for the operation of a
Government-owned-contractor-operated facility, a requirement that the
balance of any royalties or income earned by the contractor with respect
to subject inventions, after payment of expenses (including payments to
inventors) incidental to the administration of subject inventions, be
utilized for the support of scientific research, or education; (D) a
requirement that, except where it 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-owned-contractor-operator facility,
requirements (i) that after payment of patenting costs, licensing costs,
payments to inventors, and other expenses incidental to the
administration of subject inventions, 100 percent of the balance of any
royalties or income earned and retained by the contractor during any
fiscal year, up to an amount equal to 5 percent of the annual budget of
the facility, shall be used by the contractor for scientific research,
development, and education consistent with the research and development
mission and objectives of the facility, including activities that
increase the licensing potential of other inventions of the facility
provided that if said balance exceeds 5 percent of the annual budget of
the facility, that 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.

The requirements of sections 203 and 204 of this chapter.

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.

In any case when a Federal employee is a coinventor of any invention
made under a funding agreement with a nonprofit organization or small
business firm, the Federal agency employing such coinventor is
authorized to transfer or assign whatever rights it may acquire in the
subject invention from its employee to the contractor subject to the
conditions set forth in this chapter.

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.

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.

(Subsection (f)(2) added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3020.)

(Subsection (a) amended Nov. 8, 1984, Public Law 98-620, sec. 501(3), 98
Stat. 3364.)

(Subsection (b)(1) and (b)(2) amended Nov. 8, 1984, Public Law 98-620,
sec. 501(4), 98 Stat. 3365.)

(Subsection (b)(4) added Nov. 8, 1984, Public Law 98-620, sec. 501(4A),
98 Stat. 3365.)

(Subsection (c)(4) amended Nov. 8, 1984, Public Law 98-620, sec. 501(5),
98 Stat. 3365.)

(Subsection (c)(5) amended Nov. 8, 1984, Public Law 98-620, sec. 501(6),
98 Stat. 3365.)

(Subsection (c)(7) amended Nov. 8, 1984, Public Law 98-620, sec. 501(7),
(8), 98 Stat. 3366.)

(Subsection (b)(3) amended Dec. 10, 1991, Public Law 102-204, sec. 10,
105 Stat. 1641.)

USC 35 203

March-in rights.

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 -

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;

action is necessary to alleviate health or safety needs which are not
reasonably satisfied by the contractor, assignee, or their licensees;

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

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.

A determination pursuant to this section or section 202(b)(4) shall not
be subject to the Contract Disputes Act (41 U.S.C. Section  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 (a) and (c), the agency's determination
shall be held in abeyance pending the exhaustion of appeals or petitions
filed under the preceding sentence.

(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3022;
amended Nov. 8, 1984, Public Law 98-620, sec. 501(9), 98 Stat. 3367;
Oct. 29, 1992, Public Law 102-572, sec. 902(b)(1), 106 Stat. 4516.)

USC 35 204

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.)

USC 35 205

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.)

USC 35 206

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.)

USC 35 207

Domestic and foreign protection of federally owned inventions.

Each Federal agency is authorized to -

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;

grant nonexclusive, exclusive, or partially exclusive licenses under
federally owned patent applications, patents, or other forms of
protection obtained, 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;

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; and

transfer custody and administration, in whole or in part, to another
Federal agency, of the right, title, or interest in any federally owned
invention.

For the purpose of assuring the effective management of Government-owned
inventions, the Secretary of Commerce authorized to -

assist Federal agency efforts to promote the licensing and utilization
of Government-owned inventions;

assist Federal agencies in seeking protection and maintaining inventions
in foreign countries, including the payment of fees and costs connected
therewith; and

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.)

USC 35 208

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.)

USC 35 209

Restrictions on licensing of federally owned inventions.

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 and/or
marketing of the invention, except that any such plan may 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 of the United States Code.

A Federal agency shall normally grant the right to use or sell any
federally owned invention in the United States only to a licensee that
agrees that any products embodying the invention or produced through the
use of the invention will be manufactured substantially in the United
States.

Each Federal agency may grant exclusive or partially exclusive licenses
in any invention covered by a federally owned domestic patent or patent
application only if, after public notice and opportunity for filing
written objections, it is determined that -

the interests of the Federal Government and the public will best be
served by the proposed license, in view of the applicant's intentions,
plans, and ability to bring the invention to practical application or
otherwise promote the invention's utilization by the public;

the desired practical application has not been achieved, or is not
likely expeditiously to be achieved, under any nonexclusive license
which has been granted, or which may be granted, on the invention;

exclusive or partially exclusive licensing is a reasonable and necessary
incentive to call forth the investment of risk capital and expenditures
to bring the invention to practical application or otherwise promote the
invention's utilization by the public; and

the proposed terms and scope of exclusivity are not greater than
reasonably necessary to provide the incentive for bringing the invention
to practical application or otherwise promote the invention's
utilization by the public.

A Federal agency shall not grant such exclusive or partially exclusive
license under paragraph (1) of this subsection if it determines that the
grant of such license will tend substantially to lessen competition or
result in undue concentration in any section of the country in any line
of commerce to which the technology to be licensed relates, or to create
or maintain other situations inconsistent with the antitrust laws.

First preference in the exclusive or partially exclusive licensing of
federally owned inventions shall go to small business firms submitting
plans that are determined by the agency to be within the capabilities of
the firms and equally likely, if executed, to bring the invention to
practical application as any plans submitted by applicants that are not
small business firms.

After consideration of whether the interests of the Federal Government
or United States industry in foreign commerce will be enhanced, any
Federal agency may grant exclusive or partially exclusive licenses in
any invention covered by a foreign patent application or patent, after
public notice and opportunity for filing written objections, except that
a Federal agency shall not grant such exclusive or partially exclusive
license if it determines that the grant of such license will tend
substantially to lessen competition or result in undue concentration in
any section of the United States in any line of commerce to which the
technology to be licensed relates, or to create or maintain other
situations inconsistent with antitrust laws.

The Federal agency shall maintain a record of determinations to grant
exclusive or partially exclusive licenses.

Any grant of a license shall contain such terms and conditions as the
Federal agency determines appropriate for the protection of the
interests of the Federal Government and the public, including provisions
for the following:

periodic reporting on the utilization or efforts at obtaining
utilization that are being made by the licensee with particular
reference to the plan submitted: Provided, That any such information may
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 of the United States Code;

the right of the Federal agency to terminate such license in whole or in
part if it determines that the licensee is not executing the plan
submitted with 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;

the right of the Federal agency to terminate such license in whole or in
part if the licensee is in breach of an agreement obtained pursuant to
paragraph (b) of this section; and

the right of the Federal agency to terminate the license in whole or in
part if the agency determines that such action 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.

(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3024.)

USC 35 210

Precedence of chapter.

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:

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);

section 205(a) of the Act of August 14, 1946 (7 U.S.C. 1624(a); 60 Stat.
1090);

section 501(c) of the Federal Mine Safety and Health Act of 1977 (30
U.S.C. 951(c); 83 Stat. 742);

section 30168(e) of title 49;

section 12 of the National Science Foundation Act of 1950 (42 U.S.C.
1871(a); 82 Stat. 360);

section 152 of the Atomic Energy Act of 1954 (42 U.S.C. 2182; 68 Stat.
943);

section 305 of the National Aeronautics and Space Act of 1958 (42 U.S.C.
2457);

section 6 of the Coal Research Development Act of 1960 (30 U.S.C. 666;
74 Stat. 337);

section 4 of the Helium Act Amendments of 1960 (50 U.S.C. 167b; 74 Stat.
920);

section 32 of the Arms Control and Disarmament Act of 1961 (22 U.S.C.
2572; 75 Stat. 634);

subsection (e) of section 302 of the Appalachian Regional Development
Act of 1965 (40 U.S.C. App. 302(e); 79 Stat. 5);

section 9 of the Federal Nonnuclear Energy Research and Development Act
of 1974 (42 U.S.C. 5901; 88 Stat. 1878);

section 5(d) of the Consumer Product Safety Act (15 U.S.C. 2054(d); 86
Stat. 1211);

section 3 of the Act of April 5, 1944 (30 U.S.C. 323; 58 Stat. 191);

section 8001(c)(3) of the Solid Waste Disposal Act (42 U.S.C. 6981(c);
90 Stat. 2829);

section 219 of the Foreign Assistance Act of 1961 (22 U.S.C. 2179; 83
Stat. 806);

section 427(b) of the Federal Mine Health and Safety Act of 1977 (30
U.S.C. 937(b); 86 Stat. 155);

section 306(d) of the Surface Mining and Reclamation Act of 1977 (30
U.S.C. 1226(d); 91 Stat. 455);

section 21(d) of the Federal Fire Prevention and Control Act of 1974 (15
U.S.C. 2218(d); 88 Stat. 1548);

section 6(b) of the Solar Photovoltaic Energy Research Development and
Demonstration Act of 1978 (42 U.S.C. 5585(b); 92 Stat. 2516);

section 12 of the Native Latex Commer cialization and Economic
Development Act of 1978 (7 U.S.C. 178(j); 92 Stat. 2533); and

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.

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.

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 paragraph 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.

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.

The provisions of the Stevenson-Wydler Technology Innovation Act of 1980
shall take precedence over the provisions of this chapter to the extent
that they permit or require a disposition of rights in subject
inventions which is inconsistent with this chapter.

(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3026.)

(Subsection (c) amended Nov. 8, 1984, Public Law 98-620, sec. 501(13),
98 Stat. 3367.)

(Subsection (e) added Oct. 20, 1986, Public Law 99-502, sec. 9(c), 100
Stat. 1796.)

(Subsection (a)(4) amended July 5, 1994, Public Law 103-272, sec. 5(j),
108 Stat. 1375.)

(Subsection (e) amended Mar. 7, 1996, Public Law 104-113, sec. 7, 110
Stat. 779.)

USC 35 211

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.)

USC 35 212

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.)

 ---SECTION---PATENTS AND PROTECTION OF PATENT RIGHTS

Chapter

AMENDMENT AND CORRECTION OF PATENTS

USC 35 251

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 then he had a right to claim in the patent, the Commissioner 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 Commissioner 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.

USC 35 252

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 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 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.)

USC 35 253

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.)

USC 35 254

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 Commissioner may issue a certificate of correction stating the fact
and nature of such mistake, under seal, without charge, to be recorded
in the records of patents. A printed copy thereof shall be attached to
each printed copy of the patent, and such certificate shall be
considered as part of the original patent. Every such patent, together
with such certificate, shall have the same effect and operation in law
on the trial of actions for causes thereafter arising as if the same had
been originally issued in such corrected form. The Commissioner 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.)

USC 35 255

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 Commissioner 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.)

USC 35 256

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
Commissioner 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 Commissioner shall
issue a certificate accordingly.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(b), 96 Stat. 320.)

Chapter

OWNERSHIP AND ASSIGNMENT

USC 35 261

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.)

USC 35 262

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

GOVERNMENT INTERESTS IN PATENTS

USC 35 266

[Repealed.]

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

USC 35 267

Time for taking action in Government applications.

Notwithstanding the provisions of sections 133 and 151 of this title,
the Commissioner 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 Commissioner that the invention disclosed therein
is important to the armament or defense of the United States.

Chapter

INFRINGEMENT OF PATENTS

USC 35 271

Infringement of patent.

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.

Whoever actively induces infringement of a patent shall be liable as an
infringer.

Whoever offers to sell or sells within the United States or imports into
the United States a component of a patented machine, manufacture,
combination, or composition, or a material or apparatus for use in
practicing a patented process, constituting a material part of the
invention, knowing the same to be especially made or especially adapted
for use in an infringement of such patent, and not a staple article or
commodity of commerce suitable for substantial noninfringing use, shall
be liable as a contributory infringer.

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.

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.

It shall be an act of infringement to submit -

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

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.

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).

For an act of infringement described in paragraph (2)-

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,

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

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.

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 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.

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 -

it is materially changed by subsequent processes; or

it becomes a trivial and nonessential component of another product.

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.

As used in this section, an "offer for sale" or an "offer to sell" by a
person other than the patentee or any assignee of the patentee, is that
in which the sale will occur before the expiration of the term of the
patent.

(Subsection (e) added Sept. 24, 1984, Public Law 98-417, sec. 202, 98
Stat. 1603.)

(Subsection (f) added Nov. 8, 1984, Public Law 98-622, sec. 101(a), 98
Stat. 3383.)

(Subsection (g) added Aug. 23, 1988, Public Law 100-418, sec. 9003, 102
Stat. 1564.)

(Subsection (e) amended Nov. 16, 1988, Public Law 100-670, sec. 201(i),
102 Stat. 3988.)

(Subsection (d) amended Nov. 19, 1988, Public Law 100-703, sec. 201, 102
Stat. 4676.)

(Subsection (h) added Oct. 28, 1992, Public Law 102-560, sec. 2(a)(1),
106 Stat. 4230.)

(Subsections (a), (c), (e), and (g) amended Dec. 8, 1994, Public Law
103-465, sec. 533(a), 108 Stat. 4988.)

(Subsection (i) added Dec. 8, 1994, Public Law 103-465, sec. 533(a), 108
Stat. 4988.)

USC 35 272

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.)

Chapter

REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

USC 35 281

Remedy for infringement of patent.

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

USC 35 282

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:

Noninfringement, absence of liability for infringement, or
unenforceability,

Invalidity of the patent or any claim in suit on any ground specified in
part II of this title as a condition for patentability,

Invalidity of the patent or any claim in suit for failure to comply with
any requirement of sections 112 or 251 of this title,

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 156 of this title because of the material failure-

by the applicant for the extension, or

by the Commissioner, to comply with the requirements of such section
shall be a defense in any action involving the infringement of a patent
during the period of the extension of its term and shall be pleaded. A
due diligence determination under section 156(d)(2) is not subject to
review in such an action.

(Amended July 24, 1965, Public Law 89-83, sec. 10, 79 Stat. 261; Nov.
14, 1975, Public Law 94-131, sec. 10, 89 Stat. 692; Apr. 2, 1982, Public
Law 97-164, sec. 161(7), 96 Stat. 49; Sept. 24, 1984, Public Law 98-417,
sec. 203, 98 Stat. 1603; Oct. 29, 1992, Public Law 102-572, sec. 902
(b)(1), 106 Stat. 4516; Nov. 1, 1995, Public Law 104-41, sec. 2, 109
Stat. 352.)

USC 35 283

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.

USC 35 284

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.

The court may receive expert testimony as an aid to the determination of
damages or of what royalty would be reasonable under the circumstances.

USC 35 285

Attorney fees.

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

USC 35 286

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.

USC 35 287

Limitation on damages and other remedies; marking and notice.

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.

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 -

practiced the patented process;

owns or controls, or is owned or controlled by, the person who practiced
the patented process; or

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.

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.

In making a determination with respect to the remedy in an action
brought for infringement under section 271(g), the court shall consider-

the good faith demonstrated by the defendant with respect to a request
for disclosure;

the good faith demonstrated by the plaintiff with respect to a request
for disclosure, and

the need to restore the exclusive rights secured by the patent.

For purposes of subparagraph (A), the following are evidence of good
faith:

a request for disclosure made by the defendant;

a response within a reasonable time by the person receiving the request
for disclosure; and

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.

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 -

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;

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

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.

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.

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.

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.

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.

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-

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

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.

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.

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.

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.

For the purposes of this subsection:

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.

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.

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.

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.

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.

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.

the term "State" shall mean any state or territory of the United States,
the District of Columbia, and the Commonwealth of Puerto Rico.

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:

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

regulated under the Federal Food, Drug, and Cosmetic Act, the Public
Health Service Act, or the Clinical Laboratories Improvement Act.

This subsection shall not apply to any patent issued before the date of
enactment of the subsection.

(Amended Aug. 23, 1988, Public Law 100-418, sec. 9004(a), 102 Stat.
1564; Dec. 8, 1994, Public Law 103-465, sec. 533(b)(5), 108 Stat. 4989.)

(Subsection (c) added Sept. 30, 1996, Public Law 104-208, sec. 616, 110
Stat. 3009.)

USC 35 288

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
disclaimer of the invalid claim has been entered at the Patent and
Trademark Office before the commencement of the suit.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949.)

USC 35 289

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.

USC 35 290

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 Commissioner, 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
Commissioner. The Commissioner shall, on receipt of such notices, enter
the same in the file of such patent.

USC 35 291

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.

USC 35 292

False marking.

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.

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.)

USC 35 293

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.)

USC 35 294

Voluntary arbitration.

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.

Arbitration of such disputes, awards by arbitrators, and confirmation of
awards shall be governed by title 9, United States Code, 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.

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 to 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.

When an award is made by an arbitrator, the patentee, his assignee or
licensee shall give notice thereof in writing to the Commissioner. 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 Commissioner.
The Commissioner 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 Commissioner, any party to the proceeding may provide
such notice to the Commissioner.

The award shall be unenforceable until the notice required by subsection
(d) is received by the Commissioner.

(Added Aug. 27, 1982, Public Law 97-247, sec. 17(b)(1), 96 Stat. 322.)

USC 35 295

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-

that a substantial likelihood exists that the product was made by the
patented process, and

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.)

USC 35 296

Liability of States, instrumentalities of States, and State officials
for infringement of patents.

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.

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.)

Chapter

PRIOR ART CITATIONS TO OFFICE AND REEXAMINATION OF PATENTS

USC 35 301

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.)

USC 35 302

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 Commissioner of Patents 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 Commissioner 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.)

USC 35 303

Determination of issue by Commissioner.

Within three months following the filing of a request for reexamination
under the provisions of section 302 of this title, the Commissioner 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 Commissioner 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.

A record of the Commissioner'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.

A determination by the Commissioner 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
Commissioner 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.)

USC 35 304

Reexamination order by Commissioner.

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

USC 35 305

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.)

USC 35 306

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.)

USC 35 307

Certificate of patentability, unpatentability, and claim cancellation.

In a reexamination proceeding under this chapter, when the time for
appeal has expired or any appeal proceeding has terminated, the
Commissioner 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.

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.)

 ---SECTION---PATENT COOPERATION TREATY

---SECTION---DEFINITIONS

USC 35 351

Definitions.

When used in this part unless the context otherwise indicates-

The term "treaty" means the Patent Cooperation Treaty done at
Washington, on June 19, 1970.

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 Commissioner under this title.

The term "international application" means an application filed under
the treaty.

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.

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.

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.

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.

The term "International Bureau" means the inter national
intergovernmental organization which is recognized as the coordinating
body under the treaty and the Regulations.

Terms and expressions not defined in this part are to be taken in the
sense indicated by the treaty and the Regulations.

(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 685; amended
Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; Nov. 6,
1986, Public Law 99-616, sec. 2 (a)-(c), 100 Stat. 3485.)

---SECTION---INTERNATIONAL STAGE

USC 35 361

Receiving Office.

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.

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.

International applications filed in the Patent and Trademark Office
shall be in the English language.

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 Commissioner.

(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; amended
Nov. 8, 1984, Public Law 98-622, sec. 401(a), 98 Stat. 3391; Nov. 6,
1986, Public Law 99-616, sec. 2 (d), 100 Stat. 3485.)

USC 35 362

International Searching Authority and International Preliminary
Examining Authority.

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.

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 Commissioner.

(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; amended
Nov. 8, 1984, Public Law 98-622, sec. 403 (a), 98 Stat. 3392; Nov. 6,
1986, Public Law 99-616, sec. 4, 100 Stat. 3485.)

USC 35 363

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.)

USC 35 364

International stage: Procedure.

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.

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
Commissioner 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 99-616, sec. 5, 100
Stat. 3485.)

USC 35 365

Right of priority; benefit of the filing date of a prior application.

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.

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.

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 Commissioner may require the filing
in the Patent and Trademark Office of a certified copy of such
application together with a translation thereof into the English
language, if it was filed in another language.

(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; amended
Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; Dec. 8,
1994, Public Law 103-465, sec. 532(c)(4), 108 Stat. 4987.)

USC 35 366

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.)

USC 35 367

Actions of other authorities: Review.

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 Commissioner, 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.

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.)

USC 35 368

Secrecy of certain inventions; filing international applications in
foreign countries.

International applications filed in the Patent and Trademark Office
shall be subject to the provisions of chapter 17 of this title.

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.

If a license to file in a foreign country is refused or if an
international application is ordered to be kept secret and a permit
refused, the Patent and Trademark Office when acting as a Receiving
Office, International Searching Authority, or International Preliminary
Examining Authority, may not disclose the contents of such application
to anyone not authorized to receive such disclosure.

(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687; amended
Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; Nov. 6,
1986, Public Law 99-616, sec. 6, 100 Stat. 3486.)

---SECTION---NATIONAL STAGE

USC 35 371

National stage: Commencement.

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.

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.

The applicant shall file in the Patent and Trademark Office -

the national fee provided in section 41(a) of this title;

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;

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;

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;

a translation into the English language of any annexes to the
international preliminary examination report, if such annexes were made
in another language.

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 Commissioner. 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 Commissioner 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 Commissioner and failure to do so shall be regarded
as cancellation of the amendments made under article 34(2)(b) of the
treaty.

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.

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.)

USC 35 372

National stage: Requirements and procedure.

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.

In case of international applications designating but not originating
in, the United States -

the Commissioner 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;

the Commissioner 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

the Commissioner 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.)

USC 35 373

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 103-465, sec. 532(c)(5), 108 Stat. 4987.)

USC 35 374

Publication of international application: Effect.

The publication under the treaty of an international application shall
confer no rights and shall have no effect under this title other than
that of a printed publication.

(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689.)

USC 35 375

Patent issued on international application: Effect.

A patent may be issued by the Commissioner 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.

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.)

USC 35 376

Fees.

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:

A transmittal fee (see section 361(d));

A search fee (see section 361(d));

A supplemental search fee (to be paid when required);

A preliminary examination fee and any additional fees (see section
362(b)).

Such other fees as established by the Commissioner.

The amounts of fees specified in subsection (a) of this section, except
the international fee and the handling fee, shall be prescribed by the
Commissioner. 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 Commissioner 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.)

---SECTION---LAWS NOT IN TITLE 35, UNITED STATES CODE

USC 18 1001

Statements or entries generally.

Whoever, in any matter within the jurisdiction of any department or
agency of the United States knowingly and willfully falsifies, conceals,
or covers up by any trick, scheme, or device a material fact, or makes
any false, fictitious or fraudulent statements or representations, or
makes or uses any false writing or document knowing the same to contain
any false, fictitious or fraudulent statement or entry, shall be fined
under this title or imprisoned not more than five years, or both.

(Amended Sept. 13, 1994, Public Law 103-322, sec. 330016(1)(L), 108
Stat. 2147.)

USC 18 2071

Concealment, removal, or mutilation generally.

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.

Whoever, having the custody of any such record, proceeding, map, book,
document, paper, or other thing, willfully and unlawfully conceals,
removes, mutilates, obliterates, falsifies, or destroys the same, shall
be fined under this title or imprisoned not more than three years, or
both; and shall forfeit his office and be disqualified from holding any
office under the United States. As used in this subsection, the term
"office" does not include the office held by any person as a retired
officer of the Armed Forces of the United States.

(Amended Nov. 5, 1990, Public Law 101-510, sec. 552(a), 104 Stat. 1566;
Sept. 13, 1994, Public Law 103-322, sec. 330016(1)(I), 108 Stat. 2147.)

---SECTION---INDEX OF PATENT LAWS

---SECTION---INDEX OF PATENT LAWS - A

Abandoned applications, fee on petition to revive  41(a)7

Abandonment of application by failure to prosecute  133, 371

Abandonment of invention:

Bar to patent  102

By violation of secrecy  182

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 Commissioner of Patents and Trademarks 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  11

Annual report of the Commissioner  14

Apostille on assignment  261

Appeals to Board of Patent Appeals and Interferences  134

Fee  41(a)6, 134

Hearing of  7

Reexamination proceedings  306

Appeals to Court of Appeals for the Federal Circuit  141

Certificate of decision of Court recorded in the Patent and Trademark
Office  144

Determination of Appeal; revision of decision  144

From Board of Patent Appeals and Interferences  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 application in certain cases 
119

Examination of invention  131

(Application:)

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 foreign application for right
of priority  119

Oath of applicant (See Oath in patent application)

Owned by Government  267

Provisional  111

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 Patent and Trademark Office to issue patent to
assignee  152

Patent may issue to assignee  152

Recording in Patent and Trademark Office  261

Assistant Commissioners:

How appointed and duties  3

Member of Board  7

Assistant Secretary of Commerce  3

Attorney fees in infringement suit  285

Attorneys and agents:

May be refused recognition for misconduct  32

Petition to District Court, DC  32

Rules for recognition made by Commissioner  31

Suspension or exclusion from practice  31, 32

Unauthorized practitioners  33

---SECTION---INDEX OF PATENT LAWS - 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  7

---SECTION---INDEX OF PATENT LAWS - 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  10

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  9

Clerk of United States Court may summon witness in

Interference cases  24

Must notify Commissioner of patent suits  290

Commerce, Department of, Patent and Trademark Office in  1

Commerce, Secretary of:

Appointments by  3

Commissioner under direction of  6

May vest functions  3

To approve rules  6, 31

Commissioner:

Annual report to Congress  14

Duties of  6

How appointed  3

May disbar attorneys  32

May establish charges  41

May make rules for taking affidavits and depositions  23

Member of Board  7

Reexamination order  304

Shall cause examination to be made  131

To establish regulations  6

To furnish court with grounds of decision, on appeal  143

To have charge of property  6

(Commissioner:)

To prescribe rules and regulations governing recognition of attorneys
and agents  31

To sign patents or have name printed thereon and attested  153

To superintend grant of patents  6

Vacancy in office  3

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

---SECTION---INDEX OF PATENT LAWS - 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  11

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, Commissioner may establish rules for  23

Deputy Commissioner  3

Member of Board  7

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

Disbarment of attorneys and agents  32

Disclaimer:

Fee  41(a)5

How filed and by whom  253

(Disclaimer:)

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

Keeping of  1

Part of patent  154

Printing of  11

When necessary  113

Duties of Commissioner  6

---SECTION---INDEX OF PATENT LAWS - E

Elected office  371, 372

Employees of 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, Patent and Trademark Office  1

Examination:

Applicants shall be notified of rejection on  132

To be made of application and alleged invention  131

Examiner-in-chief:

Duties of  7

How appointed  3

Pay rate  3

Qualifications  7

Temporary  7

Exchange of Patent and Trademark Office Publications for other
publications  11

Exchange of printed copies of patents with foreign countries  12

Executors, administrators or guardians  117

Extension of patent term  155

Extension of time to reply fee  41(a)8

---SECTION---INDEX OF PATENT LAWS - 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

(Federal assistance, inventions made with:)

Domestic and foreign protection of federally owned inventions  207

Educational awards  212

March-in rights  203

Policy and objective of  200

Precedence of chapter over other Acts  210

Preference for United States industry  204

Regulations governing Federal licensing  208

Relationship to antitrust laws  211

Restrictions on licensing of federally owned inventions  209

Uniform clauses and regulations  206

Fees:

Amount of  41

For attorney awarded by court  285

For records, publications, and services not specified in statute  41

How paid and refunded  42

Independent inventor, 50% reduction  41(h)

International  361, 376

Nonprofit organization, 50% reduction  41(h)

Payable to Commissioner  42(a)

Small business, 50% reduction  41(h)

Small entity, 50% reduction  41(h)

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 with  12

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  12

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

---SECTION---INDEX OF PATENT LAWS - G

Government interests in patents  267

---SECTION---INDEX OF PATENT LAWS - H

Holiday, time for action expiring on  21

---SECTION---INDEX OF PATENT LAWS - I

Importation of products made by a patented process  295

Improvements, patents may be granted for  101

Indexes of patents and patentees, printing of  11

Infringement, patent: Action for  281

Attorney fees  285

By United States, time limitation in suit for  286

Clerk of court to notify Patent and Trademark Office of suit  290

Contributory  271

Damages for  284

Defenses in suit for  282

Defined  271

Design patent  289

Injunction  283

Notice of, necessary to recovery of damages  287

Pleading defense and special matters to be proved in suit  282

Suit for, when a claim is invalid  288

Temporary presence in United States  272

Time limitation  286

Injunctions may be granted by court having jurisdiction  283

Insane persons, patent applications of  117

Interference, patent:

Agreements, between parties, relating to termination, 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 party  146, 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 and program funds  6

Intervening rights on reissue  252

Invalid patent claim disclaimer  288

Invalidity of term extension  282

Invention date as affected by activity abroad  104

Invention, defined  100

Invention made abroad  104

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

---SECTION---INDEX OF PATENT LAWS - J

Joint inventors  116, 256

Joint owners  262

Jurisdiction of District Court for District of Columbia  32

---SECTION---INDEX OF PATENT LAWS - K

Knowledge or use in foreign country no bar to patent  102

---SECTION---INDEX OF PATENT LAWS - L

Legal representative of dead or incapacitated inventor  117

Liability of States  296

Libraries, public, copies of patents for  13, 41

Library  8

License for foreign filing  184

Limitation on damages  286, 287

---SECTION---INDEX OF PATENT LAWS - 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

---SECTION---INDEX OF PATENT LAWS - N

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 Federal Circuit  142, 143

Of interference  135

Of patent suit, decision to be given 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

---SECTION---INDEX OF PATENT LAWS - 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 Patent and Trademark Office may attest patents  153

Officers and employees:

Of Patent and Trademark Office  3

Of Patent and Trademark Office, restrictions on as to interests in
patents  4

Official Gazette:

Exchange for publications  11

Printing and distribution of  11

Owners, joint  262

Ownership assignment  261

---SECTION---INDEX OF PATENT LAWS - P

Paris Convention  119

Patent and Trademark Office:

In Department of Commerce  1

Library  8

Printing  11

Rules, authority for  6

Seal of  2

Patent Cooperation Treaty:

Definitions  351

Patent fees  41

Disposition of  42

Patent laws, printing of  11

Patent pending, false marking as  292

Patent term extension  155

Patent term extension application  156

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  10

Classification of  9

Contents and duration of  154

Copies supplied to public libraries  13, 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 countries  12

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  11

Reissuing of, when defective  251

Rights of invention made with federal assistance  200 - 212

Restrictions on officers and employees of Patent and Trademark Office as
to interest in  4

Surrender of, to take effect on reissue  251

Term  154, 155, 155A, 156

Term extension  155, 156

(Patents:)

Term restoration  155A

Time of issue, payment of issue fee  151

To be authenticated by seal of 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

Payment to international intergovernmental organizations  6

Period for response  21, 133

Photolithography, Headings of drawings printed  11

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

Presumption of product made by patented process  295

Printed publication bar to a patent  102

Presumption of validity of patents  282

Printing:

Decisions in patent cases  11

Of papers filed  22

Patent and Trademark Office  11

Printing headings of drawings by Patent and Trademark Office  11

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 Patent and Trademark Office  1, 6

Public use or sale  102

Of invention bar to a patent  102

Publication of international application, effect  374

Publications regarding patents and trademarks  11

---SECTION---INDEX OF PATENT LAWS - R

Receiving Office  351, 361, 364, 367, 368

Recording of assignments  261

Records of Patent and Trademark Office:

Keeping of  1

Reexamination order by Commissioner  304

Reexamination procedure

Appeal  306

Certificate of patentability, unpatentability, and claim cancellation 
307

Conduct of reexamination proceedings  305

Determination of issue by Commissioner  303

Determination of new question  303

Request  302

Special dispatch  305

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 certain cases  251

By reason of defective claims  251

Effect of  252

For unexpired term of original patent  251

Intervening rights  252

Of defective patents  251

To contain no new matter  251

Rejection, applicant shall be notified of reasons for  132

Remedy for infringement of patent  281

Removal of records  18 U.S.C. 2071

Report to Congress, annual  14

Request for reexamination proceeding  302

Restoration of patent  155A

Restrictions on officers and employees of Patent and Trademark Office as
to interest in patents  4

Revival if delay unavoidable  133

Right of foreign priority  365

Right to compensation because of secrecy order  183

Rules for taking testimony, Commissioner to establish  23

Rules of practice:

Authority for  6

Printing of  11

---SECTION---INDEX OF PATENT LAWS - S

Saturday, time for action expiring on  21

Seal of 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

Specification(s):

Contents of  112

If defective, reissue to correct  251

Keeping of  1

Part of patent  154

Printing of  11, 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

---SECTION---INDEX OF PATENT LAWS - T

Term extension:

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, 6, 11

Trademark Trial and Appeal Board pay rate  3

Translation error in international application  375

---SECTION---INDEX OF PATENT LAWS - U

Unauthorized disclosure  182

Unauthorized person may not lawfully assist persons in transaction of
business before the Office  33

United States as designated office  363

United States, defined  100

Unpatented article, penalty for deceptive marking  292

Use in foreign countries, no bar to grant of patent  102

---SECTION---INDEX OF PATENT LAWS - V

Verified translation requirement  372

Voluntary arbitration  294

---SECTION---INDEX OF PATENT LAWS - 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

When in contempt, punishment  24

