Appendix L Patent Laws

United States Code Title 35 - Patents

[Editor Note: Current as of August 31, 2017. The Public Laws are the
authoritative source and should be consulted if a need arises to verify the
authenticity of the language reproduced below. ]

27 Revival of applications; reinstatement of

United States Code Title 35 - Patents reexamination proceedings.
PART I — UNITED STATES PATENT AND
TRADEMARK OFFICE CHAPTER 3 —PRACTICE BEFORE PATENT
AND TRADEMARK OFFICE
CHAPTER 1 —ESTABLISHMENT, OFFICERS
AND EMPLOYEES, FUNCTIONS
31 [Repealed]
Sec. 32 Suspension or exclusion from practice.
1 Establishment. 33 Unauthorized representation as practitioner.
2 Powers and duties.
3 Officers and employees. CHAPTER 4 —PATENT FEES; FUNDING;
SEARCH SYSTEMS
4 Restrictions on officers and employees as to
interest in patents. 41 Patent fees; patent and trademark search
5 Patent and Trademark Office Public Advisory systems.
Committees. 42 Patent and Trademark Office funding.
6 Patent Trial and Appeal Board.
United States Code Title 35 - Patents
6 (pre-AIA) Board of Patent Appeals and
PART II — PATENTABILITY OF INVENTIONS
Interferences.
AND GRANT OF PATENTS
7 Library.
8 Classification of patents. CHAPTER 10 —PATENTABILITY OF
INVENTIONS
9 Certified copies of records.
10 Publications. 100 (note) AIA First inventor to file provisions.
11 Exchange of copies of patents and applications 100 Definitions
with foreign countries. 100 (pre-AIA) Definitions.
12 Copies of patents and applications for public 101 Inventions patentable.
libraries.
102 Conditions for patentability; novelty.
13 Annual report to Congress.
102 (pre-AIA) Conditions for patentability; novelty
CHAPTER 2 —PROCEEDINGS IN THE PATENT and loss of right to patent.
AND TRADEMARK OFFICE 103 Conditions for patentability; non-obvious
subject matter.
21 Filing date and day for taking action. 103 (pre-AIA) Conditions for patentability;
22 Printing of papers filed. non-obvious subject matter.
23 Testimony in Patent and Trademark Office 104 [Repealed]
cases. 104 (pre-AIA) Invention made abroad.
24 Subpoenas, witnesses. 105 Inventions in outer space.
25 Declaration in lieu of oath.
26 Effect of defective execution. CHAPTER 11 —APPLICATION FOR PATENT

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111 Application. Rev. 08.2017, January 2018
 MANUAL OF PATENT EXAMINING PROCEDURE

111 (pre-PLT (AIA)) Application. 141 Appeal to Court of Appeals for the Federal
111 (pre-AIA) Application. Circuit.
112 Specification. 141 (pre-AIA) Appeal to Court of Appeals for the
Federal Circuit.
112 (pre-AIA) Specification.
142 Notice of appeal.
113 Drawings.
143 Proceedings on appeal.
114 Models, specimens.
143 (pre-AIA) Proceedings on appeal.
115 Inventor's oath or declaration.
144 Decision on appeal.
115 (pre-AIA) Oath of applicant.
145 Civil action to obtain patent.
116 Inventors.
145 (pre-AIA) Civil action to obtain patent.
116 (pre-AIA) Inventors.
146 Civil action in case of derivation proceeding.
117 Death or incapacity of inventor.
146 (pre-AIA) Civil action in case of interference.
118 Filing by other than inventor.
118 (pre-AIA) Filing by other than inventor. CHAPTER 14 —ISSUE OF PATENT
119 Benefit of earlier filing date; right of priority.
151 Issue of patent.
119 (pre-AIA) Benefit of earlier filing date; right
of priority. 152 Issue of patent to assignee.

120 Benefit of earlier filing date in the United 153 How issued.
States. 154 Contents and term of patent; provisional rights.
120 (pre-AIA) Benefit of earlier filing date in the 154 (pre-AIA) Contents and term of patent;
United States. provisional rights.
121 Divisional applications. 155 [Repealed.]
121 (pre-AIA) Divisional applications. 155A [Repealed.]
122 Confidential status of applications; publication 156 Extension of patent term.
of patent applications. 157 [Repealed.]
123 Micro entity defined. 157 (pre-AIA) Statutory invention registration.

CHAPTER 12 —EXAMINATION OF CHAPTER 15 —PLANT PATENTS

APPLICATION
161 Patents for plants.
131 Examination of application.
162 Description, claim.
132 Notice of rejection; reexamination.
163 Grant.
133 Time for prosecuting application.
164 Assistance of the Department of Agriculture.
134 Appeal to the Patent Trial and Appeal Board.
134 (transitional) Appeal to the Board of Patent CHAPTER 16 —DESIGNS
Appeals and Interferences.
171 Patents for designs.
134 (pre-AIA) Appeal to the Board of Patent
Appeals and Interferences. 172 Right of priority.
135 Derivation proceedings. 172 (pre-AIA) Right of priority.
135 (pre-AIA) Interferences. 173 Term of design patent.

CHAPTER 13 —REVIEW OF PATENT AND CHAPTER 17 —SECRECY OF CERTAIN

TRADEMARK OFFICE DECISION INVENTIONS AND FILING APPLICATIONS IN
FOREIGN COUNTRIES

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 PATENT LAWS

181 Secrecy of certain inventions and withholding 252 Effect of reissue.

of patent. 253 Disclaimer.
182 Abandonment of invention for unauthorized 253 (pre-AIA) Disclaimer.
disclosure.
254 Certificate of correction of Patent and
183 Right to compensation. Trademark Office mistake.
184 Filing of application in foreign country. 255 Certificate of correction of applicant’s mistake.
184 (pre-AIA) Filing of application in foreign 256 Correction of named inventor.
country.
256 (pre-AIA) Correction of named inventor.
185 Patent barred for filing without license.
257 Supplemental examinations to consider,
185 (pre-AIA) Patent barred for filing without reconsider, or correct information.
license.
186 Penalty. CHAPTER 26 —OWNERSHIP AND
187 Nonapplicability to certain persons. ASSIGNMENT

188 Rules and regulations, delegation of power. 261 Ownership; assignment.

CHAPTER 18 —PATENT RIGHTS IN 262 Joint owners.

INVENTIONS MADE WITH FEDERAL
CHAPTER 27 —GOVERNMENT INTERESTS IN
ASSISTANCE
PATENTS
200 Policy and objective.
266 [Repealed.]
201 Definitions.
267 Time for taking action in Government
202 Disposition of rights. applications.
202 (pre-AIA) Disposition of rights.
CHAPTER 28 —INFRINGEMENT OF PATENTS
203 March-in rights.
204 Preference for United States industry. 271 Infringement of patent.
205 Confidentiality. 272 Temporary presence in the United States.
206 Uniform clauses and regulations. 273 Defense to infringement based on prior
207 Domestic and foreign protection of federally commercial use.
owned inventions.
CHAPTER 29 —REMEDIES FOR
208 Regulations governing Federal licensing.
INFRINGEMENT OF PATENT, AND OTHER
209 Licensing federally owned inventions. ACTIONS
210 Precedence of chapter.
281 Remedy for infringement of patent.
211 Relationship to antitrust laws.
282 Presumption of validity; defenses.
212 Disposition of rights in educational awards.
283 Injunction.
United States Code Title 35 - Patents 284 Damages.
PART III — PATENTS AND PROTECTION OF
285 Attorney fees.
PATENT RIGHTS
286 Time limitation on damages.
CHAPTER 25 —AMENDMENT AND 287 Limitation on damages and other remedies;
CORRECTION OF PATENTS marking and notice.
251 Reissue of defective patents. 288 Action for infringement of a patent containing
an invalid claim.
251 (pre-AIA) Reissue of defective patents.

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 MANUAL OF PATENT EXAMINING PROCEDURE

288 (pre-AIA) Action for infringement of a patent 318 Decision of the Board.
containing an invalid claim. 319 Appeal.
289 Additional remedy for infringement of design
patent. CHAPTER 31 (pre-AIA) — OPTIONAL INTER
290 Notice of patent suits. PARTES REEXAMINATION PROCEDURES

291 Derived patents. 311 (pre-AIA) Request for inter partes

291 (pre-AIA) Interfering patents. reexamination.
292 False marking. 312 (transitional) Determination of issue by
293 Nonresident patentee; service and notice. Director.

294 Voluntary arbitration. 313 (transitional) Inter partes reexamination order

by Director.
295 Presumptions: Product made by patented
process. 314 (pre-AIA) Conduct of inter partes
reexamination proceedings.
296 Liability of States, instrumentalities of States,
and State officials for infringement of patents. 315 (pre-AIA) Appeal.

297 Improper and deceptive invention promotion. 316 (pre-AIA) Certificate of patentability,
unpatentability, and claim cancellation.
298 Advice of counsel.
317 (pre-AIA) Inter partes reexamination
299 Joinder of parties. prohibited.
CHAPTER 30 —PRIOR ART CITATIONS TO 318 (pre-AIA) Stay of litigation.
OFFICE AND EX PARTE REEXAMINATION OF
PATENTS CHAPTER 32 —POST-GRANT REVIEW

301 Citation of prior art and written statements. 321 (note) Post-grant review applicability.

302 Request for reexamination. 321 Post-grant review.

303 Determination of issue by Director. 322 Petitions.

304 Reexamination order by Director. 323 Preliminary response to petition.

305 Conduct of reexamination proceedings. 324 Institution of post-grant review.

305 (pre-AIA) Conduct of reexamination 325 Relation to other proceedings or actions.

proceedings. 326 Conduct of post-grant review.
306 Appeal. 327 Settlement.
307 Certificate of patentability, unpatentability, 328 Decision of the Board.
and claim cancellation. 329 Appeal.

CHAPTER 31 —INTER PARTES REVIEW United States Code Title 35 - Patents

PART IV — PATENT COOPERATION TREATY
311 (note) Inter partes review applicability
provisions. CHAPTER 35 —DEFINITIONS
311 Inter partes review.
351 Definitions.
312 Petitions.
313 Preliminary response to petition. CHAPTER 36 —INTERNATIONAL STAGE
314 Institution of inter partes review.
361 Receiving Office.
315 Relation to other proceedings or actions.
362 International Searching Authority and
316 Conduct of inter partes review. International Preliminary Examining Authority.
317 Settlement.

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 PATENT LAWS

363 International application designating the United 390 Publication of international design application.
States: Effect.
363 (pre-AIA) International application designating SELECTED PROVISIONS OF OTHER TITLES
the United States: Effect. OF THE UNITED STATES CODE
SELECT PROVISIONS OF TITLE 18, UNITED
364 International stage: Procedure. STATES CODE
365 Right of priority; benefit of the filing date of
a prior application.
18 U.S.C. 1001 Statements or entries generally.
366 Withdrawn international application.
18 U.S.C. 2071 Concealment, removal, or
367 Actions of other authorities: Review. mutilation generally.
368 Secrecy of certain inventions; filing
international applications in foreign countries. UNCODIFIED LAW
SELECT UNCODIFIED AIA PROVISIONS
CHAPTER 37 —NATIONAL STAGE

371 National stage: Commencement. AIA § 14 Tax strategies deemed within the prior
art.
372 National stage: Requirements and procedure.
AIA § 18 Transitional program for covered business
373 [Repealed]
method patents.
374 Publication of international application: Effect.
AIA § 33 Limitation on issuance of patents.
374 (pre-AIA) Publication of international
application: Effect. United States Code Title 35 - Patents
375 Patent issued on international application:
PART I — UNITED STATES PATENT AND
Effect.
TRADEMARK OFFICE
375 (pre-AIA) Patent issued on international
application: Effect. CHAPTER 1 — ESTABLISHMENT,
376 Fees. OFFICERS AND EMPLOYEES,
FUNCTIONS
United States Code Title 35 - Patents
PART V — THE HAGUE AGREEMENT Sec.
CONCERNING INTERNATIONAL 1 Establishment.
REGISTRATION OF INDUSTRIAL DESIGNS 2 Powers and duties.
3 Officers and employees.
CHAPTER 38 —INTERNATIONAL DESIGN 4 Restrictions on officers and employees as
APPLICATIONS to interest in patents.
5 Patent and Trademark Office Public
381 Definitions.
Advisory Committees.
382 Filing international design applications. 6 Patent Trial and Appeal Board.
383 International design application. 6 (pre-AIA) Board of Patent Appeals and
Interferences.
384 Filing date.
7 Library.
385 Effect of international design application. 8 Classification of patents.
386 Right of priority. 9 Certified copies of records.
387 Relief from prescribed time limits. 10 Publications.
11 Exchange of copies of patents and
388 Withdrawn or abandoned international design applications with foreign countries.
application. 12 Copies of patents and applications for
389 Examination of international design public libraries.
application. 13 Annual report to Congress.

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§1 MANUAL OF PATENT EXAMINING PROCEDURE

35 U.S.C. 1 Establishment.
provisions of section 122 relating to the confidential status of
(a) ESTABLISHMENT.— The United States Patent and
applications;
Trademark Office is established as an agency of the United
States, within the Department of Commerce. In carrying out its (D) may govern the recognition and conduct of
functions, the United States Patent and Trademark Office shall agents, attorneys, or other persons representing applicants or
be subject to the policy direction of the Secretary of Commerce, other parties before the Office, and may require them, before
but otherwise shall retain responsibility for decisions regarding being recognized as representatives of applicants or other
the management and administration of its operations and shall persons, to show that they are of good moral character and
exercise independent control of its budget allocations and reputation and are possessed of the necessary qualifications to
expenditures, personnel decisions and processes, procurements, render to applicants or other persons valuable service, advice,
and other administrative and management functions in and assistance in the presentation or prosecution of their
accordance with this title and applicable provisions of law. Those applications or other business before the Office;
operations designed to grant and issue patents and those
(E) shall recognize the public interest in continuing
operations which are designed to facilitate the registration of
to safeguard broad access to the United States patent system
trademarks shall be treated as separate operating units within
through the reduced fee structure for small entities under section
the Office.
41(h(1);
(b) OFFICES.— The United States Patent and Trademark
(F) provide for the development of a
Office shall maintain its principal office in the metropolitan
performance-based process that includes quantitative and
Washington, D.C., area, for the service of process and papers
qualitative measures and standards for evaluating
and for the purpose of carrying out its functions. The United
cost-effectiveness and is consistent with the principles of
States Patent and Trademark Office shall be deemed, for
impartiality and competitiveness; and
purposes of venue in civil actions, to be a resident of the district
in which its principal office is located, except where jurisdiction (G) may, subject to any conditions prescribed by
is otherwise provided by law. The United States Patent and the Director and at the request of the patent applicant, provide
Trademark Office may establish satellite offices in such other for prioritization of examination of applications for products,
places in the United States as it considers necessary and processes, or technologies that are important to the national
appropriate in the conduct of its business. economy or national competitiveness without recovering the
aggregate extra cost of providing such prioritization,
(c) REFERENCE.— For purposes of this title, the United
notwithstanding section 41 or any other provision of law;
States Patent and Trademark Office shall also be referred to as
the “Office” and the “Patent and Trademark Office”. (3) may acquire, construct, purchase, lease, hold,
manage, operate, improve, alter, and renovate any real, personal,
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. or mixed property, or any interest therein, as it considers
1949; amended Nov. 29, 1999, Public Law 106-113, sec. necessary to carry out its functions;
1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4711).)
(4)(A) may make such purchases, contracts for the
35 U.S.C. 2 Powers and duties. construction, or management and operation of facilities, and
contracts for supplies or services, without regard to the
(a) IN GENERAL.— The United States Patent and provisions of subtitle I and chapter 33 of title 40, division C
Trademark Office, subject to the policy direction of the Secretary (except sections 3302, 3501(b), 3509, 3906, 4710, and 4711)
of Commerce— of subtitle I of title 41, and the McKinney-Vento Homeless
(1) shall be responsible for the granting and issuing of Assistance Act (42 U.S.C. 11301 et seq.);
patents and the registration of trademarks; and (B) may enter into and perform such purchases
(2) shall be responsible for disseminating to the public and contracts for printing services, including the process of
information with respect to patents and trademarks. composition, platemaking, presswork, silk screen processes,
binding, microform, and the products of such processes, as it
(b) SPECIFIC POWERS.— The Office— considers necessary to carry out the functions of the Office,
(1) shall adopt and use a seal of the Office, which shall without regard to sections 501 through 517 and 1101 through
be judicially noticed and with which letters patent, certificates 1123 of title 44;
of trademark registrations, and papers issued by the Office shall (5) may use, with their consent, services, equipment,
be authenticated; personnel, and facilities of other departments, agencies, and
(2) may establish regulations, not inconsistent with instrumentalities of the Federal Government, on a reimbursable
law, which— basis, and cooperate with such other departments, agencies, and
instrumentalities in the establishment and use of services,
(A) shall govern the conduct of proceedings in the equipment, and facilities of the Office;
Office;
(6) may, when the Director determines that it is
(B) shall be made in accordance with section 553 practicable, efficient, and cost-effective to do so, use, with the
of title 5; consent of the United States and the agency, instrumentality,
(C) shall facilitate and expedite the processing of Patent and Trademark Office, or international organization
patent applications, particularly those which can be filed, stored, concerned, the services, records, facilities, or personnel of any
processed, searched, and retrieved electronically, subject to the State or local government agency or instrumentality or foreign

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 PATENT LAWS §3

patent and trademark office or international organization to (3) Nothing in subsection (b) shall derogate from the
perform functions on its behalf; duties and functions of the Register of Copyrights or otherwise
alter current authorities relating to copyright matters.
(7) may retain and use all of its revenues and receipts,
including revenues from the sale, lease, or disposal of any real, (4) In exercising the Director’s powers under
personal, or mixed property, or any interest therein, of the Office; paragraphs (3) and (4)(A) of subsection (b), the Director shall
consult with the Administrator of General Services.
(8) shall advise the President, through the Secretary of
Commerce, on national and certain international intellectual (5) In exercising the Director’s powers and duties under
property policy issues; this section, the Director shall consult with the Register of
Copyrights on all copyright and related matters.
(9) shall advise Federal departments and agencies on
matters of intellectual property policy in the United States and (d) CONSTRUCTION.— Nothing in this section shall be
intellectual property protection in other countries; construed to nullify, void, cancel, or interrupt any pending
request-for-proposal let or contract issued by the General
(10) shall provide guidance, as appropriate, with respect
Services Administration for the specific purpose of relocating
to proposals by agencies to assist foreign governments and
or leasing space to the United States Patent and Trademark
international intergovernmental organizations on matters of
Office.
intellectual property protection;
(11) may conduct programs, studies, or exchanges of (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
items or services regarding domestic and international 1949; amended Nov. 29, 1999, Public Law 106-113, sec.
intellectual property law and the effectiveness of intellectual 1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4712); subsection
property protection domestically and throughout the world, and (b)(4)(A) amended Oct. 30, 2000, Public Law 106-400, sec. 2,
the Office is authorized to expend funds to cover the subsistence 114 Stat. 1675; subsections (b)(2)(B) and (b)(4)(B) amended
expenses and travel-related expenses, including per diem, Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904;
lodging costs, and transportation costs, of persons attending subsection (b)(4)(A) amended Dec. 15, 2003, Public Law
such programs who are not Federal employees; 108-178, sec. 4(g), 117 Stat. 2641; subsection (b)(4)(A) amended
January 4, 2011, Public Law 111-350, sec. 5(i)(1), 124 Stat.
(12) 3849; subsection (b)(2)(G) added and subsections (b)(2)(E) and
(A) shall advise the Secretary of Commerce on (b)(11) amended Sept. 16, 2011, Public Law 112-29, secs. 20(j),
programs and studies relating to intellectual property policy that 21(a), and 25 (effective Sept. 16, 2012), 125 Stat. 284.)
are conducted, or authorized to be conducted, cooperatively
with foreign intellectual property offices and international 35 U.S.C. 3 Officers and employees.
intergovernmental organizations; and (a) UNDER SECRETARY AND DIRECTOR.—
(B) may conduct programs and studies described (1) IN GENERAL.— The powers and duties of the
in subparagraph (A); and United States Patent and Trademark Office shall be vested in
(13) an Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office (in
(A) in coordination with the Department of State, this title referred to as the “Director”), who shall be a citizen of
may conduct programs and studies cooperatively with foreign the United States and who shall be appointed by the President,
intellectual property offices and international intergovernmental by and with the advice and consent of the Senate. The Director
organizations; and shall be a person who has a professional background and
(B) with the concurrence of the Secretary of State, experience in patent or trademark law.
may authorize the transfer of not to exceed $100,000 in any year (2) DUTIES.—
to the Department of State for the purpose of making special
payments to international intergovernmental organizations for (A) IN GENERAL.— The Director shall be
studies and programs for advancing international cooperation responsible for providing policy direction and management
concerning patents, trademarks, and other matters. supervision for the Office and for the issuance of patents and
the registration of trademarks. The Director shall perform these
(c) CLARIFICATION OF SPECIFIC POWERS.— duties in a fair, impartial, and equitable manner.
(1) The special payments under subsection (b)(13)(B) (B) CONSULTING WITH THE PUBLIC
shall be in addition to any other payments or contributions to ADVISORY COMMITTEES.— The Director shall consult with
international organizations described in subsection (b)(13)(B) the Patent Public Advisory Committee established in section 5
and shall not be subject to any limitations imposed by law on on a regular basis on matters relating to the patent operations
the amounts of such other payments or contributions by the of the Office, shall consult with the Trademark Public Advisory
United States Government. Committee established in section 5 on a regular basis on matters
(2) Nothing in subsection (b) shall derogate from the relating to the trademark operations of the Office, and shall
duties of the Secretary of State or from the duties of the United consult with the respective Public Advisory Committee before
States Trade Representative as set forth in section 141 of the submitting budgetary proposals to the Office of Management
Trade Act of 1974 (19 U.S.C. 2171). and Budget or changing or proposing to change patent or
trademark user fees or patent or trademark regulations which
are subject to the requirement to provide notice and opportunity

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§3 MANUAL OF PATENT EXAMINING PROCEDURE

for public comment under section 553 of title 5, as the case may the Secretary. Payment of a bonus under this subparagraph may
be. be made to the Commissioners only to the extent that such
payment does not cause the Commissioners’ total aggregate
(3) OATH.— The Director shall, before taking office,
compensation in a calendar year to equal or exceed the amount
take an oath to discharge faithfully the duties of the Office.
of the salary of the Vice President under section 104 of title 3.
(4) REMOVAL.— The Director may be removed from
(C) REMOVAL.— The Commissioners may be
office by the President. The President shall provide notification
removed from office by the Secretary for misconduct or
of any such removal to both Houses of Congress.
nonsatisfactory performance under the performance agreement
(b) OFFICERS AND EMPLOYEES OF THE OFFICE.— described in subparagraph (B), without regard to the provisions
(1) DEPUTY UNDER SECRETARY AND DEPUTY of title 5. The Secretary shall provide notification of any such
DIRECTOR.— The Secretary of Commerce, upon nomination removal to both Houses of Congress.
by the Director, shall appoint a Deputy Under Secretary of (3) OTHER OFFICERS AND EMPLOYEES.— The
Commerce for Intellectual Property and Deputy Director of the Director shall—
United States Patent and Trademark Office who shall be vested
(A) appoint such officers, employees (including
with the authority to act in the capacity of the Director in the
attorneys), and agents of the Office as the Director considers
event of the absence or incapacity of the Director. The Deputy
necessary to carry out the functions of the Office; and
Director shall be a citizen of the United States who has a
professional background and experience in patent or trademark (B) define the title, authority, and duties of such
law. officers and employees and delegate to them such of the powers
vested in the Office as the Director may determine.
(2) COMMISSIONERS.—
(A) APPOINTMENT AND DUTIES.— The The Office shall not be subject to any administratively or
Secretary of Commerce shall appoint a Commissioner for Patents statutorily imposed limitation on positions or personnel, and no
and a Commissioner for Trademarks, without regard to chapter positions or personnel of the Office shall be taken into account
33, 51, or 53 of title 5. The Commissioner for Patents shall be for purposes of applying any such limitation.
a citizen of the United States with demonstrated management
ability and professional background and experience in patent (4) TRAINING OF EXAMINERS.— The Office shall
law and serve for a term of 5 years. The Commissioner for submit to the Congress a proposal to provide an incentive
Trademarks shall be a citizen of the United States with program to retain as employees patent and trademark examiners
demonstrated management ability and professional background of the primary examiner grade or higher who are eligible for
and experience in trademark law and serve for a term of 5 years. retirement, for the sole purpose of training patent and trademark
The Commissioner for Patents and the Commissioner for examiners.
Trademarks shall serve as the chief operating officers for the (5) NATIONAL SECURITY POSITIONS.— The
operations of the Office relating to patents and trademarks, Director, in consultation with the Director of the Office of
respectively, and shall be responsible for the management and Personnel Management, shall maintain a program for identifying
direction of all aspects of the activities of the Office that affect national security positions and providing for appropriate security
the administration of patent and trademark operations, clearances, in order to maintain the secrecy of certain inventions,
respectively. The Secretary may reappoint a Commissioner to as described in section 181, and to prevent disclosure of sensitive
subsequent terms of 5 years as long as the performance of the and strategic information in the interest of national security.
Commissioner as set forth in the performance agreement in
subparagraph (B) is satisfactory. (6) ADMINISTRATIVE PATENT JUDGES AND
ADMINISTRATIVE TRADEMARK JUDGES.—The Director
(B) SALARY AND PERFORMANCE may fix the rate of basic pay for the administrative patent judges
AGREEMENT.— The Commissioners shall be paid an annual appointed pursuant to section 6 and the administrative trademark
rate of basic pay not to exceed the maximum rate of basic pay judges appointed pursuant to section 17 of the Trademark Act
for the Senior Executive Service established under section 5382 of 1946 (15 U.S.C. 1067) at not greater than the rate of basic
of title 5, including any applicable locality-based comparability pay payable for level III of the Executive Schedule under section
payment that may be authorized under section 5304(h)(2)(C) 5314 of title 5. The payment of a rate of basic pay under this
of title 5. The compensation of the Commissioners shall be paragraph shall not be subject to the pay limitation under section
considered, for purposes of section 207(c)(2)(A) of title 18, to 5306(e) or 5373 of title 5.
be the equivalent of that described under clause (ii) of section
207(c)(2)(A) of title 18. In addition, the Commissioners may (c) CONTINUED APPLICABILITY OF TITLE 5. —
receive a bonus in an amount of up to, but not in excess of, 50 Officers and employees of the Office shall be subject to the
percent of the Commissioners’ annual rate of basic pay, based provisions of title 5, relating to Federal employees.
upon an evaluation by the Secretary of Commerce, acting (d) ADOPTION OF EXISTING LABOR
through the Director, of the Commissioners’ performance as AGREEMENTS.— The Office shall adopt all labor agreements
defined in an annual performance agreement between the which are in effect, as of the day before the effective date of the
Commissioners and the Secretary. The annual performance Patent and Trademark Office Efficiency Act, with respect to
agreements shall incorporate measurable organization and such Office (as then in effect).
individual goals in key operational areas as delineated in an
annual performance plan agreed to by the Commissioners and (e) CARRYOVER OF PERSONNEL.—

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 PATENT LAWS §5

(1) FROM PTO.— Effective as of the effective date sec. 4713); subsections (a)(2)(B), (b)(2), and (c) amended Nov.
of the Patent and Trademark Office Efficiency Act, all officers 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904;
and employees of the Patent and Trademark Office on the day subsection (b)(6) added and (e)(2) amended Sept. 16, 2011,
before such effective date shall become officers and employees Public Law 112-29, secs. 20(i) and 21(b) (effective Sept. 16,
of the Office, without a break in service. 2012), 125 Stat. 284.)

(2) OTHER PERSONNEL.— Any individual who, on 35 U.S.C. 4 Restrictions on officers and employees as to
the day before the effective date of the Patent and Trademark interest in patents.
Office Efficiency Act, is an officer or employee of the
Department of Commerce (other than an officer or employee Officers and employees of the Patent and Trademark Office
under paragraph (1)) shall be transferred to the Office, as shall be incapable, during the period of their appointments and
necessary to carry out the purposes of that Act, if— for one year thereafter, of applying for a patent and of acquiring,
directly or indirectly, except by inheritance or bequest, any
(A) such individual serves in a position for which
patent or any right or interest in any patent, issued or to be issued
a major function is the performance of work reimbursed by the
by the Office. In patents applied for thereafter they shall not be
Patent and Trademark Office, as determined by the Secretary
entitled to any priority date earlier than one year after the
of Commerce;
termination of their appointment.
(B) such individual serves in a position that
performed work in support of the Patent and Trademark Office (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
during at least half of the incumbent’s work time, as determined 1949.)
by the Secretary of Commerce; or
(C) such transfer would be in the interest of the 35 U.S.C. 5 Patent and Trademark Office Public Advisory
Office, as determined by the Secretary of Commerce in Committees.
consultation with the Director.
(a) ESTABLISHMENT OF PUBLIC ADVISORY
COMMITTEES.—
Any transfer under this paragraph shall be effective as of the
(1) APPOINTMENT.— The United States Patent and
same effective date as referred to in paragraph (1), and shall be
Trademark Office shall have a Patent Public Advisory
made without a break in service.
Committee and a Trademark Public Advisory Committee, each
(f) TRANSITION PROVISIONS.— of which shall have nine voting members who shall be appointed
(1) INTERIM APPOINTMENT OF DIRECTOR.— by the Secretary of Commerce and serve at the pleasure of the
On or after the effective date of the Patent and Trademark Office Secretary of Commerce. In each year, 3 members shall be
Efficiency Act, the President shall appoint an individual to serve appointed to each Advisory Committee for 3-year terms that
as the Director until the date on which a Director qualifies under shall begin on December 1 of that year. Any vacancy on an
subsection (a). The President shall not make more than one such Advisory Committee shall be filled within 90 days after it occurs.
appointment under this subsection. A new member who is appointed to fill a vacancy shall be
appointed to serve for the remainder of the predecessor’s term.
(2) CONTINUATION IN OFFICE OF CERTAIN
OFFICERS.— (2) CHAIR.— The Secretary of Commerce, in
consultation with the Director, shall designate a Chair and Vice
(A) The individual serving as the Assistant Chair of each Advisory Committee from among the members
Commissioner for Patents on the day before the effective date appointed under paragraph (1). If the Chair resigns before the
of the Patent and Trademark Office Efficiency Act may serve completion of his or her term, or is otherwise unable to exercise
as the Commissioner for Patents until the date on which a the functions of the Chair, the Vice Chair shall exercise the
Commissioner for Patents is appointed under subsection (b). functions of the Chair.
(B) The individual serving as the Assistant (b) BASIS FOR APPOINTMENTS.— Members of each
Commissioner for Trademarks on the day before the effective Advisory Committee—
date of the Patent and Trademark Office Efficiency Act may
serve as the Commissioner for Trademarks until the date on (1) shall be citizens of the United States who shall be
which a Commissioner for Trademarks is appointed under chosen so as to represent the interests of diverse users of the
subsection (b). United States Patent and Trademark Office with respect to
patents, in the case of the Patent Public Advisory Committee,
(Amended Sept. 6, 1958, Public Law 85-933, sec. 1, 72 Stat. and with respect to trademarks, in the case of the Trademark
1793; Sept. 23, 1959, Public Law 86-370, sec. 1(a), 73 Stat. Public Advisory Committee;
650; Aug. 14, 1964, Public Law 88-426, sec. 305(26), 78 Stat.
(2) shall include members who represent small and
425; Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Jan.
large entity applicants located in the United States in proportion
2, 1975, Public Law 93-601, sec. 1, 88 Stat. 1956; Aug. 27,
to the number of applications filed by such applicants, but in no
1982, Public Law 97-247, sec. 4, 96 Stat. 319; Oct. 25, 1982,
case shall members who represent small entity patent applicants,
Public Law 97-366, sec. 4, 96 Stat. 1760; Nov. 8, 1984, Public
including small business concerns, independent inventors, and
Law 98-622, sec. 405, 98 Stat. 3392; Oct. 28, 1998, Public Law
nonprofit organizations, constitute less than 25 percent of the
105-304, sec. 401(a)(1), 112 Stat. 2887; Nov. 29, 1999, Public
members of the Patent Public Advisory Committee, and such
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-575 (S. 1948
members shall include at least one independent inventor; and

L-9 Rev. 08.2017, January 2018

§6 MANUAL OF PATENT EXAMINING PROCEDURE

(j) INAPPLICABILITY OF PATENT PROHIBITION.—

(3) shall include individuals with substantial
Section 4 shall not apply to voting members of the Advisory
background and achievement in finance, management, labor
Committees.
relations, science, technology, and office automation. In addition
to the voting members, each Advisory Committee shall include (Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
a representative of each labor organization recognized by the 113 Stat. 1501A-578 (S. 1948 sec. 4714); subsections (e) and
United States Patent and Trademark Office. Such representatives (g) amended Nov. 2, 2002, Public Law 107-273, sec. 13206,
shall be nonvoting members of the Advisory Committee to 116 Stat. 1904; subsection (i) amended and subsection (j) added
which they are appointed. Nov. 2, 2002, Public Law 107-273, sec. 13203, 116 Stat. 1902;
(c) MEETINGS.— Each Advisory Committee shall meet subsection (a) amended Jan. 14, 2013, Public Law 112-274, sec.
at the call of the chair to consider an agenda set by the chair. 1(l), 126 Stat. 2456.)

(d) DUTIES.— Each Advisory Committee shall— 35 U.S.C. 6 Patent Trial and Appeal Board.
(1) review the policies, goals, performance, budget,
[Editor Note: Applicable to proceedings commenced on or after
and user fees of the United States Patent and Trademark Office
September 16, 2012.* See 35 U.S.C. 6 (pre-AIA) for the law
with respect to patents, in the case of the Patent Public Advisory
otherwise applicable.]
Committee, and with respect to Trademarks, in the case of the
Trademark Public Advisory Committee, and advise the Director
on these matters; (a) IN GENERAL.—There shall be in the Office a Patent
Trial and Appeal Board. The Director, the Deputy Director, the
(2) within 60 days after the end of each fiscal year— Commissioner for Patents, the Commissioner for Trademarks,
(A) prepare an annual report on the matters referred and the administrative patent judges shall constitute the Patent
to in paragraph (1); Trial and Appeal Board. The administrative patent judges shall
be persons of competent legal knowledge and scientific ability
(B) transmit the report to the Secretary of who are appointed by the Secretary, in consultation with the
Commerce, the President, and the Committees on the Judiciary Director. Any reference in any Federal law, Executive order,
of the Senate and the House of Representatives; and rule, regulation, or delegation of authority, or any document of
(C) publish the report in the Official Gazette of the or pertaining to the Board of Patent Appeals and Interferences
United States Patent and Trademark Office. is deemed to refer to the Patent Trial and Appeal Board.

(e) COMPENSATION.— Each member of each Advisory (b) DUTIES.—The Patent Trial and Appeal Board shall—
Committee shall be compensated for each day (including travel (1) on written appeal of an applicant, review adverse
time) during which such member is attending meetings or decisions of examiners upon applications for patents pursuant
conferences of that Advisory Committee or otherwise engaged to section 134(a);
in the business of that Advisory Committee, at the rate which
is the daily equivalent of the annual rate of basic pay in effect (2) review appeals of reexaminations pursuant to
for level III of the Executive Schedule under section 5314 of section 134(b);
title 5. While away from such member’s home or regular place (3) conduct derivation proceedings pursuant to section
of business such member shall be allowed travel expenses, 135; and
including per diem in lieu of subsistence, as authorized by
section 5703 of title 5. (4) conduct inter partes reviews and post-grant reviews
pursuant to chapters 31 and 32.
(f) ACCESS TO INFORMATION.— Members of each
Advisory Committee shall be provided access to records and (c) 3-MEMBER PANELS.—Each appeal, derivation
information in the United States Patent and Trademark Office, proceeding, post-grant review, and inter partes review shall be
except for personnel or other privileged information and heard by at least 3 members of the Patent Trial and Appeal
information concerning patent applications required to be kept Board, who shall be designated by the Director. Only the Patent
in confidence by section 122. Trial and Appeal Board may grant rehearings.

(g) APPLICABILITY OF CERTAIN ETHICS LAWS.— (d) TREATMENT OF PRIOR APPOINTMENTS.—The

Members of each Advisory Committee shall be special Secretary of Commerce may, in the Secretary’s discretion, deem
Government employees within the meaning of section 202 of the appointment of an administrative patent judge who, before
title 18. the date of the enactment of this subsection, held office pursuant
to an appointment by the Director to take effect on the date on
(h) INAPPLICABILITY OF FEDERAL ADVISORY which the Director initially appointed the administrative patent
COMMITTEE ACT.— The Federal Advisory Committee Act judge. It shall be a defense to a challenge to the appointment of
(5 U.S.C. App.) shall not apply to each Advisory Committee. an administrative patent judge on the basis of the judge’s having
(i) OPEN MEETINGS.— The meetings of each Advisory been originally appointed by the Director that the administrative
Committee shall be open to the public, except that each Advisory patent judge so appointed was acting as a de facto officer.
Committee may by majority vote meet in executive session (Repealed by Public Law 106-113, sec. 1000(a)(9), 113 Stat.
when considering personnel, privileged, or other confidential 1501A-580 (S. 1948 sec. 4715(a).)
information.

Rev. 08.2017, January 2018 L-10

 PATENT LAWS §9

(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), *NOTE: The provisions of this section as in effect on Sept. 15,
113 Stat. 1501A-580 (S. 1948 sec. 4717(2)); subsection (a) 2012 apply to interference proceedings that are declared after
amended Nov. 2, 2002, Public Law 107-273, sec. 13203, 116 September 15, 2012 under 35 U.S.C. 135 (pre-AIA). See Public
Stat. 1902; subsection(a) amended and subsections (c) and (d) Law 112-274, sec. 1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
added Aug. 12, 2008, Public Law 110-313, sec. 1(a)(1), 122
Stat. 3014; amended Sept. 16, 2011, Public Law 112-29, sec. 35 U.S.C. 7 Library.
7(a) (effective Sept. 16, 2012), 125 Stat. 284.*)
The Director shall maintain a library of scientific and other
works and periodicals, both foreign and domestic, in the Patent
*NOTE: The provisions of this section as in effect on Sept. 15, and Trademark Office to aid the officers in the discharge of their
2012 (35 U.S.C. 6 (pre-AIA)) apply to interference proceedings duties.
that are declared after September 15, 2012 under 35 U.S.C. 135
(pre-AIA). See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456
(Jan. 14, 2013). (Repealed Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
35 U.S.C. 6 (pre-AIA) Board of Patent Appeals and
Interferences. (Transferred from 35 U.S.C. 8 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec.
[Editor Note: Not applicable to proceedings commenced on or 4717(1)); amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
after September 16, 2012.* See 35 U.S.C. 6 for the law otherwise Stat. 1949.)
applicable.]

(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),

(a) ESTABLISHMENT AND COMPOSITION.— There
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
shall be in the United States Patent and Trademark Office a
Board of Patent Appeals and Interferences. The Director, the 35 U.S.C. 8 Classification of patents.
Deputy Director, the Commissioner for Patents, the
Commissioner for Trademarks, and the administrative patent The Director may revise and maintain the classification by
judges shall constitute the Board. The administrative patent subject matter of United States letters patent, and such other
judges shall be persons of competent legal knowledge and patents and printed publications as may be necessary or
scientific ability who are appointed by the Secretary of practicable, for the purpose of determining with readiness and
Commerce, in consultation with the Director. accuracy the novelty of inventions for which applications for
(b) DUTIES.— The Board of Patent Appeals and patent are filed.
Interferences shall, on written appeal of an applicant, review
adverse decisions of examiners upon applications for patents (Transferred to 35 U.S.C. 7 Nov. 29, 1999, Public Law 106-113,
and shall determine priority and patentability of invention in sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
interferences declared under section 135(a). Each appeal and
interference shall be heard by at least three members of the
(Transferred from 35 U.S.C. 9 Nov. 29, 1999, Public Law
Board, who shall be designated by the Director. Only the Board
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec.
of Patent Appeals and Interferences may grant rehearings.
4717(1)).)
(c) AUTHORITY OF THE SECRETARY.— The Secretary
of Commerce may, in his or her discretion, deem the (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
appointment of an administrative patent judge who, before the 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
date of the enactment of this subsection, held office pursuant to
an appointment by the Director to take effect on the date on 35 U.S.C. 9 Certified copies of records.
which the Director initially appointed the administrative patent
judge. The Director may furnish certified copies of specifications and
drawings of patents issued by the Patent and Trademark Office,
(d) DEFENSE TO CHALLENGE OF APPOINTMENT.—
and of other records available either to the public or to the person
It shall be a defense to a challenge to the appointment of an
applying therefor.
administrative patent judge on the basis of the judge's having
been originally appointed by the Director that the administrative
patent judge so appointed was acting as a de facto officer. (Transferred to 35 U.S.C. 8 Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Repealed by Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-580 (S. 1948 sec. 4715(a).)
(Transferred from 35 U.S.C. 10 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 4717(1)); amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
113 Stat. 1501A-580 (S. 1948 sec. 4717(2)); subsection (a) Stat. 1949.)
amended Nov. 2, 2002, Public Law 107-273, sec. 13203, 116
Stat. 1902; subsection(a) amended and subsections (c) and (d)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
added Aug. 12, 2008, Public Law 110-313, sec. 1(a)(1), 122
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
Stat. 3014.)

L-11 Rev. 08.2017, January 2018

§ 10 MANUAL OF PATENT EXAMINING PROCEDURE

35 U.S.C. 10 Publications.
4717(1)); amended Nov. 29, 1999, Public Law 106-113, sec.
(a) The Director may publish in printed, typewritten, or 1000(a)(9), 113 Stat. 1501A-591 (S. 1948 sec. 4808).)
electronic form, the following:
(1) Patents and published applications for patents, (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
including specifications and drawings, together with copies of 113 Stat. 1501A-565, 582 (S. 1948 secs. 4507(2)(A), 4507(2)(B),
the same. The Patent and Trademark Office may print the and 4732(a)(10)(A)).)
headings of the drawings for patents for the purpose of
35 U.S.C. 12 Copies of patents and applications for public
photolithography.
libraries.
(2) Certificates of trademark registrations, including
statements and drawings, together with copies of the same. The Director may supply copies of specifications and drawings
of patents and published applications for patents in printed or
(3) The Official Gazette of the United States Patent
electronic form to public libraries in the United States which
and Trademark Office.
shall maintain such copies for the use of the public, at the rate
(4) Annual indexes of patents and patentees, and of for each year’s issue established for this purpose in section 41(d).
trademarks and registrants.
(5) Annual volumes of decisions in patent and (Transferred to 35 U.S.C. 11 Nov. 29, 1999, Public Law
trademark cases. 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec.
4717(1)).)
(6) Pamphlet copies of the patent laws and rules of
practice, laws and rules relating to trademarks, and circulars or
other publications relating to the business of the Office. (Transferred from 35 U.S.C. 13 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec.
(b) The Director may exchange any of the publications 4717(1)); amended Aug. 27, 1982, Public Law 97-247, sec. 15,
specified in items 3, 4, 5, and 6 of subsection (a) of this section 96 Stat. 321; amended Nov. 29, 1999, Public Law 106-113, sec.
for publications desirable for the use of the Patent and 1000(a)(9), 113 Stat. 1501A-565, 566, 580, 582, and 589 (S.
Trademark Office. 1948 secs. 4507(3)(A), 4507(3)(B), 4507(4), 4717(1),
(Transferred to 35 U.S.C. 9 Nov. 29, 1999, Public Law 106-113, 4732(a)(10)(A), and 4804(c)); amended Sept. 16, 2011, Public
sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).) Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat 284.)

35 U.S.C. 13 Annual report to Congress.

(Transferred from 35 U.S.C. 11 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. The Director shall report to the Congress, not later than 180
4717(1)); amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 days after the end of each fiscal year, the moneys received and
Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), expended by the Office, the purposes for which the moneys
113 Stat. 1501A-589 (S. 1948 sec. 4804(b)).) were spent, the quality and quantity of the work of the Office,
the nature of training provided to examiners, the evaluation of
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), the Commissioner of Patents and the Commissioner of
113 Stat. 1501A-565, 582 (S. 1948 secs. 4507(1) and Trademarks by the Secretary of Commerce, the compensation
4732(a)(10)(A)).) of the Commissioners, and other information relating to the
Office.
35 U.S.C. 11 Exchange of copies of patents and applications
with foreign countries. (Transferred to 35 U.S.C. 12 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec.
The Director may exchange copies of specifications and 4717(1)).)
drawings of United States patents and published applications
for patents for those of foreign countries. The Director shall not
enter into an agreement to provide such copies of specifications (Transferred from 35 U.S.C. 14 Nov. 29, 1999, Public Law
and drawings of United States patents and applications to a 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec.
foreign country, other than a NAFTA country or a WTO member 4717(1)).)
country, without the express authorization of the Secretary of
Commerce. For purposes of this section, the terms “NAFTA (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
country” and “WTO member country” have the meanings given 113 Stat. 1501A-565, 581 (S. 1948 secs. 4507(2), 4718).)
those terms in section 104(b).
CHAPTER 2 — PROCEEDINGS IN THE
(Transferred to 35 U.S.C. 10 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec.
PATENT AND TRADEMARK OFFICE
4717(1)).)
Sec.
(Transferred from 35 U.S.C. 12 Nov. 29, 1999, Public Law 21 Filing date and day for taking action.
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec. 22 Printing of papers filed.

Rev. 08.2017, January 2018 L-12

 PATENT LAWS § 27

23 Testimony in Patent and Trademark Office the attendance of witnesses and to the production of documents
cases. and things shall apply to contested cases in the Patent and
24 Subpoenas, witnesses. Trademark Office.
25 Declaration in lieu of oath.
Every witness subpoenaed and in attendance shall be allowed
26 Effect of defective execution. the fees and traveling expenses allowed to witnesses attending
27 Revival of applications; reinstatement of the United States district courts.
reexamination proceedings.
35 U.S.C. 21 Filing date and day for taking action. A judge of a court whose clerk issued a subpoena may enforce
obedience to the process or punish disobedience as in other like
(a) The Director may by rule prescribe that any paper or cases, on proof that a witness, served with such subpoena,
fee required to be filed in the Patent and Trademark Office will neglected or refused to appear or to testify. No witness shall be
be considered filed in the Office on the date on which it was deemed guilty of contempt for disobeying such subpoena unless
deposited with the United States Postal Service or would have his fees and traveling expenses in going to, and returning from,
been deposited with the United States Postal Service but for and one day’s attendance at the place of examination, are paid
postal service interruptions or emergencies designated by the or tendered him at the time of the service of the subpoena; nor
Director. for refusing to disclose any secret matter except upon appropriate
order of the court which issued the subpoena.
(b) When the day, or the last day, for taking any action or
paying any fee in the United States Patent and Trademark Office
falls on Saturday, Sunday, or a Federal holiday within the (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
District of Columbia, the action may be taken, or fee paid, on 1949.)
the next succeeding secular or business day.
35 U.S.C. 25 Declaration in lieu of oath.
(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; (a) The Director may by rule prescribe that any document
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. to be filed in the Patent and Trademark Office and which is
1501A-582 (S. 1948 sec. 4732(a)(10)(A)).) required by any law, rule, or other regulation to be under oath
may be subscribed to by a written declaration in such form as
35 U.S.C. 22 Printing of papers filed. the Director may prescribe, such declaration to be in lieu of the
oath otherwise required.
The Director may require papers filed in the Patent and
(b) Whenever such written declaration is used, the
Trademark Office to be printed, typewritten, or on an electronic
document must warn the declarant that willful false statements
medium.
and the like are punishable by fine or imprisonment, or both (18
U.S.C. 1001).
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 (Added Mar. 26, 1964, Public Law 88-292, sec. 1, 78 Stat. 171;
Stat. 1501A-582, 589 (S. 1948 secs. 4732(a)(10)(A), 4804(a)).) amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949;
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
35 U.S.C. 23 Testimony in Patent and Trademark Office 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
cases.
35 U.S.C. 26 Effect of defective execution.
The Director may establish rules for taking affidavits and
depositions required in cases in the Patent and Trademark Office. Any document to be filed in the Patent and Trademark Office
Any officer authorized by law to take depositions to be used in and which is required by any law, rule, or other regulation to
the courts of the United States, or of the State where he resides, be executed in a specified manner may be provisionally accepted
may take such affidavits and depositions. by the Director despite a defective execution, provided a
properly executed document is submitted within such time as
may be prescribed.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).) (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;
35 U.S.C. 24 Subpoenas, witnesses. Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
The clerk of any United States court for the district wherein
testimony is to be taken for use in any contested case in the 35 U.S.C. 27 Revival of applications; reinstatement of
Patent and Trademark Office, shall, upon the application of any reexamination proceedings.
party thereto, issue a subpoena for any witness residing or being
within such district, commanding him to appear and testify The Director may establish procedures, including the
before an officer in such district authorized to take depositions requirement for payment of the fee specified in section 41(a)(7),
and affidavits, at the time and place stated in the subpoena. The to revive an unintentionally abandoned application for patent,
provisions of the Federal Rules of Civil Procedure relating to accept an unintentionally delayed payment of the fee for issuing

L-13 Rev. 08.2017, January 2018

§ 31 MANUAL OF PATENT EXAMINING PROCEDURE

each patent, or accept an unintentionally delayed response by prosecute applications for patent, shall be fined not more than
the patent owner in a reexamination proceeding, upon petition $1,000 for each offense.
by the applicant for patent or patent owner.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
(Added Dec. 18, 2012, Public Law 112-211, sec. 201(b)(1), 126 1949.)
Stat. 1534).
CHAPTER 4 — PATENT FEES;
CHAPTER 3 — PRACTICE BEFORE FUNDING; SEARCH SYSTEMS
PATENT AND TRADEMARK OFFICE
Sec.
Sec. 41 Patent fees; patent and trademark search
31 [Repealed.] systems.
32 Suspension or exclusion from practice. 42 Patent and Trademark Office funding.
33 Unauthorized representation as practitioner.
35 U.S.C. 41 Patent fees; patent and trademark search
35 U.S.C. 31 [Repealed.] systems.

(Repealed Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), (a) GENERAL FEES. — The Director shall charge the
113 Stat. 1501A-580 (S. 1948 sec. 4715(b)).) following fees:
(1) FILING AND BASIC NATIONAL FEES. —
35 U.S.C. 32 Suspension or exclusion from practice.
(A) On filing each application for an original
The Director may, after notice and opportunity for a hearing, patent, except for design, plant, or provisional applications,
suspend or exclude, either generally or in any particular case, $330.
from further practice before the Patent and Trademark Office,
(B) On filing each application for an original
any person, agent, or attorney shown to be incompetent or
design patent, $220.
disreputable, or guilty of gross misconduct, or who does not
comply with the regulations established under section 2(b)(2)(D), (C) On filing each application for an original plant
or who shall, by word, circular, letter, or advertising, with intent patent, $220.
to defraud in any manner, deceive, mislead, or threaten any (D) On filing each provisional application for an
applicant or prospective applicant, or other person having original patent, $220.
immediate or prospective business before the Office. The reasons
for any such suspension or exclusion shall be duly recorded. (E) On filing each application for the reissue of a
The Director shall have the discretion to designate any attorney patent, $330.
who is an officer or employee of the United States Patent and (F) The basic national fee for each international
Trademark Office to conduct the hearing required by this section. application filed under the treaty defined in section 351(a)
A proceeding under this section shall be commenced not later entering the national stage under section 371, $330.
than the earlier of either the date that is 10 years after the date
on which the misconduct forming the basis for the proceeding (G) In addition, excluding any sequence listing or
occurred, or 1 year after the date on which the misconduct computer program listing filed in electronic medium as
forming the basis for the proceeding is made known to an officer prescribed by the Director, for any application the specification
or employee of the Office as prescribed in the regulations and drawings of which exceed 100 sheets of paper (or equivalent
established under section 2(b)(2)(D). The United States District as prescribed by the Director if filed in an electronic medium),
Court for the Eastern District of Virginia, under such conditions $270 for each additional 50 sheets of paper (or equivalent as
and upon such proceedings as it by its rules determines, may prescribed by the Director if filed in an electronic medium) or
review the action of the Director upon the petition of the person fraction thereof.
so refused recognition or so suspended or excluded. (2) EXCESS CLAIMS FEES. —
(A) IN GENERAL. — In addition to the fee
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.1949; specified in paragraph (1) —
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-580, 581, 582 (S. 1948 secs. 4715(c), 4719, (i) on filing or on presentation at any other
4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29, time, $220 for each claim in independent form in excess of 3;
secs. 3(k) and 9 (effective Sept. 16, 2011) and 20(j) (effective (ii) on filing or on presentation at any other
Sept. 16, 2012), 125 Stat. 284.) time, $52 for each claim (whether dependent or independent)
in excess of 20; and
35 U.S.C. 33 Unauthorized representation as practitioner.
(iii) for each application containing a multiple
Whoever, not being recognized to practice before the Patent and dependent claim, $390.
Trademark Office, holds himself out or permits himself to be
(B) MULTIPLE DEPENDENT CLAIMS.— For
held out as so recognized, or as being qualified to prepare or
the purpose of computing fees under subparagraph (A), a

Rev. 08.2017, January 2018 L-14

 PATENT LAWS § 41

a patent in force, for the delayed submission of a priority or

multiple dependent claim referred to in section 112 or any claim
benefit claim, or for the extension of the 12-month period for
depending therefrom shall be considered as separate dependent
filing a subsequent application, $1,700.00. The Director may
claims in accordance with the number of claims to which
refund any part of the fee specified in this paragraph, in
reference is made.
exceptional circumstances as determined by the Director.
(C) REFUNDS; ERRORS IN PAYMENT.— The
(8) EXTENSION FEES. — For petitions for 1-month
Director may by regulation provide for a refund of any part of
extensions of time to take actions required by the Director in an
the fee specified in subparagraph (A) for any claim that is
application —
canceled before an examination on the merits, as prescribed by
the Director, has been made of the application under section (A) on filing a first petition, $130;
131. Errors in payment of the additional fees under this
(B) on filing a second petition, $360; and
paragraph may be rectified in accordance with regulations
prescribed by the Director. (C) on filing a third or subsequent petition, $620.
(3) EXAMINATION FEES. — (b) MAINTENANCE FEES. —
(A) IN GENERAL.— (1) IN GENERAL.— The Director shall charge the
following fees for maintaining in force all patents based on
(i) For examination of each application for an
applications filed on or after December 12, 1980:
original patent, except for design, plant, provisional, or
international applications, $220. (A) Three years and 6 months after grant, $980.
(ii) For examination of each application for an (B) Seven years and 6 months after grant, $2,480.
original design patent, $140. (C) Eleven years and 6 months after grant, $4,110.
(iii) For examination of each application for (2) GRACE PERIOD; SURCHARGE.— Unless
an original plant patent, $170. payment of the applicable maintenance fee under paragraph (1)
(iv) For examination of the national stage of is received in the Office on or before the date the fee is due or
each international application, $220. within a grace period of 6 months thereafter, the patent shall
expire as of the end of such grace period. The Director may
(v) For examination of each application for
require the payment of a surcharge as a condition of accepting
the reissue of a patent, $650.
within such 6-month grace period the payment of an applicable
(B) APPLICABILITY OF OTHER FEE maintenance fee.
PROVISIONS.— The provisions of paragraphs (3) and (4) of
(3) NO MAINTENANCE FEE FOR DESIGN OR
section 111(a) relating to the payment of the fee for filing the
PLANT PATENT.— No fee may be established for maintaining
application shall apply to the payment of the fee specified in
a design or plant patent in force.
subparagraph (A) with respect to an application filed under
section 111(a). The provisions of section 371(d) relating to the (c) DELAYS IN PAYMENT OF MAINTENANCE
payment of the national fee shall apply to the payment of the FEES.—
fee specified subparagraph (A) with respect to an international (1) ACCEPTANCE.—The Director may accept the
application. payment of any maintenance fee required by subsection (b) after
(4) ISSUE FEES. — the 6-month grace period if the delay is shown to the satisfaction
of the Director to have been unintentional. The Director may
(A) For issuing each original patent, except for
require the payment of the fee specified in subsection (a)(7) as
design or plant patents, $1,510.
a condition of accepting payment of any maintenance fee after
(B) For issuing each original design patent, $860. the 6-month grace period. If the Director accepts payment of a
maintenance fee after the 6-month grace period, the patent shall
(C) For issuing each original plant patent, $1,190.
be considered as not having expired at the end of the grace
(D) For issuing each reissue patent, $1,510. period.
(5) DISCLAIMER FEE. — On filing each disclaimer, (2) EFFECT ON RIGHTS OF OTHERS.— A patent,
$140. the term of which has been maintained as a result of the
(6) APPEAL FEES. — acceptance of a payment of a maintenance fee under this
subsection, shall not abridge or affect the right of any person or
(A) On filing an appeal from the examiner to the that person’s successors in business who made, purchased,
Patent Trial and Appeal Board, $540. offered to sell, or used anything protected by the patent within
(B) In addition, on filing a brief in support of the the United States, or imported anything protected by the patent
appeal, $540, and on requesting an oral hearing in the appeal into the United States after the 6-month grace period but prior
before the Patent Trial and Appeal Board, $1,080. 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
(7) REVIVAL FEES. — On filing each petition for used, offered for sale, or sold, the specific thing so made,
the revival of an abandoned application for a patent, for the purchased, offered for sale, used, or imported. The court before
delayed payment of the fee for issuing each patent, for the which such matter is in question may provide for the continued
delayed response by the patent owner in any reexamination manufacture, use, offer for sale, or sale of the thing made,
proceeding, for the delayed payment of the fee for maintaining

L-15 Rev. 08.2017, January 2018

§ 41 MANUAL OF PATENT EXAMINING PROCEDURE

purchased, offered for sale, or used within the United States, or

imported into the United States, as specified, or for the (i) For recording a document affecting title,
manufacture, use, offer for sale, or sale in the United States of $40 per property.
which substantial preparation was made after the 6-month grace (ii) For each photocopy, $.25 per page.
period but before the acceptance of a maintenance fee under
this subsection, and the court may also provide for the continued (iii) For each black and white copy of a patent,
practice of any process that is practiced, or for the practice of $3.
which substantial preparation was made, after the 6-month grace (B) COPIES FOR LIBRARIES.—The yearly fee
period but before the acceptance of a maintenance fee under for providing a library specified in section 12 with uncertified
this subsection, to the extent and under such terms as the court printed copies of the specifications and drawings for all patents
deems equitable for the protection of investments made or in that year shall be $50.
business commenced after the 6-month grace period but before
the acceptance of a maintenance fee under this subsection. (e) WAIVER OF FEES; COPIES REGARDING
NOTICE.— The Director may waive the payment of any fee
(d) PATENT SEARCH AND OTHER FEES. — for any service or material related to patents in connection with
(1) PATENT SEARCH FEES. — an occasional or incidental request made by a department or
agency of the Government, or any officer thereof. The Director
(A) IN GENERAL.— The Director shall charge may provide any applicant issued a notice under section 132
the fees specified under subparagraph (B) for the search of each with a copy of the specifications and drawings for all patents
application for a patent, except for provisional applications. The referred to in that notice without charge.
Director shall adjust the fees charged under this paragraph to
ensure that the fees recover an amount not to exceed the (f) ADJUSTMENT OF FEES.— The fees established in
estimated average cost to the Office of searching applications subsections (a) and (b) of this section may be adjusted by the
for patent by Office personnel. Director on October 1, 1992, and every year thereafter, to reflect
any fluctuations occurring during the previous 12 months in the
(B) SPECIFIC FEES.—The fees referred to in Consumer Price Index, as determined by the Secretary of Labor.
subparagraph (A) are— Changes of less than 1 per centum may be ignored.
(i) $540 for each application for an original (g) [Repealed.]
patent, except for design, plant, provisional, or international
applications; (h) FEES FOR SMALL ENTITIES.—
(ii) $100 for each application for an original (1) REDUCTIONS IN FEES.— Subject to paragraph
design patent; (3), fees charged under subsections (a), (b) and (d)(1) shall be
reduced by 50 percent with respect to their application to any
(iii) $330 for each application for an original small business concern as defined under section 3 of the Small
plant patent; Business Act, and to any independent inventor or nonprofit
(iv) $540 for the national stage of each organization as defined in regulations issued by the Director.
international application; and (2) SURCHARGES AND OTHER FEES.— With
(v) $540 for each application for the reissue respect to its application to any entity described in paragraph
of a patent. (1), any surcharge or fee charged under subsection (c) or (d)
shall not be higher than the surcharge or fee required of any
(C) APPLICABILITY OF OTHER
other entity under the same or substantially similar
PROVISIONS.— The provisions of paragraphs (3) and (4) of
circumstances.
section 111(a) relating to the payment of the fee for filing the
application shall apply to the payment of the fee specified in (3) REDUCTION FOR ELECTRONIC FILING.—
this paragraph with respect to an application filed under section The fee charged under subsection (a)(l)(A) shall be reduced by
111(a). The provisions of section 371(d) relating to the payment 75 percent with respect to its application to any entity to which
of the national fee shall apply to the payment of the fee specified paragraph (1) applies, if the application is filed by electronic
in this paragraph with respect to an international application. means as prescribed by the Director.
(D) REFUNDS.— The Director may by regulation (i) ELECTRONIC PATENT AND TRADEMARK
provide for a refund of any part of the fee specified in this DATA.—
paragraph for any applicant who files a written declaration of (1) MAINTENANCE OF COLLECTIONS.— The
express abandonment as prescribed by the Director before an Director shall maintain, for use by the public, paper, microform
examination has been made of the application under section or electronic collections of United States patents, foreign patent
131. documents, and United States trademark registrations arranged
(2) OTHER FEES.— to permit search for and retrieval of information. The Director
may not impose fees directly for the use of such collections, or
(A) IN GENERAL.— The Director shall establish
for the use of the public patent and trademark search rooms or
fees for all other processing, services, or materials relating to
libraries.
patents not specified in this section to recover the estimated
average cost to the Office of such processing, services, or (2) AVAILABILITY OF AUTOMATED SEARCH
materials, except that the Director shall charge the following SYSTEMS.— The Director shall provide for the full deployment
fees for the following services: of the automated search systems of the Patent and Trademark

Rev. 08.2017, January 2018 L-16

 PATENT LAWS § 42

to the Director to carry out the activities of the Patent and

Office so that such systems are available for use by the public,
Trademark Office.
and shall assure full access by the public to, and dissemination
of, patent and trademark information, using a variety of (2) There is established in the Treasury a Patent and
automated methods, including electronic bulletin boards and Trademark Fee Reserve Fund. If fee collections by the Patent
remote access by users to mass storage and retrieval systems. and Trademark Office for a fiscal year exceed the amount
appropriated to the Office for that fiscal year, fees collected in
(3) ACCESS FEES.— The Director may establish
excess of the appropriated amount shall be deposited in the
reasonable fees for access by the public to the automated search
Patent and Trademark Fee Reserve Fund. To the extent and in
systems of the Patent and Trademark Office. If such fees are
the amounts provided in appropriations Acts, amounts in the
established, a limited amount of free access shall be made
Fund shall be made available until expended only for obligation
available to users of the systems for purposes of education and
and expenditure by the Office in accordance with paragraph (3).
training. The Director may waive the payment by an individual
of fees authorized by this subsection upon a showing of need (3)(A) Any fees that are collected under this title,
or hardship, and if such waiver is in the public interest. and any surcharges on such fees, may only be used for expenses
of the Office relating to the processing of patent applications
(4) ANNUAL REPORT TO CONGRESS.— The
and for other activities, services, and materials relating to patents
Director shall submit to the Congress an annual report on the
and to cover a proportionate share of the administrative costs
automated search systems of the Patent and Trademark Office
of the Office.
and the access by the public to such systems. The Director shall
also publish such report in the Federal Register. The Director (B) Any fees that are collected under section 31
shall provide an opportunity for the submission of comments of the Trademark Act of 1946, and any surcharges on such fees,
by interested persons on each such report. may only be used for expenses of the Office relating to the
processing of trademark registrations and for other activities,
(Amended July 24, 1965, Public Law 89-83, sec. 1, 2, 79 Stat. services, and materials relating to trademarks and to cover a
259; Jan. 2, 1975, Public Law 93-596, sec. 1, Jan. 2, 1975, 88 proportionate share of the administrative costs of the Office.
Stat. 1949; Nov. 14, 1975, Public Law 94-131, sec. 3, 89 Stat.
690; subsection (g) amended Dec. 12, 1980, Public Law 96-517, (d) The Director may refund any fee paid by mistake or
sec. 2, 94 Stat. 3017; Aug. 27, 1982, Public Law 97-247, sec. any amount paid in excess of that required.
3(a)-(e), 96 Stat. 317; subsections (a)-(d) amended Sept. 8, 1982, (e) The Secretary of Commerce shall, on the day each year
Public Law 97-256, sec. 101, 96 Stat. 816; subsection (a)(6) on which the President submits the annual budget to the
amended Nov. 8, 1984, Public Law 98-622, sec. 204(a), 98 Stat. Congress, provide to the Committees on the Judiciary of the
3388; subsection (h) added Nov. 6, 1986, Public Law 99-607, Senate and the House of Representatives:
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 (1) a list of patent and trademark fee collections by the
Stat. 1637; subsections (a)(9) - (15) and (i) added Dec. 10, 1991, Patent and Trademark Office during the preceding fiscal year;
Public Law 102-204, sec. 5, 105 Stat. 1637; subsection (c)(1) (2) a list of activities of the Patent and Trademark
amended Oct. 23, 1992, Public Law 102-444, sec. 1, 106 Stat. Office during the preceding fiscal year which were supported
2245; subsection (a)(1)(C) added Dec. 8, 1994, Public Law by patent fee expenditures, trademark fee expenditures, and
103-465, sec. 532(b)(2), 108 Stat. 4986; subsection (c)(2) appropriations;
amended, Dec. 8, 1994, Public Law 103-465, sec. 533(b)(1),
108 Stat. 4988; subsections (a)-(b) revised Nov. 10, 1998, Public (3) budget plans for significant programs, projects, and
Law 105-358, sec. 3, 112 Stat. 3272.; amended Nov. 29, 1999, activities of the Office, including out-year funding estimates;
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-554, 570, (4) any proposed disposition of surplus fees by the
582, 589 (S. 1948 secs. 4202, 4605(a), 4732(a)(5), Office; and
4732(a)(10)(A)) and 4804(d)); amended Sept. 16, 2011, Public
(5) such other information as the committees consider
Law 112-29, secs. 11 (effective Sept. 16, 2011) and 20(j)
necessary.
(effective Sept. 16, 2012), 125 Stat. 284; subsections (a)(7) and
(c)(1) amended Dec. 18, 2012, Public Law 112-211, sec. (Amended Nov. 14, 1975, Public Law 94-131, sec. 4, 89 Stat.
202(b)(1), 126 Stat. 1535.) 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.
35 U.S.C. 42 Patent and Trademark Office funding. 13, 1982, Public Law 97-258, sec. 3(i), 96 Stat. 1065; subsection
(a) All fees for services performed by or materials furnished (c) amended Dec. 10, 1991, Public Law 102-204, sec. 5(e), 105
by the Patent and Trademark Office will be payable to the Stat. 1640; subsection (e) added Dec. 10, 1991, Public Law
Director. 102-204, sec. 4, 105 Stat. 1637; subsection (c) revised Nov. 10,
1998, Public Law 105-358, sec. 4, 112 Stat. 3274; amended
(b) All fees paid to the Director and all appropriations for Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
defraying the costs of the activities of the Patent and Trademark 1501A-555, 582 (S. 1948 secs. 4205 and 4732(a)(10)(A));
Office will be credited to the Patent and Trademark Office subsection (c) amended Sept. 16, 2011, Public Law 112-29, sec.
Appropriation Account in the Treasury of the United States. 22, 125 Stat. 284, effective Oct. 1, 2011; subsection (c)(3)
(c)(1) To the extent and in the amounts provided in amended Jan. 14, 2013, Public Law 112-274, sec. 1(j), 126 Stat.
advance in appropriations Acts, fees authorized in this title or 2456.)
any other Act to be charged or established by the Director shall
be collected by and shall, subject to paragraph (3), be available

L-17 Rev. 08.2017, January 2018

§ 100 (note) MANUAL OF PATENT EXAMINING PROCEDURE

PART II — PATENTABILITY OF INVENTIONS When used in this title unless the context otherwise indicates -
AND GRANT OF PATENTS
(a) The term “invention” means invention or discovery.
CHAPTER 10 — PATENTABILITY OF (b) The term “process” means process, art, or method, and
INVENTIONS includes a new use of a known process, machine, manufacture,
composition of matter, or material.

Sec. (c) The terms “United States” and “this country” mean the
United States of America, its territories and possessions.
100 (note) AIA First inventor to file provisions.
100 Definitions. (d) The word “patentee” includes not only the patentee to
whom the patent was issued but also the successors in title to
100 (pre-AIA) Definitions.
the patentee.
101 Inventions patentable.
(e) The term “third-party requester” means a person
102 Conditions for patentability; novelty.
requesting ex parte reexamination under section 302 who is not
102 (pre-AIA) Conditions for patentability; the patent owner.
novelty and loss of right to patent.
(f) The term "inventor" means the individual or, if a joint
103 Conditions for patentability; non-obvious invention, the individuals collectively who invented or
subject matter. discovered the subject matter of the invention.
103 (pre-AIA) Conditions for patentability; (g) The terms "joint inventor" and "coinventor" mean any
non-obvious subject matter. 1 of the individuals who invented or discovered the subject
104 [Repealed.] matter of a joint invention.
104 (pre-AIA) Invention made abroad. (h) The term "joint research agreement" means a written
105 Inventions in outer space. contract, grant, or cooperative agreement entered into by 2 or
more persons or entities for the performance of experimental,
35 U.S.C. 100 (note) AIA First inventor to file provisions. developmental, or research work in the field of the claimed
invention.
The first inventor to file provisions of the Leahy-Smith America
Invents Act (AIA) apply to any application for patent, and to (i)(1) The term "effective filing date" for a claimed
any patent issuing thereon, that contains or contained at any invention in a patent or application for patent means—
time— (A) if subparagraph (B) does not apply, the actual
filing date of the patent or the application for the patent
(A) a claim to a claimed invention that has an effective containing a claim to the invention; or
filing date on or after March 16, 2013 wherein the effective
filing date is: (B) the filing date of the earliest application for
which the patent or application is entitled, as to such invention,
(i) if subparagraph (ii) does not apply, the actual filing to a right of priority under section 119, 365(a), 365(b), 386(a),
date of the patent or the application for the patent containing a or 386(b) or to the benefit of an earlier filing date under section
claim to the invention; or 120, 121, 365(c), or 386(c).
(ii) the filing date of the earliest application for which (2) The effective filing date for a claimed invention in
the patent or application is entitled, as to such invention, to a an application for reissue or reissued patent shall be determined
right of priority under section 119, 365(a), 365(b), 386(a), or by deeming the claim to the invention to have been contained
386(b) or to the benefit of an earlier filing date under section in the patent for which reissue was sought.
120 , 121, 365(c), or 386(c); or
(j) The term "claimed invention" means the subject matter
(B) a specific reference under section 120 , 121, 365(c), defined by a claim in a patent or an application for a patent.
or 386(c) of title 35, United States Code, to any patent or
application that contains or contained at any time such a claim. (Subsection (e) added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-567 (S. 1948 sec. 4603); subsection
(Sept. 16, 2011, Public Law 112-29, sec. 3(n)(1) (effective (e) amended and subsections (f) - (j) added Sept. 16, 2011,
March 16, 2013), 125 Stat. 284; references to 35 U.S.C. 386 Public Law 112-29, sec. 3(a) (effective March 16, 2013), 125
added Dec. 18, 2012, Public Law 112-211, sec. 102(1) (effective Stat. 284.); subsection (i)(1)(B) amended Dec. 18, 2012, Public
May 13, 2015), 126 Stat. 1531.) Law 112-211, sec. 102(1) (effective May 13, 2015), 126 Stat.
1531.)
35 U.S.C. 100 Definitions.
35 U.S.C. 100 (pre-AIA) Definitions.
[Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only
applicable to patent applications and patents subject to the first [Editor Note: pre-AIA 35 U.S.C. 100(e) as set forth below is
inventor to file provisions of the AIA (35 U.S.C. 100 (note)). See not applicable to any patent application subject to the first
35 U.S.C. 100(e) (pre-AIA) for subsection (e) as otherwise inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)).
applicable.] See 35 U.S.C. 100(e)-(j) for the law otherwise applicable.]

Rev. 08.2017, January 2018 L-18

 PATENT LAWS § 102

When used in this title unless the context otherwise indicates -

(A) the subject matter disclosed was obtained
***** directly or indirectly from the inventor or a joint inventor;

(e) The term “third-party requester” means a person (B) the subject matter disclosed had, before such
requesting ex parte reexamination under section 302 or inter subject matter was effectively filed under subsection (a)(2),
partes reexamination under section 311 who is not the patent been publicly disclosed by the inventor or a joint inventor or
owner. another who obtained the subject matter disclosed directly or
indirectly from the inventor or a joint inventor; or
(Subsection (e) added Nov. 29, 1999, Public Law 106-113, sec. (C) the subject matter disclosed and the claimed
1000(a)(9), 113 Stat. 1501A-567 (S. 1948 sec. 4603).) invention, not later than the effective filing date of the claimed
invention, were owned by the same person or subject to an
35 U.S.C. 101 Inventions patentable.
obligation of assignment to the same person.
Whoever invents or discovers any new and useful process, (c) COMMON OWNERSHIP UNDER JOINT RESEARCH
machine, manufacture, or composition of matter, or any new AGREEMENTS.—Subject matter disclosed and a claimed
and useful improvement thereof, may obtain a patent therefor, invention shall be deemed to have been owned by the same
subject to the conditions and requirements of this title. person or subject to an obligation of assignment to the same
person in applying the provisions of subsection (b)(2)(C) if—
(Public Law 112-29, sec. 33, 125 Stat. 284 (Sept. 16, 2011) (1) the subject matter disclosed was developed and the
provided a limitation on the issuance of patents (see AIA § 33).) claimed invention was made by, or on behalf of, 1 or more
parties to a joint research agreement that was in effect on or
35 U.S.C. 102 Conditions for patentability; novelty.
before the effective filing date of the claimed invention;
[Editor Note: Applicable to any patent application subject to (2) the claimed invention was made as a result of
the first inventor to file provisions of the AIA (see 35 U.S.C. 100 activities undertaken within the scope of the joint research
(note)). See 35 U.S.C. 102 (pre-AIA) for the law otherwise agreement; and
applicable.]
(3) the application for patent for the claimed invention
discloses or is amended to disclose the names of the parties to
(a) NOVELTY; PRIOR ART.—A person shall be entitled the joint research agreement.
to a patent unless—
(d) PATENTS AND PUBLISHED APPLICATIONS
(1) the claimed invention was patented, described in a EFFECTIVE AS PRIOR ART.—For purposes of determining
printed publication, or in public use, on sale, or otherwise whether a patent or application for patent is prior art to a claimed
available to the public before the effective filing date of the invention under subsection (a)(2), such patent or application
claimed invention; or shall be considered to have been effectively filed, with respect
(2) the claimed invention was described in a patent to any subject matter described in the patent or application—
issued under section 151, or in an application for patent (1) if paragraph (2) does not apply, as of the actual
published or deemed published under section 122(b), in which filing date of the patent or the application for patent; or
the patent or application, as the case may be, names another
inventor and was effectively filed before the effective filing date (2) if the patent or application for patent is entitled to
of the claimed invention. claim a right of priority under section 119, 365(a), 365(b),
386(a), or 386(b), or to claim the benefit of an earlier filing date
(b) EXCEPTIONS.— under section 120, 121, 365(c), or 386(c) based upon 1 or more
(1) DISCLOSURES MADE 1 YEAR OR LESS prior filed applications for patent, as of the filing date of the
BEFORE THE EFFECTIVE FILING DATE OF THE earliest such application that describes the subject matter.
CLAIMED INVENTION.—A disclosure made 1 year or less
(Amended July 28, 1972, Public Law 92-358, sec. 2, 86 Stat.
before the effective filing date of a claimed invention shall not
501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89 Stat. 691;
be prior art to the claimed invention under subsection (a)(1) if—
subsection (e) amended Nov. 29, 1999, Public Law 106-113,
(A) the disclosure was made by the inventor or sec. 1000(a)(9), 113 Stat. 1501A-565 (S. 1948 sec. 4505);
joint inventor or by another who obtained the subject matter subsection (g) amended Nov. 29, 1999, Public Law 106-113,
disclosed directly or indirectly from the inventor or a joint sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948 sec. 4806);
inventor; or subsection (e) amended Nov. 2, 2002, Public Law 107-273, sec.
(B) the subject matter disclosed had, before such 13205, 116 Stat. 1903; amended Sept. 16, 2011, Public Law
disclosure, been publicly disclosed by the inventor or a joint 112-29, sec. 3(b), 125 Stat. 284, effective March 16, 2013.*;
inventor or another who obtained the subject matter disclosed subsection (d)(2) amended Dec. 18, 2012, Public Law 112-211,
directly or indirectly from the inventor or a joint inventor. sec. 102(2) (effective May 13, 2015), 126 Stat. 1531.))

(2) DISCLOSURES APPEARING IN

(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011)
APPLICATIONS AND PATENTS.—A disclosure shall not be
provided that tax strategies are deemed to be within the prior
prior art to a claimed invention under subsection (a)(2) if—
art (see AIA § 14).)

L-19 Rev. 08.2017, January 2018

§ 102 (pre-AIA) MANUAL OF PATENT EXAMINING PROCEDURE

*NOTE: The provisions of 35 U.S.C. 102(g), as in effect on was first to conceive and last to reduce to practice, from a time
March 15, 2013, shall also apply to each claim of an prior to conception by the other.
application for patent, and any patent issued thereon, for which
(Amended July 28, 1972, Public Law 92-358, sec. 2, 86 Stat.
the first inventor to file provisions of the AIA apply (see 35
501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89 Stat. 691;
U.S.C. 100 (note)), if such application or patent contains or
subsection (e) amended Nov. 29, 1999, Public Law 106-113,
contained at any time a claim to a claimed invention to which
sec. 1000(a)(9), 113 Stat. 1501A-565 (S. 1948 sec. 4505);
is not subject to the first inventor to file provisions of the AIA.]
subsection (g) amended Nov. 29, 1999, Public Law 106-113,
35 U.S.C. 102 (pre-AIA) Conditions for patentability; sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948 sec. 4806);
novelty and loss of right to patent. subsection (e) amended Nov. 2, 2002, Public Law 107-273, sec.
13205, 116 Stat. 1903.)
[Editor Note: With the exception of subsection (g)*), not
applicable to any patent application subject to the first inventor (Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011)
to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 provided that tax strategies are deemed to be within the prior
U.S.C. 102 for the law otherwise applicable.] art (see AIA § 14).)

A person shall be entitled to a patent unless — *NOTE: The provisions of 35 U.S.C. 102(g), as in effect on
March 15, 2013, shall apply to each claim of an application
(a) the invention was known or used by others in this for patent, and any patent issued thereon, for which the first
country, or patented or described in a printed publication in this inventor to file provisions of the AIA apply (see 35 U.S.C. 100
or a foreign country, before the invention thereof by the applicant (note), if such application or patent contains or contained at any
for patent, or time—
(b) the invention was patented or described in a printed
publication in this or a foreign country or in public use or on (A) a claim to an invention having an effective filing date as
sale in this country, more than one year prior to the date of the defined in section 100(i) of title 35, United States Code, that
application for patent in the United States, or occurs before March 16, 2013; or
(c) he has abandoned the invention, or
(B) a specific reference under section 120, 121, or 365(c) of
(d) the invention was first patented or caused to be patented, title 35, United States Code, to any patent or application that
or was the subject of an inventor’s certificate, by the applicant contains or contained at any time such a claim.
or his legal representatives or assigns in a foreign country prior
to the date of the application for patent in this country on an 35 U.S.C. 103 Conditions for patentability; non-obvious
application for patent or inventor’s certificate filed more than subject matter.
twelve months before the filing of the application in the United
States, or [Editor Note: Applicable to any patent application subject to
the first inventor to file provisions of the AIA (see 35 U.S.C. 100
(e) the invention was described in — (1) an application for
(note)). See 35 U.S.C. 103 (pre-AIA) for the law otherwise
patent, published under section 122(b), by another filed in the
applicable.]
United States before the invention by the applicant for patent
or (2) a patent granted on an application for patent by another
filed in the United States before the invention by the applicant A patent for a claimed invention may not be obtained,
for patent, except that an international application filed under notwithstanding that the claimed invention is not identically
the treaty defined in section 351(a) shall have the effects for the disclosed as set forth in section 102, if the differences between
purposes of this subsection of an application filed in the United the claimed invention and the prior art are such that the claimed
States only if the international application designated the United invention as a whole would have been obvious before the
States and was published under Article 21(2) of such treaty in effective filing date of the claimed invention to a person having
the English language; or ordinary skill in the art to which the claimed invention pertains.
Patentability shall not be negated by the manner in which the
(f) he did not himself invent the subject matter sought to invention was made.
be patented, or
(g) (1) during the course of an interference conducted under (Amended Nov. 8, 1984, Public Law 98-622, sec. 103, 98 Stat.
section 135 or section 291, another inventor involved therein 3384; Nov. 1, 1995, Public Law 104-41, sec.1, 109 Stat. 3511;
establishes, to the extent permitted in section 104, that before subsection (c) amended Nov. 29, 1999, Public Law 106-113,
such person’s invention thereof the invention was made by such sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948 sec. 4807);
other inventor and not abandoned, suppressed, or concealed, or subsection (c) amended Dec. 10, 2004, Public Law 108-453,
(2) before such person’s invention thereof, the invention was sec. 2, 118 Stat. 3596; amended Sept. 16, 2011, Public Law
made in this country by another inventor who had not 112-29, secs. 20(j) (effective Sept. 16, 2012) and 3(c) (effective
abandoned, suppressed, or concealed it. In determining priority March 16, 2013), 125 Stat. 284.)
of invention under this subsection, there shall be considered not
only the respective dates of conception and reduction to practice
of the invention, but also the reasonable diligence of one who

Rev. 08.2017, January 2018 L-20

 PATENT LAWS § 104 (pre-AIA)

(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011) patentability under this section where the subject matter and the
provided that tax strategies are deemed to be within the prior claimed invention were, at the time the claimed invention was
art (see AIA § 14).) made, owned by the same person or subject to an obligation of
assignment to the same person.
35 U.S.C. 103 (pre-AIA) Conditions for patentability; (2) For purposes of this subsection, subject matter
non-obvious subject matter. developed by another person and a claimed invention shall be
deemed to have been owned by the same person or subject to
[Editor Note: Not applicable to any patent application subject
an obligation of assignment to the same person if —
to the first inventor to file provisions of the AIA (see 35 U.S.C.
100 (note)). See 35 U.S.C. 103 for the law otherwise applicable.] (A) the claimed invention was made by or on
behalf of parties to a joint research agreement that was in effect
(a) A patent may not be obtained though the invention is on or before the date the claimed invention was made;
not identically disclosed or described as set forth in section 102 (B) the claimed invention was made as a result of
, if the differences between the subject matter sought to be activities undertaken within the scope of the joint research
patented and the prior art are such that the subject matter as a agreement; and
whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said (C) the application for patent for the claimed
subject matter pertains. Patentability shall not be negatived by invention discloses or is amended to disclose the names of the
the manner in which the invention was made. parties to the joint research agreement.
(b)(1) Notwithstanding subsection (a), and upon timely (3) For purposes of paragraph (2), the term “joint
election by the applicant for patent to proceed under this research agreement” means a written contract, grant, or
subsection, a biotechnological process using or resulting in a cooperative agreement entered into by two or more persons or
composition of matter that is novel under section 102 and entities for the performance of experimental, developmental, or
nonobvious under subsection (a) of this section shall be research work in the field of the claimed invention.
considered nonobvious if-
(Amended Nov. 8, 1984, Public Law 98-622, sec. 103, 98 Stat.
(A) claims to the process and the composition of 3384; Nov. 1, 1995, Public Law 104-41, sec.1, 109 Stat. 3511;
matter are contained in either the same application for patent or subsection (c) amended Nov. 29, 1999, Public Law 106-113,
in separate applications having the same effective filing date; sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948 sec. 4807);
and subsection (c) amended Dec. 10, 2004, Public Law 108-453,
sec. 2, 118 Stat. 3596; amended Sept. 16, 2011, Public Law
(B) the composition of matter, and the process at
112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
the time it was invented, were owned by the same person or
subject to an obligation of assignment to the same person.
(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011)
(2) A patent issued on a process under paragraph (1)-
provided that tax strategies are deemed to be within the prior
(A) shall also contain the claims to the composition art (see AIA § 14).)
of matter used in or made by that process, or
35 U.S.C. 104 [Repealed.]
(B) shall, if such composition of matter is claimed
in another patent, be set to expire on the same date as such other (Repealed Sept. 16, 2011, Public Law 112-29, sec. 3(d)
patent, notwithstanding section 154. (effective March 16, 2013), 125 Stat. 284.)
(3) For purposes of paragraph (1), the term
“biotechnological process” means- 35 U.S.C. 104 (pre-AIA) Invention made abroad.

(A) a process of genetically altering or otherwise [Editor Note: Not applicable to any patent application subject
inducing a single- or multi-celled organism to- to the first inventor to file provisions of the AIA (see 35 U.S.C.
100 (note)). 35 U.S.C. 104 repealed with regard to such
(i) express an exogenous nucleotide sequence,
applications).]
(ii) inhibit, eliminate, augment, or alter
expression of an endogenous nucleotide sequence, or (a) IN GENERAL.—
(iii) express a specific physiological (1) PROCEEDINGS.—In proceedings in the Patent
characteristic not naturally associated with said organism; and Trademark Office, in the courts, and before any other
(B) cell fusion procedures yielding a cell line that competent authority, an applicant for a patent, or a patentee,
expresses a specific protein, such as a monoclonal antibody; may not establish a date of invention by reference to knowledge
and or use thereof, or other activity with respect thereto, in a foreign
country other than a NAFTA country or a WTO member
(C) a method of using a product produced by a country, except as provided in sections 119 and 365.
process defined by subparagraph (A) or (B), or a combination
of subparagraphs (A) and (B). (2) RIGHTS.—If an invention was made by a person,
civil or military—
(c)(1) Subject matter developed by another person,
which qualifies as prior art only under one or more of
subsections (e), (f), and (g) of section 102, shall not preclude

L-21 Rev. 08.2017, January 2018

§ 105 MANUAL OF PATENT EXAMINING PROCEDURE

considered to be made, used, or sold within the United States

(A) while domiciled in the United States, and for the purposes of this title if specifically so agreed in an
serving in any other country in connection with operations by international agreement between the United States and the state
or on behalf of the United States, of registry.
(B) while domiciled in a NAFTA country and (Added Nov. 15, 1990, Public Law 101-580, sec. 1(a), 104 Stat.
serving in another country in connection with operations by or 2863.)
on behalf of that NAFTA country, or
(C) while domiciled in a WTO member country CHAPTER 11 — APPLICATION FOR
and serving in another country in connection with operations
by or on behalf of that WTO member country, that person shall PATENT
be entitled to the same rights of priority in the United States
with respect to such invention as if such invention had been Sec.
made in the United States, that NAFTA country, or that WTO 111 Application.
member country, as the case may be.
111 (pre-PLT (AIA)) Application.
(3) USE OF INFORMATION.—To the extent that any 111 (pre-AIA) Application.
information in a NAFTA country or a WTO member country
concerning knowledge, use, or other activity relevant to proving
112 Specification.
or disproving a date of invention has not been made available 112 (pre-AIA) Specification.
for use in a proceeding in the Patent and Trademark Office, a 113 Drawings.
court, or any other competent authority to the same extent as 114 Models, specimens.
such information could be made available in the United States, 115 Inventor’s oath or declaration.
the Director, court, or such other authority shall draw appropriate
inferences, or take other action permitted by statute, rule, or 115 (pre-AIA) Oath of applicant.
regulation, in favor of the party that requested the information 116 Inventors.
in the proceeding. 116 (pre-AIA) Inventors.
(b) DEFINITIONS.—As used in this section— 117 Death or incapacity of inventor.
(1) The term “NAFTA country” has the meaning given 118 Filing by other than inventor.
that term in section 2(4) of the North American Free Trade 118 (pre-AIA) Filing by other than inventor.
Agreement Implementation Act; and 119 Benefit of earlier filing date; right of
(2) The term “WTO member country” has the meaning priority.
given that term in section 2(10) of the Uruguay Round 119 (pre-AIA) Benefit of earlier filing date;
Agreements Act. right of priority.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 120 Benefit of earlier filing date in the United
1949; Nov. 14, 1975, Public Law 94-131, sec. 6, 89 Stat. 691; States.
Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392; 120 (pre-AIA) Benefit of earlier filing date in
Dec. 8, 1993, Public Law 103-182, sec. 331, 107 Stat. 2113;
the United States.
Dec. 8, 1994, Public Law 103-465, sec. 531(a), 108 Stat. 4982;
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 121 Divisional applications.
1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 121 (pre-AIA) Divisional applications.
2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 122 Confidential status of applications;
125 Stat. 284. publication of patent applications.
35 U.S.C. 105 Inventions in outer space. 123 Micro entity defined.
(a) Any invention made, used, or sold in outer space on a 35 U.S.C. 111 Application.
space object or component thereof under the jurisdiction or
control of the United States shall be considered to be made, used [Editor Note: Applicable to any patent application filed on or
or sold within the United States for the purposes of this title, after December 18, 2013. See 35 U.S.C. 111 (pre-PLT (AIA))
except with respect to any space object or component thereof or 35 U.S.C. 111 (pre-AIA) for the law otherwise applicable.]
that is specifically identified and otherwise provided for by an
international agreement to which the United States is a party, (a) IN GENERAL.—
or with respect to any space object or component thereof that (1) WRITTEN APPLICATION.—An application for
is carried on the registry of a foreign state in accordance with patent shall be made, or authorized to be made, by the inventor,
the Convention on Registration of Objects Launched into Outer except as otherwise provided in this title, in writing to the
Space. Director.
(b) Any invention made, used, or sold in outer space on a (2) CONTENTS.—Such application shall include—
space object or component thereof that is carried on the registry
of a foreign state in accordance with the Convention on (A) a specification as prescribed by section 112;
Registration of Objects Launched into Outer Space, shall be (B) a drawing as prescribed by section 113; and

Rev. 08.2017, January 2018 L-22

 PATENT LAWS § 111 (pre-PLT
(AIA))

(8) APPLICABLE PROVISIONS.—The provisions

(C) an oath or declaration as prescribed by section
of this title relating to applications for patent shall apply to
115.
provisional applications for patent, except as otherwise provided,
(3) FEE, OATH OR DECLARATION, AND and except that provisional applications for patent shall not be
CLAIMS.—The application shall be accompanied by the fee subject to sections 131 and 135.
required by law. The fee, oath or declaration, and 1 or more
(c) PRIOR FILED APPLICATION.—Notwithstanding the
claims may be submitted after the filing date of the application,
provisions of subsection (a), the Director may prescribe the
within such period and under such conditions, including the
conditions, including the payment of a surcharge, under which
payment of a surcharge, as may be prescribed by the Director.
a reference made upon the filing of an application under
Upon failure to submit the fee, oath or declaration, and 1 or
subsection (a) to a previously filed application, specifying the
more claims within such prescribed period, the application shall
previously filed application by application number and the
be regarded as abandoned.
intellectual property authority or country in which the application
(4) FILING DATE.—The filing date of an application was filed, shall constitute the specification and any drawings of
shall be the date on which a specification, with or without claims, the subsequent application for purposes of a filing date. A copy
is received in the United States Patent and Trademark Office. of the specification and any drawings of the previously filed
(b) PROVISIONAL APPLICATION.— application shall be submitted within such period and under
such conditions as may be prescribed by the Director. A failure
(1) AUTHORIZATION.—A provisional application to submit the copy of the specification and any drawings of the
for patent shall be made or authorized to be made by the previously filed application within the prescribed period shall
inventor, except as otherwise provided in this title, in writing result in the application being regarded as abandoned. Such
to the Director. Such application shall include— application shall be treated as having never been filed, unless—
(A) a specification as prescribed by section 112(a); (1) the application is revived under section 27; and
and
(2) a copy of the specification and any drawings of the
(B) a drawing as prescribed by section 113. previously filed application are submitted to the Director.
(2) CLAIM.—A claim, as required by subsections (b) (Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat.
through (e) of section 112, shall not be required in a provisional 319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108
application. Stat. 4986; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
(3) FEE.—The application shall be accompanied by 113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A),
the fee required by law. The fee may be submitted after the filing 4801(a); Sept. 16, 2011, Public Law 112-29, secs. 4 and 20(j)
date of the application, within such period and under such (effective Sept. 16, 2012) and sec. 3(e) (effective March 16,
conditions, including the payment of a surcharge, as may be 2013), 125 Stat. 284; Dec. 18, 2012, Public Law 112-211, sec.
prescribed by the Director. Upon failure to submit the fee within 201(a)(1), 126 Stat. 1531; subsection (b)(7) amended Dec. 18,
such prescribed period, the application shall be regarded as 2012, Public Law 112-211, sec. 102(3) (effective May 13, 2015),
abandoned. 126 Stat 1531.)
(4) FILING DATE.—The filing date of a provisional 35 U.S.C. 111 (pre-PLT (AIA)) Application.
application shall be the date on which a specification, with or
without claims, is received in the United States Patent and [Editor Note: Applicable to any patent application filed on or
Trademark Office. after September 16, 2012, and before December 18, 2013. See
(5) ABANDONMENT.—Notwithstanding the absence 35 U.S.C. 111 or 35 U.S.C. 111 (pre-AIA) for the law otherwise
of a claim, upon timely request and as prescribed by the Director, applicable.]
a provisional application may be treated as an application filed
under subsection (a). Subject to section 119(e)(3), if no such (a) IN GENERAL.—
request is made, the provisional application shall be regarded (1) WRITTEN APPLICATION.—An application for
as abandoned 12 months after the filing date of such application patent shall be made, or authorized to be made, by the inventor,
and shall not be subject to revival after such 12-month period. except as otherwise provided in this title, in writing to the
(6) OTHER BASIS FOR PROVISIONAL Director.
APPLICATION.—Subject to all the conditions in this subsection (2) CONTENTS.—Such application shall include—
and section 119(e), and as prescribed by the Director, an
application for patent filed under subsection (a) may be treated (A) a specification as prescribed by section 112;
as a provisional application for patent. (B) a drawing as prescribed by section 113; and
(7) NO RIGHT OF PRIORITY OR BENEFIT OF (C) an oath or declaration as prescribed by section
EARLIEST FILING DATE.—A provisional application shall 115.
not be entitled to the right of priority of any other application
under section 119, 365(a), or 386(a) or to the benefit of an earlier (3) FEE AND OATH OR DECLARATION.—The
filing date in the United States under section 120, 121, 365(c) application must be accompanied by the fee required by law.
, or 386(c). The fee and oath or declaration may be submitted after the
specification and any required drawing are submitted, within

L-23 Rev. 08.2017, January 2018

§ 111 (pre-AIA) MANUAL OF PATENT EXAMINING PROCEDURE

such period and under such conditions, including the payment (8) APPLICABLE PROVISIONS.—The provisions
of a surcharge, as may be prescribed by the Director. of this title relating to applications for patent shall apply to
provisional applications for patent, except as otherwise provided,
(4) FAILURE TO SUBMIT.—Upon failure to submit
and except that provisional applications for patent shall not be
the fee and oath or declaration within such prescribed period,
subject to sections 131 and 135.
the application shall be regarded as abandoned, unless it is shown
to the satisfaction of the Director that the delay in submitting (Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat.
the fee and oath or declaration was unavoidable or unintentional. 319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108
The filing date of an application shall be the date on which the Stat. 4986; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
specification and any required drawing are received in the Patent 113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A),
and Trademark Office. 4801(a); Sept. 16, 2011, Public Law 112-29, secs. 4 and 20(j)
(b) PROVISIONAL APPLICATION.— (effective Sept. 16, 2012) and sec. 3(e) (effective March 16,
2013), 125 Stat. 284.)
(1) AUTHORIZATION.—A provisional application
for patent shall be made or authorized to be made by the 35 U.S.C. 111 (pre-AIA) Application.
inventor, except as otherwise provided in this title, in writing
to the Director. Such application shall include— [Editor Note: Not applicable to any patent application filed on
or after September 16, 2012. See 35 U.S.C. 111 or 35 U.S.C.
(A) a specification as prescribed by section 112(a);
111 (pre-PLT (AIA)) for the law otherwise applicable.]
and
(B) a drawing as prescribed by section 113. (a) IN GENERAL.—
(2) CLAIM.—A claim, as required by subsections (b) (1) WRITTEN APPLICATION.—An application for
through (e) of section 112, shall not be required in a provisional patent shall be made, or authorized to be made, by the inventor,
application. except as otherwise provided in this title, in writing to the
(3) FEE.— Director.

(A) The application must be accompanied by the (2) CONTENTS.—Such application shall include—
fee required by law. (A) a specification as prescribed by section 112 of
(B) The fee may be submitted after the this title;
specification and any required drawing are submitted, within (B) a drawing as prescribed by section 113 of this
such period and under such conditions, including the payment title; and
of a surcharge, as may be prescribed by the Director.
(C) an oath by the applicant as prescribed by
(C) Upon failure to submit the fee within such section 115 of this title.
prescribed period, the application shall be regarded as
abandoned, unless it is shown to the satisfaction of the Director (3) FEE AND OATH.—The application must be
that the delay in submitting the fee was unavoidable or accompanied by the fee required by law. The fee and oath may
unintentional. be submitted after the specification and any required drawing
are submitted, within such period and under such conditions,
(4) FILING DATE.—The filing date of a provisional including the payment of a surcharge, as may be prescribed by
application shall be the date on which the specification and any the Director.
required drawing are received in the Patent and Trademark
Office. (4) FAILURE TO SUBMIT.—Upon failure to submit
the fee and oath within such prescribed period, the application
(5) ABANDONMENT.—Notwithstanding the absence shall be regarded as abandoned, unless it is shown to the
of a claim, upon timely request and as prescribed by the Director, satisfaction of the Director that the delay in submitting the fee
a provisional application may be treated as an application filed and oath was unavoidable or unintentional. The filing date of
under subsection (a). Subject to section 119(e)(3), if no such an application shall be the date on which the specification and
request is made, the provisional application shall be regarded any required drawing are received in the Patent and Trademark
as abandoned 12 months after the filing date of such application Office.
and shall not be subject to revival after such 12-month period.
(b) PROVISIONAL APPLICATION.—
(6) OTHER BASIS FOR PROVISIONAL
APPLICATION.—Subject to all the conditions in this subsection (1) AUTHORIZATION.—A provisional application
and section 119(e), and as prescribed by the Director, an for patent shall be made or authorized to be made by the
application for patent filed under subsection (a) may be treated inventor, except as otherwise provided in this title, in writing
as a provisional application for patent. to the Director. Such application shall include—

(7) NO RIGHT OF PRIORITY OR BENEFIT OF (A) a specification as prescribed by the first

EARLIEST FILING DATE.—A provisional application shall paragraph of section 112 of this title; and
not be entitled to the right of priority of any other application (B) a drawing as prescribed by section 113 of this
under section 119 or 365(a) or to the benefit of an earlier filing title.
date in the United States under section 120, 121, or 365(c).

Rev. 08.2017, January 2018 L-24

 PATENT LAWS § 112 (pre-AIA)

process of making and using it, in such full, clear, concise, and
(2) CLAIM.—A claim, as required by the second
exact terms as to enable any person skilled in the art to which
through fifth paragraphs of section 112, shall not be required in
it pertains, or with which it is most nearly connected, to make
a provisional application.
and use the same, and shall set forth the best mode contemplated
(3) FEE.— by the inventor or joint inventor of carrying out the invention.
(A) The application must be accompanied by the (b) CONCLUSION.—The specification shall conclude
fee required by law. with one or more claims particularly pointing out and distinctly
(B) The fee may be submitted after the claiming the subject matter which the inventor or a joint inventor
specification and any required drawing are submitted, within regards as the invention.
such period and under such conditions, including the payment (c) FORM.—A claim may be written in independent or, if
of a surcharge, as may be prescribed by the Director. the nature of the case admits, in dependent or multiple dependent
(C) Upon failure to submit the fee within such form.
prescribed period, the application shall be regarded as (d) REFERENCE IN DEPENDENT FORMS.—Subject
abandoned, unless it is shown to the satisfaction of the Director to subsection (e), a claim in dependent form shall contain a
that the delay in submitting the fee was unavoidable or reference to a claim previously set forth and then specify a
unintentional. further limitation of the subject matter claimed. A claim in
(4) FILING DATE.—The filing date of a provisional dependent form shall be construed to incorporate by reference
application shall be the date on which the specification and any all the limitations of the claim to which it refers.
required drawing are received in the Patent and Trademark (e) REFERENCE IN MULTIPLE DEPENDENT
Office. FORM.—A claim in multiple dependent form shall contain a
(5) ABANDONMENT.—Notwithstanding the absence reference, in the alternative only, to more than one claim
of a claim, upon timely request and as prescribed by the Director, previously set forth and then specify a further limitation of the
a provisional application may be treated as an application filed subject matter claimed. A multiple dependent claim shall not
under subsection (a). Subject to section 119(e)(3) of this title, serve as a basis for any other multiple dependent claim. A
if no such request is made, the provisional application shall be multiple dependent claim shall be construed to incorporate by
regarded as abandoned 12 months after the filing date of such reference all the limitations of the particular claim in relation
application and shall not be subject to revival after such to which it is being considered.
12-month period. (f) ELEMENT IN CLAIM FOR A COMBINATION.—An
(6) OTHER BASIS FOR PROVISIONAL element in a claim for a combination may be expressed as a
APPLICATION.—Subject to all the conditions in this subsection means or step for performing a specified function without the
and section 119(e) of this title, and as prescribed by the Director, recital of structure, material, or acts in support thereof, and such
an application for patent filed under subsection (a) may be claim shall be construed to cover the corresponding structure,
treated as a provisional application for patent. material, or acts described in the specification and equivalents
thereof.
(7) NO RIGHT OF PRIORITY OR BENEFIT OF
EARLIEST FILING DATE.—A provisional application shall (Amended July 24, 1965, Public Law 89-83, sec. 9, 79 Stat.
not be entitled to the right of priority of any other application 261; Nov. 14, 1975, Public Law 94-131, sec. 7, 89 Stat. 691;
under section 119 or 365(a) of this title or to the benefit of an amended Sept. 16, 2011, Public Law 112-29, sec. 4(c), 125 Stat.
earlier filing date in the United States under section 120, 121, 284, effective Sept. 16, 2012.)
or 365(c) of this title.
35 U.S.C. 112 (pre-AIA) Specification.
(8) APPLICABLE PROVISIONS.—The provisions
of this title relating to applications for patent shall apply to [Editor Note: Not applicable to any patent application filed on
provisional applications for patent, except as otherwise provided, or after September 16, 2012. See 35 U.S.C. 112 for the law
and except that provisional applications for patent shall not be otherwise applicable.]
subject to sections 115, 131, 135, and 157 of this title.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat. The specification shall contain a written description of the
319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108 invention, and of the manner and process of making and using
Stat. 4986; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), it, in such full, clear, concise, and exact terms as to enable any
113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A), person skilled in the art to which it pertains, or with which it is
4801(a)).) most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of carrying
35 U.S.C. 112 Specification. out his invention.

[Editor Note: Applicable to any patent application filed on or The specification shall conclude with one or more claims
after September 16, 2012. See 35 U.S.C. 112 (pre-AIA) for the particularly pointing out and distinctly claiming the subject
law otherwise applicable.] matter which the applicant regards as his invention.

(a) IN GENERAL.—The specification shall contain a

written description of the invention, and of the manner and

L-25 Rev. 08.2017, January 2018

§ 113 MANUAL OF PATENT EXAMINING PROCEDURE

35 U.S.C. 115 Inventor’s oath or declaration.

A claim may be written in independent or, if the nature of the
case admits, in dependent or multiple dependent form. [Editor Note: Applicable to any patent application filed on or
after September 16, 2012. See 35 U.S.C. 115 (pre-AIA) for the
Subject to the following paragraph, a claim in dependent form law otherwise applicable.]
shall contain a reference to a claim previously set forth and then
specify a further limitation of the subject matter claimed. A (a) NAMING THE INVENTOR; INVENTOR’S OATH
claim in dependent form shall be construed to incorporate by OR DECLARATION.—An application for patent that is filed
reference all the limitations of the claim to which it refers. under section 111(a) or commences the national stage under
section 371 shall include, or be amended to include, the name
A claim in multiple dependent form shall contain a reference, of the inventor for any invention claimed in the application.
in the alternative only, to more than one claim previously set Except as otherwise provided in this section, each individual
forth and then specify a further limitation of the subject matter who is the inventor or a joint inventor of a claimed invention in
claimed. A multiple dependent claim shall not serve as a basis an application for patent shall execute an oath or declaration in
for any other multiple dependent claim. A multiple dependent connection with the application.
claim shall be construed to incorporate by reference all the (b) REQUIRED STATEMENTS.—An oath or declaration
limitations of the particular claim in relation to which it is being under subsection (a) shall contain statements that—
considered.
(1) the application was made or was authorized to be
made by the affiant or declarant; and
An element in a claim for a combination may be expressed as
a means or step for performing a specified function without the (2) such individual believes himself or herself to be
recital of structure, material, or acts in support thereof, and such the original inventor or an original joint inventor of a claimed
claim shall be construed to cover the corresponding structure, invention in the application.
material, or acts described in the specification and equivalents (c) ADDITIONAL REQUIREMENTS.—The Director may
thereof. specify additional information relating to the inventor and the
invention that is required to be included in an oath or declaration
(Amended July 24, 1965, Public Law 89-83, sec. 9, 79 Stat. under subsection (a).
261; Nov. 14, 1975, Public Law 94-131, sec. 7, 89 Stat. 691.)
(d) SUBSTITUTE STATEMENT.—
35 U.S.C. 113 Drawings. (1) IN GENERAL.—In lieu of executing an oath or
declaration under subsection (a), the applicant for patent may
The applicant shall furnish a drawing where necessary for the provide a substitute statement under the circumstances described
understanding of the subject matter sought to be patented. When in paragraph (2) and such additional circumstances that the
the nature of such subject matter admits of illustration by a Director may specify by regulation.
drawing and the applicant has not furnished such a drawing, the
Director may require its submission within a time period of not (2) PERMITTED CIRCUMSTANCES.—A substitute
less than two months from the sending of a notice thereof. statement under paragraph (1) is permitted with respect to any
Drawings submitted after the filing date of the application may individual who—
not be used (i) to overcome any insufficiency of the specification (A) is unable to file the oath or declaration under
due to lack of an enabling disclosure or otherwise inadequate subsection (a) because the individual—
disclosure therein, or (ii) to supplement the original disclosure
thereof for the purpose of interpretation of the scope of any (i) is deceased;
claim. (ii) is under legal incapacity; or
(iii) cannot be found or reached after diligent
(Amended Nov. 14, 1975, Public Law 94-131, sec. 8, 89 Stat. effort; or
691; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).) (B) is under an obligation to assign the invention
but has refused to make the oath or declaration required under
35 U.S.C. 114 Models, specimens. subsection (a).
(3) CONTENTS.—A substitute statement under this
The Director may require the applicant to furnish a model of
subsection shall—
convenient size to exhibit advantageously the several parts of
his invention. (A) identify the individual with respect to whom
the statement applies;
When the invention relates to a composition of matter, the (B) set forth the circumstances representing the
Director may require the applicant to furnish specimens or permitted basis for the filing of the substitute statement in lieu
ingredients for the purpose of inspection or experiment. of the oath or declaration under subsection (a); and
(C) contain any additional information, including
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), any showing, required by the Director.
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
(e) MAKING REQUIRED STATEMENTS IN
ASSIGNMENT OF RECORD.—An individual who is under

Rev. 08.2017, January 2018 L-26

 PATENT LAWS § 116

an obligation of assignment of an application for patent may (i) ACKNOWLEDGMENT OF PENALTIES.—Any

include the required statements under subsections (b) and (c) in declaration or statement filed pursuant to this section shall
the assignment executed by the individual, in lieu of filing such contain an acknowledgment that any willful false statement
statements separately. made in such declaration or statement is punishable under section
1001 of title 18 by fine or imprisonment of not more than 5
(f) TIME FOR FILING.—The applicant for patent shall
years, or both.
provide each required oath or declaration under subsection (a),
substitute statement under subsection (d), or recorded assignment (Amended Aug. 27, 1982, Public Law 97-247, sec. 14(a),
meeting the requirements of subsection (e) no later than the date 96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec. 2222(d), 112
on which the issue fee is paid. Stat. 2681-818; amended Sept. 16, 2011, Public Law 112-29,
(g) EARLIER-FILED APPLICATION CONTAINING sec. 4(a) (effective Sept. 16, 2012), 125 Stat. 284; subsections
REQUIRED STATEMENTS OR SUBSTITUTE (f) and (g)(1) amended Jan. 14, 2013, Public Law 112-274, sec.
STATEMENT.— 1(f), 126 Stat. 2456; subsection (g)(1) amended Dec. 18, 2012,
Public Law 112-211, sec. 102(4) (effective May 13, 2015), 126
(1) EXCEPTION.—The requirements under this Stat. 1531.)
section shall not apply to an individual with respect to an
application for patent in which the individual is named as the 35 U.S.C. 115 (pre-AIA) Oath of applicant.
inventor or a joint inventor and that claims the benefit under
section 120 , 121, 365(c), or 386(c) of the filing of an [Editor Note: Not applicable to any patent application filed on
earlier-filed application, if— or after September 16, 2012. See 35 U.S.C. 115 for the law
otherwise applicable.]
(A) an oath or declaration meeting the requirements
of subsection (a) was executed by the individual and was filed
in connection with the earlier-filed application; The applicant shall make oath that he believes himself to be the
original and first inventor of the process, machine, manufacture,
(B) a substitute statement meeting the requirements or composition of matter, or improvement thereof, for which he
of subsection (d) was filed in connection with the earlier filed solicits a patent; and shall state of what country he is a citizen.
application with respect to the individual; or Such oath may be made before any person within the United
(C) an assignment meeting the requirements of States authorized by law to administer oaths, or, when made in
subsection (e) was executed with respect to the earlier-filed a foreign country, before any diplomatic or consular officer of
application by the individual and was recorded in connection the United States authorized to administer oaths, or before any
with the earlier-filed application. officer having an official seal and authorized to administer oaths
in the foreign country in which the applicant may be, whose
(2) COPIES OF OATHS, DECLARATIONS,
authority is proved by certificate of a diplomatic or consular
STATEMENTS, OR ASSIGNMENTS.—Notwithstanding
officer of the United States, or apostille of an official designated
paragraph (1), the Director may require that a copy of the
by a foreign country which, by treaty or convention, accords
executed oath or declaration, the substitute statement, or the
like effect to apostilles of designated officials in the United
assignment filed in connection with the earlier-filed application
States. Such oath is valid if it complies with the laws of the state
be included in the later-filed application.
or country where made. When the application is made as
(h) SUPPLEMENTAL AND CORRECTED provided in this title by a person other than the inventor, the
STATEMENTS; FILING ADDITIONAL STATEMENTS.— oath may be so varied in form that it can be made by him. For
purposes of this section, a consular officer shall include any
(1) IN GENERAL.—Any person making a statement
United States citizen serving overseas, authorized to perform
required under this section may withdraw, replace, or otherwise
notarial functions pursuant to section 1750 of the Revised
correct the statement at any time. If a change is made in the
Statutes, as amended (22 U.S.C. 4221).
naming of the inventor requiring the filing of 1 or more
additional statements under this section, the Director shall
establish regulations under which such additional statements (Amended Aug. 27, 1982, Public Law 97-247, sec. 14(a),
may be filed. 96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec. 2222(d), 112
Stat. 2681-818.)
(2) SUPPLEMENTAL STATEMENTS NOT
REQUIRED.—If an individual has executed an oath or 35 U.S.C. 116 Inventors.
declaration meeting the requirements of subsection (a) or an
assignment meeting the requirements of subsection (e) with [Editor Note: Applicable to proceedings commenced on or after
respect to an application for patent, the Director may not Sept. 16, 2012. See 35 U.S.C. 116 (pre-AIA) for the law
thereafter require that individual to make any additional oath, otherwise applicable.]
declaration, or other statement equivalent to those required by
this section in connection with the application for patent or any (a) JOINT INVENTIONS.—When an invention is made
patent issuing thereon. by two or more persons jointly, they shall apply for patent jointly
(3) SAVINGS CLAUSE.—A patent shall not be invalid and each make the required oath, except as otherwise provided
or unenforceable based upon the failure to comply with a in this title. Inventors may apply for a patent jointly even though
requirement under this section if the failure is remedied as (1) they did not physically work together or at the same time,
provided under paragraph (1). (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.

L-27 Rev. 08.2017, January 2018

§ 116 (pre-AIA) MANUAL OF PATENT EXAMINING PROCEDURE

(b) OMITTED INVENTOR.—If a joint inventor refuses 35 U.S.C. 117 Death or incapacity of inventor.
to join in an application for patent or cannot be found or reached
Legal representatives of deceased inventors and of those under
after diligent effort, the application may be made by the other
legal incapacity may make application for patent upon
inventor on behalf of himself and the omitted inventor. The
compliance with the requirements and on the same terms and
Director, on proof of the pertinent facts and after such notice to
conditions applicable to the inventor.
the omitted inventor as he prescribes, may grant a patent to the
inventor making the application, subject to the same rights which
35 U.S.C. 118 Filing by other than inventor.
the omitted inventor would have had if he had been joined. The
omitted inventor may subsequently join in the application. [Editor Note: Applicable to any patent application filed on or
(c) CORRECTION OF ERRORS IN after September 16, 2012. See 35 U.S.C. 118 (pre-AIA) for the
APPLICATION.—Whenever through error a person is named law otherwise applicable.]
in an application for patent as the inventor, or through an error
an inventor is not named in an application, the Director may A person to whom the inventor has assigned or is under an
permit the application to be amended accordingly, under such obligation to assign the invention may make an application for
terms as he prescribes. patent. A person who otherwise shows sufficient proprietary
interest in the matter may make an application for patent on
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(a), 96 Stat.
behalf of and as agent for the inventor on proof of the pertinent
320; Nov. 8, 1984, Public Law 98-622, sec. 104(a), 98 Stat.
facts and a showing that such action is appropriate to preserve
3384; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
the rights of the parties. If the Director grants a patent on an
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept.
application filed under this section by a person other than the
16, 2011, Public Law 112-29, sec. 20(a), 125 Stat. 284, effective
inventor, the patent shall be granted to the real party in interest
Sept. 16, 2012.)
and upon such notice to the inventor as the Director considers
35 U.S.C. 116 (pre-AIA) Inventors. to be sufficient.

[Editor Note: Not applicable to proceedings commenced on or (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
after September 16, 2012. See 35 U.S.C. 116 for the law 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended
otherwise applicable.] Sept. 16, 2011, Public Law 112-29, sec. 4(b), 125 Stat. 284,
effective Sept. 16, 2012.)
When an invention is made by two or more persons jointly, they
shall apply for patent jointly and each make the required oath, 35 U.S.C. 118 (pre-AIA) Filing by other than inventor.
except as otherwise provided in this title. Inventors may apply
[Editor Note: Not applicable to any patent application filed on
for a patent jointly even though (1) they did not physically work
or after September 16, 2012. See 35 U.S.C. 118 for the law
together or at the same time, (2) each did not make the same
otherwise applicable.]
type or amount of contribution, or (3) each did not make a
contribution to the subject matter of every claim of the patent.
Whenever an inventor refuses to execute an application for
patent, or cannot be found or reached after diligent effort, a
If a joint inventor refuses to join in an application for patent or
person to whom the inventor has assigned or agreed in writing
cannot be found or reached after diligent effort, the application
to assign the invention or who otherwise shows sufficient
may be made by the other inventor on behalf of himself and the
proprietary interest in the matter justifying such action, may
omitted inventor. The Director, on proof of the pertinent facts
make application for patent on behalf of and as agent for the
and after such notice to the omitted inventor as he prescribes,
inventor on proof of the pertinent facts and a showing that such
may grant a patent to the inventor making the application, subject
action is necessary to preserve the rights of the parties or to
to the same rights which the omitted inventor would have had
prevent irreparable damage; and the Director may grant a patent
if he had been joined. The omitted inventor may subsequently
to such inventor upon such notice to him as the Director deems
join in the application.
sufficient, and on compliance with such regulations as he
prescribes.
Whenever through error a person is named in an application for
patent as the inventor, or through an error an inventor is not
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
named in an application, and such error arose without any
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
deceptive intention on his part, the Director may permit the
application to be amended accordingly, under such terms as he 35 U.S.C. 119 Benefit of earlier filing date; right of priority.
prescribes.
[Editor Note: 35 U.S.C. 119(a) as set forth below is only
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(a), 96 Stat. applicable to patent applications subject to the first inventor to
320; Nov. 8, 1984, Public Law 98-622, sec. 104(a), 98 Stat. file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35
3384; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 U.S.C. 119(a) (pre-AIA) for the law otherwise applicable.]
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
(a) An application for patent for an invention filed in this
country by any person who has, or whose legal representatives
or assigns have, previously regularly filed an application for a

Rev. 08.2017, January 2018 L-28

 PATENT LAWS § 119

patent for the same invention in a foreign country which affords section 111(b), by an inventor or inventors named in the
similar privileges in the case of applications filed in the United provisional application, shall have the same effect, as to such
States or to citizens of the United States, or in a WTO member invention, as though filed on the date of the provisional
country, shall have the same effect as the same application would application filed under section 111(b), if the application for
have if filed in this country on the date on which the application patent filed under section 111(a) or section 363 is filed not later
for patent for the same invention was first filed in such foreign than 12 months after the date on which the provisional
country, if the application in this country is filed within 12 application was filed and if it contains or is amended to contain
months from the earliest date on which such foreign application a specific reference to the provisional application. The Director
was filed. The Director may prescribe regulations, including the may prescribe regulations, including the requirement for
requirement for payment of the fee specified in section 41(a)(7) payment of the fee specified in section 41(a)(7), pursuant to
, pursuant to which the 12-month period set forth in this which the 12-month period set forth in this subsection may be
subsection may be extended by an additional 2 months if the extended by an additional 2 months if the delay in filing the
delay in filing the application in this country within the 12-month application under section 111(a) or section 363 within the
period was unintentional. 12-month period was unintentional. No application shall be
entitled to the benefit of an earlier filed provisional application
(b)(1) No application for patent shall be entitled to this
under this subsection unless an amendment containing the
right of priority unless a claim is filed in the Patent and
specific reference to the earlier filed provisional application is
Trademark Office, identifying the foreign application by
submitted at such time during the pendency of the application
specifying the application number on that foreign application,
as required by the Director. The Director may consider the
the intellectual property authority or country in or for which the
failure to submit such an amendment within that time period as
application was filed, and the date of filing the application, at
a waiver of any benefit under this subsection. The Director may
such time during the pendency of the application as required by
establish procedures, including the payment of the fee specified
the Director.
in section 41(a)(7), to accept an unintentionally delayed
(2) The Director may consider the failure of the submission of an amendment under this subsection.
applicant to file a timely claim for priority as a waiver of any
(2) A provisional application filed under section 111(b)
such claim. The Director may establish procedures, including
may not be relied upon in any proceeding in the Patent and
the requirement for payment of the fee specified in section
Trademark Office unless the fee set forth in subparagraph (A)
41(a)(7), to accept an unintentionally delayed claim under this
or (C) of section 41(a)(1) has been paid.
section.
(3) If the day that is 12 months after the filing date of
(3) The Director may require a certified copy of the
a provisional application falls on a Saturday, Sunday, or Federal
original foreign application, specification, and drawings upon
holiday within the District of Columbia, the period of pendency
which it is based, a translation if not in the English language,
of the provisional application shall be extended to the next
and such other information as the Director considers necessary.
succeeding secular or business day. For an application for patent
Any such certification shall be made by the foreign intellectual
filed under section 363 in a Receiving Office other than the
property authority in which the foreign application was filed
Patent and Trademark Office, the 12-month and additional
and show the date of the application and of the filing of the
2-month period set forth in this subsection shall be extended as
specification and other papers.
provided under the treaty and Regulations as defined in section
(c) In like manner and subject to the same conditions and 351.
requirements, the right provided in this section may be based
(f) Applications for plant breeder’s rights filed in a WTO
upon a subsequent regularly filed application in the same foreign
member country (or in a foreign UPOV Contracting Party) shall
country instead of the first filed foreign application, provided
have the same effect for the purpose of the right of priority under
that any foreign application filed prior to such subsequent
subsections (a) through (c) of this section as applications for
application has been withdrawn, abandoned, or otherwise
patents, subject to the same conditions and requirements of this
disposed of, without having been laid open to public inspection
section as apply to applications for patents.
and without leaving any rights outstanding, and has not served,
nor thereafter shall serve, as a basis for claiming a right of (g) As used in this section—
priority.
(1) the term “WTO member country” has the same
(d) Applications for inventors’ certificates filed in a foreign meaning as the term is defined in section 104(b)(2); and
country in which applicants have a right to apply, at their
(2) the term “UPOV Contracting Party” means a
discretion, either for a patent or for an inventor’s certificate shall
member of the International Convention for the Protection of
be treated in this country in the same manner and have the same
New Varieties of Plants.
effect for purpose of the right of priority under this section as
applications for patents, subject to the same conditions and (Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75 Stat.
requirements of this section as apply to applications for patents, 748; July 28, 1972, Public Law 92-358, sec. 1, 86 Stat. 501;
provided such applicants are entitled to the benefits of the Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Dec. 8,
Stockholm Revision of the Paris Convention at the time of such 1994, Public Law 103-465, sec. 532(b)(1), 108 Stat. 4985;
filing. subsection (b) amended Nov. 29, 1999, Public Law 106-113,
(e)(1) An application for patent filed under section sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.4503(a));
111(a) or section 363 for an invention disclosed in the manner subsection (e) amended Nov. 29, 1999, Public Law 106-113,
provided by section 112(a) (other than the requirement to sec. 1000(a)(9), 113 Stat. 1501A-564, 588, 589 (S. 1948 secs.
disclose the best mode) in a provisional application filed under

L-29 Rev. 08.2017, January 2018

§ 119 (pre-AIA) MANUAL OF PATENT EXAMINING PROCEDURE

4503(b)(2), 4801 and 4802; subsections (f) and (g) added Nov. to disclose the best mode) in an application previously filed in
29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. the United States, or as provided by section 363 or 385which
1501A-589 (S. 1948 sec. 4802); subsections (e), (g) amended names an inventor or joint inventor in the previously filed
Sept. 16, 2011, Public Law 112-29, secs. 15(b) (effective Sept. application shall have the same effect, as to such invention, as
16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284; though filed on the date of the prior application, if filed before
subsection (a) amended Sept. 16, 2011, Public Law 112-29, sec. the patenting or abandonment of or termination of proceedings
3(g) (effective March 16, 2013), 125 Stat. 284; subsections (a) on the first application or on an application similarly entitled to
and (e), Dec. 18, 2012, Public Law 112-211, sec. 201(c)(1)(A), the benefit of the filing date of the first application and if it
126 Stat. 1527; subsection (b)(2), Dec. 18, 2012, Public Law contains or is amended to contain a specific reference to the
112-211, sec. 202(b)(2), 126 Stat. 1536.) earlier filed application. No application shall be entitled to the
benefit of an earlier filed application under this section unless
35 U.S.C. 119 (pre-AIA) Benefit of earlier filing date; right an amendment containing the specific reference to the earlier
of priority. filed application is submitted at such time during the pendency
of the application as required by the Director. The Director may
[Editor Note: pre-AIA 35 U.S.C. 119(a) as set forth below is consider the failure to submit such an amendment within that
applicable to patent applications not subject to the first inventor time period as a waiver of any benefit under this section. The
to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35 Director may establish procedures, including the requirement
U.S.C. 119(a) for the law otherwise applicable.] for payment of the fee specified in section 41(a)(7), to accept
an unintentionally delayed submission of an amendment under
(a) An application for patent for an invention filed in this this section.
country by any person who has, or whose legal representatives
or assigns have, previously regularly filed an application for a
(Amended Nov. 14, 1975, Public Law 94-131, sec. 9, 89 Stat.
patent for the same invention in a foreign country which affords
691; Nov. 8, 1984, Public Law 98-622, sec. 104(b), 98 Stat.
similar privileges in the case of applications filed in the United
3385; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
States or to citizens of the United States, or in a WTO member
Stat. 1501A-563 (S. 1948 sec. 4503(b)(1)); amended Sept. 16,
country, shall have the same effect as the same application would
2011, Public Law 112-29, secs. 15(b) (effective Sept. 16, 2012),
have if filed in this country on the date on which the application
20(j) (effective Sept. 16, 2012) and 3(f) (effective March 16,
for patent for the same invention was first filed in such foreign
2013), 125 Stat. 284; Dec. 18, 2012, Public Law 112-211, sec.
country, if the application in this country is filed within twelve
202(b)(3), 126 Stat. 1536; amended Dec. 18, 2012, Public Law
months from the earliest date on which such foreign application
112-211, sec. 102(5) (effective May 13, 2015), 126 Stat. 1531.)
was filed; but no patent shall be granted on any application for
patent for an invention which had been patented or described 35 U.S.C. 120 (pre-AIA) Benefit of earlier filing date in the
in a printed publication in any country more than one year before United States.
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 [Editor Note: Not applicable to patent applications subject to
than one year prior to such filing. the first inventor to file provisions of the AIA (see 35 U.S.C. 100
***** (note)). See 35 U.S.C. 120 for the law otherwise applicable.]

(Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75 Stat.

An application for patent for an invention disclosed in the
748; July 28, 1972, Public Law 92-358, sec. 1, 86 Stat. 501;
manner provided by section 112(a) (other than the requirement
Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Dec. 8,
to disclose the best mode) in an application previously filed in
1994, Public Law 103-465, sec. 532(b)(1), 108 Stat. 4985;
the United States, or as provided by section 363, which is filed
subsection (b) amended Nov. 29, 1999, Public Law 106-113,
by an inventor or inventors named in the previously filed
sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.4503(a));
application shall have the same effect, as to such invention, as
subsection (e) amended Nov. 29, 1999, Public Law 106-113,
though filed on the date of the prior application, if filed before
sec. 1000(a)(9), 113 Stat. 1501A-564, 588, 589 (S. 1948 secs.
the patenting or abandonment of or termination of proceedings
4503(b)(2), 4801 and 4802; subsections (f) and (g) added Nov.
on the first application or on an application similarly entitled to
29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
the benefit of the filing date of the first application and if it
1501A-589 (S. 1948 sec. 4802); subsections (e), (g) amended
contains or is amended to contain a specific reference to the
Sept. 16, 2011, Public Law 112-29, secs. 15(b) (effective Sept.
earlier filed application. No application shall be entitled to the
16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
benefit of an earlier filed application under this section unless
35 U.S.C. 120 Benefit of earlier filing date in the United an amendment containing the specific reference to the earlier
States. filed application is submitted at such time during the pendency
of the application as required by the Director. The Director may
[Editor Note: Applicable to a patent application subject to the consider the failure to submit such an amendment within that
first inventor to file provisions of the AIA (see 35 U.S.C. 100 time period as a waiver of any benefit under this section. The
(note)). See 35 U.S.C. 120 (pre-AIA) for the law otherwise Director may establish procedures, including the payment of a
applicable.] surcharge, to accept an unintentionally delayed submission of
an amendment under this section.
An application for patent for an invention disclosed in the
manner provided by section 112(a) (other than the requirement

Rev. 08.2017, January 2018 L-30

 PATENT LAWS § 122

(Amended Nov. 14, 1975, Public Law 94-131, sec. 9, 89 Stat. (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
691; Nov. 8, 1984, Public Law 98-622, sec. 104(b), 98 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
3385; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
Stat. 1501A-563 (S. 1948 sec. 4503(b)(1)); amended Sept. 16,
2011, Public Law 112-29, secs. 15(b) (effective Sept. 16, 2011) 35 U.S.C. 122 Confidential status of applications;
and 20(j) (effective Sept. 16, 2012), 125 Stat. 284.) publication of patent applications.

35 U.S.C. 121 Divisional applications. (a) CONFIDENTIALITY.— Except as provided in

subsection (b), applications for patents shall be kept in
[Editor Note: Applicable to any patent application filed on or confidence by the Patent and Trademark Office and no
after September 16, 2012. See 35 U.S.C. 121 (pre-AIA) for the information concerning the same given without authority of the
law otherwise applicable.] applicant or owner unless necessary to carry out the provisions
of an Act of Congress or in such special circumstances as may
be determined by the Director.
If two or more independent and distinct inventions are claimed
in one application, the Director may require the application to (b) PUBLICATION.—
be restricted to one of the inventions. If the other invention is (1) IN GENERAL.—
made the subject of a divisional application which complies
with the requirements of section 120 it shall be entitled to the (A) Subject to paragraph (2), each application for
benefit of the filing date of the original application. A patent a patent shall be published, in accordance with procedures
issuing on an application with respect to which a requirement determined by the Director, promptly after the expiration of a
for restriction under this section has been made, or on an period of 18 months from the earliest filing date for which a
application filed as a result of such a requirement, shall not be benefit is sought under this title. At the request of the applicant,
used as a reference either in the Patent and Trademark Office an application may be published earlier than the end of such
or in the courts against a divisional application or against the 18-month period.
original application or any patent issued on either of them, if (B) No information concerning published patent
the divisional application is filed before the issuance of the applications shall be made available to the public except as the
patent on the other application. The validity of a patent shall Director determines.
not be questioned for failure of the Director to require the
application to be restricted to one invention. (C) Notwithstanding any other provision of law,
a determination by the Director to release or not to release
information concerning a published patent application shall be
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
final and nonreviewable.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. (2) EXCEPTIONS.—
16, 2011, Public Law 112-29, secs. 4(a) and 20(j) (effective (A) An application shall not be published if that
Sept. 16, 2012), 125 Stat. 284.) application is—
35 U.S.C. 121 (pre-AIA) Divisional applications. (i) no longer pending;

[Editor Note: Not applicable to any patent application filed on (ii) subject to a secrecy order under section
or after September 16, 2012. See 35 U.S.C. 121 for the law 181 ;
otherwise applicable.] (iii) a provisional application filed under
section 111(b); or
If two or more independent and distinct inventions are claimed (iv) an application for a design patent filed
in one application, the Director may require the application to under chapter 16.
be restricted to one of the inventions. If the other invention is
made the subject of a divisional application which complies (B)(i) If an applicant makes a request upon
with the requirements of section 120 of this title it shall be filing, certifying that the invention disclosed in the application
entitled to the benefit of the filing date of the original has not and will not be the subject of an application filed in
application. A patent issuing on an application with respect to another country, or under a multilateral international agreement,
which a requirement for restriction under this section has been that requires publication of applications 18 months after filing,
made, or on an application filed as a result of such a requirement, the application shall not be published as provided in paragraph
shall not be used as a reference either in the Patent and (1).
Trademark Office or in the courts against a divisional application (ii) An applicant may rescind a request made
or against the original application or any patent issued on either under clause (i) at any time.
of them, if the divisional application is filed before the issuance
(iii) An applicant who has made a request
of the patent on the other application. If a divisional application
under clause (i) but who subsequently files, in a foreign country
is directed solely to subject matter described and claimed in the
or under a multilateral international agreement specified in
original application as filed, the Director may dispense with
clause (i), an application directed to the invention disclosed in
signing and execution by the inventor. The validity of a patent
the application filed in the Patent and Trademark Office, shall
shall not be questioned for failure of the Director to require the
notify the Director of such filing not later than 45 days after the
application to be restricted to one invention.
date of the filing of such foreign or international application. A

L-31 Rev. 08.2017, January 2018

§ 123 MANUAL OF PATENT EXAMINING PROCEDURE

failure of the applicant to provide such notice within the

(ii) the date of the first rejection under section
prescribed period shall result in the application being regarded
132 of any claim by the examiner during the examination of the
as abandoned.
application for patent.
(iv) If an applicant rescinds a request made
(2) OTHER REQUIREMENTS.—Any submission
under clause (i) or notifies the Director that an application was
under paragraph (1) shall—
filed in a foreign country or under a multilateral international
agreement specified in clause (i), the application shall be (A) set forth a concise description of the asserted
published in accordance with the provisions of paragraph (1) relevance of each submitted document;
on or as soon as is practical after the date that is specified in (B) be accompanied by such fee as the Director
clause (i). may prescribe; and
(v) If an applicant has filed applications in one (C) include a statement by the person making such
or more foreign countries, directly or through a multilateral submission affirming that the submission was made in
international agreement, and such foreign filed applications compliance with this section.
corresponding to an application filed in the Patent and
Trademark Office or the description of the invention in such (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
foreign filed applications is less extensive than the application 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
or description of the invention in the application filed in the Stat. 1501A-563 (S. 1948 sec. 4503(b)(1)); amended and
Patent and Trademark Office, the applicant may submit a subsection (e) added Sept. 16, 2011, Public Law 112-29, secs.
redacted copy of the application filed in the Patent and 8 and 20(j) (effective Sept. 16, 2012), 125 Stat. 284; subsection
Trademark Office eliminating any part or description of the (b)(2)(B)(iii), Dec. 18, 2012, Public Law 112-211, sec.
invention in such application that is not also contained in any 202(b)(4), 126 Stat. 1536.)
of the corresponding applications filed in a foreign country. The
Director may only publish the redacted copy of the application 35 U.S.C. 123 Micro entity defined.
unless the redacted copy of the application is not received within
(a) IN GENERAL.—For purposes of this title, the term
16 months after the earliest effective filing date for which a
"micro entity" means an applicant who makes a certification
benefit is sought under this title. The provisions of section 154(d)
that the applicant—
shall not apply to a claim if the description of the invention
published in the redacted application filed under this clause with (1) qualifies as a small entity, as defined in regulations
respect to the claim does not enable a person skilled in the art issued by the Director;
to make and use the subject matter of the claim.
(2) has not been named as an inventor on more than 4
(c) PROTEST AND PRE-ISSUANCE OPPOSITION.— previously filed patent applications, other than applications filed
The Director shall establish appropriate procedures to ensure in another country, provisional applications under section 111(b),
that no protest or other form of pre-issuance opposition to the or international applications filed under the treaty defined in
grant of a patent on an application may be initiated after section 351(a) for which the basic national fee under section
publication of the application without the express written consent 41(a) was not paid;
of the applicant.
(3) did not, in the calendar year preceding the calendar
(d) NATIONAL SECURITY.— No application for patent year in which the applicable fee is being paid, have a gross
shall be published under subsection (b)(1) if the publication or income, as defined in section 61(a) of the Internal Revenue Code
disclosure of such invention would be detrimental to the national of 1986, exceeding 3 times the median household income for
security. The Director shall establish appropriate procedures to that preceding calendar year, as most recently reported by the
ensure that such applications are promptly identified and the Bureau of the Census; and
secrecy of such inventions is maintained in accordance with
(4) has not assigned, granted, or conveyed, and is not
chapter 17.
under an obligation by contract or law to assign, grant, or
(e) PREISSUANCE SUBMISSIONS BY THIRD convey, a license or other ownership interest in the application
PARTIES.— concerned to an entity that, in the calendar year preceding the
calendar year in which the applicable fee is being paid, had a
(1) IN GENERAL.—Any third party may submit for
gross income, as defined in section 61(a) of the Internal Revenue
consideration and inclusion in the record of a patent application,
Code of 1986, exceeding 3 times the median household income
any patent, published patent application, or other printed
for that preceding calendar year, as most recently reported by
publication of potential relevance to the examination of the
the Bureau of the Census.
application, if such submission is made in writing before the
earlier of— (b) APPLICATIONS RESULTING FROM PRIOR
EMPLOYMENT.—An applicant is not considered to be named
(A) the date a notice of allowance under section
on a previously filed application for purposes of subsection
151 is given or mailed in the application for patent; or
(a)(2) if the applicant has assigned, or is under an obligation by
(B) the later of— contract or law to assign, all ownership rights in the application
(i) 6 months after the date on which the as the result of the applicant’s previous employment.
application for patent is first published under section 122 by the (c) FOREIGN CURRENCY EXCHANGE RATE.—If an
Office, or applicant’s or entity’s gross income in the preceding calendar

Rev. 08.2017, January 2018 L-32

 PATENT LAWS § 134

year is not in United States dollars, the average currency (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
exchange rate, as reported by the Internal Revenue Service, 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
during that calendar year shall be used to determine whether the
applicant’s or entity’s gross income exceeds the threshold 35 U.S.C. 132 Notice of rejection; reexamination.
specified in paragraphs (3) or (4) of subsection (a).
(a) Whenever, on examination, any claim for a patent is
(d) INSTITUTIONS OF HIGHER EDUCATION.—For rejected, or any objection or requirement made, the Director
purposes of this section, a micro entity shall include an applicant shall notify the applicant thereof, stating the reasons for such
who certifies that— rejection, or objection or requirement, together with such
(1) the applicant’s employer, from which the applicant information and references as may be useful in judging of the
obtains the majority of the applicant’s income, is an institution propriety of continuing the prosecution of his application; and
of higher education as defined in section 101(a) of the Higher if after receiving such notice, the applicant persists in his claim
Education Act of 1965 (20 U.S.C. 1001(a)); or for a patent, with or without amendment, the application shall
be reexamined. No amendment shall introduce new matter into
(2) the applicant has assigned, granted, conveyed, or the disclosure of the invention.
is under an obligation by contract or law, to assign, grant, or
convey, a license or other ownership interest in the particular (b) The Director shall prescribe regulations to provide for
applications to such an institution of higher education. the continued examination of applications for patent at the
request of the applicant. The Director may establish appropriate
(e) DIRECTOR’S AUTHORITY.—In addition to the limits fees for such continued examination and shall provide a 50
imposed by this section, the Director may, in the Director’s percent reduction in such fees for small entities that qualify for
discretion, impose income limits, annual filing limits, or other reduced fees under section 41(h)(1).
limits on who may qualify as a micro entity pursuant to this
section if the Director determines that such additional limits are (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
reasonably necessary to avoid an undue impact on other patent 113 Stat. 1501A-560, 582 (S. 1948 secs. 4403 and
applicants or owners or are otherwise reasonably necessary and 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29,
appropriate. At least 3 months before any limits proposed to be sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
imposed pursuant to this subsection take effect, the Director
shall inform the Committee on the Judiciary of the House of 35 U.S.C. 133 Time for prosecuting application.
Representatives and the Committee on the Judiciary of the
Senate of any such proposed limits. Upon failure of the applicant to prosecute the application within
six months after any action therein, of which notice has been
(Added Sept. 16, 2011, Public Law 112-29, sec. 10(g), 125 Stat. given or mailed to the applicant, or within such shorter time,
284; amended Public Law 112-29, sec. 20(j), 125 Stat. 284 and not less than thirty days, as fixed by the Director in such action,
corrected Jan. 14, 2013, Public Law 112-274, sec. 1(m), 126 the application shall be regarded as abandoned by the parties
Stat. 2456.) thereto.

CHAPTER 12 — EXAMINATION OF (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); Dec. 18,
APPLICATION 2012, Public Law 12-211, sec. 202(b)(5), 126 Stat. 1536.)

Sec. 35 U.S.C. 134 Appeal to the Patent Trial and Appeal Board.
131 Examination of application.
[Editor Note: Applicable to proceedings commenced on or
132 Notice of rejection; reexamination. after September 16, 2012 and applicable to any patent
133 Time for prosecuting application. application subject to the first inventor to file provisions of the
134 Appeal to the Patent Trial and Appeal AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 134 (transitional)
Board. for the law applicable to proceedings commenced on or after
September 16, 2012 but not applicable to any patent application
134 (transitional) Appeal to the Board of Patent subject to the first inventor to file provisions of the AIA. See 35
Appeals and Interferences. U.S.C. 134 (pre-AIA) for the law applicable to proceedings
134 (pre-AIA) Appeal to the Board of Patent commenced before September 16, 2012.]
Appeals and Interferences.
135 Derivation proceedings. (a) PATENT APPLICANT.— An applicant for a patent,
any of whose claims has been twice rejected, may appeal from
135 (pre-AIA) Interferences. the decision of the primary examiner to the Patent Trial and
35 U.S.C. 131 Examination of application. Appeal Board, having once paid the fee for such appeal.
(b) PATENT OWNER.— A patent owner in a
The Director shall cause an examination to be made of the reexamination may appeal from the final rejection of any claim
application and the alleged new invention; and if on such by the primary examiner to the Patent Trial and Appeal Board,
examination it appears that the applicant is entitled to a patent having once paid the fee for such appeal.
under the law, the Director shall issue a patent therefor.

L-33 Rev. 08.2017, January 2018

§ 134 (transitional) MANUAL OF PATENT EXAMINING PROCEDURE

(Amended Nov. 8, 1984, Public Law 98-622, sec. 204(b)(1), 98 (Amended Nov. 8, 1984, Public Law 98-622, sec. 204(b)(1), 98
Stat. 3388; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), Stat. 3388; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-570 (S. 1948 sec. 4605(b)); subsections (a)-(c) 113 Stat. 1501A-570 (S. 1948 sec. 4605(b)); subsections (a)-(c)
amended Nov. 2, 2002, Public Law 107-273, secs. 13106 and amended Nov. 2, 2002, Public Law 107-273, secs. 13106 and
13202, 116 Stat. 1901; amended Sept. 16, 2011, Public Law 13202, 116 Stat. 1901.)
112-29, secs. 7(b) (effective Sept. 16, 2012) and 3(j) (effective
March 16, 2013), 125 Stat. 284.) 35 U.S.C. 135 Derivation proceedings.

35 U.S.C. 134 (transitional) Appeal to the Board of Patent [Editor Note: Applicable to any patent application subject to
Appeals and Interferences. the AIA first inventor to file provisions (see 35 U.S.C. 100
(note)).* See 35 U.S.C. 135 (pre-AIA) for the law otherwise
[Editor Note: Applicable to proceedings commenced on or applicable.]
after September 16, 2012, but not applicable to any patent
application subject to the first inventor to file provisions of the (a) INSTITUTION OF PROCEEDING.—
AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 134 for the law
applicable to patent applications subject to the first inventor to (1) IN GENERAL.— An applicant for patent may file
file provisions of the AIA.] See 35 U.S.C. 134 (pre-AIA) for the a petition with respect to an invention to institute a derivation
law applicable to proceedings commenced before September proceeding in the Office. The petition shall set forth with
16, 2012.] particularity the basis for finding that an individual named in
an earlier application as the inventor or a joint inventor derived
such invention from an individual named in the petitioner’s
(a) PATENT APPLICANT.— An applicant for a patent,
application as the inventor or a joint inventor and, without
any of whose claims has been twice rejected, may appeal from
authorization, the earlier application claiming such invention
the decision of the primary examiner to the Board of Patent
was filed. Whenever the Director determines that a petition filed
Appeals and Interferences, having once paid the fee for such
under this subsection demonstrates that the standards for
appeal.
instituting a derivation proceeding are met, the Director may
(b) PATENT OWNER.— A patent owner in a institute a derivation proceeding.
reexamination may appeal from the final rejection of any claim
(2) TIME FOR FILING.—A petition under this section
by the primary examiner to the Board of Patent Appeals and
with respect to an invention that is the same or substantially the
Interferences, having once paid the fee for such appeal.
same invention as a claim contained in a patent issued on an
(Amended Nov. 8, 1984, Public Law 98-622, sec. 204(b)(1), 98 earlier application, or contained in an earlier application when
Stat. 3388; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), published or deemed published under section 122(b), may not
113 Stat. 1501A-570 (S. 1948 sec. 4605(b)); subsections (a)-(c) be filed unless such petition is filed during the 1-year period
amended Nov. 2, 2002, Public Law 107-273, secs. 13106 and following the date on which the patent containing such claim
13202, 116 Stat. 1901; amended Sept. 16, 2011, Public Law was granted or the earlier application containing such claim was
112-29, sec. 7(b) (effective Sept. 16, 2012), 125 Stat. 284.) published, whichever is earlier.
(3) EARLIER APPLICATION.—For purposes of this
35 U.S.C. 134 (pre-AIA) Appeal to the Board of Patent section, an application shall not be deemed to be an earlier
Appeals and Interferences. application with respect to an invention, relative to another
application, unless a claim to the invention was or could have
[Editor Note: Not applicable to proceedings commenced on
been made in such application having an effective filing date
or after September 16, 2012. See 35 U.S.C. 134 or 35 U.S.C.
that is earlier than the effective filing date of any claim to the
134 (transitional) for the law otherwise applicable.]
invention that was or could have been made in such other
application.
(a) PATENT APPLICANT.— An applicant for a patent,
any of whose claims has been twice rejected, may appeal from (4) NO APPEAL.—A determination by the Director
the decision of the primary examiner to the Board of Patent whether to institute a derivation proceeding under paragraph
Appeals and Interferences, having once paid the fee for such (1) shall be final and not appealable.
appeal. (b) DETERMINATION BY PATENT TRIAL AND
(b) PATENT OWNER.— A patent owner in any APPEAL BOARD.— In a derivation proceeding instituted under
reexamination proceeding may appeal from the final rejection subsection (a), the Patent Trial and Appeal Board shall determine
of any claim by the primary examiner to the Board of Patent whether an inventor named in the earlier application derived
Appeals and Interferences, having once paid the fee for such the claimed invention from an inventor named in the petitioner’s
appeal. application and, without authorization, the earlier application
claiming such invention was filed. In appropriate circumstances,
(c) THIRD-PARTY.— A third-party requester in an inter
the Patent Trial and Appeal Board may correct the naming of
partes proceeding may appeal to the Board of Patent Appeals
the inventor in any application or patent at issue. The Director
and Interferences from the final decision of the primary examiner
shall prescribe regulations setting forth standards for the conduct
favorable to the patentability of any original or proposed
of derivation proceedings, including requiring parties to provide
amended or new claim of a patent, having once paid the fee for
sufficient evidence to prove and rebut a claim of derivation.
such appeal.
(c) DEFERRAL OF DECISION.—The Patent Trial and
Appeal Board may defer action on a petition for a derivation

Rev. 08.2017, January 2018 L-34

 PATENT LAWS § 135 (pre-AIA)

proceeding until the expiration of the 3-month period beginning 100 (note)), if such application or patent contains or contained
on the date on which the Director issues a patent that includes at any time—
the claimed invention that is the subject of the petition. The
Patent Trial and Appeal Board also may defer action on a
(A) a claim to an invention having an effective filing date as
petition for a derivation proceeding, or stay the proceeding after
defined in section 100(i), that occurs before March 16, 2013;
it has been instituted, until the termination of a proceeding under
or
chapter 30, 31, or 32 involving the patent of the earlier applicant.
(d) EFFECT OF FINAL DECISION.—The final decision (B) a specific reference under section 120 , 121, or 365(c) to
of the Patent Trial and Appeal Board, if adverse to claims in an any patent or application that contains or contained at any time
application for patent, shall constitute the final refusal by the such a claim.
Office on those claims. The final decision of the Patent Trial
and Appeal Board, if adverse to claims in a patent, shall, if no 35 U.S.C. 135 (pre-AIA) Interferences.
appeal or other review of the decision has been or can be taken
or had, constitute cancellation of those claims, and notice of [Editor Note: Except as noted below,*not applicable to any
such cancellation shall be endorsed on copies of the patent patent application subject to the first inventor to file provisions
distributed after such cancellation. of the AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 135 for
(e) SETTLEMENT.—Parties to a proceeding instituted the law otherwise applicable.]
under subsection (a) may terminate the proceeding by filing a
written statement reflecting the agreement of the parties as to (a) Whenever an application is made for a patent which, in
the correct inventor of the claimed invention in dispute. Unless the opinion of the Director, would interfere with any pending
the Patent Trial and Appeal Board finds the agreement to be application, or with any unexpired patent, an interference may
inconsistent with the evidence of record, if any, it shall take be declared and the Director shall give notice of such declaration
action consistent with the agreement. Any written settlement or to the applicants, or applicant and patentee, as the case may be.
understanding of the parties shall be filed with the Director. At The Board of Patent Appeals and Interferences shall determine
the request of a party to the proceeding, the agreement or questions of priority of the inventions and may determine
understanding shall be treated as business confidential questions of patentability. Any final decision, if adverse to the
information, shall be kept separate from the file of the involved claim of an applicant, shall constitute the final refusal by the
patents or applications, and shall be made available only to Patent and Trademark Office of the claims involved, and the
Government agencies on written request, or to any person on a Director may issue a patent to the applicant who is adjudged
showing of good cause. the prior inventor. A final judgment adverse to a patentee from
which no appeal or other review has been or can be taken or
(f) ARBITRATION.—Parties to a proceeding instituted had shall constitute cancellation of the claims involved in the
under subsection (a) may, within such time as may be specified patent, and notice of such cancellation shall be endorsed on
by the Director by regulation, determine such contest or any copies of the patent distributed after such cancellation by the
aspect thereof by arbitration. Such arbitration shall be governed Patent and Trademark Office.
by the provisions of title 9, to the extent such title is not
inconsistent with this section. The parties shall give notice of (b)(1) A claim which is the same as, or for the same
any arbitration award to the Director, and such award shall, as or substantially the same subject matter as, a claim of an issued
between the parties to the arbitration, be dispositive of the issues patent may not be made in any application unless such a claim
to which it relates. The arbitration award shall be unenforceable is made prior to one year from the date on which the patent was
until such notice is given. Nothing in this subsection shall granted.
preclude the Director from determining the patentability of the (2) A claim which is the same as, or for the same or
claimed inventions involved in the proceeding. substantially the same subject matter as, a claim of an application
published under section 122(b) may be made in an application
(Subsection (c) added Oct. 15, 1962, Public Law 87-831, 76
filed after the application is published only if the claim is made
Stat. 958; subsections (a) and (c) amended, Jan. 2, 1975, Public
before 1 year after the date on which the application is published.
Law 93-596, sec. 1, 88 Stat. 1949; subsection (a) amended Nov.
8, 1984, Public Law 98-622, sec. 202, 98 Stat. 3386; subsection (c) Any agreement or understanding between parties to an
(d) added Nov. 8, 1984, Public Law 98-622, sec. 105, 98 Stat. interference, including any collateral agreements referred to
3385; amended Nov. 29, 1999, Public Law 106-113, sec. therein, made in connection with or in contemplation of the
1000(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs. 4507(11) termination of the interference, shall be in writing and a true
and 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law copy thereof filed in the Patent and Trademark Office before
112-29, secs. 20(j) (effective Sept. 16, 2012) and (3)(i)(effective the termination of the interference as between the said parties
March 16, 2013)*, 125 Stat. 284; subsections (a) and (e) to the agreement or understanding. If any party filing the same
amended Jan. 14, 2013, Public Law 112-274, secs. 1(e) and (k), so requests, the copy shall be kept separate from the file of the
126 Stat. 2456, effective March 16, 2013.*) interference, and made available only to Government agencies
on written request, or to any person on a showing of good cause.
*NOTE: The provisions of 35 U.S.C. 135 (pre-AIA), as in effect Failure to file the copy of such agreement or understanding shall
on March 15, 2013 , shall apply to each claim of an application render permanently unenforceable such agreement or
for patent, and any patent issued thereon, for which the first understanding and any patent of such parties involved in the
inventor to file provisions of the AIA also apply (see35 U.S.C. interference or any patent subsequently issued on any application
of such parties so involved. The Director may, however, on a

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§ 141 MANUAL OF PATENT EXAMINING PROCEDURE

showing of good cause for failure to file within the time 141 Appeal to Court of Appeals for the Federal
prescribed, permit the filing of the agreement or understanding Circuit.
during the six-month period subsequent to the termination of
the interference as between the parties to the agreement or 141 (pre-AIA) Appeal to the Court of Appeals
understanding. for the Federal Circuit.
142 Notice of appeal.
The Director shall give notice to the parties or their attorneys 143 Proceedings on appeal.
of record, a reasonable time prior to said termination, of the 143 (pre-AIA) Proceedings on appeal.
filing requirement of this section. If the Director gives such 144 Decision on appeal.
notice at a later time, irrespective of the right to file such
agreement or understanding within the six-month period on a 145 Civil action to obtain patent.
showing of good cause, the parties may file such agreement or 145 (pre-AIA) Civil action to obtain patent.
understanding within sixty days of the receipt of such notice. 146 Civil action in case of derivation
proceeding.
Any discretionary action of the Director under this subsection 146 (pre-AIA) Civil action in case of
shall be reviewable under section 10 of the Administrative interference.
Procedure Act.
(d) Parties to a patent interference, within such time as may 35 U.S.C. 141 Appeal to Court of Appeals for the Federal
be specified by the Director by regulation, may determine such Circuit.
contest or any aspect thereof by arbitration. Such arbitration
[Editor Note: Applicable to proceedings commenced on or after
shall be governed by the provisions of title 9 to the extent such
September 16, 2012. See 35 U.S.C. 141 (pre-AIA) for the law
title is not inconsistent with this section. The parties shall give
otherwise applicable.*]
notice of any arbitration award to the Director, and such award
shall, as between the parties to the arbitration, be dispositive of
the issues to which it relates. The arbitration award shall be (a) EXAMINATIONS.—An applicant who is dissatisfied
unenforceable until such notice is given. Nothing in this with the final decision in an appeal to the Patent Trial and
subsection shall preclude the Director from determining Appeal Board under section 134(a) may appeal the Board’s
patentability of the invention involved in the interference. decision to the United States Court of Appeals for the Federal
Circuit. By filing such an appeal, the applicant waives his or
(Subsection (c) added Oct. 15, 1962, Public Law 87-831, 76 her right to proceed under section 145 .
Stat. 958; subsections (a) and (c) amended, Jan. 2, 1975, Public (b) REEXAMINATIONS.—A patent owner who is
Law 93-596, sec. 1, 88 Stat. 1949; subsection (a) amended Nov. dissatisfied with the final decision in an appeal of a
8, 1984, Public Law 98-622, sec. 202, 98 Stat. 3386; subsection reexamination to the Patent Trial and Appeal Board under
(d) added Nov. 8, 1984, Public Law 98-622, sec. 105, 98 Stat. section 134(a) may appeal the Board’s decision only to the
3385; amended Nov. 29, 1999, Public Law 106-113, sec. United States Court of Appeals for the Federal Circuit.
1000(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs. 4507(11)
and 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law (c) POST-GRANT AND INTER PARTES REVIEWS.—A
112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284 . party to an inter partes review or a post-grant review who is
dissatisfied with the final written decision of the Patent Trial
and Appeal Board under section 318(a) or 328(a) (as the case
*NOTE: The provisions of 35 U.S.C. 135 (pre-AIA), as in effect
may be) may appeal the Board’s decision only to the United
on March 15, 2013 , shall apply to each claim of an application
States Court of Appeals for the Federal Circuit.
for patent, and any patent issued thereon, for which the first
inventor to file provisions of the AIA also apply (see35 U.S.C. (d) DERIVATION PROCEEDINGS.—A party to a
100 (note)), if such application or patent contains or contained derivation proceeding who is dissatisfied with the final decision
at any time— of the Patent Trial and Appeal Board in the proceeding may
appeal the decision to the United States Court of Appeals for
(A) a claim to an invention having an effective filing date as the Federal Circuit, but such appeal shall be dismissed if any
defined in section 100(i), that occurs before March 16, 2013; adverse party to such derivation proceeding, within 20 days
or after the appellant has filed notice of appeal in accordance with
section 142, files notice with the Director that the party elects
to have all further proceedings conducted as provided in section
(B) a specific reference under section 120 , 121, or 365(c) to 146. If the appellant does not, within 30 days after the filing of
any patent or application that contains or contained at any time such notice by the adverse party, file a civil action under section
such a claim. 146, the Board’s decision shall govern the further proceedings
in the case.
CHAPTER 13 — REVIEW OF PATENT (Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7),
AND TRADEMARK OFFICE DECISION (b)(2), 96 Stat. 49, 50; Nov. 8, 1984, Public Law 98-622, sec.
203(a), 98 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec.
Sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(c)
and 4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec.

Rev. 08.2017, January 2018 L-36

 PATENT LAWS § 143 (pre-AIA)

13106, 116 Stat. 1901; amended Sept. 16, 2011, Public Law (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
112-29, sec. 7(c) (effective Sept. 16, 2012), 125 Stat. 284.) 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;
*NOTE: The provisions of this section as in effect on Sept. 15, Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
2012 (35 U.S.C. 141 (pre-AIA)) apply to interference 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
proceedings that are declared after September 15, 2012 under
35 U.S.C. 143 Proceedings on appeal.
35 U.S.C. 135 (pre-AIA). See Public Law 112-274, sec. 1(k)(3),
126 Stat. 2456 (Jan. 14, 2013). [Editor Note: Applicable to proceedings commenced on or after
Sept. 16, 2012. See 35 U.S.C. 143 (pre-AIA) for the law
35 U.S.C. 141 (pre-AIA) Appeal to the Court of Appeals
otherwise applicable.]
for the Federal Circuit.

[Editor Note: Not applicable to proceedings commenced on or With respect to an appeal described in section 142, the Director
after September 16, 2012.* See 35 U.S.C. 141 for the law shall transmit to the United States Court of Appeals for the
otherwise applicable.] Federal Circuit a certified list of the documents comprising the
record in the Patent and Trademark Office. The court may
An applicant dissatisfied with the decision in an appeal to the request that the Director forward the original or certified copies
Board of Patent Appeals and Interferences under section 134 of of such documents during the pendency of the appeal. In an ex
this title may appeal the decision to the United States Court of parte case, the Director shall submit to the court in writing the
Appeals for the Federal Circuit. By filing such an appeal the grounds for the decision of the Patent and Trademark Office,
applicant waives his or her right to proceed under section 145 addressing all of the issues raised in the appeal. The Director
of this title. A patent owner, or a third-party requester in an inter shall have the right to intervene in an appeal from a decision
partes reexamination proceeding, who is in any reexamination entered by the Patent Trial and Appeal Board in a derivation
proceeding dissatisfied with the final decision in an appeal to proceeding under section 135 or in an inter partes or post-grant
the Board of Patent Appeals and Interferences under section review under chapter 31 or 32.
134 may appeal the decision only to the United States Court of
Appeals for the Federal Circuit. A party to an interference (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
dissatisfied with the decision of the Board of Patent Appeals 1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat.
and Interferences on the interference may appeal the decision 49; Nov. 8, 1984, Public Law 98-620, sec. 414(a), 98 Stat. 3363;
to the United States Court of Appeals for the Federal Circuit, Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
but such appeal shall be dismissed if any adverse party to such 1501A-571, 582 (S. 1948 secs. 4605(d) and 4732(a)(10)(A));
interference, within twenty days after the appellant has filed Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901;
notice of appeal in accordance with section 142 of this title, files amended Sept. 16, 2011, Public Law 112-29, secs. 7(c) and 20(j)
notice with the Director that the party elects to have all further (effective Sept. 16, 2012), 125 Stat. 284.)
proceedings conducted as provided in section 146 of this title.
If the appellant does not, within thirty days after filing of such 35 U.S.C. 143 (pre-AIA) Proceedings on appeal.
notice by the adverse party, file a civil action under section 146,
the decision appealed from shall govern the further proceedings [Editor Note: Not applicable to proceedings commenced on or
in the case. after September 16, 2012. See 35 U.S.C. 143 for the law
otherwise applicable.]
(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. With respect to an appeal described in section 142 of this title,
203(a), 98 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec. the Director shall transmit to the United States Court of Appeals
1000(a)(9), 113 Stat. 1501A-571, 582 (S. 1948 secs. 4605(c) for the Federal Circuit a certified list of the documents
and 4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec. comprising the record in the Patent and Trademark Office. The
13106, 116 Stat. 1901.) court may request that the Director forward the original or
certified copies of such documents during the pendency of the
appeal. In an ex parte case or any reexamination case, the
*NOTE: The provisions of 35 U.S.C. 141 (pre-AIA) as in effect Director shall submit to the court in writing the grounds for the
on Sept. 15, 2012 apply to interference proceedings that are decision of the Patent and Trademark Office, addressing all the
declared after September 15, 2012 under 35 U.S.C. 135 issues involved in the appeal. The court shall, before hearing
(pre-AIA). See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456 an appeal, give notice of the time and place of the hearing to
(Jan. 14, 2013). the Director and the parties in the appeal.
35 U.S.C. 142 Notice of appeal.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
When an appeal is taken to the United States Court of Appeals 1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat.
for the Federal Circuit, the appellant shall file in the Patent and 49; Nov. 8, 1984, Public Law 98-620, sec. 414(a), 98 Stat. 3363;
Trademark Office a written notice of appeal directed to the Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
Director, within such time after the date of the decision from 1501A-571, 582 (S. 1948 secs. 4605(d) and 4732(a)(10)(A));
which the appeal is taken as the Director prescribes, but in no Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)
case less than 60 days after that date.

L-37 Rev. 08.2017, January 2018

§ 144 MANUAL OF PATENT EXAMINING PROCEDURE

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

involved in the decision of the Board of Patent Appeals and
The United States Court of Appeals for the Federal Circuit shall Interferences, as the facts in the case may appear, and such
review the decision from which an appeal is taken on the record adjudication shall authorize the Director to issue such patent on
before the Patent and Trademark Office. Upon its determination compliance with the requirements of law. All the expenses of
the court shall issue to the Director its mandate and opinion, the proceedings shall be paid by the applicant.
which shall be entered of record in the Patent and Trademark
Office and shall govern the further proceedings in the case. (Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96
Stat. 49; Nov. 8, 1984, Public Law 98-622, sec. 203(b), 98 Stat.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. Stat. 1501A-571, 582 (S. 1948 secs. 4605(e) and 4732(a)(10)(A)
49; Nov. 8, 1984, Public Law 98-620, sec. 414(a), 98 Stat. 3363; ); amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat.
1501A-582 (S. 1948 sec. 4732(a)(10)(A)).) 284.)

35 U.S.C. 145 Civil action to obtain patent. 35 U.S.C. 146 Civil action in case of derivation proceeding.

[Editor Note: Applicable to any patent application subject to [Editor Note: Applicable to any patent application subject to
the first inventor to file provisions of the AIA (see 35 U.S.C. 100 the first inventor to file provisions of the AIA (see 35 U.S.C. 100
(note)). See 35 U.S.C. 145 (pre-AIA) for the law otherwise (note)). See 35 U.S.C. 146 (pre-AIA) for the law otherwise
applicable.] applicable.]

An applicant dissatisfied with the decision of the Patent Trial Any party to a derivation proceeding dissatisfied with the
and Appeal Board in an appeal under section 134(a) may, unless decision of the Patent Trial and Appeal Board on the derivation
appeal has been taken to the United States Court of Appeals for proceeding, may have remedy by civil action, if commenced
the Federal Circuit, have remedy by civil action against the within such time after such decision, not less than sixty days,
Director in the United States District Court for the Eastern as the Director appoints or as provided in section 141, unless
District of Virginia if commenced within such time after such he has appealed to the United States Court of Appeals for the
decision, not less than sixty days, as the Director appoints. The Federal Circuit, and such appeal is pending or has been decided.
court may adjudge that such applicant is entitled to receive a In such suits the record in the Patent and Trademark Office shall
patent for his invention, as specified in any of his claims be admitted on motion of either party upon the terms and
involved in the decision of the Patent Trial and Appeal Board, conditions as to costs, expenses, and the further
as the facts in the case may appear, and such adjudication shall cross-examination of the witnesses as the court imposes, without
authorize the Director to issue such patent on compliance with prejudice to the right of the parties to take further testimony.
the requirements of law. All the expenses of the proceedings The testimony and exhibits of the record in the Patent and
shall be paid by the applicant. Trademark Office when admitted shall have the same effect as
if originally taken and produced in the suit.

(Amended Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96

Stat. 49; Nov. 8, 1984, Public Law 98-622, sec. 203(b), 98 Stat. Such suit may be instituted against the party in interest as shown
3387; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 by the records of the Patent and Trademark Office at the time
Stat. 1501A-571, 582 (S. 1948 secs. 4605(e) and 4732(a)(10)(A) of the decision complained of, but any party in interest may
); amended Sept. 16, 2011, Public Law 112-29, secs. 9 (effective become a party to the action. If there be adverse parties residing
Sept. 16, 2011), 20(j) (effective Sept. 16, 2012), and 3(j) in a plurality of districts not embraced within the same state, or
(effective March 16, 2013), 125 Stat. 284.) an adverse party residing in a foreign country, the United States
District Court for the Eastern District of Virginia shall have
35 U.S.C. 145 (pre-AIA) Civil action to obtain patent. jurisdiction and may issue summons against the adverse parties
directed to the marshal of any district in which any adverse party
[Editor Note: Not applicable to any patent application subject resides. Summons against adverse parties residing in foreign
to the first inventor to file provisions of the AIA (see 35 U.S.C. countries may be served by publication or otherwise as the court
100 (note)). See 35 U.S.C. 145 for the law otherwise directs. The Director shall not be a necessary party but he shall
applicable.] 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
An applicant dissatisfied with the decision of the Board of Patent of the court in favor of the right of an applicant to a patent shall
Appeals and Interferences in an appeal under section 134(a) authorize the Director to issue such patent on the filing in the
may, unless appeal has been taken to the United States Court Patent and Trademark Office of a certified copy of the judgment
of Appeals for the Federal Circuit, have remedy by civil action and on compliance with the requirements of law.
against the Director in the United States District Court for the
Eastern District of Virginia if commenced within such time after (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
such decision, not less than sixty days, as the Director appoints. 1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat.
The court may adjudge that such applicant is entitled to receive 49; Nov. 8, 1984, Public Law 98-622, sec. 203(c), 98 Stat. 3387;
a patent for his invention, as specified in any of his claims Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.

Rev. 08.2017, January 2018 L-38

 PATENT LAWS § 154

1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16, 153 How issued.
2011, Public Law 112-29, secs. 9 (effective Sept. 16, 2011), 154 Contents and term of patent; provisional
sec. 20(j) (effective Sept. 16, 2012) and 3(j) (effective March rights.
16, 2013), 125 Stat. 284.)
154 (pre-AIA) Contents and term of patent;
35 U.S.C. 146 (pre-AIA) Civil action in case of interference. provisional rights.
155 [Repealed.]
[Editor Note: Not applicable to any patent application subject
to the first inventor to file provisions of the AIA (see 35 U.S.C.
155A [Repealed.]
100 (note)). See 35 U.S.C. 146 for the law otherwise 156 Extension of patent term.
applicable.] 157 [Repealed.]
157 (pre-AIA) Statutory invention registration.
Any party to an interference dissatisfied with the decision of
the Board of Patent Appeals and Interferences on the 35 U.S.C. 151 Issue of patent.
interference, may have remedy by civil action, if commenced
(a) IN GENERAL.—If it appears that an applicant is entitled
within such time after such decision, not less than sixty days,
to a patent under the law, a written notice of allowance of the
as the Director appoints or as provided in section 141, unless
application shall be given or mailed to the applicant. The notice
he has appealed to the United States Court of Appeals for the
shall specify a sum, constituting the issue fee and any required
Federal Circuit, and such appeal is pending or has been decided.
publication fee, which shall be paid within 3 months thereafter.
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 (b) EFFECT OF PAYMENT.—Upon payment of this sum the
cross-examination of the witnesses as the court imposes, without patent may issue, but if payment is not timely made, the
prejudice to the right of the parties to take further testimony. application shall be regarded as abandoned.
The testimony and exhibits of the record in the Patent and
Trademark Office when admitted shall have the same effect as (Amended July 24, 1965, Public Law 89-83, sec. 4, 79 Stat.
if originally taken and produced in the suit. 260; Jan. 2, 1975, Public Law 93-601, sec. 3, 88 Stat. 1956;
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
Such suit may be instituted against the party in interest as shown 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); Nov. 29, 1999, Public
by the records of the Patent and Trademark Office at the time Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
of the decision complained of, but any party in interest may sec. 4732(a)(10)(A)); Dec. 18, 2012, Public Law 112-211, sec.
become a party to the action. If there be adverse parties residing 202(b)(6), 126 Stat. 1536.)
in a plurality of districts not embraced within the same state, or
an adverse party residing in a foreign country, the United States 35 U.S.C. 152 Issue of patent to assignee.
District Court for the Eastern District of Virginia shall have
Patents may be granted to the assignee of the inventor of record
jurisdiction and may issue summons against the adverse parties
in the Patent and Trademark Office, upon the application made
directed to the marshal of any district in which any adverse party
and the specification sworn to by the inventor, except as
resides. Summons against adverse parties residing in foreign
otherwise provided in this title.
countries may be served by publication or otherwise as the court
directs. The Director shall not be a necessary party but he shall
be notified of the filing of the suit by the clerk of the court in (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
which it is filed and shall have the right to intervene. Judgment 1949.)
of the court in favor of the right of an applicant to a patent shall
authorize the Director to issue such patent on the filing in the 35 U.S.C. 153 How issued.
Patent and Trademark Office of a certified copy of the judgment
Patents shall be issued in the name of the United States of
and on compliance with the requirements of law.
America, under the seal of the Patent and Trademark Office,
and shall be signed by the Director or have his signature placed
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. thereon and shall be recorded in the Patent and Trademark
1949; Apr. 2, 1982, Public Law 97-164, sec. 163(a)(7), 96 Stat. Office.
49; Nov. 8, 1984, Public Law 98-622, sec. 203(c), 98 Stat. 3387;
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16,
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
2011, Public Law 112-29, secs. 9 (effective Sept. 16, 2011) and
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); Nov. 2, 2002,
20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
Public Law 107-273, sec. 13203, 116 Stat. 1902.)

CHAPTER 14 — ISSUE OF PATENT 35 U.S.C. 154 Contents and term of patent; provisional
rights.
Sec. [Editor Note: 35 U.S.C. 154(b)(1) as set forth below is only
151 Issue of patent. applicable to patent applications subject to the first inventor to
152 Issue of patent to assignee.

L-39 Rev. 08.2017, January 2018

§ 154 MANUAL OF PATENT EXAMINING PROCEDURE

file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35

U.S.C. 154(b)(1) (pre-AIA) for the law otherwise applicable.] the case may be, until the action described in such clause is
taken.
(a) IN GENERAL.— (B) GUARANTEE OF NO MORE THAN
(1) CONTENTS.—Every patent shall contain a short 3-YEAR APPLICATION PENDENCY.— Subject to the
title of the invention and a grant to the patentee, his heirs or limitations under paragraph (2), if the issue of an original patent
assigns, of the right to exclude others from making, using, is delayed due to the failure of the United States Patent and
offering for sale, or selling the invention throughout the United Trademark Office to issue a patent within 3 years after the actual
States or importing the invention into the United States, and, if filing date of the application under section 111(a) in the United
the invention is a process, of the right to exclude others from States or, in the case of an international application, the date of
using, offering for sale or selling throughout the United States, commencement of the national stage under section 371 in the
or importing into the United States, products made by that international application not including—
process, referring to the specification for the particulars thereof. (i) any time consumed by continued
(2) TERM.—Subject to the payment of fees under this examination of the application requested by the applicant under
title, such grant shall be for a term beginning on the date on section 132(b);
which the patent issues and ending 20 years from the date on (ii) any time consumed by a proceeding under
which the application for the patent was filed in the United States section 135(a), any time consumed by the imposition of an order
or, if the application contains a specific reference to an earlier under section 181, or any time consumed by appellate review
filed application or applications under section 120, 121, 365(c), by the Patent Trial and Appeal Board or by a Federal court; or
or 386(c) from the date on which the earliest such application
(iii) any delay in the processing of the
was filed.
application by the United States Patent and Trademark Office
(3) PRIORITY.—Priority under section 119, 365(a), requested by the applicant except as permitted by paragraph
365(b), 386(a), or 386(b) shall not be taken into account in (3)(C),
determining the term of a patent.
(4) SPECIFICATION AND DRAWING.—A copy of the term of the patent shall be extended 1 day for each day after
the specification and drawing shall be annexed to the patent and the end of that 3-year period until the patent is issued.
be a part of such patent. (C) GUARANTEE OR ADJUSTMENTS FOR
(b) ADJUSTMENT OF PATENT TERM.— DELAYS DUE TO DERIVATION PROCEEDINGS,
SECRECY ORDERS, AND APPEALS.— Subject to the
(1) PATENT TERM GUARANTEES.—
limitations under paragraph (2), if the issue of an original patent
(A) GUARANTEE OF PROMPT PATENT AND is delayed due to—
TRADEMARK OFFICE RESPONSES.— Subject to the
(i) a proceeding under section 135(a);
limitations under paragraph (2), if the issue of an original patent
is delayed due to the failure of the Patent and Trademark Office (ii) the imposition of an order under section
to— 181; or
(i) provide at least one of the notifications (iii) appellate review by the Patent Trial and
under section 132 or a notice of allowance under section 151 Appeal Board or by a Federal court in a case in which the patent
not later than 14 months after— was issued under a decision in the review reversing an adverse
determination of patentability,
(I) the date on which an application was
filed under section 111(a); or
the term of the patent shall be extended 1 day for each day of
(II) the date of commencement of the the pendency of the proceeding, order, or review, as the case
national stage under section 371 in an international application; may be.
(ii) respond to a reply under section 132, or to (2) LIMITATIONS.—
an appeal taken under section 134, within 4 months after the
date on which the reply was filed or the appeal was taken; (A) IN GENERAL.— To the extent that periods
of delay attributable to grounds specified in paragraph (1)
(iii) act on an application within 4 months after overlap, the period of any adjustment granted under this
the date of a decision by the Patent Trial and Appeal Board subsection shall not exceed the actual number of days the
under section 134 or 135 or a decision by a Federal court under issuance of the patent was delayed.
section 141, 145, or 146 in a case in which allowable claims
remain in the application; or (B) DISCLAIMED TERM.— No patent the term
of which has been disclaimed beyond a specified date may be
(iv) issue a patent within 4 months after the adjusted under this section beyond the expiration date specified
date on which the issue fee was paid under section 151 and all in the disclaimer.
outstanding requirements were satisfied,
(C) REDUCTION OF PERIOD OF
ADJUSTMENT.—
the term of the patent shall be extended 1 day for each day after
the end of the period specified in clause (i), (ii), (iii), or (iv), as (i) The period of adjustment of the term of a
patent under paragraph (1) shall be reduced by a period equal

Rev. 08.2017, January 2018 L-40

 PATENT LAWS § 154

(B) The determination of a patent term adjustment

to the period of time during which the applicant failed to engage
under this subsection shall not be subject to appeal or challenge
in reasonable efforts to conclude prosecution of the application.
by a third party prior to the grant of the patent.
(ii) With respect to adjustments to patent term
(c) CONTINUATION.—
made under the authority of paragraph (1)(B), an applicant shall
be deemed to have failed to engage in reasonable efforts to (1) DETERMINATION.—The term of a patent that is
conclude processing or examination of an application for the in force on or that results from an application filed before the
cumulative total of any periods of time in excess of 3 months date that is 6 months after the date of the enactment of the
that are taken to respond to a notice from the Office making any Uruguay Round Agreements Act shall be the greater of the
rejection, objection, argument, or other request, measuring such 20-year term as provided in subsection (a), or 17 years from
3-month period from the date the notice was given or mailed to grant, subject to any terminal disclaimers.
the applicant.
(2) REMEDIES.—The remedies of sections 283, 284,
(iii) The Director shall prescribe regulations and 285 shall not apply to acts which —
establishing the circumstances that constitute a failure of an
(A) were commenced or for which substantial
applicant to engage in reasonable efforts to conclude processing
investment was made before the date that is 6 months after the
or examination of an application.
date of the enactment of the Uruguay Round Agreements Act;
(3) PROCEDURES FOR PATENT TERM and
ADJUSTMENT DETERMINATION.—
(B) became infringing by reason of paragraph (1).
(A) The Director shall prescribe regulations
(3) REMUNERATION.—The acts referred to in
establishing procedures for the application for and determination
paragraph (2) may be continued only upon the payment of an
of patent term adjustments under this subsection.
equitable remuneration to the patentee that is determined in an
(B) Under the procedures established under action brought under chapter 28 and chapter 29 (other than those
subparagraph (A), the Director shall— provisions excluded by paragraph (2)).
(i) make a determination of the period of any (d) PROVISIONAL RIGHTS.—
patent term adjustment under this subsection, and shall transmit
(1) IN GENERAL.— In addition to other rights
a notice of that determination no later than the date of issuance
provided by this section, a patent shall include the right to obtain
of the patent; and
a reasonable royalty from any person who, during the period
(ii) provide the applicant one opportunity to beginning on the date of publication of the application for such
request reconsideration of any patent term adjustment patent under section 122(b), or in the case of an international
determination made by the Director. application filed under the treaty defined in section 351(a)
designating the United States under Article 21(2)(a) of such
(C) The Director shall reinstate all or part of the
treaty, or an international design application filed under the
cumulative period of time of an adjustment under paragraph
treaty defined in section 381(a)(1) designating the United States
(2)(C) if the applicant, prior to the issuance of the patent, makes
under Article 5 of such treaty, the date of publication of the
a showing that, in spite of all due care, the applicant was unable
application, and ending on the date the patent is issued—
to respond within the 3-month period, but in no case shall more
than three additional months for each such response beyond the (A) (i) makes, uses, offers for sale, or sells in
original 3-month period be reinstated. the United States the invention as claimed in the published patent
application or imports such an invention into the United States;
(D) The Director shall proceed to grant the patent
or
after completion of the Director’s determination of a patent term
adjustment under the procedures established under this (ii) if the invention as claimed in the published
subsection, notwithstanding any appeal taken by the applicant patent application is a process, uses, offers for sale, or sells in
of such determination. the United States or imports into the United States products
made by that process as claimed in the published patent
(4) APPEAL OF PATENT TERM ADJUSTMENT
application; and
DETERMINATION.—
(B) had actual notice of the published patent
(A) An applicant dissatisfied with the Director's
application and, in a case in which the right arising under this
decision on the applicant's request for reconsideration under
paragraph is based upon an international application designating
paragraph (3)(B)(ii) shall have exclusive remedy by a civil action
the United States that is published in a language other than
against the Director filed in the United States District Court for
English, had a translation of the international application into
the Eastern District of Virginia within 180 days after the date
the English language.
of the Director's decision on the applicant's request for
reconsideration. Chapter 7 of title 5 shall apply to such action. (2) RIGHT BASED ON SUBSTANTIALLY
Any final judgment resulting in a change to the period of IDENTICAL INVENTIONS.— The right under paragraph (1)
adjustment of the patent term shall be served on the Director, to obtain a reasonable royalty shall not be available under this
and the Director shall thereafter alter the term of the patent to subsection unless the invention as claimed in the patent is
reflect such change. substantially identical to the invention as claimed in the
published patent application.

L-41 Rev. 08.2017, January 2018

§ 154 (pre-AIA) MANUAL OF PATENT EXAMINING PROCEDURE

(3) TIME LIMITATION ON OBTAINING A

REASONABLE ROYALTY.— The right under paragraph (1) (i) provide at least one of the notifications
to obtain a reasonable royalty shall be available only in an action under section 132 or a notice of allowance under section 151
brought not later than 6 years after the patent is issued. The right not later than 14 months after—
under paragraph (1) to obtain a reasonable royalty shall not be (I) the date on which an application was
affected by the duration of the period described in paragraph filed under section 111(a); or
(1).
(II) the date of commencement of the
(4) REQUIREMENTS FOR INTERNATIONAL national stage under section 371 in an international application;
APPLICATIONS—
(ii) respond to a reply under section 132, or to
(A) EFFECTIVE DATE.— The right under an appeal taken under section 134, within 4 months after the
paragraph (1) to obtain a reasonable royalty based upon the date on which the reply was filed or the appeal was taken;
publication under the treaty defined in section 351(a) of an
international application designating the United States shall (iii) act on an application within 4 months after
commence on the date of publication under the treaty of the the date of a decision by the Board of Patent Appeals and
international application, or, if the publication under the treaty Interferences under section 134 or 135 or a decision by a Federal
of the international application is in a language other than court under section 141, 145, or 146 in a case in which allowable
English, on the date on which the Patent and Trademark Office claims remain in the application; or
receives a translation of the publication in the English language. (iv) issue a patent within 4 months after the
(B) COPIES.— The Director may require the date on which the issue fee was paid under section 151 and all
applicant to provide a copy of the international application and outstanding requirements were satisfied,
a translation thereof.
the term of the patent shall be extended 1 day for each day after
(Amended July 24, 1965, Public Law 89-83, sec. 5, 79 Stat.
the end of the period specified in clause (i), (ii), (iii), or (iv), as
261; Dec. 12, 1980, Public Law 96-517, sec. 4, 94 Stat. 3018;
the case may be, until the action described in such clause is
Aug. 23, 1988, Public Law 100-418, sec. 9002, 102 Stat. 1563;
taken.
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 (B) GUARANTEE OF NO MORE THAN
Stat. 3529; subsection (b) amended Nov. 29, 1999, Public Law 3-YEAR APPLICATION PENDENCY.— Subject to the
106-113, sec. 1000(a)(9), 113 Stat. 1501A-557 (S. 1948 sec. limitations under paragraph (2), if the issue of an original patent
4402(a)); subsection (d) added Nov. 29, 1999, Public Law is delayed due to the failure of the United States Patent and
106-113, sec. 1000(a)(9), 113 Stat. 1501A-564 (S. 1948 sec. Trademark Office to issue a patent within 3 years after the actual
4504); subsection (b)(4) amended Nov. 2, 2002, Public Law filing date of the application under section 111(a) in the United
107-273, sec. 13206, 116 Stat. 1904; subsection (d)(4)(A) States or, in the case of an international application, the date of
amended Nov. 2, 2002, Public Law 107-273, sec. 13204, 116 commencement of the national stage under section 371 in the
Stat. 1902; subsection (b)(4)(A) amended Sept. 16, 2011, Public international application not including—
Law 112-29, secs. 9 (effective Sept. 16, 2011), 20(j) (effective
(i) any time consumed by continued
Sept. 16, 2012), and 3(j) (effective March 16, 2013), 125 Stat.
examination of the application requested by the applicant under
284; subsection (b) amended Jan. 14, 2013, Public Law 112-274,
section 132(b);
sec. 1(h), 126 Stat. 2456; subsections (a) and (d)(1) amended
Dec. 18, 2012, Public Law 112-211, sec. 102(6) (effective May (ii) any time consumed by a proceeding under
13, 2015), 126 Stat. 1531.) section 135(a), any time consumed by the imposition of an order
under section 181, or any time consumed by appellate review
35 U.S.C. 154 (pre-AIA) Contents and term of patent; by the Board of Patent Appeals and Interferences or by a Federal
provisional rights. court; or

[Editor Note: 35 U.S.C. 154(b)(1)(pre-AIA) as set forth below (iii) any delay in the processing of the
is not applicable to any patent application subject to the first application by the United States Patent and Trademark Office
inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). requested by the applicant except as permitted by paragraph
See 35 U.S.C. 154(b)(1) for the law otherwise applicable.] (3)(C),

***** the term of the patent shall be extended 1 day for each day after
the end of that 3-year period until the patent is issued.
(b) ADJUSTMENT OF PATENT TERM.—
(C) GUARANTEE OR ADJUSTMENTS FOR
(1) PATENT TERM GUARANTEES.—
DELAYS DUE TO INTERFERENCES, SECRECY ORDERS,
(A) GUARANTEE OF PROMPT PATENT AND AND APPEALS.— Subject to the limitations under paragraph
TRADEMARK OFFICE RESPONSES.— Subject to the (2), if the issue of an original patent is delayed due to—
limitations under paragraph (2), if the issue of an original patent
(i) a proceeding under section 135(a);
is delayed due to the failure of the Patent and Trademark Office
to— (ii) the imposition of an order under section
181; or

Rev. 08.2017, January 2018 L-42

 PATENT LAWS § 156

(B) in the case of a patent which claims a method

(iii) appellate review by the Board of Patent of manufacturing the product which primarily uses recombinant
Appeals and Interferences or by a Federal court in a case in DNA technology in the manufacture of the product, the
which the patent was issued under a decision in the review permission for the commercial marketing or use of the product
reversing an adverse determination of patentability, after such regulatory review period is the first permitted
commercial marketing or use of a product manufactured under
the term of the patent shall be extended 1 day for each day of the process claimed in the patent; or
the pendency of the proceeding, order, or review, as the case (C) for purposes of subparagraph (A), in the case
may be. of a patent which —
*****
(i) claims a new animal drug or a veterinary
(Amended July 24, 1965, Public Law 89-83, sec. 5, 79 Stat. biological product which (I) is not covered by the claims in any
261; Dec. 12, 1980, Public Law 96-517, sec. 4, 94 Stat. 3018; other patent which has been extended, and (II) has received
Aug. 23, 1988, Public Law 100-418, sec. 9002, 102 Stat. 1563; permission for the commercial marketing or use in
Dec. 8, 1994, Public Law 103-465, sec. 532 (a)(1), 108 Stat. non-food-producing animals and in food-producing animals,
4983; Oct. 11, 1996, Public Law 104-295, sec. 20(e)(1), 110 and
Stat. 3529; subsection (b) amended Nov. 29, 1999, Public Law (ii) was not extended on the basis of the
106-113, sec. 1000(a)(9), 113 Stat. 1501A-557 (S. 1948 sec. regulatory review period for use in non-food-producing animals,
4402(a)); subsection (d) added Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-564 (S. 1948 sec.
the permission for the commercial marketing or use of the drug
4504); subsection (b)(4) amended Nov. 2, 2002, Public Law
or product after the regulatory review period for use in
107-273, sec. 13206, 116 Stat. 1904; subsection (d)(4)(A)
food-producing animals is the first permitted commercial
amended Nov. 2, 2002, Public Law 107-273, sec. 13204, 116
marketing or use of the drug or product for administration to a
Stat. 1902; subsection (b)(4)(A) amended Sept. 16, 2011, Public
food-producing animal.
Law 112-29, secs. 9 (effective Sept. 16, 2011) and 20(j)
(effective Sept. 16, 2012), 125 Stat. 284.)
The product referred to in paragraphs (4) and (5) is hereinafter
35 U.S.C. 155 [Repealed.] in this section referred to as the “approved product.”
(b) Except as provided in subsection (d)(5)(F), the rights
(Repealed Sept. 16, 2011, Public Law 112-29, sec. 20(k)
derived from any patent the term of which is extended under
(effective Sept. 16, 2012), 125 Stat. 284.)
this section shall during the period during which the term of the
35 U.S.C. 155A [Repealed.] patent is extended —
(1) in the case of a patent which claims a product, be
(Repealed Sept. 16, 2011, Public Law 112-29, sec. 20(k) limited to any use approved for the product —
(effective Sept. 16, 2012), 125 Stat. 284.)
(A) before the expiration of the term of the patent
35 U.S.C. 156 Extension of patent term. —

(a) The term of a patent which claims a product, a method (i) under the provision of law under which the
of using a product, or a method of manufacturing a product shall applicable regulatory review occurred, or
be extended in accordance with this section from the original (ii) under the provision of law under which
expiration date of the patent, which shall include any patent any regulatory review described in paragraph (1), (4), or (5) of
term adjustment granted under section 154(b) if — subsection (g) occurred, and
(1) the term of the patent has not expired before an (B) on or after the expiration of the regulatory
application is submitted under subsection (d)(1) for its extension; review period upon which the extension of the patent was based;
(2) the term of the patent has never been extended (2) in the case of a patent which claims a method of
under subsection (e)(1) of this section; using a product, be limited to any use claimed by the patent and
(3) an application for extension is submitted by the approved for the product —
owner of record of the patent or its agent and in accordance with (A) before the expiration of the term of the patent
the requirements of paragraphs (1) through (4) of subsection —
(d);
(i) under any provision of law under which an
(4) the product has been subject to a regulatory review applicable regulatory review occurred, and
period before its commercial marketing or use;
(ii) under the provision of law under which
(5)(A) except as provided in subparagraph (B) or any regulatory review described in paragraph (1), (4), or (5) of
(C), the permission for the commercial marketing or use of the subsection (g) occurred, and
product after such regulatory review period is the first permitted
commercial marketing or use of the product under the provision (B) on or after the expiration of the regulatory
of law under which such regulatory review period occurred; review period upon which the extension of the patent was based;
and

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§ 156 MANUAL OF PATENT EXAMINING PROCEDURE

(3) in the case of a patent which claims a method of (D) a brief description of the activities undertaken
manufacturing a product, be limited to the method of by the applicant during the applicable regulatory review period
manufacturing as used to make — with respect to the approved product and the significant dates
applicable to such activities; and
(A) the approved product, or
(E) such patent or other information as the Director
(B) the product if it has been subject to a regulatory
may require.
review period described in paragraph (1), (4), or (5) of
subsection (g).
For purposes of determining the date on which a product receives
permission under the second sentence of this paragraph, if such
As used in this subsection, the term “product” includes an
permission is transmitted after 4:30 P.M., Eastern Time, on a
approved product.
business day, or is transmitted on a day that is not a business
(c) The term of a patent eligible for extension under day, the product shall be deemed to receive such permission on
subsection (a) shall be extended by the time equal to the the next business day. For purposes of the preceding sentence,
regulatory review period for the approved product which period the term "business day" means any Monday, Tuesday,
occurs after the date the patent is issued, except that— Wednesday, Thursday, or Friday, excluding any legal holiday
(1) each period of the regulatory review period shall under section 6103 of title 5.
be reduced by any period determined under subsection (d)(2)(B) (2)(A) Within 60 days of the submittal of an
during which the applicant for the patent extension did not act application for extension of the term of a patent under paragraph
with due diligence during such period of the regulatory review (1), the Director shall notify —
period;
(i) the Secretary of Agriculture if the patent
(2) after any reduction required by paragraph (1), the claims a drug product or a method of using or manufacturing a
period of extension shall include only one-half of the time drug product and the drug product is subject to the
remaining in the periods described in paragraphs (1)(B)(i), Virus-Serum-Toxin Act, and
(2)(B)(i), (3)(B)(i), (4)(B)(i), and (5)(B)(i) of subsection (g);
(ii) the Secretary of Health and Human
(3) if the period remaining in the term of a patent after Services if the patent claims any other drug product, a medical
the date of the approval of the approved product under the device, or a food additive or color additive or a method of using
provision of law under which such regulatory review occurred or manufacturing such a product, device, or additive and if the
when added to the regulatory review period as revised under product, device, and additive are subject to the Federal Food,
paragraphs (1) and (2) exceeds fourteen years, the period of Drug and Cosmetic Act, of the extension application and shall
extension shall be reduced so that the total of both such periods submit to the Secretary who is so notified a copy of the
does not exceed fourteen years, and application. Not later than 30 days after the receipt of an
(4) in no event shall more than one patent be extended application from the Director, the Secretary receiving the
under subsection (e)(1) for the same regulatory review period application shall review the dates contained in the application
for any product. pursuant to paragraph (1)(C) and determine the applicable
regulatory review period, shall notify the Director of the
(d)(1) To obtain an extension of the term of a patent determination, and shall publish in the Federal Register a notice
under this section, the owner of record of the patent or its agent of such determination.
shall submit an application to the Director. Except as provided
in paragraph (5), such an application may only be submitted (B)(i) If a petition is submitted to the Secretary
within the sixty-day period beginning on the date the product making the determination under subparagraph (A), not later than
received permission under the provision of law under which the 180 days after the publication of the determination under
applicable regulatory review period occurred for commercial subparagraph (A), upon which it may reasonably be determined
marketing or use, or in the case of a drug product described in that the applicant did not act with due diligence during the
subsection (i), within the sixty-day period beginning on the applicable regulatory review period, the Secretary making the
covered date (as defined in subsection (i)). The application shall determination shall, in accordance with regulations promulgated
contain— by such Secretary, determine if the applicant acted with due
diligence during the applicable regulatory review period. The
(A) the identity of the approved product and the Secretary making the determination shall make such
Federal statute under which regulatory review occurred; determination not later than 90 days after the receipt of such a
(B) the identity of the patent for which an extension petition. For a drug product, device, or additive subject to the
is being sought and the identity of each claim of such patent Federal Food, Drug, and Cosmetic Act or the Public Health
which claims the approved product or a method of using or Service Act, the Secretary may not delegate the authority to
manufacturing the approved product; make the determination prescribed by this clause to an office
below the Office of the Director* of Food and Drugs. For a
(C) information to enable the Director to determine product subject to the Virus-Serum-Toxin Act, the Secretary of
under subsections (a) and (b) the eligibility of a patent for Agriculture may not delegate the authority to make the
extension and the rights that will be derived from the extension determination prescribed by this clause to an office below the
and information to enable the Director and the Secretary of Office of the Assistant Secretary for Marketing and Inspection
Health and Human Services or the Secretary of Agriculture to Services.
determine the period of the extension under subsection (g);

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 PATENT LAWS § 156

(ii) The Secretary making a determination of such determination, including the identity of the product
under clause (i) shall notify the Director of the determination under regulatory review, and shall issue to the applicant a
and shall publish in the Federal Register a notice of such certificate of interim extension for a period of not more than 1
determination together with the factual and legal basis for such year.
determination. Any interested person may request, within the
(C) The owner of record of a patent, or its agent,
60-day period beginning on the publication of a determination,
for which an interim extension has been granted under
the Secretary making the determination to hold an informal
subparagraph (B), may apply for not more than 4 subsequent
hearing on the determination. If such a request is made within
interim extensions under this paragraph, except that, in the case
such period, such Secretary shall hold such hearing not later
of a patent subject to subsection (g)(6)(C), the owner of record
than 30 days after the date of the request, or at the request of
of the patent, or its agent, may apply for only 1 subsequent
the person making the request, not later than 60 days after such
interim extension under this paragraph. Each such subsequent
date. The Secretary who is holding the hearing shall provide
application shall be made during the period beginning 60 days
notice of the hearing to the owner of the patent involved and to
before, and ending 30 days before, the expiration of the
any interested person and provide the owner and any interested
preceding interim extension.
person an opportunity to participate in the hearing. Within
30 days after the completion of the hearing, such Secretary shall (D) Each certificate of interim extension under this
affirm or revise the determination which was the subject of the paragraph shall be recorded in the official file of the patent and
hearing and shall notify the Director of any revision of the shall be considered part of the original patent.
determination and shall publish any such revision in the Federal (E) Any interim extension granted under this
Register. paragraph shall terminate at the end of the 60-day period
(3) For the purposes of paragraph (2)(B), the term “due beginning on the date on which the product involved receives
diligence” means that degree of attention, continuous directed permission for commercial marketing or use, except that, if
effort, and timeliness as may reasonably be expected from, and within that 60-day period, the applicant notifies the Director of
are ordinarily exercised by, a person during a regulatory review such permission and submits any additional information under
period. paragraph (1) of this subsection not previously contained in the
application for interim extension, the patent shall be further
(4) An application for the extension of the term of a
extended, in accordance with the provisions of this section—
patent is subject to the disclosure requirements prescribed by
the Director. (i) for not to exceed 5 years from the date of
expiration of the original patent term; or
(5)(A) If the owner of record of the patent or its
agent reasonably expects that the applicable regulatory review (ii) if the patent is subject to subsection
period described in paragraph (1)(B)(ii), (2)(B)(ii), (3)(B)(ii), (g)(6)(C), from the date on which the product involved receives
(4)(B)(ii), or (5)(B)(ii) of subsection (g) that began for a product approval for commercial marketing or use.
that is the subject of such patent may extend beyond the (F) The rights derived from any patent the term of
expiration of the patent term in effect, the owner or its agent which is extended under this paragraph shall, during the period
may submit an application to the Director for an interim of interim extension—
extension during the period beginning 6 months, and ending 15
days before such term is due to expire. The application shall (i) in the case of a patent which claims a
contain— product, be limited to any use then under regulatory review;
(i) the identity of the product subject to (ii) in the case of a patent which claims a
regulatory review and the Federal statute under which such method of using a product, be limited to any use claimed by the
review is occurring; patent then under regulatory review; and
(ii) the identity of the patent for which interim (iii) in the case of a patent which claims a
extension is being sought and the identity of each claim of such method of manufacturing a product, be limited to the method
patent which claims the product under regulatory review or a of manufacturing as used to make the product then under
method of using or manufacturing the product; regulatory review.
(iii) information to enable the Director to (e)(1) A determination that a patent is eligible for
determine under subsection (a)(1), (2), and (3) the eligibility of extension may be made by the Director solely on the basis of
a patent for extension; the representations contained in the application for the extension.
If the Director determines that a patent is eligible for extension
(iv) a brief description of the activities under subsection (a) and that the requirements of paragraphs
undertaken by the applicant during the applicable regulatory (1) through (4) of subsection (d) have been complied with, the
review period to date with respect to the product under review Director shall issue to the applicant for the extension of the term
and the significant dates applicable to such activities; and of the patent a certificate of extension, under seal, for the period
(v) such patent or other information as the prescribed by subsection (c). Such certificate shall be recorded
Director may require. in the official file of the patent and shall be considered as part
of the original patent.
(B) If the Director determines that, except for
permission to market or use the product commercially, the patent (2) If the term of a patent for which an application has
would be eligible for an extension of the patent term under this been submitted under subsection (d)(1) would expire before a
section, the Director shall publish in the Federal Register a notice certificate of extension is issued or denied under paragraph (1)

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§ 156 MANUAL OF PATENT EXAMINING PROCEDURE

respecting the application, the Director shall extend, until such

the period described in subparagraph (B) to which the limitation
determination is made, the term of the patent for periods of up
described in paragraph (6) applies.
to one year if he determines that the patent is eligible for
extension. (B) The regulatory review period for a new drug,
antibiotic drug, or human biological product is the sum of —
(f) For purposes of this section:
(i) the period beginning on the date an
(1) The term “product” means:
exemption under subsection (i) of section 505 or subsection (d)
(A) A drug product. of section 507 became effective for the approved product and
ending on the date an application was initially submitted for
(B) Any medical device, food additive, or color
such drug product under section 351, 505, or 507, and
additive subject to regulation under the Federal Food, Drug, and
Cosmetic Act. (ii) the period beginning on the date the
application was initially submitted for the approved product
(2) The term “drug product” means the active
under section 351, subsection (b) of section 505, or section 507
ingredient of—
and ending on the date such application was approved under
(A) a new drug, antibiotic drug, or human such section.
biological product (as those terms are used in the Federal Food,
(2)(A) In the case of a product which is a food
Drug, and Cosmetic Act and the Public Health Service Act), or
additive or color additive, the term means the period described
(B) a new animal drug or veterinary biological in subparagraph (B) to which the limitation described in
product (as those terms are used in the Federal Food, Drug, and paragraph (6) applies.
Cosmetic Act and the Virus-Serum-Toxin Act) which is not
(B) The regulatory review period for a food or
primarily manufactured using recombinant DNA, recombinant
color additive is the sum of —
RNA, hybridoma technology, or other processes involving site
specific genetic manipulation techniques (i) the period beginning on the date a major
including any salt or ester of the active ingredient, as a single health or environmental effects test on the additive was initiated
entity or in combination with another active ingredient. and ending on the date a petition was initially submitted with
respect to the product under the Federal Food, Drug, and
(3) The term “major health or environmental effects
Cosmetic Act requesting the issuance of a regulation for use of
test” means a test which is reasonably related to the evaluation
the product, and
of the health or environmental effects of a product, which
requires at least six months to conduct, and the data from which (ii) the period beginning on the date a petition
is submitted to receive permission for commercial marketing was initially submitted with respect to the product under the
or use. Periods of analysis or evaluation of test results are not Federal Food, Drug, and Cosmetic Act requesting the issuance
to be included in determining if the conduct of a test required of a regulation for use of the product, and ending on the date
at least six months. such regulation became effective or, if objections were filed to
such regulation, ending on the date such objections were
(4)(A) Any reference to section 351 is a reference
resolved and commercial marketing was permitted or, if
to section 351 of the Public Health Service Act.
commercial marketing was permitted and later revoked pending
(B) Any reference to section 503, 505, 512, or 515 further proceedings as a result of such objections, ending on the
is a reference to section 503, 505, 512, or 515 of the Federal date such proceedings were finally resolved and commercial
Food, Drug and Cosmetic Act. marketing was permitted.
(C) Any reference to the Virus-Serum-Toxin Act (3)(A) In the case of a product which is a medical
is a reference to the Act of March 4, 1913 (21 U.S.C. 151 - 158). device, the term means the period described in subparagraph
(5) The term “informal hearing” has the meaning (B) to which the limitation described in paragraph (6) applies.
prescribed for such term by section 201(y) of the Federal Food, (B) The regulatory review period for a medical
Drug and Cosmetic Act. device is the sum of —
(6) The term “patent” means a patent issued by the (i) the period beginning on the date a clinical
United States Patent and Trademark Office. investigation on humans involving the device was begun and
(7) The term “date of enactment” as used in this section ending on the date an application was initially submitted with
means September 24, 1984, for human drug product, a medical respect to the device under section 515, and
device, food additive, or color additive. (ii) the period beginning on the date an
(8) The term “date of enactment” as used in this section application was initially submitted with respect to the device
means the date of enactment of the Generic Animal Drug and under section 515 and ending on the date such application was
Patent Term Restoration Act for an animal drug or a veterinary approved under such Act or the period beginning on the date a
biological product. notice of completion of a product development protocol was
initially submitted under section 515(f)(5) and ending on the
(g) For purposes of this section, the term “regulatory review date the protocol was declared completed under section
period” has the following meanings: 515(f)(6).
(1)(A) In the case of a product which is a new drug, (4)(A) In the case of a product which is a new
antibiotic drug, or human biological product, the term means animal drug, the term means the period described in

Rev. 08.2017, January 2018 L-46

 PATENT LAWS § 156

subparagraph (B) to which the limitation described in paragraph

approved before such date, the period of extension determined
(6) applies.
on the basis of the regulatory review period determined under
(B) The regulatory review period for a new animal such paragraph may not exceed two years or in the case of an
drug product is the sum of — approved product which is a new animal drug or veterinary
biological product (as those terms are used in the Federal Food,
(i) the period beginning on the earlier of the
Drug, and Cosmetic Act or the Virus-Serum-Toxin Act), three
date a major health or environmental effects test on the drug
years.
was initiated or the date an exemption under subsection (j) of
section 512 became effective for the approved new animal drug (h) The Director may establish such fees as the Director
product and ending on the date an application was initially determines appropriate to cover the costs to the Office of
submitted for such animal drug product under section 512, and receiving and acting upon applications under this section.
(ii) the period beginning on the date the (i)(1) For purposes of this section, if the Secretary of Health
application was initially submitted for the approved animal drug and Human Services provides notice to the sponsor of an
product under subsection (b) of section 512 and ending on the application or request for approval, conditional approval, or
date such application was approved under such section. indexing of a drug product for which the Secretary intends to
recommend controls under the Controlled Substances Act,
(5)(A) In the case of a product which is a
beginning on the covered date, the drug product shall be
veterinary biological product, the term means the period
considered to—
described in subparagraph (B) to which the limitation described
in paragraph (6) applies. (A) have been approved or indexed under the relevant
provision of the Public Health Service Act or Federal Food,
(B) The regulatory period for a veterinary
Drug, and Cosmetic Act; and
biological product is the sum of —
(B) have permission for commercial marketing or use.
(i) the period beginning on the date the
authority to prepare an experimental biological product under (2) In this subsection, the term "covered date" means the
the Virus- Serum-Toxin Act became effective and ending on later of—
the date an application for a license was submitted under the
(A) the date an application is approved—
Virus-Serum-Toxin Act, and
(i) under section 351(a)(2)(C) of the Public Health
(ii) the period beginning on the date an
Service Act; or
application for a license was initially submitted for approval
under the Virus-Serum-Toxin Act and ending on the date such (ii) under section 505(b) or 512(c) of the Federal
license was issued. Food, Drug, and Cosmetic Act;
(6) A period determined under any of the preceding (B) the date an application is conditionally approved
paragraphs is subject to the following limitations: under section 571(b) of the Federal Food, Drug, and Cosmetic
Act;
(A) If the patent involved was issued after the date
of the enactment of this section, the period of extension (C) the date a request for indexing is granted under
determined on the basis of the regulatory review period section 572(d) of the Federal Food, Drug, and Cosmetic Act;
determined under any such paragraph may not exceed five years. or
(B) If the patent involved was issued before the (D) the date of issuance of the interim final rule
date of the enactment of this section and — controlling the drug under section 201(j) of the Controlled
Substances Act.
(i) no request for an exemption described in
paragraph (1)(B) or (4)(B) was submitted and no request for the (Added Sept. 24, 1984, Public Law 98-417, sec. 201(a), 98 Stat.
authority described in paragraph (5)(B) was submitted, 1598; amended Nov. 16, 1988, Public Law 100-670, sec.
(ii) no major health or environmental effects 201(a)-(h), 102 Stat. 3984; Dec. 3, 1993, Public Law 103-179,
test described in paragraph (2)(B) or (4)(B) was initiated and secs. 5, 6, 107 Stat. 2040, 2042; Dec. 8, 1994, Public Law
no petition for a regulation or application for registration 103-465, sec. 532(c)(1), 108 Stat. 4987; subsection (f) amended
described in such paragraph was submitted, or Nov. 21, 1997, Public Law 105-115, sec. 125(b)(2)(P), 111 Stat.
2326; amended Nov. 29, 1999, Public Law 106-113, sec.
(iii) no clinical investigation described in 1000(a)(9), 113 Stat. 1501A-560, 582 (S. 1948 secs. 4404 and
paragraph (3) was begun or product development protocol 4732(a)(10)(A)); subsections (b)(3)(B), (d)(2)(B)(i), and
described in such paragraph was submitted, before such date (g)(6)(B)(iii) amended Nov. 2, 2002, Public Law 107-273, sec.
for the approved product the period of extension determined on 13206, 116 Stat. 1904; subsection (d)(1) amended Sept. 16,
the basis of the regulatory review period determined under any 2011, Public Law 112-29, sec. 37, 125 Stat. 284; subsection
such paragraph may not exceed five years. (d)(1) amended Nov. 25, 2015, Public Law 114-89, sec. 2(c),
(C) If the patent involved was issued before the 129 Stat. 700-701; subsection (i) added, Nov. 25, 2015, Public
date of the enactment of this section and if an action described Law 114-89, sec. 2(c), 129 Stat. 701; * So in original. Probably
in subparagraph (B) was taken before the date of the enactment should be “Commissioner”.)
of this section with respect to the approved product and the
commercial marketing or use of the product has not been

L-47 Rev. 08.2017, January 2018

§ 157 MANUAL OF PATENT EXAMINING PROCEDURE

35 U.S.C. 157 [Repealed.]

CHAPTER 15 — PLANT PATENTS
(Repealed Sept. 16, 2011, Public Law 112-29, sec. 3(e) (effective
March 16, 2013), 125 Stat. 284.) Sec.
35 U.S.C. 157 (pre-AIA) Statutory invention registration. 161 Patents for plants.
162 Description, claim.
[Editor Note: Not applicable to requests for statutory invention 163 Grant.
registrations filed on or after March 16, 2013. 35 U.S.C. 157
164 Assistance of the Department of
repealed with regard to such requests.]
Agriculture.
(a) Notwithstanding any other provision, the Director is 35 U.S.C. 161 Patents for plants.
authorized to publish a statutory invention registration containing
the specification and drawings of a regularly filed application Whoever invents or discovers and asexually reproduces any
for a patent without examination if the applicant — distinct and new variety of plant, including cultivated sports,
(1) meets the requirements of section 112; mutants, hybrids, and newly found seedlings, other than a tuber
propagated plant or a plant found in an uncultivated state, may
(2) has complied with the requirements for printing, obtain a patent therefor, subject to the conditions and
as set forth in regulations of the Director; requirements of this title.
(3) waives the right to receive a patent on the invention
within such period as may be prescribed by the Director; and The provisions of this title relating to patents for inventions shall
apply to patents for plants, except as otherwise provided.
(4) pays application, publication, and other processing
fees established by the Director.
(Amended Sept. 3, 1954, 68 Stat. 1190.)
If an interference is declared with respect to such an application,
35 U.S.C. 162 Description, claim.
a statutory invention registration may not be published unless
the issue of priority of invention is finally determined in favor No plant patent shall be declared invalid for noncompliance
of the applicant. with section 112 if the description is as complete as is reasonably
(b) The waiver under subsection (a)(3) of this section by possible.
an applicant shall take effect upon publication of the statutory
invention registration. The claim in the specification shall be in formal terms to the
(c) A statutory invention registration published pursuant plant shown and described.
to this section shall have all of the attributes specified for patents
in this title except those specified in section 183 and sections (Amended Sept. 16, 2011, Public Law 112-29, sec. 20(j)
271 through 289. A statutory invention registration shall not (effective Sept. 16, 2012), 125 Stat. 284.)
have any of the attributes specified for patents in any other
provision of law other than this title. A statutory invention 35 U.S.C. 163 Grant.
registration published pursuant to this section shall give
appropriate notice to the public, pursuant to regulations which In the case of a plant patent, the grant shall include the right to
the Director shall issue, of the preceding provisions of this exclude others from asexually reproducing the plant, and from
subsection. The invention with respect to which a statutory using, offering for sale, or selling the plant so reproduced, or
invention certificate is published is not a patented invention for any of its parts, throughout the United States, or from importing
purposes of section 292. the plant so reproduced, or any parts thereof, into the United
States.
(d) The Director shall report to the Congress annually on
the use of statutory invention registrations. Such report shall
include an assessment of the degree to which agencies of the (Amended Oct. 27, 1998, Public Law 105-289, sec. 3, 112 Stat.
federal government are making use of the statutory invention 2781.)
registration system, the degree to which it aids the management
35 U.S.C. 164 Assistance of the Department of Agriculture.
of federally developed technology, and an assessment of the
cost savings to the Federal Government of the uses of such The President may by Executive order direct the Secretary of
procedures. Agriculture, in accordance with the requests of the Director, for
(Added Nov. 8, 1984, Public Law 98-622, sec. 102(a), 98 Stat. the purpose of carrying into effect the provisions of this title
3383; amended Nov. 29, 1999, Public Law 106-113, sec. with respect to plants (1) to furnish available information of the
1000(a)(9), 113 Stat. 1501A-582, 583 (S. 1948 secs. Department of Agriculture, (2) to conduct through the
4732(a)(10)(A) and 4732(a)(11)); amended Sept. 16, 2011, appropriate bureau or division of the Department research upon
Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 special problems, or (3) to detail to the Director officers and
Stat. 284.) employees of the Department.

Rev. 08.2017, January 2018 L-48

 PATENT LAWS § 181

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

(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).) Patents for designs shall be granted for the term of 15 years
from the date of grant.
CHAPTER 16 — DESIGNS
(Amended Aug. 27, 1982, Public Law 97-247, sec. 16, 96 Stat.
Sec. 321; Dec. 8, 1994, Public Law 103-465, sec. 532(c)(3), 108
Stat. 4987; amended Dec. 18, 2012, Public Law 112-211, sec.
171 Patents for designs.
102(7) (effective May 13, 2015), 126 Stat. 1532.)
172 Right of priority.
172 (pre-AIA) Right of priority.
CHAPTER 17 — SECRECY OF CERTAIN
173 Term of design patent.
INVENTIONS AND FILING
35 U.S.C. 171 Patents for designs. APPLICATIONS IN FOREIGN
(a) IN GENERAL.—Whoever invents any new, original, COUNTRIES
and ornamental design for an article of manufacture may obtain
a patent therefor, subject to the conditions and requirements of
Sec.
this title.
181 Secrecy of certain inventions and
(b) APPLICABILITY OF THIS TITLE.—The provisions
withholding of patent.
of this title relating to patents for inventions shall apply to
patents for designs, except as otherwise provided. 182 Abandonment of invention for unauthorized
disclosure.
(c) FILING DATE.—The filing date of an application for
patent for design shall be the date on which the specification as 183 Right to compensation.
prescribed by section 112 and any required drawings are filed. 184 Filing of application in foreign country.
184 (pre-AIA) Filing of application in foreign
(Amended Dec. 18, 2012, Public Law 112-211, sec. 202(a), 126
Stat. 1535.) country.
185 Patent barred for filing without license.
35 U.S.C. 172 Right of priority. 185 (pre-AIA) Patent barred for filing without
[Editor Note: Applicable to any patent application subject to license.
the first inventor to file provisions of the AIA (see 35 U.S.C. 100 186 Penalty.
(note)). See 35 U.S.C. 172 (pre-AIA) for the law otherwise 187 Nonapplicability to certain persons.
applicable.] 188 Rules and regulations, delegation of power.

The right of priority provided for by subsections (a) through (d) 35 U.S.C. 181 Secrecy of certain inventions and withholding
of section 119 shall be six months in the case of designs. The of patent.
right of priority provided for by section 119(e) shall not apply
Whenever publication or disclosure by the publication of an
to designs.
application or by the grant of a patent on an invention in which
the Government has a property interest might, in the opinion of
(Amended Dec. 8, 1994, Public Law 103-465, sec. 532(c)(2), the head of the interested Government agency, be detrimental
108 Stat. 4987; amended Sept. 16, 2011, Public Law 112-29, to the national security, the Commissioner of Patents upon being
sec. 20(j) (effective Sept. 16, 2012) and sec. 3(g)(effective March so notified shall order that the invention be kept secret and shall
16, 2013), 125 Stat. 284.) withhold the publication of an application or the grant of a patent
therefor under the conditions set forth hereinafter.
35 U.S.C. 172 (pre-AIA) Right of priority.

[Editor Note: Not applicable to any patent application subject Whenever the publication or disclosure of an invention by the
to the first inventor to file provisions of the AIA (see 35 U.S.C. publication of an application or by the granting of a patent, in
100 (note)). See 35 U.S.C. 172 for the law otherwise which the Government does not have a property interest, might,
applicable.] in the opinion of the Commissioner of Patents, be detrimental
to the national security, he shall make the application for patent
in which such invention is disclosed available for inspection to
The right of priority provided for by subsections (a) through (d)
the Atomic Energy Commission, the Secretary of Defense, and
of section 119 and the time specified in section 102(d) shall be
the chief officer of any other department or agency of the
six months in the case of designs. The right of priority provided
Government designated by the President as a defense agency
for by section 119(e) shall not apply to designs.
of the United States.

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

Each individual to whom the application is disclosed shall sign
108 Stat. 4987; amended Sept. 16, 2011, Public Law 112-29,
a dated acknowledgment thereof, which acknowledgment shall
sec. 20(j), 125 Stat. 284, effective Sept. 16, 2012.)
be entered in the file of the application. If, in the opinion of the

L-49 Rev. 08.2017, January 2018

§ 182 MANUAL OF PATENT EXAMINING PROCEDURE

Atomic Energy Commission, the Secretary of a Defense or anyone in privity with him or them, of all claims against the
Department, or the chief officer of another department or agency United States based upon such invention.
so designated, the publication or disclosure of the invention by
the publication of an application or by the granting of a patent (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
therefor would be detrimental to the national security, the 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(B)); amended
Atomic Energy Commission, the Secretary of a Defense Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept.
Department, or such other chief officer shall notify the 16, 2012), 125 Stat. 284.)
Commissioner of Patents and the Commissioner of Patents shall
order that the invention be kept secret and shall withhold the 35 U.S.C. 183 Right to compensation.
publication of the application or the grant of a patent for such
period as the national interest requires, and notify the applicant An applicant, his successors, assigns, or legal representatives,
thereof. Upon proper showing by the head of the department or whose patent is withheld as herein provided, shall have the right,
agency who caused the secrecy order to be issued that the beginning at the date the applicant is notified that, except for
examination of the application might jeopardize the national such order, his application is otherwise in condition for
interest, the Commissioner of Patents shall thereupon maintain allowance, or February 1, 1952, whichever is later, and ending
the application in a sealed condition and notify the applicant six years after a patent is issued thereon, to apply to the head of
thereof. The owner of an application which has been placed any department or agency who caused the order to be issued for
under a secrecy order shall have a right to appeal from the order compensation for the damage caused by the order of secrecy
to the Secretary of Commerce under rules prescribed by him. and/or for the use of the invention by the Government, resulting
from his disclosure. The right to compensation for use shall
An invention shall not be ordered kept secret and the publication begin on the date of the first use of the invention by the
of an application or the grant of a patent withheld for a period Government. The head of the department or agency is
of more than one year. The Commissioner of Patents shall renew authorized, upon the presentation of a claim, to enter into an
the order at the end thereof, or at the end of any renewal period, agreement with the applicant, his successors, assigns, or legal
for additional periods of one year upon notification by the head representatives, in full settlement for the damage and/or use.
of the department or the chief officer of the agency who caused This settlement agreement shall be conclusive for all purposes
the order to be issued that an affirmative determination has been notwithstanding any other provision of law to the contrary. If
made that the national interest continues to so require. An order full settlement of the claim cannot be effected, the head of the
in effect, or issued, during a time when the United States is at department or agency may award and pay to such applicant, his
war, shall remain in effect for the duration of hostilities and one successors, assigns, or legal representatives, a sum not exceeding
year following cessation of hostilities. An order in effect, or 75 per centum of the sum which the head of the department or
issued, during a national emergency declared by the President agency considers just compensation for the damage and/or use.
shall remain in effect for the duration of the national emergency A claimant may bring suit against the United States in the United
and six months thereafter. The Commissioner of Patents may States Court of Federal Claims or in the District Court of the
rescind any order upon notification by the heads of the United States for the district in which such claimant is a resident
departments and the chief officers of the agencies who caused for an amount which when added to the award shall constitute
the order to be issued that the publication or disclosure of the just compensation for the damage and/or use of the invention
invention is no longer deemed detrimental to the national by the Government. The owner of any patent issued upon an
security. application that was subject to a secrecy order issued pursuant
to section 181, who did not apply for compensation as above
provided, shall have the right, after the date of issuance of such
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), patent, to bring suit in the United States Court of Federal Claims
113 Stat. 1501A-566, 582 (S. 1948 secs. 4507(7) and for just compensation for the damage caused by reason of the
4732(a)(10)(B)).) order of secrecy and/or use by the Government of the invention
resulting from his disclosure. The right to compensation for use
35 U.S.C. 182 Abandonment of invention for unauthorized
shall begin on the date of the first use of the invention by the
disclosure.
Government. In a suit under the provisions of this section the
The invention disclosed in an application for patent subject to United States may avail itself of all defenses it may plead in an
an order made pursuant to section 181 may be held abandoned action under section 1498 of title 28. This section shall not
upon its being established by the Commissioner of Patents that confer a right of action on anyone or his successors, assigns, or
in violation of said order the invention has been published or legal representatives who, while in the full-time employment
disclosed or that an application for a patent therefor has been or service of the United States, discovered, invented, or
filed in a foreign country by the inventor, his successors, assigns, developed the invention on which the claim is based.
or legal representatives, or anyone in privity with him or them,
without the consent of the Commissioner of Patents. The (Amended Apr. 2, 1982, Public Law 97-164, sec. 160(a)(12),
abandonment shall be held to have occurred as of the time of 96 Stat. 48; Oct. 29, 1992, Public Law 102-572, sec. 902 (b)(1),
violation. The consent of the Commissioner of Patents shall not 106 Stat. 4516; amended Sept. 16, 2011, Public Law 112-29,
be given without the concurrence of the heads of the departments sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
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,

Rev. 08.2017, January 2018 L-50

 PATENT LAWS § 185

35 U.S.C. 184 Filing of application in foreign country.

the registration of a utility model, industrial design, or model
[Editor Note: Applicable to proceedings commenced on or after in respect of an invention made in this country. A license shall
Sept. 16, 2012. See 35 U.S.C. 184 (pre-AIA) for the law not be granted with respect to an invention subject to an order
otherwise applicable.] issued by the Commissioner of Patents pursuant to section 181
of this title without the concurrence of the head of the
departments and the chief officers of the agencies who caused
(a) FILING IN FOREIGN COUNTRY.—Except when
the order to be issued. The license may be granted retroactively
authorized by a license obtained from the Commissioner of
where an application has been filed abroad through error and
Patents a person shall not file or cause or authorize to be filed
without deceptive intent and the application does not disclose
in any foreign country prior to six months after filing in the
an invention within the scope of section 181 of this title.
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 The term “application” when used in this chapter includes
with respect to an invention subject to an order issued by the applications and any modifications, amendments, or supplements
Commissioner of Patents pursuant to section 181 without the thereto, or divisions thereof.
concurrence of the head of the departments and the chief officers
of the agencies who caused the order to be issued. The license The scope of a license shall permit subsequent modifications,
may be granted retroactively where an application has been filed amendments, and supplements containing additional subject
abroad through error and the application does not disclose an matter if the application upon which the request for the license
invention within the scope of section 181. is based is not, or was not, required to be made available for
(b) APPLICATION.—The term “application” when used inspection under section 181 of this title and if such
in this chapter includes applications and any modifications, modifications, amendments, and supplements do not change the
amendments, or supplements thereto, or divisions thereof. general nature of the invention in a manner which would require
such application to be made available for inspection under such
(c) SUBSEQUENT MODIFICATIONS, AMENDMENTS, section 181. In any case in which a license is not, or was not,
AND SUPPLEMENTS.—The scope of a license shall permit required in order to file an application in any foreign country,
subsequent modifications, amendments, and supplements such subsequent modifications, amendments, and supplements
containing additional subject matter if the application upon may be made, without a license, to the application filed in the
which the request for the license is based is not, or was not, foreign country if the United States application was not required
required to be made available for inspection under section 181 to be made available for inspection under section 181 and if
and if such modifications, amendments, and supplements do such modifications, amendments, and supplements do not, or
not change the general nature of the invention in a manner which did not, change the general nature of the invention in a manner
would require such application to be made available for which would require the United States application to have been
inspection under such section 181. In any case in which a license made available for inspection under such section 181.
is not, or was not, required in order to file an application in any
foreign country, such subsequent modifications, amendments,
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(1),
and supplements may be made, without a license, to the
102 Stat. 1567; Nov. 29, 1999, Public Law 106-113, sec.
application filed in the foreign country if the United States
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(B)).)
application was not required to be made available for inspection
under section 181 and if such modifications, amendments, and
35 U.S.C. 185 Patent barred for filing without license.
supplements do not, or did not, change the general nature of the
invention in a manner which would require the United States [Editor Note: Applicable to proceedings commenced on or after
application to have been made available for inspection under Sept. 16, 2012. See 35 U.S.C. 185 (pre-AIA) for the law
such section 181. otherwise applicable.]
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(1),
102 Stat. 1567; Nov. 29, 1999, Public Law 106-113, sec. Notwithstanding any other provisions of law any person, and
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(B)); his successors, assigns, or legal representatives, shall not receive
amended Sept. 16, 2011, Public Law 112-29, secs. 20(b) and a United States patent for an invention if that person, or his
(j) (effective Sept. 16, 2012), 125 Stat. 284) successors, assigns, or legal representatives shall, without
procuring the license prescribed in section 184, have made, or
35 U.S.C. 184 (pre-AIA) Filing of application in foreign consented to or assisted another’s making, application in a
country. foreign country for a patent or for the registration of a utility
model, industrial design, or model in respect of the invention.
[Editor Note: Not applicable to proceedings commenced on or A United States patent issued to such person, his successors,
after September 16, 2012. See 35 U.S.C. 184 for the law assigns, or legal representatives shall be invalid, unless the
otherwise applicable.] failure to procure such license was through error, and the patent
does not disclose subject matter within the scope of section 181.
Except when authorized by a license obtained from the
Commissioner of Patents a person shall not file or cause or (Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(2),
authorize to be filed in any foreign country prior to six months 102 Stat. 1568; Nov. 2, 2002, Public Law 107-273, sec. 13206,
after filing in the United States an application for patent or for

L-51 Rev. 08.2017, January 2018

§ 185 (pre-AIA) MANUAL OF PATENT EXAMINING PROCEDURE

116 Stat. 1904; amended Sept. 16, 2011, Public Law 112-29, this chapter, and may delegate any power conferred by this
secs. 20(c) and (j) (effective Sept. 16, 2012), 125 Stat. 284.) chapter.

35 U.S.C. 185 (pre-AIA) Patent barred for filing without

license. CHAPTER 18 — PATENT RIGHTS IN
INVENTIONS MADE WITH FEDERAL
[Editor Note: Not applicable to proceedings commenced on or
after September 16, 2012. See 35 U.S.C. 185 for the law
ASSISTANCE
otherwise applicable.]
Sec.
Notwithstanding any other provisions of law any person, and 200 Policy and objective.
his successors, assigns, or legal representatives, shall not receive 201 Definitions.
a United States patent for an invention if that person, or his 202 Disposition of rights.
successors, assigns, or legal representatives shall, without
202 (pre-AIA) Disposition of rights.
procuring the license prescribed in section 184 of this title, have
made, or consented to or assisted another’s making, application 203 March-in rights.
in a foreign country for a patent or for the registration of a utility 204 Preference for United States industry.
model, industrial design, or model in respect of the invention. 205 Confidentiality.
A United States patent issued to such person, his successors, 206 Uniform clauses and regulations.
assigns, or legal representatives shall be invalid, unless the
failure to procure such license was through error and without
207 Domestic and foreign protection of
deceptive intent, and the patent does not disclose subject matter federally owned inventions.
within the scope of section 181 of this title. 208 Regulations governing Federal licensing.
209 Licensing federally owned inventions.
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(2), 210 Precedence of chapter.
102 Stat. 1568; Nov. 2, 2002, Public Law 107-273, sec. 13206, 211 Relationship to antitrust laws.
116 Stat. 1904.)
212 Disposition of rights in educational awards.
35 U.S.C. 186 Penalty.
35 U.S.C. 200 Policy and objective.
Whoever, during the period or periods of time an invention has
It is the policy and objective of the Congress to use the patent
been ordered to be kept secret and the grant of a patent thereon
system to promote the utilization of inventions arising from
withheld pursuant to section 181, shall, with knowledge of such
federally supported research or development; to encourage
order and without due authorization, willfully publish or disclose
maximum participation of small business firms in federally
or authorize or cause to be published or disclosed the invention,
supported research and development efforts; to promote
or material information with respect thereto, or whoever
collaboration between commercial concerns and nonprofit
willfully, in violation of the provisions of section 184, shall file
organizations, including universities; to ensure that inventions
or cause or authorize to be filed in any foreign country an
made by nonprofit organizations and small business firms are
application for patent or for the registration of a utility model,
used in a manner to promote free competition and enterprise
industrial design, or model in respect of any invention made in
without unduly encumbering future research and discovery; to
the United States, shall, upon conviction, be fined not more than
promote the commercialization and public availability of
$10,000 or imprisoned for not more than two years, or both.
inventions made in the United States by United States industry
and labor; to ensure that the Government obtains sufficient rights
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9101(b)(3), in federally supported inventions to meet the needs of the
102 Stat. 1568; amended Sept. 16, 2011, Public Law 112-29, Government and protect the public against nonuse or
sec. 20(j), 125 Stat. 284, effective Sept. 16, 2012.) unreasonable use of inventions; and to minimize the costs of
administering policies in this area.
35 U.S.C. 187 Nonapplicability to certain persons.

The prohibitions and penalties of this chapter shall not apply to (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
any officer or agent of the United States acting within the scope 3018; amended Nov. 1, 2000, Public Law 106-404, sec. 5, 114
of his authority, nor to any person acting upon his written Stat. 1745.)
instructions or permission.
35 U.S.C. 201 Definitions.
35 U.S.C. 188 Rules and regulations, delegation of power.
As used in this chapter —
The Atomic Energy Commission, the Secretary of a defense
department, the chief officer of any other department or agency (a) The term “Federal agency” means any executive agency
of the Government designated by the President as a defense as defined in section 105 of title 5, and the military departments
agency of the United States, and the Secretary of Commerce, as defined by section 102 of title 5.
may separately issue rules and regulations to enable the (b) The term “funding agreement” means any contract,
respective department or agency to carry out the provisions of grant, or cooperative agreement entered into between any Federal

Rev. 08.2017, January 2018 L-52

 PATENT LAWS § 202

agency, other than the Tennessee Valley Authority, and any (a) Each nonprofit organization or small business firm may,
contractor for the performance of experimental, developmental, within a reasonable time after disclosure as required by
or research work funded in whole or in part by the Federal paragraph (c)(1) of this section, elect to retain title to any subject
Government. Such term includes any assignment, substitution invention: Provided, however, That a funding agreement may
of parties, or subcontract of any type entered into for the provide otherwise (i) when the contractor is not located in the
performance of experimental, developmental, or research work United States or does not have a place of business located in the
under a funding agreement as herein defined. United States or is subject to the control of a foreign government,
(ii) in exceptional circumstances when it is determined by the
(c) The term “contractor” means any person, small business
agency that restriction or elimination of the right to retain title
firm, or nonprofit organization that is a party to a funding
to any subject invention will better promote the policy and
agreement.
objectives of this chapter, (iii) when it is determined by a
(d) The term “invention” means any invention or discovery Government authority which is authorized by statute or
which is or may be patentable or otherwise protectable under Executive order to conduct foreign intelligence or
this title or any novel variety of plant which is or may be counterintelligence activities that the restriction or elimination
protectable under the Plant Variety Protection Act (7 U.S.C. of the right to retain title to any subject invention is necessary
2321, et seq.). to protect the security of such activities, or (iv) when the funding
(e) The term “subject invention” means any invention of agreement includes the operation of a Government-owned,
the contractor conceived or first actually reduced to practice in contractor-operated facility of the Department of Energy
the performance of work under a funding agreement: Provided, primarily dedicated to that Department’s naval nuclear
That in the case of a variety of plant, the date of determination propulsion or weapons related programs and all funding
(as defined in section 41(d) of the Plant Variety Protection Act agreement limitations under this subparagraph on the
(7 U.S.C. 2401(d)) must also occur during the period of contract contractor’s right to elect title to a subject invention are limited
performance. to inventions occurring under the above two programs of the
Department of Energy. The rights of the nonprofit organization
(f) The term “practical application” means to manufacture or small business firm shall be subject to the provisions of
in the case of a composition or product, to practice in the case paragraph (c) of this section and the other provisions of this
of a process or method, or to operate in the case of a machine chapter.
or system; and, in each case, under such conditions as to
establish that the invention is being utilized and that its benefits (b)(1) The rights of the Government under subsection
are to the extent permitted by law or Government regulations (a) shall not be exercised by a Federal agency unless it first
available to the public on reasonable terms. determines that at least one of the conditions identified in clauses
(i) through (iii) of subsection (a) exists. Except in the case of
(g) The term “made” when used in relation to any invention subsection (a)(iii), the agency shall file with the Secretary of
means the conception or first actual reduction to practice of such Commerce, within thirty days after the award of the applicable
invention. funding agreement, a copy of such determination. In the case
(h) The term “small business firm” means a small business of a determination under subsection (a)(ii), the statement shall
concern as defined at section 2 of Public Law 85-536 (15 U.S.C. include an analysis justifying the determination. In the case of
632) and implementing regulations of the Administrator of the determinations applicable to funding agreements with small
Small Business Administration. business firms, copies shall also be sent to the Chief Counsel
for Advocacy of the Small Business Administration. If the
(i) The term “nonprofit organization” means universities Secretary of Commerce believes that any individual
and other institutions of higher education or an organization of determination or pattern of determinations is contrary to the
the type described in section 501(c)(3) of the Internal Revenue policies and objectives of this chapter or otherwise not in
Code of 1986 (26 U.S.C. 501(c)) and exempt from taxation conformance with this chapter, the Secretary shall so advise the
under section 501(a) of the Internal Revenue Code (26 U.S.C. head of the agency concerned and the Administrator of the
501(a)) or any nonprofit scientific or educational organization Office of Federal Procurement Policy, and recommend corrective
qualified under a State nonprofit organization statute. actions.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. (2) Whenever the Administrator of the Office of
3019; subsection (d) amended Nov. 8, 1984, Public Law 98-620, Federal Procurement Policy has determined that one or more
sec. 501(1), 98 Stat. 3364; subsection (e) amended Nov. 8, 1984, Federal agencies are utilizing the authority of clause (i) or (ii)
Public Law 98-620, sec. 501(2), 98 Stat. 3364; subsection (i) of subsection (a) of this section in a manner that is contrary to
amended Oct. 22, 1986, Public Law 99-514, sec. 2, 100 Stat. the policies and objectives of this chapter the Administrator is
2095; subsection (a) amended Nov. 2, 2002, Public Law authorized to issue regulations describing classes of situations
107-273, sec. 13206, 116 Stat. 1904.) in which agencies may not exercise the authorities of those
clauses.
35 U.S.C. 202 Disposition of rights.
(3) If the contractor believes that a determination is
[Editor Note: 35 U.S.C. 202(c)(2) and (c)(3) as set forth below contrary to the policies and objectives of this chapter or
are applicable only to patent applications subject to the first constitutes an abuse of discretion by the agency, the
inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)). determination shall be subject to section 203(b) .
See pre-AIA 35 U.S.C. 202 (c)(2) and (c)(3) for the law (c) Each funding agreement with a small business firm or
otherwise applicable.] nonprofit organization shall contain appropriate provisions to
effectuate the following:

L-53 Rev. 08.2017, January 2018

§ 202 MANUAL OF PATENT EXAMINING PROCEDURE

(1) That the contractor disclose each subject invention has as one of its primary functions the management of inventions
to the Federal agency within a reasonable time after it becomes (provided that such assignee shall be subject to the same
known to contractor personnel responsible for the administration provisions as the contractor); (B) a requirement that the
of patent matters, and that the Federal Government may receive contractor share royalties with the inventor; (C) except with
title to any subject invention not disclosed to it within such time. respect to a funding agreement for the operation of a
Government-owned-contractor-operated facility, a requirement
(2) That the contractor make a written election within
that the balance of any royalties or income earned by the
two years after disclosure to the Federal agency (or such
contractor with respect to subject inventions, after payment of
additional time as may be approved by the Federal agency)
expenses (including payments to inventors) incidental to the
whether the contractor will retain title to a subject invention:
administration of subject inventions, be utilized for the support
Provided, That in any case where the 1-year period referred to
of scientific research, or education; (D) a requirement that,
in section 102(b) would end before the end of that 2-year period,
except where it is determined to be infeasible following a
the period for election may be shortened by the Federal agency
reasonable inquiry, a preference in the licensing of subject
to a date that is not more than sixty days before the end of that
inventions shall be given to small business firms; and (E) with
1-year period: And provided further, That the Federal
respect to a funding agreement for the operation of a
Government may receive title to any subject invention in which
Government-owned-contractor-operator facility, requirements
the contractor does not elect to retain rights or fails to elect rights
(i) that after payment of patenting costs, licensing costs,
within such times.
payments to inventors, and other expenses incidental to the
(3) That a contractor electing rights in a subject administration of subject inventions, 100 percent of the balance
invention agrees to file a patent application prior to the of any royalties or income earned and retained by the contractor
expiration of the 1-year period referred to in section 102(b), and during any fiscal year, up to an amount equal to 5 percent of the
shall thereafter file corresponding patent applications in other annual budget of the facility, shall be used by the contractor for
countries in which it wishes to retain title within reasonable scientific research, development, and education consistent with
times, and that the Federal Government may receive title to any the research and development mission and objectives of the
subject inventions in the United States or other countries in facility, including activities that increase the licensing potential
which the contractor has not filed patent applications on the of other inventions of the facility provided that if said balance
subject invention within such times. exceeds 5 percent of the annual budget of the facility, that 15
(4) With respect to any invention in which the percent of such excess shall be paid to the Treasury of the United
contractor elects rights, the Federal agency shall have a States and the remaining 85 percent shall be used for the same
nonexclusive, nontransferable, irrevocable, paid-up license to purposes described above in this clause; and (ii) that, to the
practice or have practiced for or on behalf of the United States extent it provides the most effective technology transfer, the
any subject invention throughout the world: Provided, That the licensing of subject inventions shall be administered by
funding agreement may provide for such additional rights, contractor employees on location at the facility.
including the right to assign or have assigned foreign patent (8) The requirements of sections 203 and 204 of this
rights in the subject invention, as are determined by the agency chapter.
as necessary for meeting the obligations of the United States
(d) If a contractor does not elect to retain title to a subject
under any treaty, international agreement, arrangement of
invention in cases subject to this section, the Federal agency
cooperation, memorandum of understanding, or similar
may consider and after consultation with the contractor grant
arrangement, including military agreements relating to weapons
requests for retention of rights by the inventor subject to the
development and production.
provisions of this Act and regulations promulgated hereunder.
(5) The right of the Federal agency to require periodic
(e) In any case when a Federal employee is a coinventor
reporting on the utilization or efforts at obtaining utilization that
of any invention made with a nonprofit organization, a small
are being made by the contractor or his licensees or assignees:
business firm, or a non-Federal inventor, the Federal agency
Provided, That any such information, as well as any information
employing such coinventor may, for the purpose of consolidating
on utilization or efforts at obtaining utilization obtained as part
rights in the invention and if it finds that it would expedite the
of a proceeding under section 203 of this chapter shall be treated
development of the invention—
by the Federal agency as commercial and financial information
obtained from a person and privileged and confidential and not (1) license or assign whatever rights it may acquire in
subject to disclosure under section 552 of title 5. the subject invention to the nonprofit organization, small
business firm, or non-Federal inventor in accordance with the
(6) An obligation on the part of the contractor, in the
provisions of this chapter; or
event a United States patent application is filed by or on its
behalf or by any assignee of the contractor, to include within (2) acquire any rights in the subject invention from the
the specification of such application and any patent issuing nonprofit organization, small business firm, or non-Federal
thereon, a statement specifying that the invention was made inventor, but only to the extent the party from whom the rights
with Government support and that the Government has certain are acquired voluntarily enters into the transaction and no other
rights in the invention. transaction under this chapter is conditioned on such acquisition.
(7) In the case of a nonprofit organization, (A) a (f)(1) No funding agreement with a small business firm
prohibition upon the assignment of rights to a subject invention or nonprofit organization shall contain a provision allowing a
in the United States without the approval of the Federal agency, Federal agency to require the licensing to third parties of
except where such assignment is made to an organization which inventions owned by the contractor that are not subject

Rev. 08.2017, January 2018 L-54

 PATENT LAWS § 203

inventions unless such provision has been approved by the head

statutory period: And provided further, That the Federal
of the agency and a written justification has been signed by the
Government may receive title to any subject invention in which
head of the agency. Any such provision shall clearly state
the contractor does not elect to retain rights or fails to elect rights
whether the licensing may be required in connection with the
within such times.
practice of a subject invention, a specifically identified work
object, or both. The head of the agency may not delegate the (3) That a contractor electing rights in a subject
authority to approve provisions or sign justifications required invention agrees to file a patent application prior to any statutory
by this paragraph. bar date that may occur under this title due to publication, on
sale, or public use, and shall thereafter file corresponding patent
(2) A Federal agency shall not require the licensing of
applications in other countries in which it wishes to retain title
third parties under any such provision unless the head of the
within reasonable times, and that the Federal Government may
agency determines that the use of the invention by others is
receive title to any subject inventions in the United States or
necessary for the practice of a subject invention or for the use
other countries in which the contractor has not filed patent
of a work object of the funding agreement and that such action
applications on the subject invention within such times.
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
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
commenced for judicial review of such determination shall be
3020; subsection (b)(4) added and subsections (a), (b)(1), (b)(2),
brought within sixty days after notification of such
(c)(4), (c)(5), and (c)(7) amended Nov. 8, 1984, Public Law
determination.
98-620, sec. 501, 98 Stat. 3364; subsection (b)(3) amended Dec.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 10, 1991, Public Law 102-204, sec. 10, 105 Stat. 1641;
3020; subsection (b)(4) added and subsections (a), (b)(1), (b)(2), subsection (a) amended Nov. 29, 1999, Public Law 106-113,
(c)(4), (c)(5), and (c)(7) amended Nov. 8, 1984, Public Law sec. 1000(a)(9), 113 Stat. 1501A-583 (S. 1948 sec. 4732(a)(12));
98-620, sec. 501, 98 Stat. 3364; subsection (b)(3) amended Dec. subsection (e) amended Nov. 1, 2000, Public Law 106-404, sec.
10, 1991, Public Law 102-204, sec. 10, 105 Stat. 1641; 6(1), 114 Stat. 1745; subsections (b)(4), (c)(4), and (c)(5)
subsection (a) amended Nov. 29, 1999, Public Law 106-113, amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116
sec. 1000(a)(9), 113 Stat. 1501A-583 (S. 1948 sec. 4732(a)(12)); Stat. 1905; paragraph (d)(4) redesignated as (d)(3) and former
subsection (e) amended Nov. 1, 2000, Public Law 106-404, sec. paragraph (d)(3) struck Public Law 111-8, div. G, title I, sec.
6(1), 114 Stat. 1745; subsections (b)(4), (c)(4), and (c)(5) 1301(h), Mar. 11, 2009, 123 Stat. 829; subsection (c)(7)(E)(i)
amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 amended Sept. 16, 2011, Public Law 112-29, sec. 13, 125 Stat.
Stat. 1905; paragraph (d)(4) redesignated as (d)(3) and former 284; subsections (b)(3) and (c)(7)(D) amended by Public Law
paragraph (d)(3) struck Public Law 111-8, div. G, title I, sec. 112-29, sec. 20(i) (effective Sept. 16, 2012), 125 Stat. 284.)
1301(h), Mar. 11, 2009, 123 Stat. 829; subsection (c)(7)(E)(i)
amended Sept. 16, 2011, Public Law 112-29, sec. 13, 125 Stat. 35 U.S.C. 203 March-in rights.
284; subsections (b)(3) and (c)(7)(D) amended by Public Law (a) With respect to any subject invention in which a small
112-29, sec. 20(i)(effective Sept. 16, 2012), and subsections business firm or nonprofit organization has acquired title under
(c)(2) and (c)(3) amended by Public Law 112-29, sec. 3(g) this chapter, the Federal agency under whose funding agreement
(effective March 16, 2013), 125 Stat. 284.) the subject invention was made shall have the right, in
accordance with such procedures as are provided in regulations
35 U.S.C. 202 (pre-AIA) Disposition of rights.
promulgated hereunder, to require the contractor, an assignee,
[Editor Note: pre-AIA 35 U.S.C. 202(c)(2) and (c)(3) as set or exclusive licensee of a subject invention to grant a
forth below are not applicable to patent applications subject to nonexclusive, partially exclusive, or exclusive license in any
the first inventor to file provisions of the AIA (see 35 U.S.C. 100 field of use to a responsible applicant or applicants, upon terms
(note)). See 35 U.S.C. 202(c)(2) and (c)(3) for the law otherwise that are reasonable under the circumstances, and if the contractor,
applicable.] assignee, or exclusive licensee refuses such request, to grant
such a license itself, if the Federal agency determines that such
***** —

(c) Each funding agreement with a small business firm or (1) action is necessary because the contractor or
nonprofit organization shall contain appropriate provisions to assignee has not taken, or is not expected to take within a
effectuate the following: reasonable time, effective steps to achieve practical application
of the subject invention in such field of use;
*****
(2) action is necessary to alleviate health or safety
(2) That the contractor make a written election within needs which are not reasonably satisfied by the contractor,
two years after disclosure to the Federal agency (or such assignee, or their licensees;
additional time as may be approved by the Federal agency)
whether the contractor will retain title to a subject invention: (3) action is necessary to meet requirements for public
Provided, That in any case where publication, on sale, or public use specified by Federal regulations and such requirements are
use, has initiated the one year statutory period in which valid not reasonably satisfied by the contractor, assignee, or licensees;
patent protection can still be obtained in the United States, the or
period for election may be shortened by the Federal agency to (4) action is necessary because the agreement required
a date that is not more than sixty days prior to the end of the by section 204 has not been obtained or waived or because a

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§ 204 MANUAL OF PATENT EXAMINING PROCEDURE

licensee of the exclusive right to use or sell any subject invention (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
in the United States is in breach of its agreement obtained 3023.)
pursuant to section 204.
35 U.S.C. 206 Uniform clauses and regulations.
(b) A determination pursuant to this section or section
202(b)(4) shall not be subject to chapter 71 of title 41. An The Secretary of Commerce may issue regulations which may
administrative appeals procedure shall be established by be made applicable to Federal agencies implementing the
regulations promulgated in accordance with section 206. provisions of sections 202 through 204 of this chapter and shall
Additionally, any contractor, inventor, assignee, or exclusive establish standard funding agreement provisions required under
licensee adversely affected by a determination under this section this chapter. The regulations and the standard funding agreement
may, at any time within sixty days after the determination is shall be subject to public comment before their issuance.
issued, file a petition in the United States Court of Federal
Claims, which shall have jurisdiction to determine the appeal (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
on the record and to affirm, reverse, remand or modify, as 3023; amended Nov. 8, 1984, Public Law 98-620, sec. 501(10),
appropriate, the determination of the Federal agency. In cases 98 Stat. 3367.)
described in paragraphs (1) and (3) of subsection (a), the
agency’s determination shall be held in abeyance pending the 35 U.S.C. 207 Domestic and foreign protection of federally
exhaustion of appeals or petitions filed under the preceding owned inventions.
sentence.
(a) Each Federal agency is authorized to —
(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), (1) apply for, obtain, and maintain patents or other
98 Stat. 3367; Oct. 29, 1992, Public Law 102-572, sec. forms of protection in the United States and in foreign countries
902(b)(1), 106 Stat. 4516; amended Nov. 2, 2002, Public Law on inventions in which the Federal Government owns a right,
107-273, sec. 13206, 116 Stat. 1905; subsection (b) amended title, or interest;
Jan. 4, 2011, Public Law 111-350, sec. 5(i)(2), 124 Stat. 3850.) (2) grant nonexclusive, exclusive, or partially exclusive
licenses under federally owned inventions, royalty-free or for
35 U.S.C. 204 Preference for United States industry. royalties or other consideration, and on such terms and
conditions, including the grant to the licensee of the right of
Notwithstanding any other provision of this chapter, no small enforcement pursuant to the provisions of chapter 29 as
business firm or nonprofit organization which receives title to determined appropriate in the public interest;
any subject invention and no assignee of any such small business
firm or nonprofit organization shall grant to any person the (3) undertake all other suitable and necessary steps to
exclusive right to use or sell any subject invention in the United protect and administer rights to federally owned inventions on
States unless such person agrees that any products embodying behalf of the Federal Government either directly or through
the subject invention or produced through the use of the subject contract, including acquiring rights for and administering
invention will be manufactured substantially in the United States. royalties to the Federal Government in any invention, but only
However, in individual cases, the requirement for such an to the extent the party from whom the rights are acquired
agreement may be waived by the Federal agency under whose voluntarily enters into the transaction, to facilitate the licensing
funding agreement the invention was made upon a showing by of a federally owned invention; and
the small business firm, nonprofit organization, or assignee that (4) transfer custody and administration, in whole or in
reasonable but unsuccessful efforts have been made to grant part, to another Federal agency, of the right, title, or interest in
licenses on similar terms to potential licensees that would be any federally owned invention.
likely to manufacture substantially in the United States or that
under the circumstances domestic manufacture is not (b) For the purpose of assuring the effective management
commercially feasible. of Government-owned inventions, the Secretary of Commerce
authorized to -
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. (1) assist Federal agency efforts to promote the
3023.) licensing and utilization of Government-owned inventions;
(2) assist Federal agencies in seeking protection and
35 U.S.C. 205 Confidentiality.
maintaining inventions in foreign countries, including the
Federal agencies are authorized to withhold from disclosure to payment of fees and costs connected therewith; and
the public information disclosing any invention in which the (3) consult with and advise Federal agencies as to areas
Federal Government owns or may own a right, title, or interest of science and technology research and development with
(including a nonexclusive license) for a reasonable time in order potential for commercial utilization.
for a patent application to be filed. Furthermore, Federal agencies
shall not be required to release copies of any document which (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
is part of an application for patent filed with the United States 3023; amended Nov. 8, 1984, Public Law 98-620, sec. 501(11),
Patent and Trademark Office or with any foreign patent office. 98 Stat. 3367; subsections (a)(2) and (a)(3) amended Nov. 1,
2000, Public Law 106-404, sec. 6(2), 114 Stat. 1745; amended
Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125 Stat. 284,
effective Sept. 16, 2012.)

Rev. 08.2017, January 2018 L-56

 PATENT LAWS § 209

35 U.S.C. 208 Regulations governing Federal licensing. as the granting agency considers appropriate, and shall include
provisions—
The Secretary of Commerce is authorized to promulgate
regulations specifying the terms and conditions upon which any (1) retaining a nontransferable, irrevocable, paid-up
federally owned invention, other than inventions owned by the license for any Federal agency to practice the invention or have
Tennessee Valley Authority, may be licensed on a nonexclusive, the invention practiced throughout the world by or on behalf of
partially exclusive, or exclusive basis. the Government of the United States;
(2) requiring periodic reporting on utilization of the
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. invention, and utilization efforts, by the licensee, but only to
3024; amended Nov. 8, 1984, Public Law 98-620, sec. 501(12), the extent necessary to enable the Federal agency to determine
98 Stat. 3367.) whether the terms of the license are being complied with, except
that any such report shall be treated by the Federal agency as
35 U.S.C. 209 Licensing federally owned inventions. commercial and financial information obtained from a person
and privileged and confidential and not subject to disclosure
(a) AUTHORITY.—A Federal agency may grant an
under section 552 of title 5; and
exclusive or partially exclusive license on a federally owned
invention under section 207(a)(2) only if— (3) empowering the Federal agency to terminate the
license in whole or in part if the agency determines that—
(1) granting the license is a reasonable and necessary
incentive to— (A) the licensee is not executing its commitment
to achieve practical application of the invention, including
(A) call forth the investment capital and
commitments contained in any plan submitted in support of its
expenditures needed to bring the invention to practical
request for a license, and the licensee cannot otherwise
application; or
demonstrate to the satisfaction of the Federal agency that it has
(B) otherwise promote the invention’s utilization taken, or can be expected to take within a reasonable time,
by the public; effective steps to achieve practical application of the invention;
(2) the Federal agency finds that the public will be (B) the licensee is in breach of an agreement
served by the granting of the license, as indicated by the described in subsection (b);
applicant’s intentions, plans, and ability to bring the invention
(C) termination is necessary to meet requirements
to practical application or otherwise promote the invention’s
for public use specified by Federal regulations issued after the
utilization by the public, and that the proposed scope of
date of the license, and such requirements are not reasonably
exclusivity is not greater than reasonably necessary to provide
satisfied by the licensee; or
the incentive for bringing the invention to practical application,
as proposed by the applicant, or otherwise to promote the (D) the licensee has been found by a court of
invention’s utilization by the public; competent jurisdiction to have violated the Federal antitrust
laws in connection with its performance under the license
(3) the applicant makes a commitment to achieve
agreement.
practical application of the invention within a reasonable time,
which time may be extended by the agency upon the applicant’s (e) PUBLIC NOTICE.—No exclusive or partially exclusive
request and the applicant’s demonstration that the refusal of license may be granted under section 207(a)(2) unless public
such extension would be unreasonable; notice of the intention to grant an exclusive or partially exclusive
license on a federally owned invention has been provided in an
(4) granting the license will not tend to substantially
appropriate manner at least 15 days before the license is granted,
lessen competition or create or maintain a violation of the
and the Federal agency has considered all comments received
Federal antitrust laws; and
before the end of the comment period in response to that public
(5) in the case of an invention covered by a foreign notice. This subsection shall not apply to the licensing of
patent application or patent, the interests of the Federal inventions made under a cooperative research and development
Government or United States industry in foreign commerce will agreement entered into under section 12 of the
be enhanced. Stevenson-Wydler Technology Innovation Act of 1980 (15
(b) MANUFACTURE IN UNITED STATES.—A Federal U.S.C. 3710a).
agency shall normally grant a license under section 207(a)(2) (f) PLAN.—No Federal agency shall grant any license
to use or sell any federally owned invention in the United States under a patent or patent application on a federally owned
only to a licensee who agrees that any products embodying invention unless the person requesting the license has supplied
the invention or produced through the use of the invention will the agency with a plan for development or marketing of the
be manufactured substantially in the United States. invention, except that any such plan shall be treated by the
(c) SMALL BUSINESS.—First preference for the granting Federal agency as commercial and financial information obtained
of any exclusive or partially exclusive licenses under section from a person and privileged and confidential and not subject
207(a)(2) shall be given to small business firms having equal to disclosure under section 552 of title 5.
or greater likelihood as other applicants to bring the invention (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
to practical application within a reasonable time. 3024; amended Nov. 1, 2000, Public Law 106-404, sec. 4, 114
(d) TERMS AND CONDITIONS.—Any licenses granted Stat. 1743; subsections (d)(2) and (f) amended Nov. 2, 2002,
under section 207(a)(2) shall contain such terms and conditions Public Law 107-273, sec. 13206, 116 Stat. 1905; subsection

L-57 Rev. 08.2017, January 2018

§ 210 MANUAL OF PATENT EXAMINING PROCEDURE

(d)(1) amended Sept. 16, 2011, Public Law 112-29, sec. 20(i) (21) section 408 of the Water Resources and
(effective Sept. 16, 2012), 125 Stat. 284.) Development Act of 1978 (42 U.S.C. 7879; 92 Stat. 1360).
35 U.S.C. 210 Precedence of chapter.
The Act creating this chapter shall be construed to take
(a) This chapter shall take precedence over any other Act precedence over any future Act unless that Act specifically cites
which would require a disposition of rights in subject inventions this Act and provides that it shall take precedence over this Act.
of small business firms or nonprofit organizations contractors
(b) Nothing in this chapter is intended to alter the effect of
in a manner that is inconsistent with this chapter, including but
the laws cited in paragraph (a) of this section or any other laws
not necessarily limited to the following:
with respect to the disposition of rights in inventions made in
(1) section 10(a) of the Act of June 29, 1935, as added the performance of funding agreements with persons other than
by title I of the Act of August 14, 1946 (7 U.S.C. 427i(a); 60 nonprofit organizations or small business firms.
Stat. 1085);
(c) Nothing in this chapter is intended to limit the authority
(2) section 205(a) of the Act of August 14, 1946 (7 of agencies to agree to the disposition of rights in inventions
U.S.C. 1624(a); 60 Stat. 1090); made in the performance of work under funding agreements
(3) section 501(c) of the Federal Mine Safety and with persons other than nonprofit organizations or small business
Health Act of 1977 (30 U.S.C. 951(c); 83 Stat. 742); firms in accordance with the Statement of Government Patent
Policy issued on February 18, 1983, agency regulations, or other
(4) section 30168(e) of title 49; applicable regulations or to otherwise limit the authority of
(5) section 12 of the National Science Foundation Act agencies to allow such persons to retain ownership of inventions,
of 1950 (42 U.S.C. 1871(a); 82 Stat. 360); except that all funding agreements, including those with other
than small business firms and nonprofit organizations, shall
(6) section 152 of the Atomic Energy Act of 1954 (42 include the requirements established in section 202(c)(4) and
U.S.C. 2182; 68 Stat. 943); section 203 . Any disposition of rights in inventions made in
(7) section 20135 of title 51; accordance with the Statement or implementing regulations,
including any disposition occurring before enactment of this
(8) section 6 of the Coal Research and Development section, are hereby authorized.
Act of 1960 (30 U.S.C. 666; 74 Stat. 337);
(d) Nothing in this chapter shall be construed to require the
(9) section 4 of the Helium Act Amendments of 1960 disclosure of intelligence sources or methods or to otherwise
(50 U.S.C. 167b; 74 Stat. 920); affect the authority granted to the Director of Central Intelligence
(10) section 32 of the Arms Control and Disarmament by statute or Executive order for the protection of intelligence
Act of 1961 (22 U.S.C. 2572; 75 Stat. 634); sources or methods.
(11) section 9 of the Federal Nonnuclear Energy (e) The provisions of the Stevenson-Wydler Technology
Research and Development Act of 1974 (42 U.S.C. 5908; 88 Innovation Act of 1980 shall take precedence over the provisions
Stat. 1878); of this chapter to the extent that they permit or require a
disposition of rights in subject inventions which is inconsistent
(12) section 5(d) of the Consumer Product Safety Act with this chapter.
(15 U.S.C. 2054(d); 86 Stat. 1211);
(13) section 3 of the Act of April 5, 1944 (30 U.S.C. (Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat.
323; 58 Stat. 191); 3026; subsection (c) amended Nov. 8, 1984, Public Law 98-620,
sec. 501(13), 98 Stat. 3367; subsection (e) added Oct. 20, 1986,
(14) section 8001(c)(3) of the Solid Waste Disposal Public Law 99-502, sec. 9(c), 100 Stat. 1796; subsection (a)(4)
Act (42 U.S.C. 6981(c); 90 Stat. 2829); amended July 5, 1994, Public Law 103-272, sec. 5(j), 108 Stat.
(15) section 219 of the Foreign Assistance Act of 1961 1375; subsection (e) amended Mar. 7, 1996, Public Law
(22 U.S.C. 2179; 83 Stat. 806); 104-113, sec. 7, 110 Stat. 779.; subsection (a) amended Nov.
13, 1998, Public Law 105-393, sec. 220(c)(2), 112 Stat. 3625;
(16) section 427(b) of the Federal Mine Health and subsections (a)(11), (a)(20), and (c) amended Nov. 2, 2002,
Safety Act of 1977 (30 U.S.C. 937(b); 86 Stat. 155); Public Law 107-273, sec. 13206, 116 Stat. 1905; subsection
(17) section 306(d) of the Surface Mining and (a)(8) amended Aug. 8, 2005, Public Law 109-58, sec.
Reclamation Act of 1977 (30 U.S.C. 1226(d); 91 Stat. 455); 1009(a)(2), 119 Stat. 934; subsection (a)(7) amended Dec. 18,
2010, Public Law 111-314, sec. 4(c), 124 Stat. 3440; subsection
(18) section 21(d) of the Federal Fire Prevention and (c) amended Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125
Control Act of 1974 (15 U.S.C. 2218(d); 88 Stat. 1548); Stat. 284, effective Sept. 16, 2012.)
(19) section 6(b) of the Solar Photovoltaic Energy
Research Development and Demonstration Act of 1978 35 U.S.C. 211 Relationship to antitrust laws.
(42 U.S.C. 5585(b); 92 Stat. 2516);
Nothing in this chapter shall be deemed to convey to any person
(20) section 12 of the Native Latex Commercialization immunity from civil or criminal liability, or to create any
and Economic Development Act of 1978 (7 U.S.C. 178j; 92 defenses to actions, under any antitrust law.
Stat. 2533); and

Rev. 08.2017, January 2018 L-58

 PATENT LAWS § 252

(Added Dec.12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. to applications for reissue of a patent, except that application
3027.) for reissue may be made and sworn to by the assignee of the
entire interest if the application does not seek to enlarge the
35 U.S.C. 212 Disposition of rights in educational awards. scope of the claims of the original patent or the application for
the original patent was filed by the assignee of the entire interest.
No scholarship, fellowship, training grant, or other funding
(d) REISSUE PATENT ENLARGING SCOPE OF
agreement made by a Federal agency primarily to an awardee
CLAIMS.—No reissued patent shall be granted enlarging the
for educational purposes will contain any provision giving the
scope of the claims of the original patent unless applied for
Federal agency any rights to inventions made by the awardee.
within two years from the grant of the original patent.

(Added Nov. 8, 1984, Public Law 98-620, sec. 501(14), 98 Stat. (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
3368.) 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended
Sept. 16, 2011, Public Law 112-29, secs. 4(b) and 20(d)
PART III — PATENTS AND PROTECTION OF (effective Sept, 16, 2012), 125 Stat. 284.)
PATENT RIGHTS 35 U.S.C. 251 (pre-AIA) Reissue of defective patents.

CHAPTER 25 — AMENDMENT AND [Editor Note: Not applicable to any patent application filed on
or after September 16, 2012. See 35 U.S.C. 251 for the law
CORRECTION OF PATENTS otherwise applicable.]

Sec. Whenever any patent is, through error without any deceptive
251 Reissue of defective patents. intention, deemed wholly or partly inoperative or invalid, by
251 (pre-AIA) Reissue of defective patents. reason of a defective specification or drawing, or by reason of
252 Effect of reissue. the patentee claiming more or less than he had a right to claim
in the patent, the Director shall, on the surrender of such patent
253 Disclaimer. and the payment of the fee required by law, reissue the patent
253 (pre-AIA) Disclaimer. for the invention disclosed in the original patent, and in
254 Certificate of correction of Patent and accordance with a new and amended application, for the
Trademark Office mistake. unexpired part of the term of the original patent. No new matter
shall be introduced into the application for reissue.
255 Certificate of correction of applicant’s
mistake.
The Director may issue several reissued patents for distinct and
256 Correction of named inventor. separate parts of the thing patented, upon demand of the
256 (pre-AIA) Correction of named inventor. applicant, and upon payment of the required fee for a reissue
257 Supplemental examinations to consider, for each of such reissued patents.
reconsider, or correct information.
The provisions of this title relating to applications for patent
35 U.S.C. 251 Reissue of defective patents. shall be applicable to applications for reissue of a patent, except
that application for reissue may be made and sworn to by the
[Editor Note: Applicable to any patent application filed on or
assignee of the entire interest if the application does not seek to
after September 16, 2012. See 35 U.S.C. 251 (pre-AIA) for the
enlarge the scope of the claims of the original patent.
law otherwise applicable.]

(a) IN GENERAL.—Whenever any patent is, through error, No reissued patent shall be granted enlarging the scope of the
deemed wholly or partly inoperative or invalid, by reason of a claims of the original patent unless applied for within two years
defective specification or drawing, or by reason of the patentee from the grant of the original patent.
claiming more or less than he had a right to claim in the patent,
the Director shall, on the surrender of such patent and the (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
payment of the fee required by law, reissue the patent for the 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
invention disclosed in the original patent, and in accordance
with a new and amended application, for the unexpired part of 35 U.S.C. 252 Effect of reissue.
the term of the original patent. No new matter shall be introduced
into the application for reissue. The surrender of the original patent shall take effect upon the
issue of the reissued patent, and every reissued patent shall have
(b) MULTIPLE REISSUED PATENTS.— The Director the same effect and operation in law, on the trial of actions for
may issue several reissued patents for distinct and separate parts causes thereafter arising, as if the same had been originally
of the thing patented, upon demand of the applicant, and upon granted in such amended form, but in so far as the claims of the
payment of the required fee for a reissue for each of such original and reissued patents are substantially identical, such
reissued patents. surrender shall not affect any action then pending nor abate any
(c) APPLICABILITY OF THIS TITLE.— The provisions cause of action then existing, and the reissued patent, to the
of this title relating to applications for patent shall be applicable extent that its claims are substantially identical with the original

L-59 Rev. 08.2017, January 2018

§ 253 MANUAL OF PATENT EXAMINING PROCEDURE

patent, shall constitute a continuation thereof and have effect Whenever, without any deceptive intention, a claim of a patent
continuously from the date of the original patent. is invalid the remaining claims shall not thereby be rendered
invalid. A patentee, whether of the whole or any sectional
A reissued patent shall not abridge or affect the right of any interest therein, may, on payment of the fee required by law,
person or that person’s successors in business who, prior to the make disclaimer of any complete claim, stating therein the extent
grant of a reissue, made, purchased, offered to sell, or used of his interest in such patent. Such disclaimer shall be in writing
within the United States, or imported into the United States, and recorded in the Patent and Trademark Office, and it shall
anything patented by the reissued patent, to continue the use of, thereafter be considered as part of the original patent to the
to offer to sell, or to sell to others to be used, offered for sale, extent of the interest possessed by the disclaimant and by those
or sold, the specific thing so made, purchased, offered for sale, claiming under him.
used, or imported unless the making, using, offering for sale,
or selling of such thing infringes a valid claim of the reissued In like manner any patentee or applicant may disclaim or
patent which was in the original patent. The court before which dedicate to the public the entire term, or any terminal part of
such matter is in question may provide for the continued the term, of the patent granted or to be granted.
manufacture, use, offer for sale, or sale of the thing made,
purchased, offered for sale, used, or imported as specified, or (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
for the manufacture, use, offer for sale, or sale in the United 1949.)
States of which substantial preparation was made before the
grant of the reissue, and the court may also provide for the 35 U.S.C. 254 Certificate of correction of Patent and
continued practice of any process patented by the reissue that Trademark Office mistake.
is practiced, or for the practice of which substantial preparation
was made, before the grant of the reissue, to the extent and under Whenever a mistake in a patent, incurred through the fault of
such terms as the court deems equitable for the protection of the Patent and Trademark Office, is clearly disclosed by the
investments made or business commenced before the grant of records of the Office, the Director may issue a certificate of
the reissue. correction stating the fact and nature of such mistake, under
seal, without charge, to be recorded in the records of patents. A
(Amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(2), printed copy thereof shall be attached to each printed copy of
108 Stat. 4989; Nov. 29, 1999, Public Law 106-113, sec. the patent, and such certificate shall be considered as part of the
1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(8)).) original patent. Every such patent, together with such certificate,
shall have the same effect and operation in law on the trial of
35 U.S.C. 253 Disclaimer. actions for causes thereafter arising as if the same had been
originally issued in such corrected form. The Director may issue
[Editor Note: Applicable to all proceedings commenced on or a corrected patent without charge in lieu of and with like effect
after September 16, 2012. See 35 U.S.C. 253 (pre-AIA) for the as a certificate of correction.
law otherwise applicable.]
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
(a) IN GENERAL.—Whenever a claim of a patent is 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
invalid the remaining claims shall not thereby be rendered Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
invalid. A patentee, whether of the whole or any sectional
interest therein, may, on payment of the fee required by law, 35 U.S.C. 255 Certificate of correction of applicant’s
make disclaimer of any complete claim, stating therein the extent mistake.
of his interest in such patent. Such disclaimer shall be in writing
and recorded in the Patent and Trademark Office, and it shall Whenever a mistake of a clerical or typographical nature, or of
thereafter be considered as part of the original patent to the minor character, which was not the fault of the Patent and
extent of the interest possessed by the disclaimant and by those Trademark Office, appears in a patent and a showing has been
claiming under him. made that such mistake occurred in good faith, the Director
may, upon payment of the required fee, issue a certificate of
(b) ADDITIONAL DISCLAIMER OR DEDICATION.—In
correction, if the correction does not involve such changes in
the manner set forth in subsection (a), any patentee or applicant
the patent as would constitute new matter or would require
may disclaim or dedicate to the public the entire term, or any
reexamination. Such patent, together with the certificate, shall
terminal part of the term, of the patent granted or to be granted.
have the same effect and operation in law on the trial of actions
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. for causes thereafter arising as if the same had been originally
1949; amended Sept. 16, 2011, Public Law 112-29, sec. 20(e), issued in such corrected form.
125 Stat. 284, effective Sept. 16, 2012.)
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
35 U.S.C. 253 (pre-AIA) Disclaimer. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
[Editor Note: Not applicable to proceedings commenced on or
after September 16, 2012. See 35 U.S.C. 253 for the law
otherwise applicable.]

Rev. 08.2017, January 2018 L-60

 PATENT LAWS § 257

35 U.S.C. 256 Correction of named inventor. shall conclude such examination by issuing a certificate
indicating whether the information presented in the request
[Editor Note: Applicable to proceedings commenced on or after
raises a substantial new question of patentability.
September 16, 2012. See 35 U.S.C. 256 (pre-AIA) for the law
otherwise applicable.] (b) REEXAMINATION ORDERED.—If the certificate
issued under subsection (a) indicates that a substantial new
(a) CORRECTION.—Whenever through error a person is question of patentability is raised by 1 or more items of
named in an issued patent as the inventor, or through error an information in the request, the Director shall order reexamination
inventor is not named in an issued patent, the Director may, on of the patent. The reexamination shall be conducted according
application of all the parties and assignees, with proof of the to procedures established by chapter 30, except that the patent
facts and such other requirements as may be imposed, issue a owner shall not have the right to file a statement pursuant to
certificate correcting such error. section 304. During the reexamination, the Director shall address
each substantial new question of patentability identified during
(b) PATENT VALID IF ERROR CORRECTED.— The the supplemental examination, notwithstanding the limitations
error of omitting inventors or naming persons who are not in chapter 30 relating to patents and printed publication or any
inventors shall not invalidate the patent in which such error other provision of such chapter.
occurred if it can be corrected as provided in this section. The
court before which such matter is called in question may order (c) EFFECT.—
correction of the patent on notice and hearing of all parties (1) IN GENERAL.—A patent shall not be held
concerned and the Director shall issue a certificate accordingly. unenforceable on the basis of conduct relating to information
that had not been considered, was inadequately considered, or
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(b), 96 Stat.
was incorrect in a prior examination of the patent if the
320; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
information was considered, reconsidered, or corrected during
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept.
a supplemental examination of the patent. The making of a
16, 2011, Public Law 112-29, sec. 20(f) (effective Sept. 16,
request under subsection (a), or the absence thereof, shall not
2012), 125 Stat. 284.)
be relevant to enforceability of the patent under section 282.
35 U.S.C. 256 (pre-AIA) Correction of named inventor. (2) EXCEPTIONS.—

[Editor Note: Not applicable to proceedings commenced on or (A) PRIOR ALLEGATIONS.—Paragraph (1) shall
after September 16, 2012. See 35 U.S.C. 256 for the law not apply to an allegation pled with particularity in a civil action,
otherwise applicable.] or set forth with particularity in a notice received by the patent
owner under section 505(j) (2)(B)(iv)(II) of the Federal Food,
Drug, and Cosmetic Act (21 U.S.C. 355(j) (2)(B)(iv)(II)), before
Whenever through error a person is named in an issued patent
the date of a supplemental examination request under subsection
as the inventor, or through error an inventor is not named in an
(a) to consider, reconsider, or correct information forming the
issued patent and such error arose without any deceptive
basis for the allegation.
intention on his part, the Director may, on application of all the
parties and assignees, with proof of the facts and such other (B) PATENT ENFORCEMENT ACTIONS.—In
requirements as may be imposed, issue a certificate correcting an action brought under section 337(a) of the Tariff Act of 1930
such error. (19 U.S.C. 1337(a)), or section 281, paragraph (1) shall not
apply to any defense raised in the action that is based upon
information that was considered, reconsidered, or corrected
The error of omitting inventors or naming persons who are not
pursuant to a supplemental examination request under subsection
inventors shall not invalidate the patent in which such error
(a), unless the supplemental examination, and any reexamination
occurred if it can be corrected as provided in this section. The
ordered pursuant to the request, are concluded before the date
court before which such matter is called in question may order
on which the action is brought.
correction of the patent on notice and hearing of all parties
concerned and the Director shall issue a certificate accordingly. (d) FEES AND REGULATIONS.—
(1) FEES.—The Director shall, by regulation, establish
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(b), 96 Stat. fees for the submission of a request for supplemental
320; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 examination of a patent, and to consider each item of information
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).) submitted in the request. If reexamination is ordered under
subsection (b), fees established and applicable to ex parte
35 U.S.C. 257 Supplemental examinations to consider, reexamination proceedings under chapter 30 shall be paid, in
reconsider, or correct information. addition to fees applicable to supplemental examination.
(a) REQUEST FOR SUPPLEMENTAL (2) REGULATIONS.—The Director shall issue
EXAMINATION.—A patent owner may request supplemental regulations governing the form, content, and other requirements
examination of a patent in the Office to consider, reconsider, or of requests for supplemental examination, and establishing
correct information believed to be relevant to the patent, in procedures for reviewing information submitted in such requests.
accordance with such requirements as the Director may establish.
Within 3 months after the date a request for supplemental (e) FRAUD.—If the Director becomes aware, during the
examination meeting the requirements of this section is received, course of a supplemental examination or reexamination
the Director shall conduct the supplemental examination and proceeding ordered under this section, that a material fraud on
the Office may have been committed in connection with the

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§ 261 MANUAL OF PATENT EXAMINING PROCEDURE

patent that is the subject of the supplemental examination, then designated by a foreign country which, by treaty or convention,
in addition to any other actions the Director is authorized to accords like effect to apostilles of designated officials in the
take, including the cancellation of any claims found to be invalid United States, shall be prima facie evidence of the execution
under section 307 as a result of a reexamination ordered under of an assignment, grant, or conveyance of a patent or application
this section, the Director shall also refer the matter to the for patent.
Attorney General for such further action as the Attorney General
may deem appropriate. Any such referral shall be treated as
An interest that constitutes an assignment, grant, or conveyance
confidential, shall not be included in the file of the patent, and
shall be void as against any subsequent purchaser or mortgagee
shall not be disclosed to the public unless the United States
for a valuable consideration, without notice, unless it is recorded
charges a person with a criminal offense in connection with
in the Patent and Trademark Office within three months from
such referral.
its date or prior to the date of such subsequent purchase or
(f) RULE OF CONSTRUCTION.—Nothing in this section mortgage.
shall be construed—
(1) to preclude the imposition of sanctions based upon (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
criminal or antitrust laws (including section 1001(a) of title 18 1949; Aug. 27, 1982, Public Law 97-247, sec. 14(b), 96 Stat.
, the first section of the Clayton Act, and section 5 of the Federal 321; Dec. 18, 2012, Public Law 112-211, sec. 201(d), 126 Stat.
Trade Commission Act to the extent that section relates to unfair 1535.)
methods of competition);
35 U.S.C. 262 Joint owners.
(2) to limit the authority of the Director to investigate
issues of possible misconduct and impose sanctions for In the absence of any agreement to the contrary, each of the
misconduct in connection with matters or proceedings before joint owners of a patent may make, use, offer to sell, or sell the
the Office; or patented invention within the United States, or import the
(3) to limit the authority of the Director to issue patented invention into the United States, without the consent
regulations under chapter 3 relating to sanctions for misconduct of and without accounting to the other owners.
by representatives practicing before the Office.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(3),
(Added Sept. 16, 2011, Public Law 112-29, sec. 12, 125 Stat. 108 Stat. 4989.)
284; amended Sept. 16, 2011 Public Law 112-29, sec. 20(j)
(effective Sept. 16, 2012), 125 Stat. 284.)
CHAPTER 27 — GOVERNMENT
CHAPTER 26 — OWNERSHIP AND INTERESTS IN PATENTS
ASSIGNMENT
Sec.
Sec. 266 [Repealed.]
261 Ownership; assignment. 267 Time for taking action in Government
262 Joint owners. applications.

35 U.S.C. 261 Ownership; assignment. 35 U.S.C. 266 [Repealed.]

Subject to the provisions of this title, patents shall have the (Repealed July 24, 1965, Public Law 89-83, sec. 8, 79 Stat.
attributes of personal property. The Patent and Trademark Office 261.)
shall maintain a register of interests in patents and applications
35 U.S.C. 267 Time for taking action in Government
for patents and shall record any document related thereto upon
applications.
request, and may require a fee therefor.
Notwithstanding the provisions of sections 133 and 151, the
Applications for patent, patents, or any interest therein, shall be Director may extend the time for taking any action to three years,
assignable in law by an instrument in writing. The applicant, when an application has become the property of the United
patentee, or his assigns or legal representatives may in like States and the head of the appropriate department or agency of
manner grant and convey an exclusive right under his application the Government has certified to the Director that the invention
for patent, or patents, to the whole or any specified part of the disclosed therein is important to the armament or defense of the
United States. United States.

A certificate of acknowledgment under the hand and official (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
seal of a person authorized to administer oaths within the United 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended
States, or, in a foreign country, of a diplomatic or consular Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept.
officer of the United States or an officer authorized to administer 16, 2012), 125 Stat. 284.)
oaths whose authority is proved by a certificate of a diplomatic
or consular officer of the United States, or apostille of an official

Rev. 08.2017, January 2018 L-62

 PATENT LAWS § 271

CHAPTER 28 — INFRINGEMENT OF (A) an application under section 505(j) of the

PATENTS 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,
Sec.
(B) an application under section 512 of such Act
271 Infringement of patent.
or under the Act of March 4, 1913 (21 U.S.C. 151 - 158) for a
272 Temporary presence in the United States. drug or veterinary biological product which is not primarily
273 Defense to infringement based on prior manufactured using recombinant DNA, recombinant RNA,
commercial use. hybridoma technology, or other processes involving site specific
genetic manipulation techniques and which is claimed in a patent
35 U.S.C. 271 Infringement of patent. or the use of which is claimed in a patent, or
(a) Except as otherwise provided in this title, whoever (C)
without authority makes, uses, offers to sell, or sells any patented
(i) with respect to a patent that is identified in
invention, within the United States, or imports into the United
the list of patents described in section 351(l)(3) of the Public
States any patented invention during the term of the patent
Health Service Act (including as provided under section
therefor, infringes the patent.
351(l)(7) of such Act), an application seeking approval of a
(b) Whoever actively induces infringement of a patent shall biological product, or
be liable as an infringer.
(ii) if the applicant for the application fails to
(c) Whoever offers to sell or sells within the United States provide the application and information required under section
or imports into the United States a component of a patented 351(l)(2)(A) of such Act, an application seeking approval of a
machine, manufacture, combination, or composition, or a biological product for a patent that could be identified pursuant
material or apparatus for use in practicing a patented process, to section 351(l)(3)(A)(i) of such Act,
constituting a material part of the invention, knowing the same if the purpose of such submission is to obtain approval under
to be especially made or especially adapted for use in an such Act to engage in the commercial manufacture, use, or sale
infringement of such patent, and not a staple article or of a drug, veterinary biological product, or biological product
commodity of commerce suitable for substantial noninfringing claimed in a patent or the use of which is claimed in a patent
use, shall be liable as a contributory infringer. before the expiration of such patent.
(d) No patent owner otherwise entitled to relief for (3) In any action for patent infringement brought under
infringement or contributory infringement of a patent shall be this section, no injunctive or other relief may be granted which
denied relief or deemed guilty of misuse or illegal extension of would prohibit the making, using, offering to sell, or selling
the patent right by reason of his having done one or more of the within the United States or importing into the United States of
following: (1) derived revenue from acts which if performed by a patented invention under paragraph (1).
another without his consent would constitute contributory
(4) For an act of infringement described in paragraph
infringement of the patent; (2) licensed or authorized another
(2)—
to perform acts which if performed without his consent would
constitute contributory infringement of the patent; (3) sought to (A) the court shall order the effective date of any
enforce his patent rights against infringement or contributory approval of the drug or veterinary biological product involved
infringement; (4) refused to license or use any rights to the in the infringement to be a date which is not earlier than the date
patent; or (5) conditioned the license of any rights to the patent of the expiration of the patent which has been infringed,
or the sale of the patented product on the acquisition of a license (B) injunctive relief may be granted against an
to rights in another patent or purchase of a separate product, infringer to prevent the commercial manufacture, use, offer to
unless, in view of the circumstances, the patent owner has market sell, or sale within the United States or importation into the
power in the relevant market for the patent or patented product United States of an approved drug, veterinary biological product,
on which the license or sale is conditioned. or biological product,
(e)(1) It shall not be an act of infringement to make, (C) damages or other monetary relief may be
use, offer to sell, or sell within the United States or import into awarded against an infringer only if there has been commercial
the United States a patented invention (other than a new animal manufacture, use, offer to sell, or sale within the United States
drug or veterinary biological product (as those terms are used or importation into the United States of an approved drug,
in the Federal Food, Drug, and Cosmetic Act and the Act of veterinary biological product, or biological product, and
March 4, 1913) which is primarily manufactured using
recombinant DNA, recombinant RNA, hybridoma technology, (D) the court shall order a permanent injunction
or other processes involving site specific genetic manipulation prohibiting any infringement of the patent by the biological
techniques) solely for uses reasonably related to the development product involved in the infringement until a date which is not
and submission of information under a Federal law which earlier than the date of the expiration of the patent that has been
regulates the manufacture, use, or sale of drugs or veterinary infringed under paragraph (2)(C), provided the patent is the
biological products. subject of a final court decision, as defined in section 351(k)(6)
of the Public Health Service Act, in an action for infringement
(2) It shall be an act of infringement to submit — of the patent under section 351(l)(6) of such Act, and the

L-63 Rev. 08.2017, January 2018

§ 272 MANUAL OF PATENT EXAMINING PROCEDURE

patent if such combination occurred within the United States,

biological product has not yet been approved because of section
shall be liable as an infringer.
351(k)(7) of such Act.
(2) Whoever without authority supplies or causes to
The remedies prescribed by subparagraphs (A), (B), (C), and be supplied in or from the United States any component of a
(D) are the only remedies which may be granted by a court for patented invention that is especially made or especially adapted
an act of infringement described in paragraph (2), except that a for use in the invention and not a staple article or commodity
court may award attorney fees under section 285. of commerce suitable for substantial noninfringing use, where
such component is uncombined in whole or in part, knowing
(5) Where a person has filed an application described that such component is so made or adapted and intending that
in paragraph (2) that includes a certification under subsection such component will be combined outside of the United States
(b)(2)(A)(iv) or (j) (2)(A)(vii)(IV) of section 505 of the Federal in a manner that would infringe the patent if such combination
Food, Drug, and Cosmetic Act (21 U.S.C. 355), and neither the occurred within the United States, shall be liable as an infringer.
owner of the patent that is the subject of the certification nor
the holder of the approved application under subsection (b) of (g) Whoever without authority imports into the United
such section for the drug that is claimed by the patent or a use States or offers to sell, sells, or uses within the United States a
of which is claimed by the patent brought an action for product which is made by a process patented in the United States
infringement of such patent before the expiration of 45 days shall be liable as an infringer, if the importation, offer to sell,
after the date on which the notice given under subsection (b)(3) sale, or use of the product occurs during the term of such process
or (j) (2)(B) of such section was received, the courts of the patent. In an action for infringement of a process patent, no
United States shall, to the extent consistent with the Constitution, remedy may be granted for infringement on account of the
have subject matter jurisdiction in any action brought by such noncommercial use or retail sale of a product unless there is no
person under section 2201 of title 28 for a declaratory judgment adequate remedy under this title for infringement on account of
that such patent is invalid or not infringed. 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
(6)(A) Subparagraph (B) applies, in lieu of of this title, not be considered to be so made after —
paragraph (4), in the case of a patent-
(1) it is materially changed by subsequent processes;
(i) that is identified, as applicable, in the list or
of patents described in section 351(l)(4) of the Public Health
Service Act or the lists of patents described in section (2) it becomes a trivial and nonessential component of
351(l)(5)(B) of such Act with respect to a biological product; another product.
and (h) As used in this section, the term “whoever” includes
(ii) for which an action for infringement of the any State, any instrumentality of a State, any officer or employee
patent with respect to the biological product— of a State or instrumentality of a State acting in his official
capacity. Any State, and any such instrumentality, officer, or
(I) was brought after the expiration of the employee, shall be subject to the provisions of this title in the
30-day period described in subparagraph (A) or (B), as same manner and to the same extent as any nongovernmental
applicable, of section 351(l)(6) of such Act; or entity.
(II) was brought before the expiration of (i) As used in this section, an “offer for sale” or an “offer
the 30-day period described in subclause (I), but which was to sell” by a person other than the patentee or any assignee of
dismissed without prejudice or was not prosecuted to judgment the patentee, is that in which the sale will occur before the
in good faith. expiration of the term of the patent.
(B) In an action for infringement of a patent (Subsection (e) added Sept. 24, 1984, Public Law 98-417, sec.
described in subparagraph (A), the sole and exclusive remedy 202, 98 Stat. 1603; subsection (f) added Nov. 8, 1984, Public
that may be granted by a court, upon a finding that the making, Law 98-622, sec. 101(a), 98 Stat. 3383; subsection (g) added
using, offering to sell, selling, or importation into the United Aug. 23, 1988, Public Law 100-418, sec. 9003, 102 Stat. 1564;
States of the biological product that is the subject of the action subsection (e) amended Nov. 16, 1988, Public Law 100-670,
infringed the patent, shall be a reasonable royalty. sec. 201(i), 102 Stat. 3988; subsection (d) amended Nov. 19,
(C) The owner of a patent that should have been 1988, Public Law 100-703, sec. 201, 102 Stat. 4676; subsection
included in the list described in section 351(l)(3)(A) of the Public (h) added Oct. 28, 1992, Public Law 102-560, sec. 2(a)(1), 106
Health Service Act, including as provided under section 351(l)(7) Stat. 4230.; subsections (a), (c), (e), and (g) amended Dec. 8,
of such Act for a biological product, but was not timely included 1994, Public Law 103-465, sec. 533(a), 108 Stat. 4988;
in such list, may not bring an action under this section for subsection (i) added Dec. 8, 1994, Public Law 103-465, sec.
infringement of the patent with respect to the biological product. 533(a), 108 Stat. 4988.; subsection (e)(5) added Dec. 8, 2003,
Public Law 108-173, sec. 1101(d), 117 Stat. 2457; subsection
(f)(1) Whoever without authority supplies or causes to
(e) amended March 23, 2010, Public Law 111-148, title VII,
be supplied in or from the United States all or a substantial
sec. 7002(c)(1), 124 Stat. 815.)
portion of the components of a patented invention, where such
components are uncombined in whole or in part, in such manner 35 U.S.C. 272 Temporary presence in the United States.
as to actively induce the combination of such components
outside of the United States in a manner that would infringe the The use of any invention in any vessel, aircraft or vehicle of
any country which affords similar privileges to vessels, aircraft,

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 PATENT LAWS § 273

or vehicles of the United States, entering the United States (1) PERSONAL DEFENSE.—
temporarily or accidentally, shall not constitute infringement of
any patent, if the invention is used exclusively for the needs of (A) IN GENERAL.—A defense under this section
the vessel, aircraft, or vehicle and is not offered for sale or sold may be asserted only by the person who performed or directed
in or used for the manufacture of anything to be sold in or the performance of the commercial use described in subsection
exported from the United States. (a), or by an entity that controls, is controlled by, or is under
common control with such person.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(4), (B) TRANSFER OF RIGHT.—Except for any
108 Stat. 4989.) transfer to the patent owner, the right to assert a defense under
this section shall not be licensed or assigned or transferred to
35 U.S.C. 273 Defense to infringement based on prior another person except as an ancillary and subordinate part of a
commercial use. good-faith assignment or transfer for other reasons of the entire
enterprise or line of business to which the defense relates.
(a) IN GENERAL.—A person shall be entitled to a defense
under section 282(b) with respect to subject matter consisting (C) RESTRICTION ON SITES.—A defense under
of a process, or consisting of a machine, manufacture, or this section, when acquired by a person as part of an assignment
composition of matter used in a manufacturing or other or transfer described in subparagraph (B), may only be asserted
commercial process, that would otherwise infringe a claimed for uses at sites where the subject matter that would otherwise
invention being asserted against the person if— infringe a claimed invention is in use before the later of the
effective filing date of the claimed invention or the date of the
(1) such person, acting in good faith, commercially assignment or transfer of such enterprise or line of business.
used the subject matter in the United States, either in connection
with an internal commercial use or an actual arm’s length sale (2) DERIVATION.—A person may not assert a defense
or other arm’s length commercial transfer of a useful end result under this section if the subject matter on which the defense is
of such commercial use; and based was derived from the patentee or persons in privity with
the patentee.
(2) such commercial use occurred at least 1 year before
the earlier of either— (3) NOT A GENERAL LICENSE.—The defense
asserted by a person under this section is not a general license
(A) the effective filing date of the claimed under all claims of the patent at issue, but extends only to the
invention; or specific subject matter for which it has been established that a
(B) the date on which the claimed invention was commercial use that qualifies under this section occurred, except
disclosed to the public in a manner that qualified for the that the defense shall also extend to variations in the quantity
exception from prior art under section 102(b). or volume of use of the claimed subject matter, and to
improvements in the claimed subject matter that do not infringe
(b) BURDEN OF PROOF.—A person asserting a defense
additional specifically claimed subject matter of the patent.
under this section shall have the burden of establishing the
defense by clear and convincing evidence. (4) ABANDONMENT OF USE.—A person who has
abandoned commercial use (that qualifies under this section) of
(c) ADDITIONAL COMMERCIAL USES.—
subject matter may not rely on activities performed before the
(1) PREMARKETING REGULATORY REVIEW.— date of such abandonment in establishing a defense under this
Subject matter for which commercial marketing or use is subject section with respect to actions taken on or after the date of such
to a premarketing regulatory review period during which the abandonment.
safety or efficacy of the subject matter is established, including
(5) UNIVERSITY EXCEPTION.—
any period specified in section 156(g), shall be deemed to be
commercially used for purposes of subsection (a)(1) during such (A) IN GENERAL.—A person commercially using
regulatory review period. subject matter to which subsection (a) applies may not assert a
defense under this section if the claimed invention with respect
(2) NONPROFIT LABORATORY USE.—A use of
to which the defense is asserted was, at the time the invention
subject matter by a nonprofit research laboratory or other
was made, owned or subject to an obligation of assignment to
nonprofit entity, such as a university or hospital, for which the
either an institution of higher education (as defined in section
public is the intended beneficiary, shall be deemed to be a
101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)),
commercial use for purposes of subsection (a)(1), except that a
or a technology transfer organization whose primary purpose is
defense under this section may be asserted pursuant to this
to facilitate the commercialization of technologies developed
paragraph only for continued and noncommercial use by and in
by one or more such institutions of higher education.
the laboratory or other nonprofit entity.
(B) EXCEPTION.—Subparagraph (A) shall not
(d) EXHAUSTION OF RIGHTS.—Notwithstanding
apply if any of the activities required to reduce to practice the
subsection (e)(1), the sale or other disposition of a useful end
subject matter of the claimed invention could not have been
result by a person entitled to assert a defense under this section
under taken using funds provided by the Federal Government.
in connection with a patent with respect to that useful end result
shall exhaust the patent owner’s rights under the patent to the (f) UNREASONABLE ASSERTION OF DEFENSE.—If
extent that such rights would have been exhausted had such sale the defense under this section is pleaded by a person who is
or other disposition been made by the patent owner. found to infringe the patent and who subsequently fails to
demonstrate a reasonable basis for asserting the defense, the
(e) LIMITATIONS AND EXCEPTIONS.—

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§ 281 MANUAL OF PATENT EXAMINING PROCEDURE

court shall find the case exceptional for the purpose of awarding of the validity of other claims; dependent or multiple dependent
attorney fees under section 35 U.S.C. 285 . claims shall be presumed valid even though dependent upon an
invalid claim. The burden of establishing invalidity of a patent
(g) INVALIDITY.—A patent shall not be deemed to be
or any claim thereof shall rest on the party asserting such
invalid under section 102 or 103 solely because a defense is
invalidity.
raised or established under this section.
(b) DEFENSES.—The following shall be defenses in any
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), action involving the validity or infringement of a patent and
113 Stat. 1501A-555 (S. 1948 sec. 4302); amended Sept. 16, shall be pleaded:
2011, Public Law 112-29, sec. 5, 125 Stat. 284.)
(1) Noninfringement, absence of liability for
infringement, or unenforceability.
CHAPTER 29 — REMEDIES FOR
(2) Invalidity of the patent or any claim in suit on any
INFRINGEMENT OF PATENT, AND ground specified in part II as a condition for patentability.
OTHER ACTIONS (3) Invalidity of the patent or any claim in suit for
failure to comply with—
Sec.
(A) any requirement of section 112, except that
281 Remedy for infringement of patent. the failure to disclose the best mode shall not be a basis on which
282 Presumption of validity; defenses. any claim of a patent may be canceled or held invalid or
283 Injunction. otherwise unenforceable; or
284 Damages. (B) any requirement of section 251.
285 Attorney fees. (4) Any other fact or act made a defense by this title.
286 Time limitation on damages.
(c) NOTICE OF ACTIONS; ACTIONS DURING
287 Limitation on damages and other remedies; EXTENSION OF PATENT TERM.— In an action involving
marking and notice. the validity or infringement of a patent the party asserting
288 Action for infringement of a patent invalidity or noninfringement shall give notice in the pleadings
containing an invalid claim. or otherwise in writing to the adverse party at least thirty days
before the trial, of the country, number, date, and name of the
288 (pre-AIA) Action for infringement of a
patentee of any patent, the title, date, and page numbers of any
patent containing an invalid claim. publication to be relied upon as anticipation of the patent in suit
289 Additional remedy for infringement of or, except in actions in the United States Court of Federal
design patent. Claims, as showing the state of the art, and the name and address
290 Notice of patent suits. of any person who may be relied upon as the prior inventor or
as having prior knowledge of or as having previously used or
291 Derived Patents. offered for sale the invention of the patent in suit. In the absence
291 (pre-AIA) Interfering patents. of such notice proof of the said matters may not be made at the
292 False marking. trial except on such terms as the court requires.
293 Nonresident patentee; service and notice.
294 Voluntary arbitration. Invalidity of the extension of a patent term or any portion thereof
295 Presumption: Product made by patented under section 154(b) or 156 because of the material failure—
process. (1) by the applicant for the extension, or
296 Liability of States, instrumentalities of (2) by the Director,
States, and State officials for infringement
of patents. to comply with the requirements of such section shall be a
297 Improper and deceptive invention defense in any action involving the infringement of a patent
during the period of the extension of its term and shall be
promotion.
pleaded. A due diligence determination under section 156(d)(2)
298 Advice of counsel. is not subject to review in such an action.
299 Joinder of parties.
(Amended July 24, 1965, Public Law 89-83, sec. 10, 79 Stat.
35 U.S.C. 281 Remedy for infringement of patent. 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.
A patentee shall have remedy by civil action for infringement 24, 1984, Public Law 98-417, sec. 203, 98 Stat. 1603; Oct. 29,
of his patent. 1992, Public Law 102-572, sec. 902(b)(1), 106 Stat. 4516; Nov.
1, 1995, Public Law 104-41, sec. 2, 109 Stat. 352; Nov. 29,
35 U.S.C. 282 Presumption of validity; defenses. 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
(a) IN GENERAL.—A patent shall be presumed valid. 1501A-560, 582 (S. 1948 secs. 4402(b)(1) and 4732(a)(10)(A));
Each claim of a patent (whether in independent, dependent, or amended Sept. 16, 2011, Public Law 112-29, sec. 15(a)
multiple dependent form) shall be presumed valid independently

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 PATENT LAWS § 287

(effective Sept. 16, 2011) and secs. 20(g) and (j) (effective Sept. word “patent” or the abbreviation “pat.” together with an address
16, 2012), 125 Stat. 284.) of a posting on the Internet, accessible to the public without
charge for accessing the address, that associates the patented
35 U.S.C. 283 Injunction. article with the number of the patent, or when, from the character
of the article, this cannot be done, by fixing to it, or to the
The several courts having jurisdiction of cases under this title package wherein one or more of them is contained, a label
may grant injunctions in accordance with the principles of equity containing a like notice. In the event of failure so to mark, no
to prevent the violation of any right secured by patent, on such damages shall be recovered by the patentee in any action for
terms as the court deems reasonable. infringement, except on proof that the infringer was notified of
the infringement and continued to infringe thereafter, in which
35 U.S.C. 284 Damages. event damages may be recovered only for infringement occurring
after such notice. Filing of an action for infringement shall
Upon finding for the claimant the court shall award the claimant constitute such notice.
damages adequate to compensate for the infringement but in no
event less than a reasonable royalty for the use made of the (b)(1) An infringer under section 271(g) shall be subject
invention by the infringer, together with interest and costs as to all the provisions of this title relating to damages and
fixed by the court. 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
When the damages are not found by a jury, the court shall assess
provided in this subsection shall not be available to any person
them. In either event the court may increase the damages up to
who —
three times the amount found or assessed. Increased damages
under this paragraph shall not apply to provisional rights under (A) practiced the patented process;
section 154(d).
(B) owns or controls, or is owned or controlled by,
the person who practiced the patented process; or
The court may receive expert testimony as an aid to the
(C) had knowledge before the infringement that a
determination of damages or of what royalty would be
patented process was used to make the product the importation,
reasonable under the circumstances.
use, offer for sale, or sale of which constitutes the infringement.

(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), (2) No remedies for infringement under section 271(g)
113 Stat. 1501A-566 (S. 1948 sec. 4507(9)); amended Sept. 16, shall be available with respect to any product in the possession
2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), of, or in transit to, the person subject to liability under such
125 Stat. 284.) section before that person had notice of infringement with
respect to that product. The person subject to liability shall bear
35 U.S.C. 285 Attorney fees. the burden of proving any such possession or transit.
(3)(A) In making a determination with respect to
The court in exceptional cases may award reasonable attorney
the remedy in an action brought for infringement under section
fees to the prevailing party.
271(g), the court shall consider—
35 U.S.C. 286 Time limitation on damages. (i) the good faith demonstrated by the
defendant with respect to a request for disclosure;
Except as otherwise provided by law, no recovery shall be had
for any infringement committed more than six years prior to the (ii) the good faith demonstrated by the plaintiff
filing of the complaint or counterclaim for infringement in the with respect to a request for disclosure, and
action. (iii) the need to restore the exclusive rights
secured by the patent.
In the case of claims against the United States Government for (B) For purposes of subparagraph (A), the
use of a patented invention, the period before bringing suit, up following are evidence of good faith:
to six years, between the date of receipt of a written claim for
compensation by the department or agency of the Government (i) a request for disclosure made by the
having authority to settle such claim, and the date of mailing by defendant;
the Government of a notice to the claimant that his claim has (ii) a response within a reasonable time by the
been denied shall not be counted as a part of the period referred person receiving the request for disclosure; and
to in the preceding paragraph.
(iii) the submission of the response by the
35 U.S.C. 287 Limitation on damages and other remedies; defendant to the manufacturer, or if the manufacturer is not
marking and notice. known, to the supplier, of the product to be purchased by the
defendant, together with a request for a written statement that
(a) Patentees, and persons making, offering for sale, or the process claimed in any patent disclosed in the response is
selling within the United States any patented article for or under not used to produce such product.
them, or importing any patented article into the United States,
may give notice to the public that the same is patented, either
The failure to perform any acts described in the preceding
by fixing thereon the word “patent” or the abbreviation “pat.”,
sentence is evidence of absence of good faith unless there are
together with the number of the patent, or by fixing thereon the

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§ 287 MANUAL OF PATENT EXAMINING PROCEDURE

mitigating circumstances. Mitigating circumstances include the (C) A person who receives a written notification
case in which, due to the nature of the product, the number of described in subparagraph (B) or a written response to a request
sources for the product, or like commercial circumstances, a for disclosure described in paragraph (4) shall be deemed to
request for disclosure is not necessary or practicable to avoid have notice of infringement with respect to any patent referred
infringement. to in such written notification or response unless that person,
absent mitigating circumstances—
(4)(A) For purposes of this subsection, a “request
for disclosure” means a written request made to a person then (i) promptly transmits the written notification
engaged in the manufacture of a product to identify all process or response to the manufacturer or, if the manufacturer is not
patents owned by or licensed to that person, as of the time of known, to the supplier, of the product purchased or to be
the request, that the person then reasonably believes could be purchased by that person; and
asserted to be infringed under section 271(g) if that product
(ii) receives a written statement from the
were imported into, or sold, offered for sale, or used in, the
manufacturer or supplier which on its face sets forth a well
United States by an unauthorized person. A request for
grounded factual basis for a belief that the identified patents are
disclosure is further limited to a request—
not infringed.
(i) which is made by a person regularly
(D) For purposes of this subsection, a person who
engaged in the United States in the sale of the type of products
obtains a product made by a process patented in the United
as those manufactured by the person to whom the request is
States in a quantity which is abnormally large in relation to the
directed, or which includes facts showing that the person making
volume of business of such person or an efficient inventory level
the request plans to engage in the sale of such products in the
shall be rebuttably presumed to have actual knowledge that the
United States;
product was made by such patented process.
(ii) which is made by such person before the
(6) A person who receives a response to a request for
person’s first importation, use, offer for sale, or sale of units of
disclosure under this subsection shall pay to the person to whom
the product produced by an infringing process and before the
the request was made a reasonable fee to cover actual costs
person had notice of infringement with respect to the product;
incurred in complying with the request, which may not exceed
and
the cost of a commercially available automated patent search
(iii) which includes a representation by the of the matter involved, but in no case more than $500.
person making the request that such person will promptly submit
(c)(1) With respect to a medical practitioner’s
the patents identified pursuant to the request to the manufacturer,
performance of a medical activity that constitutes an
or if the manufacturer is not known, to the supplier, of the
infringement under section 271(a) or (b), the provisions of
product to be purchased by the person making the request, and
sections 281, 283, 284, and 285 shall not apply against the
will request from that manufacturer or supplier a written
medical practitioner or against a related health care entity with
statement that none of the processes claimed in those patents is
respect to such medical activity.
used in the manufacture of the product.
(2) For the purposes of this subsection:
(B) In the case of a request for disclosure received
by a person to whom a patent is licensed, that person shall either (A) the term “medical activity” means the
identify the patent or promptly notify the licensor of the request performance of a medical or surgical procedure on a body, but
for disclosure. shall not include (i) the use of a patented machine, manufacture,
or composition of matter in violation of such patent, (ii) the
(C) A person who has marked, in the manner
practice of a patented use of a composition of matter in violation
prescribed by subsection (a), the number of the process patent
of such patent, or (iii) the practice of a process in violation of a
on all products made by the patented process which have been
biotechnology patent.
offered for sale or sold by that person in the United States, or
imported by the person into the United States, before a request (B) the term “medical practitioner” means any
for disclosure is received is not required to respond to the request natural person who is licensed by a State to provide the medical
for disclosure. For purposes of the preceding sentence, the term activity described in subsection (c)(1) or who is acting under
“all products” does not include products made before the the direction of such person in the performance of the medical
effective date of the Process Patent Amendments Act of 1988. activity.
(5)(A) For purposes of this subsection, notice of (C) the term “related health care entity” shall mean
infringement means actual knowledge, or receipt by a person an entity with which a medical practitioner has a professional
of a written notification, or a combination thereof, of information affiliation under which the medical practitioner performs the
sufficient to persuade a reasonable person that it is likely that a medical activity, including but not limited to a nursing home,
product was made by a process patented in the United States. hospital, university, medical school, health maintenance
organization, group medical practice, or a medical clinic.
(B) A written notification from the patent holder
charging a person with infringement shall specify the patented (D) the term “professional affiliation” shall mean
process alleged to have been used and the reasons for a good staff privileges, medical staff membership, employment or
faith belief that such process was used. The patent holder shall contractual relationship, partnership or ownership interest,
include in the notification such information as is reasonably academic appointment, or other affiliation under which a medical
necessary to explain fairly the patent holder’s belief, except that practitioner provides the medical activity on behalf of, or in
the patent holder is not required to disclose any trade secret association with, the health care entity.
information.

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 PATENT LAWS § 291

(E) the term “body” shall mean a human body, (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
organ or cadaver, or a nonhuman animal used in medical 1949; amended Sept. 16, 2011, Public Law 112-29, sec. 20(h),
research or instruction directly relating to the treatment of 125 Stat. 284, effective Sept. 16, 2012.)
humans.
35 U.S.C. 288 (pre-AIA) Action for infringement of a patent
(F) the term “patented use of a composition of containing an invalid claim.
matter” does not include a claim for a method of performing a
medical or surgical procedure on a body that recites the use of [Editor Note: Not applicable to to proceedings commenced on
a composition of matter where the use of that composition of or after September 16, 2012. See 35 U.S.C. 288 for the law
matter does not directly contribute to achievement of the otherwise applicable.]
objective of the claimed method.
(G) the term “State” shall mean any State or Whenever, without deceptive intention, a claim of a patent is
territory of the United States, the District of Columbia, and the invalid, an action may be maintained for the infringement of a
Commonwealth of Puerto Rico. claim of the patent which may be valid. The patentee shall
recover no costs unless a disclaimer of the invalid claim has
(3) This subsection does not apply to the activities of been entered at the Patent and Trademark Office before the
any person, or employee or agent of such person (regardless of commencement of the suit.
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 (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
distribution of a machine, manufacture, or composition of matter 1949.)
or the provision of pharmacy or clinical laboratory services
35 U.S.C. 289 Additional remedy for infringement of design
(other than clinical laboratory services provided in a physician’s
patent.
office), where such activities are:
(A) directly related to the commercial Whoever during the term of a patent for a design, without license
development, manufacture, sale, importation, or distribution of of the owner, (1) applies the patented design, or any colorable
a machine, manufacture, or composition of matter or the imitation thereof, to any article of manufacture for the purpose
provision of pharmacy or clinical laboratory services (other than of sale, or (2) sells or exposes for sale any article of manufacture
clinical laboratory services provided in a physician’s office), to which such design or colorable imitation has been applied
and shall be liable to the owner to the extent of his total profit, but
not less than $250, recoverable in any United States district
(B) regulated under the Federal Food, Drug, and
court having jurisdiction of the parties.
Cosmetic Act, the Public Health Service Act, or the Clinical
Laboratories Improvement Act.
Nothing in this section shall prevent, lessen, or impeach any
(4) This subsection shall not apply to any patent issued other remedy which an owner of an infringed patent has under
based on an application which has an effective filing date before the provisions of this title, but he shall not twice recover the
September 30, 1996. profit made from the infringement.
(Amended Aug. 23, 1988, Public Law 100-418, sec. 9004(a),
35 U.S.C. 290 Notice of patent suits.
102 Stat. 1564; Dec. 8, 1994, Public Law 103-465, sec.
533(b)(5), 108 Stat. 4989; subsection (c) added Sept. 30, 1996, The clerks of the courts of the United States, within one month
Public Law 104-208, sec. 616, 110 Stat. 3009-67; amended Nov. after the filing of an action under this title, shall give notice
29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. thereof in writing to the Director, setting forth so far as known
1501A-589 (S. 1948 sec. 4803); amended Sept. 16, 2011, Public the names and addresses of the parties, name of the inventor,
Law 112-29, sec. 16(a) (effective Sept. 16, 2011), secs. 20(i) and the designating number of the patent upon which the action
and (j) (effective Sept. 16, 2012), and sec. 3(g) (effective March has been brought. If any other patent is subsequently included
16, 2013), 125 Stat. 284.) in the action he shall give like notice thereof. Within one month
after the decision is rendered or a judgment issued the clerk of
35 U.S.C. 288 Action for infringement of a patent containing
the court shall give notice thereof to the Director. The Director
an invalid claim.
shall, on receipt of such notices, enter the same in the file of
[Editor Note: Applicable to all proceedings commenced on or such patent.
after September 16, 2012. See 35 U.S.C. 288 (pre-AIA) for the
law otherwise applicable.] (Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
Whenever a claim of a patent is invalid, an action may be
35 U.S.C. 291 Derived Patents.
maintained for the infringement of a claim of the patent which
may be valid. The patentee shall recover no costs unless a [Editor Note: Applicable to any patent application subject to
disclaimer of the invalid claim has been entered at the Patent the first inventor to file provisions of the AIA (see 35 U.S.C. 100
and Trademark Office before the commencement of the suit. (note))*. See 35 U.S.C. 291 (pre-AIA) for the law otherwise
applicable.]

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§ 291 (pre-AIA) MANUAL OF PATENT EXAMINING PROCEDURE

(a) IN GENERAL.—The owner of a patent may have relief (B) a specific reference under 35 U.S.C. 120 , 121, or
by civil action against the owner of another patent that claims 365(c), to any patent or application that contains or contained
the same invention and has an earlier effective filing date, if the at any time such a claim.
invention claimed in such other patent was derived from the 35 U.S.C. 292 False marking.
inventor of the invention claimed in the patent owned by the
person seeking relief under this section. (a)
(b) FILING LIMITATION.—An action under this section Whoever, without the consent of the patentee, marks
may be filed only before the end of the 1-year period beginning upon, or affixes to, or uses in advertising in connection with
on the date of the issuance of the first patent containing a claim anything made, used, offered for sale, or sold by such person
to the allegedly derived invention and naming an individual within the United States, or imported by the person into the
alleged to have derived such invention as the inventor or joint United States, the name or any imitation of the name of the
inventor. patentee, the patent number, or the words “patent,” “patentee,”
or the like, with the intent of counterfeiting or imitating the mark
(Amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) of the patentee, or of deceiving the public and inducing them to
(effective Sept. 16, 2012)and 3(h) (effective March 16, 2013)*, believe that the thing was made, offered for sale, sold, or
125 Stat. 284.) imported into the United States by or with the consent of the
patentee; or
*NOTE: The provisions of 35 U.S.C. 291 (pre-AIA), as in effect Whoever marks upon, or affixes to, or uses in
on March 15, 2013, shall also apply to each claim of an advertising in connection with any unpatented article the word
application for patent, and any patent issued thereon, for which “patent” or any word or number importing the same is patented,
the first inventor to file provisions of the AIA apply (see 35 for the purpose of deceiving the public; or
U.S.C. 100 (note)), if such application or patent contains or
contained at any time— 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
(A) a claim to an invention having an effective filing date as
application for patent has been made, when no application for
defined in 35 U.S.C. 100(i), that occurs before March 16, 2013;
patent has been made, or if made, is not pending, for the purpose
or
of deceiving the public—
Shall be fined not more than $500 for every such offense. Only
(B) a specific reference under 35 U.S.C. 120 , 121, or 365(c), the United States may sue for the penalty authorized by this
to any patent or application that contains or contained at any subsection.
time such a claim.
(b) A person who has suffered a competitive injury as a
35 U.S.C. 291 (pre-AIA) Interfering patents. result of a violation of this section may file a civil action in a
district court of the United States for recovery of damages
[Editor Note: Not applicable to any patent application subject adequate to compensate for the injury.
to the first inventor to file provisions of the AIA (see 35 U.S.C. (c) The marking of a product, in a manner described in
100 (note)).* See 35 U.S.C. 291 for the law otherwise subsection (a), with matter relating to a patent that covered that
applicable.*] product but has expired is not a violation of this section.

The owner of an interfering patent may have relief against the (Subsection (a) amended Dec. 8, 1994, Public Law 103-465,
owner of another by civil action, and the court may adjudge the sec. 533(b)(6), 108 Stat. 4990; amended Sept. 16, 2011, Public
question of validity of any of the interfering patents, in whole Law 112-29, sec. 16(b), 125 Stat. 284.)
or in part. The provisions of the second paragraph of section
35 U.S.C. 293 Nonresident patentee; service and notice.
146 shall apply to actions brought under this section.
Every patentee not residing in the United States may file in the
(Amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) Patent and Trademark Office a written designation stating the
(effective Sept. 16, 2012), 125 Stat. 284. name and address of a person residing within the United States
on whom may be served process or notice of proceedings
*NOTE: The provisions of 35 U.S.C. 291 (pre-AIA), as in effect affecting the patent or rights thereunder. If the person designated
on March 15, 2013, shall also apply to each claim of an cannot be found at the address given in the last designation, or
application for patent, and any patent issued thereon, for which if no person has been designated, the United States District Court
the first inventor to file provisions of the AIA apply (see 35 for the Eastern District of Virginia shall have jurisdiction and
U.S.C. 100 (note)), if such application or patent contains or summons shall be served by publication or otherwise as the
contained at any time— 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.
(A) a claim to an invention having an effective filing date
as defined in 35 U.S.C. 100(i), that occurs before March 16,
2013; or

Rev. 08.2017, January 2018 L-70

 PATENT LAWS § 297

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. is made from a process patented in the United States, if the court
1949; amended Sept. 16, 2011, Public Law 112-29, sec. 9, 125 finds—
Stat. 284.)
(1) that a substantial likelihood exists that the product was
35 U.S.C. 294 Voluntary arbitration. made by the patented process, and
(a) A contract involving a patent or any right under a patent (2) that the plaintiff has made a reasonable effort to
may contain a provision requiring arbitration of any dispute determine the process actually used in the production of the
relating to patent validity or infringement arising under the product and was unable so to determine, the product shall be
contract. In the absence of such a provision, the parties to an presumed to have been so made, and the burden of establishing
existing patent validity or infringement dispute may agree in that the product was not made by the process shall be on the
writing to settle such dispute by arbitration. Any such provision party asserting that it was not so made.
or agreement shall be valid, irrevocable, and enforceable, except
for any grounds that exist at law or in equity for revocation of (Added Aug. 23, 1988, Public Law 100-418, sec. 9005(a), 102
a contract. Stat. 1566; amended Dec. 8, 1994, Public Law 103-465, sec.
533(b)(7), 108 Stat. 4990.)
(b) Arbitration of such disputes, awards by arbitrators, and
confirmation of awards shall be governed by title 9, to the extent 35 U.S.C. 296 Liability of States, instrumentalities of States,
such title is not inconsistent with this section. In any such and State officials for infringement of patents.
arbitration proceeding, the defenses provided for under section
282 shall be considered by the arbitrator if raised by any party (a) IN GENERAL.—Any State, any instrumentality of a
to the proceeding. State, and any officer or employee of a State or instrumentality
of a State, acting in his official capacity, shall not be immune,
(c) An award by an arbitrator shall be final and binding under the eleventh amendment of the Constitution of the United
between the parties to the arbitration but shall have no force or States or under any other doctrine of sovereign immunity, from
effect on any other person. The parties to an arbitration may suit in Federal court by any person, including any governmental
agree that in the event a patent which is the subject matter of an or nongovernmental entity, for infringement of a patent under
award is subsequently determined to be invalid or unenforceable section 271, or for any other violation under this title.
in a judgment rendered by a court of competent jurisdiction
from which no appeal can or has been taken, such award may (b) REMEDIES.—In a suit described in subsection (a) for
be modified by any court of competent jurisdiction upon a violation described in that subsection, remedies (including
application by any party to the arbitration. Any such remedies both at law and in equity) are available for the violation
modification shall govern the rights and obligations between to the same extent as such remedies are available for such a
such parties from the date of such modification. violation in a suit against any private entity. Such remedies
include damages, interest, costs, and treble damages under
(d) When an award is made by an arbitrator, the patentee, section 284, attorney fees under section 285, and the additional
his assignee or licensee shall give notice thereof in writing to remedy for infringement of design patents under section 289.
the Director. There shall be a separate notice prepared for each
patent involved in such proceeding. Such notice shall set forth (Added Oct. 28, 1992, Public Law 102-560, sec. 2(a)(2), 106
the names and addresses of the parties, the name of the inventor, Stat. 4230.)
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 35 U.S.C. 297 Improper and deceptive invention promotion.
is modified by a court, the party requesting such modification
(a) IN GENERAL.— An invention promoter shall have a
shall give notice of such modification to the Director. The
duty to disclose the following information to a customer in
Director shall, upon receipt of either notice, enter the same in
writing, prior to entering into a contract for invention promotion
the record of the prosecution of such patent. If the required
services:
notice is not filed with the Director, any party to the proceeding
may provide such notice to the Director. (1) the total number of inventions evaluated by the
invention promoter for commercial potential in the past 5 years,
(e) The award shall be unenforceable until the notice
as well as the number of those inventions that received positive
required by subsection (d) is received by the Director.
evaluations, and the number of those inventions that received
(Added Aug. 27, 1982, Public Law 97-247, sec. 17(b)(1), 96 negative evaluations;
Stat. 322; amended Nov. 29, 1999, Public Law 106-113, sec. (2) the total number of customers who have contracted
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); with the invention promoter in the past 5 years, not including
subsections (b) and (c) amended Nov. 2, 2002, Public Law customers who have purchased trade show services, research,
107-273, sec. 13206, 116 Stat. 1905; amended Sept. 16, 2011, advertising, or other nonmarketing services from the invention
Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 promoter, or who have defaulted in their payment to the
Stat. 284. invention promoter;
35 U.S.C. 295 Presumption: Product made by patented (3) the total number of customers known by the
process. invention promoter to have received a net financial profit as a
direct result of the invention promotion services provided by
In actions alleging infringement of a process patent based on such invention promoter;
the importation, sale, offered for sale, or use of a product which

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§ 298 MANUAL OF PATENT EXAMINING PROCEDURE

(4) the total number of customers known by the

(C) any person or entity involved in the evaluation
invention promoter to have received license agreements for their
to determine commercial potential of, or offering to license or
inventions as a direct result of the invention promotion services
sell, a utility patent or a previously filed nonprovisional utility
provided by such invention promoter; and
patent application;
(5) the names and addresses of all previous invention
(D) any party participating in a transaction
promotion companies with which the invention promoter or its
involving the sale of the stock or assets of a business; or
officers have collectively or individually been affiliated in the
previous 10 years. (E) any party who directly engages in the business
of retail sales of products or the distribution of products; and
(b) CIVIL ACTION.—
(4) the term “invention promotion services” means the
(1) Any customer who enters into a contract with an
procurement or attempted procurement for a customer of a firm,
invention promoter and who is found by a court to have been
corporation, or other entity to develop and market products or
injured by any material false or fraudulent statement or
services that include the invention of the customer.
representation, or any omission of material fact, by that invention
promoter (or any agent, employee, director, officer, partner, or (d) RECORDS OF COMPLAINTS.—
independent contractor of such invention promoter), or by the (1) RELEASE OF COMPLAINTS.— The
failure of that invention promoter to disclose such information Commissioner of Patents shall make all complaints received by
as required under subsection (a), may recover in a civil action the Patent and Trademark Office involving invention promoters
against the invention promoter (or the officers, directors, or publicly available, together with any response of the invention
partners of such invention promoter), in addition to reasonable promoters. The Commissioner of Patents shall notify the
costs and attorneys’ fees— invention promoter of a complaint and provide a reasonable
(A) the amount of actual damages incurred by the opportunity to reply prior to making such complaint publicly
customer; or available.
(B) at the election of the customer at any time (2) REQUEST FOR COMPLAINTS.— The
before final judgment is rendered, statutory damages in a sum Commissioner of Patents may request complaints relating to
of not more than $5,000, as the court considers just. invention promotion services from any Federal or State agency
and include such complaints in the records maintained under
(2) Notwithstanding paragraph (1), in a case where the
paragraph (1), together with any response of the invention
customer sustains the burden of proof, and the court finds, that
promoters.
the invention promoter intentionally misrepresented or omitted
a material fact to such customer, or willfully failed to disclose (Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
such information as required under subsection (a), with the 113 Stat. 1501A-552 (S. 1948 sec. 4102(a)).)
purpose of deceiving that customer, the court may increase
damages to not more than three times the amount awarded, 35 U.S.C. 298 Advice of counsel.
taking into account past complaints made against the invention
promoter that resulted in regulatory sanctions or other corrective The failure of an infringer to obtain the advice of counsel with
actions based on those records compiled by the Commissioner respect to any allegedly infringed patent, or the failure of the
of Patents under subsection (d). infringer to present such advice to the court or jury, may not be
used to prove that the accused infringer willfully infringed the
(c) DEFINITIONS.— For purposes of this section— patent or that the infringer intended to induce infringement of
(1) a “contract for invention promotion services” means the patent.
a contract by which an invention promoter undertakes invention
promotion services for a customer; (Added Sept. 16, 2011, Public Law 112-29, sec. 17, 125 Stat.
(2) a “customer” is any individual who enters into a 284, effective as to patents issued on or after Sept. 16, 2012,
contract with an invention promoter for invention promotion effective date revised Public Law 112-274, sec. (1)(a), 126 Stat.
services; 2456 as applicable to any civil action commenced on or after
Jan. 14, 2013.)
(3) the term “invention promoter” means any person,
firm, partnership, corporation, or other entity who offers to 35 U.S.C. 299 Joinder of parties.
perform or performs invention promotion services for, or on
behalf of, a customer, and who holds itself out through (a) JOINDER OF ACCUSED INFRINGERS.—With
advertising in any mass media as providing such services, but respect to any civil action arising under any Act of Congress
does not include— relating to patents, other than an action or trial in which an act
of infringement under section 271(e)(2) has been pled, parties
(A) any department or agency of the Federal that are accused infringers may be joined in one action as
Government or of a State or local government; defendants or counterclaim defendants, or have their actions
(B) any nonprofit, charitable, scientific, or consolidated for trial, only if—
educational organization, qualified under applicable State law (1) any right to relief is asserted against the parties
or described under section 170(b)(1)(A) of the Internal Revenue jointly, severally, or in the alternative with respect to or arising
Code of 1986; out of the same transaction, occurrence, or series of transactions
or occurrences relating to the making, using, importing into the

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 PATENT LAWS § 303

(d) LIMITATIONS.—A written statement submitted

United States, offering for sale, or selling of the same accused
pursuant to subsection (a)(2), and additional information
product or process; and
submitted pursuant to subsection (c), shall not be considered by
(2) questions of fact common to all defendants or the Office for any purpose other than to determine the proper
counterclaim defendants will arise in the action. meaning of a patent claim in a proceeding that is ordered or
(b) ALLEGATIONS INSUFFICIENT FOR JOINDER.— instituted pursuant to section 304, 314, or 324. If any such
For purposes of this subsection, accused infringers may not be written statement or additional information is subject to an
joined in one action as defendants or counterclaim defendants, applicable protective order, such statement or information shall
or have their actions consolidated for trial, based solely on be redacted to exclude information that is subject to that order.
allegations that they each have infringed the patent or patents (e) CONFIDENTIALITY.—Upon the written request of
in suit. the person citing prior art or written statements pursuant to
(c) WAIVER.—A party that is an accused infringer may subsection (a), that person’s identity shall be excluded from the
waive the limitations set forth in this section with respect to that patent file and kept confidential.
party. (Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3015;
(Added Sept. 16, 2011, Public Law 112-29, sec. 19(d), 125 Stat. amended Sept. 16, 2011, Public Law 112-29, sec. 6(g) (effective
284, corrected Jan. 14, 2013, Public Law 112-274, sec. 1(c), Sept. 16, 2012), 125 Stat. 284.)
126 Stat. 2456.)
35 U.S.C. 302 Request for reexamination.

CHAPTER 30 — PRIOR ART CITATIONS 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
TO OFFICE AND EX PARTE cited under the provisions of section 301. The request must be
REEXAMINATION OF PATENTS in writing and must be accompanied by payment of a
reexamination fee established by the Director pursuant to the
Sec. provisions of section 41. The request must set forth the
pertinency and manner of applying cited prior art to every claim
301 Citation of prior art and written statements. for which reexamination is requested. Unless the requesting
302 Request for reexamination. person is the owner of the patent, the Director promptly will
303 Determination of issue by Director. send a copy of the request to the owner of record of the patent.
304 Reexamination order by Director.
305 Conduct of reexamination proceedings. (Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3015;
305 (pre-AIA) Conduct of reexamination amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 secs. 4732(a)(8) and
proceedings. 4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29,
306 Appeal. sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)
307 Certificate of patentability, unpatentability,
and claim cancellation. 35 U.S.C. 303 Determination of issue by Director.

35 U.S.C. 301 Citation of prior art and written statements. (a) Within three months following the filing of a request
for reexamination under the provisions of section 302 , the
(a) IN GENERAL.—Any person at any time may cite to Director will determine whether a substantial new question of
the Office in writing— patentability affecting any claim of the patent concerned is raised
by the request, with or without consideration of other patents
(1) prior art consisting of patents or printed publications
or printed publications. On his own initiative, and any time, the
which that person believes to have a bearing on the patentability
Director may determine whether a substantial new question of
of any claim of a particular patent; or
patentability is raised by patents and publications discovered
(2) statements of the patent owner filed in a proceeding by him or cited under the provisions of section 301 or 302. The
before a Federal court or the Office in which the patent owner existence of a substantial new question of patentability is not
took a position on the scope of any claim of a particular patent. precluded by the fact that a patent or printed publication was
previously cited by or to the Office or considered by the Office.
(b) OFFICIAL FILE.—If the person citing prior art or
written statements pursuant to subsection (a) explains in writing (b) A record of the Director’s determination under
the pertinence and manner of applying the prior art or written subsection (a) of this section will be placed in the official file
statements to at least 1 claim of the patent, the citation of the of the patent, and a copy promptly will be given or mailed to
prior art or written statements and the explanation thereof shall the owner of record of the patent and to the person requesting
become a part of the official file of the patent. reexamination, if any.
(c) ADDITIONAL INFORMATION.—A party that submits (c) A determination by the Director pursuant to subsection
a written statement pursuant to subsection (a)(2) shall include (a) of this section that no substantial new question of
any other documents, pleadings, or evidence from the proceeding patentability has been raised will be final and nonappealable.
in which the statement was filed that addresses the written Upon such a determination, the Director may refund a portion
statement. of the reexamination fee required under section 302.

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§ 304 MANUAL OF PATENT EXAMINING PROCEDURE

(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3015; (effective Sept. 16, 2012) and 3(j) (effective March 16, 2013),
amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 125 Stat. 284.)
113 Stat. 1501A-581, 582 (S. 1948 secs. 4732(a)(9) and
(4732(a)(10)(A)); subsection (a) amended Nov. 2, 2002, Public 35 U.S.C. 305 (pre-AIA) Conduct of reexamination
Law 107-273, sec. 13105, 116 Stat. 1900; amended Sept. 16, proceedings.
2011, Public Law 112-29, secs. 6(h) and 20(j) (effective Sept.
16, 2012), 125 Stat. 284.) [Editor Note: Not applicable to any patent issuing from an
application subject to the first inventor to file provisions of the
35 U.S.C. 304 Reexamination order by Director. AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 305 for the law
otherwise applicable.]
If, in a determination made under the provisions of subsection
303(a), the Director finds that a substantial new question of After the times for filing the statement and reply provided for
patentability affecting any claim of a patent is raised, the by section 304 have expired, reexamination will be conducted
determination will include an order for reexamination of the according to the procedures established for initial examination
patent for resolution of the question. The patent owner will be under the provisions of sections 132 and 133. In any
given a reasonable period, not less than two months from the reexamination proceeding under this chapter, the patent owner
date a copy of the determination is given or mailed to him, within will be permitted to propose any amendment to his patent and
which he may file a statement on such question, including any a new claim or claims thereto, in order to distinguish the
amendment to his patent and new claim or claims he may wish invention as claimed from the prior art cited under the provisions
to propose, for consideration in the reexamination. If the patent of section 301, or in response to a decision adverse to the
owner files such a statement, he promptly will serve a copy of patentability of a claim of a patent. No proposed amended or
it on the person who has requested reexamination under the new claim enlarging the scope of a claim of the patent will be
provisions of section 302. Within a period of two months from permitted in a reexamination proceeding under this chapter. All
the date of service, that person may file and have considered in reexamination proceedings under this section, including any
the reexamination a reply to any statement filed by the patent appeal to the Board of Patent Appeals and Interferences, will
owner. That person promptly will serve on the patent owner a be conducted with special dispatch within the Office.
copy of any reply filed.

(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016;
(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.
amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 3388; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j)
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended (effective Sept. 16, 2012), 125 Stat. 284.)
Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept.
16, 2012), 125 Stat. 284.) 35 U.S.C. 306 Appeal.

35 U.S.C. 305 Conduct of reexamination proceedings. The patent owner involved in a reexamination proceeding under
this chapter may appeal under the provisions of section 134,
[Editor Note: Applicable to any patent issuing from an and may seek court review under the provisions of sections 141
application subject to the first inventor to file provisions of the to 144, with respect to any decision adverse to the patentability
AIA (see 35 U.S.C. 100 (note)). See 35 U.S.C. 305 (pre-AIA) of any original or proposed amended or new claim of the patent.
for the law otherwise applicable.]

(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016;
After the times for filing the statement and reply provided for amended Sept. 16, 2011, Public Law 112-29, secs. 6(h)(2)
by section 304 have expired, reexamination will be conducted (effective Sept. 16, 2011) and 20(j) (effective Sept. 16, 2012),
according to the procedures established for initial examination 125 Stat. 284.)
under the provisions of sections 132 and 133. In any
reexamination proceeding under this chapter, the patent owner 35 U.S.C. 307 Certificate of patentability, unpatentability,
will be permitted to propose any amendment to his patent and and claim cancellation.
a new claim or claims thereto, in order to distinguish the
invention as claimed from the prior art cited under the provisions (a) In a reexamination proceeding under this chapter, when
of section 301, or in response to a decision adverse to the the time for appeal has expired or any appeal proceeding has
patentability of a claim of a patent. No proposed amended or terminated, the Director will issue and publish a certificate
new claim enlarging the scope of a claim of the patent will be canceling any claim of the patent finally determined to be
permitted in a reexamination proceeding under this chapter. All unpatentable, confirming any claim of the patent determined to
reexamination proceedings under this section, including any be patentable, and incorporating in the patent any proposed
appeal to the Patent Trial and Appeal Board, will be conducted amended or new claim determined to be patentable.
with special dispatch within the Office. (b) Any proposed amended or new claim determined to be
patentable and incorporated into a patent following a
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016; reexamination proceeding will have the same effect as that
amended Nov. 8, 1984, Public Law 98-622, sec. 204(c), 98 Stat. specified in section 252 for reissued patents on the right of any
3388; amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) 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

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 PATENT LAWS § 312

preparation for the same, prior to issuance of a certificate under 35 U.S.C. 311 Inter partes review.
the provisions of subsection (a) of this section. (a) IN GENERAL.—Subject to the provisions of this
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat. 3016; chapter, a person who is not the owner of a patent may file with
amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(8), 108 the Office a petition to institute an inter partes review of the
Stat. 4990; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), patent. The Director shall establish, by regulation, fees to be
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A))amended paid by the person requesting the review, in such amounts as
Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125 Stat. 284, the Director determines to be reasonable, considering the
effective Sept. 16, 2012.) aggregate costs of the review.
(b) SCOPE.—A petitioner in an inter partes review may
CHAPTER 31 — INTER PARTES REVIEW request to cancel as unpatentable 1 or more claims of a patent
only on a ground that could be raised under section 102 or 103
and only on the basis of prior art consisting of patents or printed
Sec. publications.
311 (note) Inter partes review applicability (c) FILING DEADLINE.*—A petition for inter partes
provisions. review shall be filed after the later of either—
311 Inter partes review. (1) the date that is 9 months after the grant of a patent;
312 Petitions. or
313 Preliminary response to petition. (2) if a post-grant review is instituted under chapter
314 Institution of inter partes review. 32, the date of the termination of such post-grant review.
315 Relation to other proceedings or actions.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
316 Conduct of inter partes review. 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and
317 Settlement. (c) amended Nov. 2, 2002, Public Law 107-273, sec. 13202,
318 Decision of the Board. 116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29,
319 Appeal. sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)

35 U.S.C. 311 (note) Inter partes review applicability

*NOTE:Pursuant to Public Law 112-274, sec. 1(d), 126 Stat.
provisions.
2456, Jan. 14, 2013, the filing deadlines of subsection (c) do
The post-grant review provisions of the Leahy-Smith America not apply to patents not subject to the first inventor to file
Invents Act (AIA) apply only to proceedings commenced on or provisions of the AIA (35 U.S.C. 100 (note)).
after Sept. 16, 2012, except that— (1) the extension of
jurisdiction to the United States Court of Appeals for the Federal
Circuit to entertain appeals of decisions of the Patent Trial and 35 U.S.C. 312 Petitions.
Appeal Board in reexaminations under the amendment made
(a) REQUIREMENTS OF PETITION.—A petition filed
by subsection (c)(2) of the AIA shall be deemed to take effect
under section 311 may be considered only if—
on Sept. 16, 2011 and shall extend to any decision of the Board
of Patent Appeals and Interferences with respect to a (1) the petition is accompanied by payment of the fee
reexamination that is entered before, on, or after Sept. 16, 2011; established by the Director under section 311;
(2) the petition identifies all real parties in interest;
(2) the provisions of 35 U.S.C. 6 (pre-AIA), 134 (pre-AIA), and
(3) the petition identifies, in writing and with
141 (pre-AIA) as in effect on Sept. 15, 2012 shall continue to
particularity, each claim challenged, the grounds on which the
apply to inter partes reexaminations that are requested under 35
challenge to each claim is based, and the evidence that supports
U.S.C. 311 (pre-AIA) before Sept. 16, 2012;
the grounds for the challenge to each claim, including—

(3) the Patent Trial and Appeal Board may be deemed to be the (A) copies of patents and printed publications that
Board of Patent Appeals and Interferences for purposes of the petitioner relies upon in support of the petition; and
appeals of inter partes reexaminations that are requested under (B) affidavits or declarations of supporting
35 U.S.C. 311 (pre-AIA) before Sept. 16, 2012; and evidence and opinions, if the petitioner relies on expert opinions;
(4) the petition provides such other information as the
(4) the Director’s right under the fourth sentence of 35 U.S.C. Director may require by regulation; and
143, to intervene in an appeal from a decision entered by the
Patent Trial and Appeal Board shall be deemed to extend to (5) the petitioner provides copies of any of the
inter partes reexaminations that are requested under 35 U.S.C. documents required under paragraphs (2), (3), and (4) to the
311 before Sept. 16, 2012. patent owner or, if applicable, the designated representative of
the patent owner.

(Sept. 16, 2011, Public Law 112-29, sec. 7(e) (effective Sept. (b) PUBLIC AVAILABILITY.—As soon as practicable
16, 2012), 125 Stat. 284.) after the receipt of a petition under section 311, the Director
shall make the petition available to the public.

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§ 313 MANUAL OF PATENT EXAMINING PROCEDURE

(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), (2) STAY OF CIVIL ACTION.—If the petitioner or
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and real party in interest files a civil action challenging the validity
(b) amended Nov. 2, 2002, Public Law 107-273, secs. 13105 of a claim of the patent on or after the date on which the
and 13202, 116 Stat.1900-1901; subsections (a) and (c) amended petitioner files a petition for inter partes review of the patent,
Sept. 16, 2011, Public Law 112-29, sec. 6(c)(3), 125 Stat. 284; that civil action shall be automatically stayed until either—
amended Sept. 16, 2011, Public Law 112-29, sec. 6(a), 125 Stat.
284, effective Sept. 16, 2012.) (A) the patent owner moves the court to lift the
stay;
35 U.S.C. 313 Preliminary response to petition. (B) the patent owner files a civil action or
counterclaim alleging that the petitioner or real party in interest
If an inter partes review petition is filed under section 311, the
has infringed the patent; or
patent owner shall have the right to file a preliminary response
to the petition, within a time period set by the Director, that sets (C) the petitioner or real party in interest moves
forth reasons why no inter partes review should be instituted the court to dismiss the civil action.
based upon the failure of the petition to meet any requirement (3) TREATMENT OF COUNTERCLAIM.—A
of this chapter. counterclaim challenging the validity of a claim of a patent does
not constitute a civil action challenging the validity of a claim
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), of a patent for purposes of this subsection.
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16,
(b) PATENT OWNER’S ACTION.—An inter partes review
2011, Public Law 112-29, sec. 6(c)(3), 125 Stat. 284 and further
may not be instituted if the petition requesting the proceeding
amended by Public Law 112-29, sec. 6(a) (effective Sept. 16,
is filed more than 1 year after the date on which the petitioner,
2012), 125 Stat. 284.)
real party in interest, or privy of the petitioner is served with a
35 U.S.C. 314 Institution of inter partes review. complaint alleging infringement of the patent. The time
limitation set forth in the preceding sentence shall not apply to
(a) THRESHOLD.—The Director may not authorize an a request for joinder under subsection (c).
inter partes review to be instituted unless the Director determines
(c) JOINDER.—If the Director institutes an inter partes
that the information presented in the petition filed under section
review, the Director, in his or her discretion, may join as a party
311 and any response filed under section 313 shows that there
to that inter partes review any person who properly files a
is a reasonable likelihood that the petitioner would prevail with
petition under section 311 that the Director, after receiving a
respect to at least 1 of the claims challenged in the petition.
preliminary response under section 313 or the expiration of the
(b) TIMING.—The Director shall determine whether to time for filing such a response, determines warrants the
institute an inter partes review under this chapter pursuant to a institution of an inter partes review under section 314.
petition filed under section 311 within 3 months after—
(d) MULTIPLE PROCEEDINGS.—Notwithstanding
(1) receiving a preliminary response to the petition sections 135(a) , 251, and 252, and chapter 30, during the
under section 313; or pendency of an inter partes review, if another proceeding or
matter involving the patent is before the Office, the Director
(2) if no such preliminary response is filed, the last
may determine the manner in which the inter partes review or
date on which such response may be filed.
other proceeding or matter may proceed, including providing
(c) NOTICE.—The Director shall notify the petitioner and for stay, transfer, consolidation, or termination of any such
patent owner, in writing, of the Director’s determination under matter or proceeding.
subsection (a), and shall make such notice available to the public
(e) ESTOPPEL.—
as soon as is practicable. Such notice shall include the date on
which the review shall commence. (1) PROCEEDINGS BEFORE THE OFFICE.—The
petitioner in an inter partes review of a claim in a patent under
(d) NO APPEAL.—The determination by the Director
this chapter that results in a final written decision under section
whether to institute an inter partes review under this section
318(a), or the real party in interest or privy of the petitioner,
shall be final and nonappealable.
may not request or maintain a proceeding before the Office with
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), respect to that claim on any ground that the petitioner raised or
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b)(1) reasonably could have raised during that inter partes review.
amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 (2) CIVIL ACTIONS AND OTHER
Stat. 1901; amended Sept. 16, 2011, Public Law 112-29, sec. PROCEEDINGS.—The petitioner in an inter partes review of
6(a) (effective Sept. 16, 2012), 125 Stat. 284.) a claim in a patent under this chapter that results in a final written
decision under section 318(a), or the real party in interest or
35 U.S.C. 315 Relation to other proceedings or actions.
privy of the petitioner, may not assert either in a civil action
(a) INFRINGER’S CIVIL ACTION.— arising in whole or in part under section 1338 of title 28 or in a
proceeding before the International Trade Commission under
(1) INTER PARTES REVIEW BARRED BY CIVIL section 337 of the Tariff Act of 1930 that the claim is invalid
ACTION.—An inter partes review may not be instituted if, on any ground that the petitioner raised or reasonably could
before the date on which the petition for such a review is filed, have raised during that inter partes review.
the petitioner or real party in interest filed a civil action
challenging the validity of a claim of the patent.

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 PATENT LAWS § 317

(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), adjust the time periods in this paragraph in the case of joinder
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b) under section 315(c) ;
amended Nov. 2, 2002, Public Law 107-273, sec. 13106, 116
Stat. 1900; subsection (c) amended Nov. 2, 2002, Public Law (12) setting a time period for requesting joinder under
107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16, 2011, section 315(c) ; and
Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 (13) providing the petitioner with at least 1 opportunity
Stat. 284.) to file written comments within a time period established by the
Director.
35 U.S.C. 316 Conduct of inter partes review.
(b) CONSIDERATIONS.—In prescribing regulations under
(a) REGULATIONS.—The Director shall prescribe this section, the Director shall consider the effect of any such
regulations— regulation on the economy, the integrity of the patent system,
(1) providing that the file of any proceeding under this the efficient administration of the Office, and the ability of the
chapter shall be made available to the public, except that any Office to timely complete proceedings instituted under this
petition or document filed with the intent that it be sealed shall, chapter.
if accompanied by a motion to seal, be treated as sealed pending (c) PATENT TRIAL AND APPEAL BOARD.—The Patent
the outcome of the ruling on the motion; Trial and Appeal Board shall, in accordance with section 6 ,
(2) setting forth the standards for the showing of conduct each inter partes review instituted under this chapter.
sufficient grounds to institute a review under section 314(a); (d) AMENDMENT OF THE PATENT.—
(3) establishing procedures for the submission of (1) IN GENERAL.—During an inter partes review
supplemental information after the petition is filed; instituted under this chapter, the patent owner may file 1 motion
(4) establishing and governing inter partes review under to amend the patent in 1 or more of the following ways:
this chapter and the relationship of such review to other (A) Cancel any challenged patent claim.
proceedings under this title;
(B) For each challenged claim, propose a
(5) setting forth standards and procedures for discovery reasonable number of substitute claims.
of relevant evidence, including that such discovery shall be
limited to— (2) ADDITIONAL MOTIONS.—Additional motions
to amend may be permitted upon the joint request of the
(A) the deposition of witnesses submitting petitioner and the patent owner to materially advance the
affidavits or declarations; and settlement of a proceeding under section 317 , or as permitted
(B) what is otherwise necessary in the interest of by regulations prescribed by the Director.
justice; (3) SCOPE OF CLAIMS.—An amendment under this
(6) prescribing sanctions for abuse of discovery, abuse subsection may not enlarge the scope of the claims of the patent
of process, or any other improper use of the proceeding, such or introduce new matter.
as to harass or to cause unnecessary delay or an unnecessary (e) EVIDENTIARY STANDARDS.—In an inter partes
increase in the cost of the proceeding; review instituted under this chapter, the petitioner shall have
(7) providing for protective orders governing the the burden of proving a proposition of unpatentability by a
exchange and submission of confidential information; preponderance of the evidence.

(8) providing for the filing by the patent owner of a (Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
response to the petition under section 313 after an inter partes 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16,
review has been instituted, and requiring that the patent owner 2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012),
file with such response, through affidavits or declarations, any 125 Stat. 284.)
additional factual evidence and expert opinions on which the
patent owner relies in support of the response; 35 U.S.C. 317 Settlement.

(9) setting forth standards and procedures for allowing (a) IN GENERAL.—An inter partes review instituted under
the patent owner to move to amend the patent under subsection this chapter shall be terminated with respect to any petitioner
(d) to cancel a challenged claim or propose a reasonable number upon the joint request of the petitioner and the patent owner,
of substitute claims, and ensuring that any information submitted unless the Office has decided the merits of the proceeding before
by the patent owner in support of any amendment entered under the request for termination is filed. If the inter partes review is
subsection (d) is made available to the public as part of the terminated with respect to a petitioner under this section, no
prosecution history of the patent; estoppel under section 315(e) shall attach to the petitioner, or
to the real party in interest or privy of the petitioner, on the basis
(10) providing either party with the right to an oral
of that petitioner’s institution of that inter partes review. If no
hearing as part of the proceeding;
petitioner remains in the inter partes review, the Office may
(11) requiring that the final determination in an inter terminate the review or proceed to a final written decision under
partes review be issued not later than 1 year after the date on section 318(a) .
which the Director notices the institution of a review under this
(b) AGREEMENTS IN WRITING.—Any agreement or
chapter, except that the Director may, for good cause shown,
understanding between the patent owner and a petitioner,
extend the 1-year period by not more than 6 months, and may

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§ 318 MANUAL OF PATENT EXAMINING PROCEDURE

including any collateral agreements referred to in such agreement (Added Sept. 16, 2011, Public Law 112-29, sec. 6(a) (effective
or understanding, made in connection with, or in contemplation Sept. 16, 2012), 125 Stat. 284.)
of, the termination of an inter partes review under this section
shall be in writing and a true copy of such agreement or
understanding shall be filed in the Office before the termination CHAPTER 31 (pre-AIA) — OPTIONAL
of the inter partes review as between the parties. At the request INTER PARTES REEXAMINATION
of a party to the proceeding, the agreement or understanding
PROCEDURES
shall be treated as business confidential information, shall be
kept separate from the file of the involved patents, and shall be
made available only to Federal Government agencies on written Sec.
request, or to any person on a showing of good cause. 311 (pre-AIA) Request for inter partes
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), reexamination.
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and 312 (transitional) Determination of issue by
(b) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, Director.
116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29, 313 (transitional) Inter partes reexamination
sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
order by Director.
35 U.S.C. 318 Decision of the Board. 314 (pre-AIA) Conduct of inter partes
reexamination proceedings.
(a) FINAL WRITTEN DECISION.—If an inter partes
review is instituted and not dismissed under this chapter, the 315 (pre-AIA) Appeal.
Patent Trial and Appeal Board shall issue a final written decision 316 (pre-AIA) Certificate of patentability,
with respect to the patentability of any patent claim challenged unpatentability and claim cancellation.
by the petitioner and any new claim added under section 316(d) 317 (pre-AIA) Inter partes reexamination
.
prohibited.
(b) CERTIFICATE.—If the Patent Trial and Appeal Board 318 (pre-AIA) Stay of litigation.
issues a final written decision under subsection (a) and the time
for appeal has expired or any appeal has terminated, the Director 35 U.S.C. 311 (pre-AIA) Request for inter partes
shall issue and publish a certificate canceling any claim of the reexamination.
patent finally determined to be unpatentable, confirming any
claim of the patent determined to be patentable, and [Editor Note: Applicable only to a request for inter partes
incorporating in the patent by operation of the certificate any reexamination filed prior to September 16, 2012.]
new or amended claim determined to be patentable.
(a) IN GENERAL.— Any third-party requester at any time
(c) INTERVENING RIGHTS.—Any proposed amended
may file a request for inter partes reexamination by the Office
or new claim determined to be patentable and incorporated into
of a patent on the basis of any prior art cited under the provisions
a patent following an inter partes review under this chapter shall
of section 301.
have the same effect as that specified in section 252 for reissued
patents on the right of any person who made, purchased, or used (b) REQUIREMENTS.— The request shall—
within the United States, or imported into the United States,
(1) be in writing, include the identity of the real party
anything patented by such proposed amended or new claim, or
in interest, and be accompanied by payment of an inter partes
who made substantial preparation therefor, before the issuance
reexamination fee established by the Director under section 41;
of a certificate under subsection (b).
and
(d) DATA ON LENGTH OF REVIEW.—The Office shall
(2) set forth the pertinency and manner of applying
make available to the public data describing the length of time
cited prior art to every claim for which reexamination is
between the institution of, and the issuance of a final written
requested.
decision under subsection (a) for, each inter partes review.
(c) COPY.— The Director promptly shall send a copy of
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), the request to the owner of record of the patent.
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16,
2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), (Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
125 Stat. 284.) 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and
(c) amended Nov. 2, 2002, Public Law 107-273, sec. 13202,
35 U.S.C. 319 Appeal. 116 Stat. 1901.)

A party dissatisfied with the final written decision of the Patent 35 U.S.C. 312 (transitional) Determination of issue by
Trial and Appeal Board under section 318(a) may appeal the Director.
decision pursuant to sections 141 through 144 . Any party to
the inter partes review shall have the right to be a party to the [Editor Note: Applicable to requests for inter partes
appeal. reexamination filed on or after Sept. 16, 2011, but before Sept.
16, 2012.]

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 PATENT LAWS § 315 (pre-AIA)

(a) REEXAMINATION.— Not later than 3 months after claim enlarging the scope of the claims of the patent shall be
the filing of a request for inter partes reexamination under permitted.
section 311, the Director shall determine whether the information
(b) RESPONSE.—
presented in the request shows that there is a reasonable
likelihood that the requester would prevail with respect to at (1) With the exception of the inter partes reexamination
least 1 of the claims challenged in the request, with or without request, any document filed by either the patent owner or the
consideration of other patents or printed publications. A showing third-party requester shall be served on the other party. In
that there is a reasonable likelihood that the requester would addition, the Office shall send to the third-party requester a copy
prevail with respect to at least 1 of the claims challenged in the of any communication sent by the Office to the patent owner
request is not precluded by the fact that a patent or printed concerning the patent subject to the inter partes reexamination
publication was previously cited by or to the Office or proceeding.
considered by the Office. (2) Each time that the patent owner files a response to
(b) RECORD.— A record of the Director’s determination an action on the merits from the Patent and Trademark Office,
under subsection (a) shall be placed in the official file of the the third-party requester shall have one opportunity to file written
patent, and a copy shall be promptly given or mailed to the comments addressing issues raised by the action of the Office
owner of record of the patent and to the third-party requester. or the patent owner’s response thereto, if those written comments
are received by the Office within 30 days after the date of service
(c) FINAL DECISION.— A determination by the Director
of the patent owner’s response.
under subsection (a) shall be final and non-appealable. Upon a
determination that the showing required by subsection (a) has (c) SPECIAL DISPATCH.— Unless otherwise provided
not been made, the Director may refund a portion of the inter by the Director for good cause, all inter partes reexamination
partes reexamination fee required under section 311. proceedings under this section, including any appeal to the Board
of Patent Appeals and Interferences, shall be conducted with
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), special dispatch within the Office.
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and
(b) amended Nov. 2, 2002, Public Law 107-273, secs. 13105 (Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
and 13202, 116 Stat.1900-1901; amended Sept. 16, 2011, Public 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b)(1)
Law 112-29, sec. 6(c)(3), 125 Stat. 284.) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116
Stat. 1901.)
35 U.S.C. 313 (transitional) Inter partes reexamination
order by Director. 35 U.S.C. 315 (pre-AIA) Appeal.

[Editor Note: Applicable to requests for inter partes [Editor Note: Applicable only to a request for inter partes
reexamination filed on or after Sept. 16, 2011, but before Sept. reexamination filed prior to September 16, 2012.]
16, 2012.]
(a) PATENT OWNER.— The patent owner involved in
If, in a determination made under section 312(a), the Director an inter partes reexamination proceeding under this chapter—
finds that it has been shown that there is a reasonable likelihood (1) may appeal under the provisions of section 134 and
that the requester would prevail with respect to at least 1 of the may appeal under the provisions of sections 141 through 144,
claims challenged in the request, the determination shall include with respect to any decision adverse to the patentability of any
an order for inter partes reexamination of the patent for original or proposed amended or new claim of the patent; and
resolution of the question. The order may be accompanied by
the initial action of the Patent and Trademark Office on the (2) may be a party to any appeal taken by a third-party
merits of the inter partes reexamination conducted in accordance requester under subsection (b).
with section 314. (b) THIRD-PARTY REQUESTER.— A third-party
requester—
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), (1) may appeal under the provisions of section 134,
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); amended Sept. 16, and may appeal under the provisions of sections 141 through
2011, Public Law 112-29, sec. 6(c)(3), 125 Stat. 284.) 144, with respect to any final decision favorable to the
patentability of any original or proposed amended or new claim
35 U.S.C. 314 (pre-AIA) Conduct of inter partes of the patent; and
reexamination proceedings.
(2) may, subject to subsection (c), be a party to any
[Editor Note: Applicable only to a request for inter partes appeal taken by the patent owner under the provisions of section
reexamination filed prior to September 16, 2012.] 134 or sections 141 through 144.
(c) CIVIL ACTION.— A third-party requester whose
(a) IN GENERAL.— Except as otherwise provided in this request for an inter partes reexamination results in an order
section, reexamination shall be conducted according to the under section 313 is estopped from asserting at a later time, in
procedures established for initial examination under the any civil action arising in whole or in part under section 1338
provisions of sections 132 and 133. In any inter partes of title 28, the invalidity of any claim finally determined to be
reexamination proceeding under this chapter, the patent owner valid and patentable on any ground which the third-party
shall be permitted to propose any amendment to the patent and requester raised or could have raised during the inter partes
a new claim or claims, except that no proposed amended or new

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§ 316 (pre-AIA) MANUAL OF PATENT EXAMINING PROCEDURE

reexamination proceedings. This subsection does not prevent patent claim on the basis of issues which that party or its privies
the assertion of invalidity based on newly discovered prior art raised or could have raised in such civil action or inter partes
unavailable to the third-party requester and the Patent and reexamination proceeding, and an inter partes reexamination
Trademark Office at the time of the inter partes reexamination requested by that party or its privies on the basis of such issues
proceedings. may not thereafter be maintained by the Office, notwithstanding
any other provision of this chapter. This subsection does not
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), prevent the assertion of invalidity based on newly discovered
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsection (b) prior art unavailable to the third-party requester and the Patent
amended Nov. 2, 2002, Public Law 107-273, sec. 13106, 116 and Trademark Office at the time of the inter partes
Stat. 1900; subsection (c) amended Nov. 2, 2002, Public Law reexamination proceedings.
107-273, sec. 13202, 116 Stat. 1901.)
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
35 U.S.C. 316 (pre-AIA) Certificate of patentability, 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and
unpatentability and claim cancellation. (b) amended Nov. 2, 2002, Public Law 107-273, sec. 13202,
116 Stat. 1901.)
[Editor Note: Applicable only to a request for inter partes
reexamination filed prior to September 16, 2012.] 35 U.S.C. 318 (pre-AIA) Stay of litigation.

(a) IN GENERAL.— In an inter partes reexamination [Editor Note: Applicable only to a request for inter partes
proceeding under this chapter, when the time for appeal has reexamination filed prior to September 16, 2012.]
expired or any appeal proceeding has terminated, the Director
shall issue and publish a certificate canceling any claim of the Once an order for inter partes reexamination of a patent has
patent finally determined to be unpatentable, confirming any been issued under section 313, the patent owner may obtain a
claim of the patent determined to be patentable, and stay of any pending litigation which involves an issue of
incorporating in the patent any proposed amended or new claim patentability of any claims of the patent which are the subject
determined to be patentable. of the inter partes reexamination order, unless the court before
(b) AMENDED OR NEW CLAIM.— Any proposed which such litigation is pending determines that a stay would
amended or new claim determined to be patentable and not serve the interests of justice.
incorporated into a patent following an inter partes
reexamination proceeding shall have the same effect as that (Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
specified in section 252 of this title for reissued patents on the 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)).)
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 CHAPTER 32 — POST-GRANT REVIEW
substantial preparation therefor, prior to issuance of a certificate
under the provisions of subsection (a) of this section. Sec.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
321 (note) Post-grant review applicability.
113 Stat. 1501A-570 (S. 1948 sec. 4604(a)).) 321 Post-grant review.
322 Petitions.
35 U.S.C. 317 (pre-AIA) Inter partes reexamination 323 Preliminary response to petition.
prohibited.
324 Institution of post-grant review.
[Editor Note: Applicable only to a request for inter partes 325 Relation to other proceedings or actions.
reexamination filed prior to September 16, 2012.] 326 Conduct of post-grant review.
327 Settlement.
(a) ORDER FOR REEXAMINATION.— Notwithstanding
any provision of this chapter, once an order for inter partes
328 Decision of the Board.
reexamination of a patent has been issued under section 313, 329 Appeal.
neither the third-party requester nor its privies may file a
35 U.S.C. 321 (note) Post-grant review applicability.
subsequent request for inter partes reexamination of the patent
until an inter partes reexamination certificate is issued and (1) APPLICABILITY.—
published under section 316, unless authorized by the Director.
(A) The post-grant review provisions of the
(b) FINAL DECISION.— Once a final decision has been Leahy-Smith America Invents Act (AIA) apply only to patents
entered against a party in a civil action arising in whole or in subject to the first inventor to file provisions of the AIA (see 35
part under section 1338 of title 28, that the party has not U.S.C. 100 (note)), except as provided in AIA § 18 and
sustained its burden of proving the invalidity of any patent claim paragraph 2 below.
in suit or if a final decision in an inter partes reexamination
(B) LIMITATION.—The Director may impose a limit
proceeding instituted by a third-party requester is favorable to
on the number of post-grant reviews that may be instituted under
the patentability of any original or proposed amended or new
chapter 32 of title 35, United States Code, during each of the
claim of the patent, then neither that party nor its privies may
first 4 1-year periods in which the these provisions are in effect.
thereafter request an inter partes reexamination of any such

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 PATENT LAWS § 324

(2) PENDING INTERFERENCES.—

(1) the petition is accompanied by payment of the fee
(A) PROCEDURES IN GENERAL.—The Director established by the Director under section 321;
shall determine, and include in the regulations issued under
(2) the petition identifies all real parties in interest;
paragraph (1), the procedures under which an interference
commenced before the effective date set forth in paragraph (3) the petition identifies, in writing and with
(2)(A) is to proceed, including whether such interference— particularity, each claim challenged, the grounds on which the
challenge to each claim is based, and the evidence that supports
(i) is to be dismissed without prejudice to the filing
the grounds for the challenge to each claim, including—
of a petition for a post-grant review under chapter 32 of title 35,
United States Code; or (A) copies of patents and printed publications that
the petitioner relies upon in support of the petition; and
(ii) is to proceed as if the AIA had not been
enacted. (B) affidavits or declarations of supporting
evidence and opinions, if the petitioner relies on other factual
(B) PROCEEDINGS BY PATENT TRIAL AND
evidence or on expert opinions;
APPEAL BOARD.—For purposes of an interference that is
commenced before the effective date set forth in paragraph (4) the petition provides such other information as the
(2)(A), the Director may deem the Patent Trial and Appeal Board Director may require by regulation; and
to be the Board of Patent Appeals and Interferences, and may (5) the petitioner provides copies of any of the
allow the Patent Trial and Appeal Board to conduct any further documents required under paragraphs (2), (3), and (4) to the
proceedings in that interference. patent owner or, if applicable, the designated representative of
(C) APPEALS.—The authorization to appeal or have the patent owner.
remedy from derivation proceedings in sections 141(d) and 146 (b) PUBLIC AVAILABILITY.—As soon as practicable
of title 35, United States Code, as amended by this Act, and the after the receipt of a petition under section 321, the Director
jurisdiction to entertain appeals from derivation proceedings in shall make the petition available to the public.
section 1295(a)(4)(A) of title 28, United States Code, as
amended by this Act, shall be deemed to extend to any final (Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective
decision in an interference that is commenced before the Sept. 16, 2012), 125 Stat. 284.)
effective date set forth in paragraph (2)(A) of this subsection
and that is not dismissed pursuant to this paragraph. 35 U.S.C. 323 Preliminary response to petition.

(Sept. 16, 2011, Public Law 112-29, sec. 6(f), 125 Stat. 284.) If a post-grant review petition is filed under section 321, the
patent owner shall have the right to file a preliminary response
35 U.S.C. 321 Post-grant review. to the petition, within a time period set by the Director, that sets
(a) IN GENERAL.—Subject to the provisions of this forth reasons why no post-grant review should be instituted
chapter, a person who is not the owner of a patent may file with based upon the failure of the petition to meet any requirement
the Office a petition to institute a post-grant review of the patent. of this chapter.
The Director shall establish, by regulation, fees to be paid by
the person requesting the review, in such amounts as the Director (Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective
determines to be reasonable, considering the aggregate costs of Sept. 16, 2012), 125 Stat. 284.)
the post-grant review.
35 U.S.C. 324 Institution of post-grant review.
(b) SCOPE.—A petitioner in a post-grant review may
request to cancel as unpatentable 1 or more claims of a patent (a) THRESHOLD.—The Director may not authorize a
on any ground that could be raised under paragraph (2) or (3) post-grant review to be instituted unless the Director determines
of section 282(b) (relating to invalidity of the patent or any that the information presented in the petition filed under section
claim). 321, if such information is not rebutted, would demonstrate that
it is more likely than not that at least 1 of the claims challenged
(c) FILING DEADLINE.—A petition for a post-grant
in the petition is unpatentable.
review may only be filed not later than the date that is 9 months
after the date of the grant of the patent or of the issuance of a (b) ADDITIONAL GROUNDS.—The determination
reissue patent (as the case may be). required under subsection (a) may also be satisfied by a showing
that the petition raises a novel or unsettled legal question that
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective is important to other patents or patent applications.
Sept. 16, 2012), 125 Stat. 284.)
(c) TIMING.—The Director shall determine whether to
institute a post-grant review under this chapter pursuant to a
(Public Law 112-29, sec. 18, 125 Stat. 284 (Sept. 16, 2011)
petition filed under section 321 within 3 months after—
provided a transitional program for covered business method
patents (see AIA § 18).) (1) receiving a preliminary response to the petition
under section 323; or
35 U.S.C. 322 Petitions.
(2) if no such preliminary response is filed, the last
(a) REQUIREMENTS OF PETITION.—A petition filed date on which such response may be filed.
under section 321 may be considered only if—

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§ 325 MANUAL OF PATENT EXAMINING PROCEDURE

(d) NOTICE.—The Director shall notify the petitioner and or chapter 31, the Director may take into account whether, and
patent owner, in writing, of the Director’s determination under reject the petition or request because, the same or substantially
subsection (a) or (b), and shall make such notice available to the same prior art or arguments previously were presented to
the public as soon as is practicable. Such notice shall include the Office.
the date on which the review shall commence.
(e) ESTOPPEL.—
(e) NO APPEAL.—The determination by the Director
(1) PROCEEDINGS BEFORE THE OFFICE.—The
whether to institute a post-grant review under this section shall
petitioner in a post-grant review of a claim in a patent under this
be final and nonappealable.
chapter that results in a final written decision under section
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective 328(a) , or the real party in interest or privy of the petitioner,
Sept. 16, 2012), 125 Stat. 284.) may not request or maintain a proceeding before the Office with
respect to that claim on any ground that the petitioner raised or
35 U.S.C. 325 Relation to other proceedings or actions. reasonably could have raised during that post-grant review.

(a) INFRINGER’S CIVIL ACTION.— (2) CIVIL ACTIONS AND OTHER

PROCEEDINGS.—The petitioner in a post-grant review of a
(1) POST-GRANT REVIEW BARRED BY CIVIL claim in a patent under this chapter that results in a final written
ACTION.—A post-grant review may not be instituted under decision under section 328(a), or the real party in interest or
this chapter if, before the date on which the petition for such a privy of the petitioner, may not assert either in a civil action
review is filed, the petitioner or real party in interest filed a civil arising in whole or in part under section 1338 of title 28 or in a
action challenging the validity of a claim of the patent. proceeding before the International Trade Commission under
(2) STAY OF CIVIL ACTION.—If the petitioner or section 337 of the Tariff Act of 1930 that the claim is invalid
real party in interest files a civil action challenging the validity on any ground that the petitioner raised or reasonably could
of a claim of the patent on or after the date on which the have raised during that post-grant review.
petitioner files a petition for post-grant review of the patent, that (f) REISSUE PATENTS.—A post-grant review may not
civil action shall be automatically stayed until either— be instituted under this chapter if the petition requests
(A) the patent owner moves the court to lift the cancellation of a claim in a reissue patent that is identical to or
stay; narrower than a claim in the original patent from which the
reissue patent was issued, and the time limitations in section
(B) the patent owner files a civil action or 321(c) would bar filing a petition for a post-grant review for
counterclaim alleging that the petitioner or real party in interest such original patent.
has infringed the patent; or
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective
(C) the petitioner or real party in interest moves
Sept. 16, 2012), 125 Stat. 284.)
the court to dismiss the civil action.
(3) TREATMENT OF COUNTERCLAIM.—A 35 U.S.C. 326 Conduct of post-grant review.
counterclaim challenging the validity of a claim of a patent does
not constitute a civil action challenging the validity of a claim (a) REGULATIONS.—The Director shall prescribe
of a patent for purposes of this subsection. regulations—

(b) PRELIMINARY INJUNCTIONS.—If a civil action (1) providing that the file of any proceeding under this
alleging infringement of a patent is filed within 3 months after chapter shall be made available to the public, except that any
the date on which the patent is granted, the court may not stay petition or document filed with the intent that it be sealed shall,
its consideration of the patent owner’s motion for a preliminary if accompanied by a motion to seal, be treated as sealed pending
injunction against infringement of the patent on the basis that a the outcome of the ruling on the motion;
petition for post-grant review has been filed under this chapter (2) setting forth the standards for the showing of
or that such a post-grant review has been instituted under this sufficient grounds to institute a review under subsections (a)
chapter. and (b) of section 324;
(c) JOINDER.—If more than 1 petition for a post-grant (3) establishing procedures for the submission of
review under this chapter is properly filed against the same supplemental information after the petition is filed;
patent and the Director determines that more than 1 of these
(4) establishing and governing a post-grant review
petitions warrants the institution of a post-grant review under
under this chapter and the relationship of such review to other
section 324 , the Director may consolidate such reviews into a
proceedings under this title;
single post-grant review.
(5) setting forth standards and procedures for discovery
(d) MULTIPLE PROCEEDINGS.—Notwithstanding
of relevant evidence, including that such discovery shall be
sections 135(a) , 251, and 252, and chapter 30, during the
limited to evidence directly related to factual assertions advanced
pendency of any post- grant review under this chapter, if another
by either party in the proceeding;
proceeding or matter involving the patent is before the Office,
the Director may determine the manner in which the post-grant (6) prescribing sanctions for abuse of discovery, abuse
review or other proceeding or matter may proceed, including of process, or any other improper use of the proceeding, such
providing for the stay, transfer, consolidation, or termination of as to harass or to cause unnecessary delay or an unnecessary
any such matter or proceeding. In determining whether to increase in the cost of the proceeding;
institute or order a proceeding under this chapter, chapter 30,

Rev. 08.2017, January 2018 L-82

 PATENT LAWS § 328

(7) providing for protective orders governing the (Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective
exchange and submission of confidential information; Sept. 16, 2012), 125 Stat. 284.)

(8) providing for the filing by the patent owner of a 35 U.S.C. 327 Settlement.
response to the petition under section 323 after a post-grant
review has been instituted, and requiring that the patent owner (a) IN GENERAL.—A post-grant review instituted under
file with such response, through affidavits or declarations, any this chapter shall be terminated with respect to any petitioner
additional factual evidence and expert opinions on which the upon the joint request of the petitioner and the patent owner,
patent owner relies in support of the response; unless the Office has decided the merits of the proceeding before
the request for termination is filed. If the post-grant review is
(9) setting forth standards and procedures for allowing terminated with respect to a petitioner under this section, no
the patent owner to move to amend the patent under subsection estoppel under section 325(e) shall attach to the petitioner, or
(d) to cancel a challenged claim or propose a reasonable number to the real party in interest or privy of the petitioner, on the basis
of substitute claims, and ensuring that any information submitted of that petitioner’s institution of that post-grant review. If no
by the patent owner in support of any amendment entered under petitioner remains in the post-grant review, the Office may
subsection (d) is made available to the public as part of the terminate the post-grant review or proceed to a final written
prosecution history of the patent; decision under section 328(a).
(10) providing either party with the right to an oral (b) AGREEMENTS IN WRITING.—Any agreement or
hearing as part of the proceeding; understanding between the patent owner and a petitioner,
(11) requiring that the final determination in any including any collateral agreements referred to in such agreement
post-grant review be issued not later than 1 year after the date or understanding, made in connection with, or in contemplation
on which the Director notices the institution of a proceeding of, the termination of a post-grant review under this section shall
under this chapter, except that the Director may, for good cause be in writing, and a true copy of such agreement or
shown, extend the 1-year period by not more than 6 months, understanding shall be filed in the Office before the termination
and may adjust the time periods in this paragraph in the case of of the post-grant review as between the parties. At the request
joinder under section 325(c); and of a party to the proceeding, the agreement or understanding
shall be treated as business confidential information, shall be
(12) providing the petitioner with at least 1 opportunity kept separate from the file of the involved patents, and shall be
to file written comments within a time period established by the made available only to Federal Government agencies on written
Director. request, or to any person on a showing of good cause.
(b) CONSIDERATIONS.—In prescribing regulations under
this section, the Director shall consider the effect of any such (Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective
regulation on the economy, the integrity of the patent system, Sept. 16, 2012), 125 Stat. 284.)
the efficient administration of the Office, and the ability of the
35 U.S.C. 328 Decision of the Board.
Office to timely complete proceedings instituted under this
chapter. (a) FINAL WRITTEN DECISION.—If a post-grant review
(c) PATENT TRIAL AND APPEAL BOARD.—The Patent is instituted and not dismissed under this chapter, the Patent
Trial and Appeal Board shall, in accordance with section 6, Trial and Appeal Board shall issue a final written decision with
conduct each post-grant review instituted under this chapter. respect to the patentability of any patent claim challenged by
the petitioner and any new claim added under section 326(d).
(d) AMENDMENT OF THE PATENT.—
(b) CERTIFICATE.—If the Patent Trial and Appeal Board
(1) IN GENERAL.—During a post-grant review issues a final written decision under subsection (a) and the time
instituted under this chapter, the patent owner may file 1 motion for appeal has expired or any appeal has terminated, the Director
to amend the patent in 1 or more of the following ways: shall issue and publish a certificate canceling any claim of the
(A) Cancel any challenged patent claim. patent finally determined to be unpatentable, confirming any
claim of the patent determined to be patentable, and
(B) For each challenged claim, propose a incorporating in the patent by operation of the certificate any
reasonable number of substitute claims. new or amended claim determined to be patentable.
(2) ADDITIONAL MOTIONS.—Additional motions (c) INTERVENING RIGHTS.—Any proposed amended
to amend may be permitted upon the joint request of the or new claim determined to be patentable and incorporated into
petitioner and the patent owner to materially advance the a patent following a post-grant review under this chapter shall
settlement of a proceeding under section 327, or upon the request have the same effect as that specified in section 252 for reissued
of the patent owner for good cause shown. patents on the right of any person who made, purchased, or used
(3) SCOPE OF CLAIMS.—An amendment under this within the United States, or imported into the United States,
subsection may not enlarge the scope of the claims of the patent anything patented by such proposed amended or new claim, or
or introduce new matter. who made substantial preparation therefor, before the issuance
of a certificate under subsection (b).
(e) EVIDENTIARY STANDARDS.—In a post-grant
review instituted under this chapter, the petitioner shall have (d) DATA ON LENGTH OF REVIEW.—The Office shall
the burden of proving a proposition of unpatentability by a make available to the public data describing the length of time
preponderance of the evidence. between the institution of, and the issuance of a final written
decision under subsection (a) for, each post-grant review.

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§ 329 MANUAL OF PATENT EXAMINING PROCEDURE

(Added Sept. 16, 2011, Public Law 112-29, secs. 6(d) and 20(j) (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 685;
(effective Sept. 16, 2012), 125 Stat. 284.) 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.
35 U.S.C. 329 Appeal. 3485; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
A party dissatisfied with the final written decision of the Patent
Trial and Appeal Board under section 328(a) may appeal the
decision pursuant to sections 141 through 144. Any party to the CHAPTER 36 — INTERNATIONAL
post-grant review shall have the right to be a party to the appeal. STAGE
(Added Sept. 16, 2011, Public Law 112-29, sec. 6(d) (effective Sec.
Sept. 16, 2012), 125 Stat. 284.)
361 Receiving Office.
362 International Searching Authority and
PART IV — PATENT COOPERATION TREATY
International Preliminary Examining
Authority.
CHAPTER 35 — DEFINITIONS
363 International application designating the
United States: Effect.
Sec.
363 (pre-AIA) International application
351 Definitions.
designating the United States: Effect.
35 U.S.C. 351 Definitions. 364 International stage: Procedure.
When used in this part unless the context otherwise indicates—
365 Right of priority; benefit of the filing date
of a prior application.
(a) The term “treaty” means the Patent Cooperation Treaty 366 Withdrawn international application.
done at Washington, on June 19, 1970. 367 Actions of other authorities: Review.
(b) The term “Regulations,” when capitalized, means the 368 Secrecy of certain inventions; filing
Regulations under the treaty, done at Washington on the same international applications in foreign
date as the treaty. The term “regulations,” when not capitalized, countries.
means the regulations established by the Director under this
title. 35 U.S.C. 361 Receiving Office.
(c) The term “international application” means an (a) The Patent and Trademark Office shall act as a
application filed under the treaty. Receiving Office for international applications filed by nationals
(d) The term “international application originating in the or residents of the United States. In accordance with any
United States” means an international application filed in the agreement made between the United States and another country,
Patent and Trademark Office when it is acting as a Receiving the Patent and Trademark Office may also act as a Receiving
Office under the treaty, irrespective of whether or not the United Office for international applications filed by residents or
States has been designated in that international application. nationals of such country who are entitled to file international
applications.
(e) The term “international application designating the
United States” means an international application specifying (b) The Patent and Trademark Office shall perform all acts
the United States as a country in which a patent is sought, connected with the discharge of duties required of a Receiving
regardless where such international application is filed. Office, including the collection of international fees and their
transmittal to the International Bureau.
(f) The term “Receiving Office” means a national patent
office or intergovernmental organization which receives and (c) International applications filed in the Patent and
processes international applications as prescribed by the treaty Trademark Office shall be filed in the English language, or an
and the Regulations. English translation shall be filed within such later time as may
be fixed by the Director.
(g) The terms “International Searching Authority” and
“International Preliminary Examining Authority” mean a (d) The international fee, and the transmittal and search
national patent office or intergovernmental organization as fees prescribed under section 376(a) of this part, shall either be
appointed under the treaty which processes international paid on filing of an international application or within such later
applications as prescribed by the treaty and the Regulations. time as may be fixed by the Director.

(h) The term “International Bureau” means the international (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686;
intergovernmental organization which is recognized as the amended Nov. 8, 1984, Public Law 98-622, sec. 401(a), 403(a),
coordinating body under the treaty and the Regulations. 98 Stat. 3391-3392; Nov. 6, 1986, Public Law 99-616, sec. 2(d),
100 Stat. 3485; Nov. 29, 1999, Public Law 106-113, sec.
(i) Terms and expressions not defined in this part are to be
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)));
taken in the sense indicated by the treaty and the Regulations.

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 PATENT LAWS § 365

35 U.S.C. 364 International stage: Procedure.

subsection (c) amended Dec. 18, 2012, Public Law 112-211,
sec. 202(b)(7), 126 Stat. 1536.) (a) International applications shall be processed by the
Patent and Trademark Office when acting as a Receiving Office,
35 U.S.C. 362 International Searching Authority and International Searching Authority, or International Preliminary
International Preliminary Examining Authority. Examining Authority, in accordance with the applicable
(a) The Patent and Trademark Office may act as an provisions of the treaty, the Regulations, and this title.
International Searching Authority and International Preliminary (b) An applicant’s failure to act within prescribed time
Examining Authority with respect to international applications limits in connection with requirements pertaining to an
in accordance with the terms and conditions of an agreement international application may be excused as provided in the
which may be concluded with the International Bureau, and treaty and the Regulations.
may discharge all duties required of such Authorities, including
the collection of handling fees and their transmittal to the (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686;
International Bureau. amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat.
3392; subsection (a) amended Nov. 6, 1986, Public Law 99-616,
(b) The handling fee, preliminary examination fee, and any sec. 5, 100 Stat. 3485; amended Nov. 29, 1999, Public Law
additional fees due for international preliminary examination 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
shall be paid within such time as may be fixed by the Director. 4732(a)(10)(A)); Dec. 18, 2012, sec. 202(b)(8), 126 Stat. 1536.)
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686;
35 U.S.C. 365 Right of priority; benefit of the filing date of
amended Nov. 8, 1984, Public Law 98-622, sec. 403 (a), 98
a prior application.
Stat. 3392; Nov. 6, 1986, Public Law 99-616, sec. 4, 100 Stat.
3485; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 (a) In accordance with the conditions and requirements of
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).) subsections (a) through (d) of section 119, a national application
shall be entitled to the right of priority based on a prior filed
35 U.S.C. 363 International application designating the international application which designated at least one country
United States: Effect. other than the United States.
[Editor Note: Applicable to any patent application subject to (b) In accordance with the conditions and requirements of
the first inventor to file provisions of the AIA (see 35 U.S.C. 100 section 119(a) and the treaty and the Regulations, an
(note)). See 35 U.S.C. 363 (pre-AIA) for the law otherwise international application designating the United States shall be
applicable.] entitled to the right of priority based on a prior foreign
application, or a prior international application designating at
An international application designating the United States shall least one country other than the United States. The Director may
have the effect, from its international filing date under article establish procedures, including the requirement for payment of
11 of the treaty, of a national application for patent regularly the fee specified in section 41(a)(7), to accept an unintentionally
filed in the Patent and Trademark Office. delayed claim for priority under the treaty and the Regulations,
and to accept a priority claim that pertains to an application that
was not filed within the priority period specified in the treaty
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; and Regulations, but was filed within the additional 2-month
amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. period specified under section 119(a) or the treaty and
3392; amended Sept. 16, 2011, Public Law 112-29, secs. 20(j) Regulations.
(effective Sept. 16, 2012) and 3(g) (effective March 16, 2013),
125 Stat. 284.) (c) In accordance with the conditions and requirements of
section 120, an international application designating the United
35 U.S.C. 363 (pre-AIA) International application States shall be entitled to the benefit of the filing date of a prior
designating the United States: Effect. national application, a prior international application designating
the United States, or a prior international design application as
[Editor Note: Not applicable to any patent application subject defined in section 381(a)(6) designating the United States, and
to the first inventor to file provisions of the AIA (see 35 U.S.C. a national application shall be entitled to the benefit of the filing
100 (note)). See 35 U.S.C. 363 for the law otherwise applicable.] date of a prior international application designating the United
States. If any claim for the benefit of an earlier filing date is
An international application designating the United States shall based on a prior international application which designated but
have the effect, from its international filing date under article did not originate in the United States, or a prior international
11 of the treaty, of a national application for patent regularly design application as defined in section 381(a)(6)which
filed in the Patent and Trademark Office except as otherwise designated but did not originate in the United States, the Director
provided in section 102(e). 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
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686; language.
amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat.
3392; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 686;
(effective Sept. 16, 2012), 125 Stat. 284.) 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

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§ 366 MANUAL OF PATENT EXAMINING PROCEDURE

Stat. 4987; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), (b) In accordance with article 27 (8) of the treaty, the filing
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended of an international application in a country other than the United
Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept. States on the invention made in this country shall be considered
16, 2012), 125 Stat. 284; subsection (b) amended Dec. 18, 2012, to constitute the filing of an application in a foreign country
Public Law 112-211, sec. 201(c)(2), 126 Stat. 1535; subsection within the meaning of chapter 17, whether or not the United
(c) amended Dec. 18, 2012, Public Law 112-211, sec. 102(8) States is designated in that international application.
(effective May 13, 2015), 126 Stat. 1532.) (c) If a license to file in a foreign country is refused or if
an international application is ordered to be kept secret and a
35 U.S.C. 366 Withdrawn international application. permit refused, the Patent and Trademark Office when acting
as a Receiving Office, International Searching Authority, or
Subject to section 367 of this part, if an international application
International Preliminary Examining Authority, may not disclose
designating the United States is withdrawn or considered
the contents of such application to anyone not authorized to
withdrawn, either generally or as to the United States, under the
receive such disclosure.
conditions of the treaty and the Regulations, before the applicant
has complied with the applicable requirements prescribed by (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687;
section 371(c) of this part, the designation of the United States amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat.
shall have no effect after the date of withdrawal and shall be 3392; Nov. 6, 1986, Public Law 99-616, sec. 6, 100 Stat. 3486;
considered as not having been made, unless a claim for benefit amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective
of a prior filing date under section 365(c) of this section was Sept. 16, 2012), 125 Stat. 284.)
made in a national application, or an international application
designating the United States, or a claim for benefit under section
386(c) was made in an international design application CHAPTER 37 — NATIONAL STAGE
designating the United States, filed before the date of such
withdrawal. However, such withdrawn international application Sec.
may serve as the basis for a claim of priority under section 365 371 National stage: Commencement.
(a) and (b), or under section 386(a) or (b), if it designated a
country other than the United States. 372 National stage: Requirements and
procedure.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687; 373 [Repealed.]
amended Nov. 8, 1984, Public Law 98-622, sec. 401(b), 98 Stat. 374 Publication of international application.
3391; amended Dec. 18, 2012, Public Law 112-211, sec. 102(9) 374 (pre-AIA) Publication of international
(effective May 13, 2015), 126 Stat. 1532.) application.
35 U.S.C. 367 Actions of other authorities: Review. 375 Patent issued on international application:
Effect.
(a) Where a Receiving Office other than the Patent and
Trademark Office has refused to accord an international filing
375 (pre-AIA) Patent issued on international
date to an international application designating the United States application: Effect.
or where it has held such application to be withdrawn either 376 Fees.
generally or as to the United States, the applicant may request
review of the matter by the Director, on compliance with the 35 U.S.C. 371 National stage: Commencement.
requirements of and within the time limits specified by the treaty (a) Receipt from the International Bureau of copies of
and the Regulations. Such review may result in a determination international applications with any amendments to the claims,
that such application be considered as pending in the national international search reports, and international preliminary
stage. examination reports including any annexes thereto may be
(b) The review under subsection (a) of this section, subject required in the case of international applications designating or
to the same requirements and conditions, may also be requested electing the United States.
in those instances where an international application designating (b) Subject to subsection (f) of this section, the national
the United States is considered withdrawn due to a finding by stage shall commence with the expiration of the applicable time
the International Bureau under article 12 (3) of the treaty. limit under article 22 (1) or (2), or under article 39 (1)(a) of the
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 687; treaty.
amended Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat (c) The applicant shall file in the Patent and Trademark
3392; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Office—
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
(1) the national fee provided in section 41(a);
35 U.S.C. 368 Secrecy of certain inventions; filing (2) a copy of the international application, unless not
international applications in foreign countries. required under subsection (a) of this section or already
(a) International applications filed in the Patent and communicated by the International Bureau, and a translation
Trademark Office shall be subject to the provisions of chapter into the English language of the international application, if it
17. was filed in another language;

Rev. 08.2017, January 2018 L-86

 PATENT LAWS § 374 (pre-AIA)

(3) amendments, if any, to the claims in the Sept. 16, 2012), 125 Stat. 284; subsection (d) amended Dec. 18,
international application, made under article 19 of the treaty, 2012, Public Law 112-211, sec. 202(b)(9), 126 Stat. 1536.
unless such amendments have been communicated to the Patent
and Trademark Office by the International Bureau, and a 35 U.S.C. 372 National stage: Requirements and procedure.
translation into the English language if such amendments were (a) All questions of substance and, within the scope of the
made in another language; requirements of the treaty and Regulations, procedure in an
(4) an oath or declaration of the inventor (or other international application designating the United States shall be
person authorized under chapter 11) complying with the determined as in the case of national applications regularly filed
requirements of section 115 and with regulations prescribed for in the Patent and Trademark Office.
oaths or declarations of applicants; (b) In case of international applications designating but not
(5) a translation into the English language of any originating in, the United States—
annexes to the international preliminary examination report, if (1) the Director may cause to be reexamined questions
such annexes were made in another language. relating to form and contents of the application in accordance
(d) The requirement with respect to the national fee referred with the requirements of the treaty and the Regulations;
to in subsection (c)(1), the translation referred to in subsection (2) the Director may cause the question of unity of
(c)(2), and the oath or declaration referred to in subsection (c)(4) invention to be reexamined under section 121, within the scope
of this section shall be complied with by the date of the of the requirements of the treaty and the Regulations; and
commencement of the national stage or by such later time as
may be fixed by the Director. The copy of the international (3) the Director may require a verification of the
application referred to in subsection (c)(2) shall be submitted translation of the international application or any other document
by the date of the commencement of the national stage. Failure pertaining to the application if the application or other document
to comply with these requirements shall be regarded as was filed in a language other than English.
abandonment of the application by the parties thereof. The (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689;
payment of a surcharge may be required as a condition of amended Nov. 8, 1984, Public Law 98-622, sec. 402(e), (f),
accepting the national fee referred to in subsection (c)(1) or the 403(a), 98 Stat. 3392; Nov. 29, 1999, Public Law 106-113, sec.
oath or declaration referred to in subsection (c)(4) of this section 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A));
if these requirements are not met by the date of the amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective
commencement of the national stage. The requirements of Sept. 16, 2012), 125 Stat. 284.)
subsection (c)(3) of this section shall be complied with by the
date of the commencement of the national stage, and failure to 35 U.S.C. 373 [Repealed.]
do so shall be regarded as a cancellation of the amendments to
the claims in the international application made under article (Repealed Jan. 14, 2013, Public Law 112-274, sec. 1(i), 126
19 of the treaty. The requirement of subsection (c)(5) shall be Stat. 2456.)
complied with at such time as may be fixed by the Director and
failure to do so shall be regarded as cancellation of the 35 U.S.C. 374 Publication of international application.
amendments made under article 34 (2)(b) of the treaty.
[Editor Note: Applicable to any patent application subject to
(e) After an international application has entered the the first inventor to file provisions of the AIA (see 35 U.S.C. 100
national stage, no patent may be granted or refused thereon (note)). See 35 U.S.C. 374 (pre-AIA) for the law otherwise
before the expiration of the applicable time limit under article applicable.]
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 The publication under the treaty defined in section 351(a), of
national stage has commenced. an international application designating the United States shall
be deemed a publication under section 122(b), except as
(f) At the express request of the applicant, the national stage provided in section 154(d).
of processing may be commenced at any time at which the
application is in order for such purpose and the applicable
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689;
requirements of subsection (c) of this section have been complied
amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
with.
113 Stat. 1501A-566 (S. 1948 sec. 4507(10)); amended Nov.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 688; 2, 2002, Public Law 107-273, sec.13205, 116 Stat. 1903;
amended Nov. 8, 1984, Public Law 98-622, sec. 402(a)-(d), amended Sept. 16, 2011, Public Law 112-29, secs. 20(j)
403(a), 98 Stat. 3391, 3392; subsections (a), (b), (c), (d), and (effective Sept. 16, 2012) and 3(g)(effective March 16, 2013),
(e) amended Nov. 6, 1986, Public Law, 99-616, sec. 7, 100 Stat. 125 Stat. 284.)
3486; subsection (c)(1) amended Dec. 10, 1991, Public Law
102-204, sec. 5(g)(2), 105 Stat. 1641; amended Nov. 29, 1999, 35 U.S.C. 374 (pre-AIA) Publication of international
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. application.
1948 sec. 4732(a)(10)(A)); subsection (d) amended Nov. 2,
[Editor Note: Not applicable to any patent application subject
2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; amended
to the first inventor to file provisions of the AIA (see 35 U.S.C.
Sept. 16, 2011, Public Law 112-29, secs. 20(i) and (j) (effective

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§ 375 MANUAL OF PATENT EXAMINING PROCEDURE

100 (note)). See 35 U.S.C. 374 for the law otherwise retroactively limit the scope of the patent, by declaring it
applicable.] unenforceable to the extent that it exceeds the scope of the
international application in its original language.
The publication under the treaty defined in section 351(a) , of (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689;
an international application designating the United States shall amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
be deemed a publication under section 122(b) , except as 113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended
provided in sections 102(e) and 154(d) . Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective Sept.
16, 2012), 125 Stat. 284.)
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689;
amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 35 U.S.C. 376 Fees.
113 Stat. 1501A-566 (S. 1948 sec. 4507(10)); amended Nov. (a) The required payment of the international fee and the
2, 2002, Public Law 107-273, sec.13205, 116 Stat. 1903; handling fee, which amounts are specified in the Regulations,
amended Sept. 16, 2011, Public Law 112-29, sec. 20(j) (effective shall be paid in United States currency. The Patent and
Sept. 16, 2012), 125 Stat. 284.) Trademark Office shall charge a national fee as provided in
section 41(a), and may also charge the following fees:
35 U.S.C. 375 Patent issued on international application:
Effect. (1) A transmittal fee (see section 361(d)).
(2) A search fee (see section 361(d)).
[Editor Note: Applicable to any patent application subject to
the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (3) A supplemental search fee (to be paid when
(note)). See 35 U.S.C. 375 (pre-AIA) for the law otherwise required).
applicable.]
(4) A preliminary examination fee and any additional
fees (see section 362(b)).
(a) A patent may be issued by the Director based on an
international application designating the United States, in (5) Such other fees as established by the Director.
accordance with the provisions of this title. Such patent shall (b) The amounts of fees specified in subsection (a) of this
have the force and effect of a patent issued on a national section, except the international fee and the handling fee, shall
application filed under the provisions of chapter 11. be prescribed by the Director. He may refund any sum paid by
(b) Where due to an incorrect translation the scope of a mistake or in excess of the fees so specified, or if required under
patent granted on an international application designating the the treaty and the Regulations. The Director may also refund
United States, which was not originally filed in the English any part of the search fee, the national fee, the preliminary
language, exceeds the scope of the international application in examination fee and any additional fees, where he determines
its original language, a court of competent jurisdiction may such refund to be warranted.
retroactively limit the scope of the patent, by declaring it
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 690,
unenforceable to the extent that it exceeds the scope of the
amended Nov. 8, 1984, Public Law 98-622, sec. 402(g), 403(a),
international application in its original language.
98 Stat. 3392; Nov. 6, 1986, Public Law 99-616, sec. 8(a) &
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat. 689; (b), 100 Stat. 3486; Dec. 10, 1991, Public Law 102-204, sec.
amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 5(g)(1), 105 Stat. 1640; amended Nov. 29, 1999, Public Law
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended 106-113, sec. 1000(a)(9), 113 Stat. 1501-582 (S. 1948 sec.
Sept. 16, 2011, Public Law 112-29, secs. 20(j) (effective Sept. 4732(a)(10)(A)); subsections (a)(1)-(a)(3) amended Nov. 2,
16, 2012) and 3(g)(effective March 16, 2013), 125 Stat. 284. ) 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905.)

35 U.S.C. 375 (pre-AIA) Patent issued on international PART V — THE HAGUE AGREEMENT
application: Effect.
CONCERNING INTERNATIONAL
[Editor Note: Not applicable to any patent application subject REGISTRATION OF INDUSTRIAL DESIGNS
to the first inventor to file provisions of the AIA (see 35 U.S.C.
100 (note)). See 35 U.S.C. 375 for the law otherwise applicable.] CHAPTER 38 — INTERNATIONAL
DESIGN APPLICATIONS
(a) A patent may be issued by the Director based on an
international application designating the United States, in
accordance with the provisions of this title. Subject to section Sec.
102(e) , such patent shall have the force and effect of a patent 381 Definitions.
issued on a national application filed under the provisions of 382 Filing international design applications.
chapter 11.
383 International design application.
(b) Where due to an incorrect translation the scope of a 384 Filing date.
patent granted on an international application designating the
385 Effect of international design application.
United States, which was not originally filed in the English
language, exceeds the scope of the international application in 386 Right of priority.
its original language, a court of competent jurisdiction may 387 Relief from prescribed time limits.

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 PATENT LAWS § 384

388 Withdrawn or abandoned international (c) APPLICABILITY OF CHAPTER 16.—Except as

design application. otherwise provided in this chapter, the provisions of chapter 16
shall apply.
389 Examination of international design
application. (d) APPLICATION FILED IN ANOTHER
COUNTRY.—An international design application on an
390 Publication of international design industrial design made in this country shall be considered to
application. constitute the filing of an application in a foreign country within
the meaning of chapter 17 if the international design application
35 U.S.C. 381 Definitions.
is filed—
(a) IN GENERAL.—When used in this part, unless the (1) in a country other than the United States;
context otherwise indicates—
(2) at the International Bureau; or
(1) the term "treaty" means the Geneva Act of the
Hague Agreement Concerning the International Registration of (3) with an intergovernmental organization.
Industrial Designs adopted at Geneva on July 2, 1999;
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a)
(2) the term "regulations"— (effective May 13, 2015), 126 Stat. 1528.)
(A) when capitalized, means the Common 35 U.S.C. 383 International design application.
Regulations under the treaty; and
In addition to any requirements pursuant to chapter 16, the
(B) when not capitalized, means the regulations
international design application shall contain—
established by the Director under this title;
(1) a request for international registration under the
(3) the terms "designation", "designating", and
treaty;
"designate" refer to a request that an international registration
have effect in a Contracting Party to the treaty; (2) an indication of the designated Contracting Parties;
(4) the term "International Bureau" means the (3) data concerning the applicant as prescribed in the
international intergovernmental organization that is recognized treaty and the Regulations;
as the coordinating body under the treaty and the Regulations;
(4) copies of a reproduction or, at the choice of the
(5) the term "effective registration date" means the date applicant, of several different reproductions of the industrial
of international registration determined by the International design that is the subject of the international design application,
Bureau under the treaty; presented in the number and manner prescribed in the treaty and
the Regulations;
(6) the term "international design application" means
an application for international registration; and (5) an indication of the product or products that
constitute the industrial design or in relation to which the
(7) the term "international registration" means the
industrial design is to be used, as prescribed in the treaty and
international registration of an industrial design filed under the
the Regulations;
treaty.
(6) the fees prescribed in the treaty and the Regulations;
(b) RULE OF CONSTRUCTION.—Terms and expressions
and
not defined in this part are to be taken in the sense indicated by
the treaty and the Regulations. (7) any other particulars prescribed in the Regulations.

(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a) (Added Dec. 18, 2012, Public Law 112-211, sec. 101(a)
(effective May 13, 2015), 126 Stat. 1527.) (effective May 13, 2015), 126 Stat. 1528.)

35 U.S.C. 382 Filing international design applications. 35 U.S.C. 384 Filing date.
(a) IN GENERAL.—Any person who is a national of the (a) IN GENERAL.—Subject to subsection (b), the filing
United States, or has a domicile, a habitual residence, or a real date of an international design application in the United States
and effective industrial or commercial establishment in the shall be the effective registration date. Notwithstanding the
United States, may file an international design application by provisions of this part, any international design application
submitting to the Patent and Trademark Office an application designating the United States that otherwise meets the
in such form, together with such fees, as may be prescribed by requirements of chapter 16 may be treated as a design application
the Director. under chapter 16.
(b) REQUIRED ACTION.—The Patent and Trademark (b) REVIEW.—An applicant may request review by the
Office shall perform all acts connected with the discharge of its Director of the filing date of the international design application
duties under the treaty, including the collection of international in the United States. The Director may determine that the filing
fees and transmittal thereof to the International Bureau. Subject date of the international design application in the United States
to chapter 17, international design applications shall be is a date other than the effective registration date. The Director
forwarded by the Patent and Trademark Office to the may establish procedures, including the payment of a surcharge,
International Bureau, upon payment of a transmittal fee. to review the filing date under this section. Such review may

L-89 Rev. 08.2017, January 2018

§ 385 MANUAL OF PATENT EXAMINING PROCEDURE

result in a determination that the application has a filing date in and under such conditions, including a requirement for payment
the United States other than the effective registration date. of the fee specified in section 41(a)(7), as may be prescribed by
the Director.
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a), 126
Stat. 1529.)
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a)
35 U.S.C. 385 Effect of international design application. (effective May 13, 2015), 126 Stat. 1530.)

An international design application designating the United States 35 U.S.C. 388 Withdrawn or abandoned international
shall have the effect, for all purposes, from its filing date design application.
determined in accordance with section 384, of an application
for patent filed in the Patent and Trademark Office pursuant to Subject to sections 384 and 387, if an international design
chapter 16. application designating the United States is withdrawn,
renounced or canceled or considered withdrawn or abandoned,
either generally or as to the United States, under the conditions
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a)
of the treaty and the Regulations, the designation of the United
(effective May 13, 2015), 126 Stat. 1529.)
States shall have no effect after the date of withdrawal,
35 U.S.C. 386 Right of priority. renunciation, cancellation, or abandonment and shall be
considered as not having been made, unless a claim for benefit
(a) NATIONAL APPLICATION.—In accordance with the of a prior filing date under section 386(c) was made in a national
conditions and requirements of subsections (a) through (d) of application, or an international design application designating
section 119 and section 172, a national application shall be the United States, or a claim for benefit under section 365(c)
entitled to the right of priority based on a prior international was made in an international application designating the United
design application that designated at least 1 country other than States, filed before the date of such withdrawal, renunciation,
the United States. cancellation, or abandonment. However, such withdrawn,
renounced, canceled, or abandoned international design
(b) PRIOR FOREIGN APPLICATION.—In accordance
application may serve as the basis for a claim of priority under
with the conditions and requirements of subsections (a) through
subsections (a) and (b) of section 386, or under subsection (a)
(d) of section 119 and section 172 and the treaty and the
or (b) of section 365, if it designated a country other than the
Regulations, an international design application designating the
United States.
United States shall be entitled to the right of priority based on
a prior foreign application, a prior international application as
defined in section 351(c) designating at least 1 country other (Added Dec. 18, 2012, Public Law 112-211, sec. 101(a)
than the United States, or a prior international design application (effective May 13, 2015), 126 Stat. 1530.)
designating at least 1 country other than the United States.
35 U.S.C. 389 Examination of international design
(c) PRIOR NATIONAL APPLICATION.—In accordance application.
with the conditions and requirements of section 120, an
international design application designating the United States (a) IN GENERAL.—The Director shall cause an
shall be entitled to the benefit of the filing date of a prior national examination to be made pursuant to this title of an international
application, a prior international application as defined in section design application designating the United States.
351(c) designating the United States, or a prior international (b) APPLICABILITY OF CHAPTER 16.—All questions
design application designating the United States, and a national of substance and, unless otherwise required by the treaty and
application shall be entitled to the benefit of the filing date of a Regulations, procedures regarding an international design
prior international design application designating the United application designating the United States shall be determined
States. If any claim for the benefit of an earlier filing date is as in the case of applications filed under chapter 16.
based on a prior international application as defined in section
351(c) which designated but did not originate in the United (c) FEES.—The Director may prescribe fees for filing
States or a prior international design application which international design applications, for designating the United
designated but did not originate in the United States, the Director States, and for any other processing, services, or materials
may require the filing in the Patent and Trademark Office of a relating to international design applications, and may provide
certified copy of such application together with a translation for later payment of such fees, including surcharges for later
thereof into the English language, if it was filed in another submission of fees.
language. (d) ISSUANCE OF PATENT.—The Director may issue a
(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a) patent based on an international design application designating
(effective May 13, 2015), 126 Stat. 1529.) the United States, in accordance with the provisions of this title.
Such patent shall have the force and effect of a patent issued on
35 U.S.C. 387 Relief from prescribed time limits. an application filed under chapter 16.

An applicant’s failure to act within prescribed time limits in (Added Dec. 18, 2012, Public Law 112-211, sec. 101(a)
connection with requirements pertaining to an international (effective May 13, 2015), 126 Stat. 1530.)
design application may be excused as to the United States upon
a showing satisfactory to the Director of unintentional delay

Rev. 08.2017, January 2018 L-90

 PATENT LAWS § 102, 103)

35 U.S.C. 390 Publication of international design

application. office of the Congress, consistent with applicable rules of the
House or Senate.
The publication under the treaty of an international design
(Amended Sept. 13, 1994, Public Law 103-322, sec.
application designating the United States shall be deemed a
330016(1)(L), 108 Stat. 2147; Oct. 11, 1996, Public Law
publication under section 122(b).
104-292, Sec. 2, 110 Stat. 3459.)

(Added Dec. 18, 2012, Public Law 112-211, sec. 101(a)

(Subsection (a) amended Dec. 17, 2004, Public Law 108-458,
(effective May 13, 2015), 126 Stat. 1530.)
sec. 6703(a), 118 Stat. 3766; July 27, 2006, Public Law 109-248,
sec. 141(c), 120 Stat. 603.)
SELECTED PROVISIONS OF OTHER TITLES
OF THE UNITED STATES CODE 18 U.S.C. 2071 Concealment, removal, or mutilation
generally.
SELECT PROVISIONS OF TITLE 18, UNITED (a) Whoever willfully and unlawfully conceals, removes,
STATES CODE 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
Sec. any public office, or with any judicial or public officer of the
1001 Statements or entries generally. United States, shall be fined under this title or imprisoned not
2071 Concealment, removal, or mutilation more than three years, or both.
generally. (b) Whoever, having the custody of any such record,
proceeding, map, book, document, paper, or other thing, willfully
18 U.S.C. 1001 Statements or entries generally. and unlawfully conceals, removes, mutilates, obliterates,
(a) Except as otherwise provided in this section, whoever, falsifies, or destroys the same, shall be fined under this title or
in any matter within the jurisdiction of the executive, legislative, imprisoned not more than three years, or both; and shall forfeit
or judicial branch of the Government of the United States, his office and be disqualified from holding any office under the
knowingly and willfully— United States. As used in this subsection, the term “office” does
not include the office held by any person as a retired officer of
(1) falsifies, conceals, or covers up by any trick, the Armed Forces of the United States.
scheme, or device a material fact;
(Amended Nov. 5, 1990, Public Law 101-510, sec. 552(a), 104
(2) makes any materially false, fictitious, or fraudulent
Stat. 1566; Sept. 13, 1994, Public Law 103-322, sec.
statement or representation; or
330016(1)(I), 108 Stat. 2147.)
(3) makes or uses any false writing or document
knowing the same to contain any materially false, fictitious, or
UNCODIFIED LAW
fraudulent statement or entry;
shall be fined under this title, imprisoned not more than 5 years
or, if the offense involves international or domestic terrorism SELECT UNCODIFIED AIA PROVISIONS
(as defined in section 2331), imprisoned not more than 8 years,
or both. If the matter relates to an offense under chapter 109A,
109B, 110, or 117, or section 1591, then the term of Sec.
imprisonment imposed under this section shall be not more than
8 years.
102, 103) Tax strategies deemed within the
prior art.
(b) Subsection (a) does not apply to a party to a judicial
proceeding, or that party’s counsel, for statements,
321) Transitional program for covered business
representations, writings or documents submitted by such party method patents.
or counsel to a judge or magistrate in that proceeding. 101) —Limitation on issuance of patents.
(c) With respect to any matter within the jurisdiction of the
legislative branch, subsection (a) shall apply only to —
AIA § 14 (Related to 35 U.S.C. 102, 103) Tax strategies
(1) administrative matters, including a claim for deemed within the prior art.
payment, a matter related to the procurement of property or
services, personnel or employment practices, or support services, (a) IN GENERAL.—For purposes of evaluating an
or a document required by law, rule, or regulation to be invention under section 102 or 103 of title 35, United States
submitted to the Congress or any office or officer within the Code, any strategy for reducing, avoiding, or deferring tax
legislative branch; or liability, whether known or unknown at the time of the invention
or application for patent, shall be deemed insufficient to
(2) any investigation or review, conducted pursuant to differentiate a claimed invention from the prior art.
the authority of any committee, subcommittee, commission or
(b) DEFINITION.—For purposes of this section, the term
‘‘tax liability’’ refers to any liability for a tax under any Federal,

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§ 321) MANUAL OF PATENT EXAMINING PROCEDURE

State, or local law, or the law of any foreign jurisdiction,

including any statute, rule, regulation, or ordinance that levies,
imposes, or assesses such tax liability. (II) would be described by pre-AIA 35
U.S.C. 102(a) if the disclosure had been made by another before
(c) EXCLUSIONS.—This section does not apply to that the invention thereof by the applicant for patent.
part of an invention that—
(D) The petitioner in a transitional proceeding that
(1) is a method, apparatus, technology, computer results in a final written decision under 35 U.S.C. 328(a), with
program product, or system, that is used solely for preparing a respect to a claim in a covered business method patent, or the
tax or information return or other tax filing, including one that petitioner’s real party in interest, may not assert, either in a civil
records, transmits, transfers, or organizes data related to such action arising in whole or in part under section 1338 of title 28,
filing; or United States Code, or in a proceeding before the International
(2) is a method, apparatus, technology, computer Trade Commission under section 337 of the Tariff Act of 1930
program product, or system used solely for financial (19 U.S.C. 1337), that the claim is invalid on any ground that
management, to the extent that it is severable from any tax the petitioner raised during that transitional proceeding.
strategy or does not limit the use of any tax strategy by any (E) The Director may institute a transitional
taxpayer or tax advisor. proceeding only for a patent that is a covered business method
(d) RULE OF CONSTRUCTION.—Nothing in this section patent.
shall be construed to imply that other business methods are (b) REQUEST FOR STAY.—
patentable or that other business method patents are valid.
(1) IN GENERAL.—If a party seeks a stay of a civil
(e) EFFECTIVE DATE; APPLICABILITY.—This section action alleging infringement of a patent under section 281 of
shall take effect on [Sept. 16, 2011] and shall apply to any patent title 35, United States Code, relating to a transitional proceeding
application that is pending on, or filed on or after, that date, and for that patent, the court shall decide whether to enter a stay
to any patent that is issued on or after that date. based on—
(Sept. 16, 2011, Public Law 112-29, sec. 14, 125 Stat. 284.) (A) whether a stay, or the denial thereof, will
simplify the issues in question and streamline the trial;
AIA § 18 (Related to 35 U.S.C. 321) Transitional program
for covered business method patents. (B) whether discovery is complete and whether a
trial date has been set;
(a) TRANSITIONAL PROGRAM.—
(C) whether a stay, or the denial thereof, would
(1) ESTABLISHMENT.—Not later than Sept. 16, unduly prejudice the nonmoving party or present a clear tactical
2012, the Director shall issue regulations establishing and advantage for the moving party; and
implementing a transitional post-grant review proceeding for
review of the validity of covered business method patents. The (D) whether a stay, or the denial thereof, will
transitional proceeding implemented pursuant to this subsection reduce the burden of litigation on the parties and on the court.
shall be regarded as, and shall employ the standards and (2) REVIEW.—A party may take an immediate
procedures of, a post-grant review under chapter 32 of title 35, interlocutory appeal from a district court’s decision under
United States Code, subject to the following: paragraph (1). The United States Court of Appeals for the
(A) 35 U.S.C. 321(c) and 35 U.S.C. 325(b), (e)(2), Federal Circuit shall review the district court’s decision to ensure
and (f), shall not apply to a transitional proceeding. consistent application of established precedent, and such review
may be de novo.
(B) A person may not file a petition for a
transitional proceeding with respect to a covered business (c) ATM EXEMPTION FOR VENUE PURPOSES.—In
method patent unless the person or the person’s real party in an action for infringement under section 281 of title 35, United
interest or privy has been sued for infringement of the patent or States Code, of a covered business method patent, an automated
has been charged with infringement under that patent. teller machine shall not be deemed to be a regular and
established place of business for purposes of section 1400(b) of
(C) A petitioner in a transitional proceeding who title 28, United States Code.
challenges the validity of 1 or more claims in a covered business
method patent on a ground raised under 35 U.S.C. 102 or 103 (d) DEFINITION.—
as in effect on March 15, 2013 (pre-AIA 35 U.S.C. 102 or 103), (1) IN GENERAL.—For purposes of this section, the
may support such ground only on the basis of— term ‘‘covered business method patent’’ means a patent that
(i) prior art that is described by pre-AIA 35 claims a method or corresponding apparatus for performing data
U.S.C. 102(a); or processing or other operations used in the practice,
administration, or management of a financial product or service,
(ii) prior art that— except that the term does not include patents for technological
(I) discloses the invention more than 1 inventions.
year before the date of the application for patent in the United (2) REGULATIONS.—To assist in implementing the
States; and transitional proceeding authorized by this section, the Director
shall issue regulations for determining whether a patent is for a
technological invention.

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 PATENT LAWS § INDEX

(e) RULE OF CONSTRUCTION.—Nothing in this section

shall be construed as amending or interpreting categories of
patent-eligible subject matter set forth under 35 U.S.C. 101.

(Sept. 16, 2011, Public Law 112-29, sec. 18, 125 Stat. 284,
corrected Jan. 14, 2013, Public Law 112-274, sec. 1(b), 126
Stat. 2456.)

AIA § 33 (Related to 35 U.S.C. 101) —Limitation on

issuance of patents.
(a) LIMITATION.—Notwithstanding any other provision
of law, no patent may issue on a claim directed to or
encompassing a human organism.
(b) EFFECTIVE DATE.—
(1) IN GENERAL.— Subsection (a) shall apply to any
application for patent that is pending on, or filed on or after, the
date of the enactment of this Act [Sept. 16, 2011].
(2) PRIOR APPLICATIONS.—Subsection (a) shall
not affect the validity of any patent issued on an application to
which paragraph (1) does not apply.

(Sept. 16, 2011, Public Law 112-29, sec. 33, 125 Stat. 284.)

U.S.C. INDEX

[Follows on the next page]

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 § INDEX MANUAL OF PATENT EXAMINING PROCEDURE

Applicant for foreign patent, license required .........

INDEX OF PATENT LAWS
.......................................................................... 184
Applicant, notified of interference ..........................
A ......................................................... 135 (pre-AIA)
Abandoned applications, fee on petition to revive .. Application:
............................................................. 27, 41(a)(7) Abandonment of, by failure to prosecute .. 133
Abandonment of application by failure to prosecute Assignment of .......................................... 261
.................................................................. 133, 371 Confidential while pending ...................... 122
Abandonment of invention: Continuing ................................................ 120
Bar to patent ............................ 102 (pre-AIA) Description; specification and claim ........ 112
By violation of secrecy ............................ 182 Divisional ................................................ 121
Adjustment of patent term .......... .............. 154(b) Drawings .................................................. 113
Administrative Patent Judges ............ ................ 6 Effect of defective execution ...................... 26
Administrator, executor, or guardian ..... ......... 117 Effective as of date of earliest foreign application
Advice of counsel with respect to infringement ...... in certain cases ...................................... 119
.......................................................................... 298 Examination of invention ........................ 131
Affidavits and depositions in contested cases, rules Fee on filing .............................. 41(a)(1), 111
for taking .......................... .............................. 23 For deceased or legally incapacitated inventors
Agreement to terminate derivation proceeding ....... .................................................................... 117
.......................................................................... 135 May be made by legal representative of deceased
Agreement to terminate interference ....................... or legally incapacitated inventor ............ 117
......................................................... 135 (pre-AIA) Must be made within specified time after foreign
Agriculture, Secretary of, to furnish information, and application for right of priority .............. 119
detail employees to Director for plant patent ........ Oath of inventor (See Oath in patent application)
.......................................................................... 164 Owned by Government ............................ 267
Allowance and issue of patents ......... ............. 153 Provisional .......................................... 111(b)
Allowance, notice of ................. ..................... 151 Publication .......................... 102, 122(b), 181
Amendment: Reissue .................................................... 251
Copying claim of issued patent ......................... Secrecy order ............................................ 181
................................................... 135 (pre-AIA) What to contain ........................................ 111
Time for .............. .................. 133, 135 (pre-AIA) When filed by other than inventor .... 118, 121
Annual indexes of patents .............. .................. 10 Appointments, how made ............... ................... 3
Annual report of the Director ........... ............... 13 Arbitration of derivation proceeding ..... ......... 135
Apostille on assignment .............. .................. 261 Arbitration of interferences ... ....... 135 (pre-AIA)
Appeals to Patent Trial and Appeal Board ...... 134 Arbitration, voluntary ................ .................... 294
Fee ............................................ 41(a)(6), 134 Article patented marked with number of patent ......
Hearing of .................................................... 6 .......................................................................... 287
Reexamination proceedings .................... 306 Assignee:
Appeals to Court of Appeals for the Federal Circuit May file application in certain cases ..... ......... 118
.......................................................................... 141 May file divisional application ................ 121
Certificate of decision of Court recorded in the May file reissue application .................... 251
United States Patent and Trademark Office .... Patent may be issued to ............................ 152
.................................................................... 144 Assignments, patent ........................................ 261
Determination of Appeal; revision of decision . Establishing prima facie execution of .... ........ 261
.................................................................... 144 Fees for recording ............................ 41(d)(2)
From Patent Trial and Appeal Board ........ 141 Must be recorded in United States Patent and
Grounds of decision to be furnished court ........ Trademark Office to issue patent to assignee ..
.................................................................... 143 .................................................................... 152
Notice of appeal ...................................... 142 Patent may issue to assignee .................... 152
Proceedings on appeal .............................. 143 Recording in Patent and Trademark Office .......
.................................................................... 261

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 PATENT LAWS § INDEX

Attorney fees in infringement suit ....... ........... 285 Commerce, Department of, United States Patent and
Attorneys and agents: Trademark Office in .......................................... 1
May be refused recognition for misconduct ..... Commerce, Secretary of:
...................................................................... 32 Appointments by .......................................... 3
Petition to District Court, Eastern District of Commissioner for Patents:
Virginia .................................................... 32 How appointed and duties ............................ 3
Suspension or exclusion from practice ...... 32 Member of Board ........................................ 6
Unauthorized practitioners ........................ 33 Common ownership under joint research agreements
............................................. 102(c), 103 (pre-AIA)
B
Compensation, right to because of secrecy order ....
Bars to grant of a patent ...... .......... 102 (pre-AIA) .......................................................................... 183
Benefit of earlier filing date in foreign country ....... Composition of matter:
.......................................................................... 119 Patentable ................................................ 101
Benefit of earlier filing date in United States .. 120 Specimens of ingredients may be required .......
Best mode required .................. ...................... 112 .................................................................... 114
Bill in equity (See Civil action) Concealment of records ...... .......... 18 U.S.C. 2071
Board of Patent Appeals and Interferences (See Patent Confidential status of application ... ....... 122, 205
Trial and Appeal Board) ............... ................... 6 Continuing application ............... ................... 120
Contributory infringement ............. ................. 271
C Copies of records, fees ............ ................ 41(d)(2)
Certificate of correction: Correction of inventors in patent ........ ............ 256
Applicant mistake .................................... 255 Correction of letters patent ........ ............ 254, 255
Office mistake .......................................... 254 D
Certified copies:
Of drawings and specifications of patents issued Damages for infringement ............. ................. 284
........................................................................ 9 Day of taking any action or paying any fee falling on
Of records, furnished to Court of Appeals for the Saturday, Sunday, or holiday ........... ............... 21
Federal Circuit in appeals ...................... 143 Death or legal incapacity of inventor .............. 117
Citation of prior art in patent ........... ............... 301 Decisions in patent cases, printing of ..... ......... 10
Civil action: Declaration in lieu of oath .............. .................. 25
Election of in case of derivation proceeding ..... Dedication of term ................... ....................... 253
.................................................................... 141 Defective execution of documents, effect of .... 26
Infringement ............................................ 291 Defenses in action for infringement ..... ......... 282
In case of derivation proceeding .............. 146 Definitions ................. ..................... 100, 201, 351
Jurisdiction, plurality of parties, foreign party .. Derived patents:
.................................................................... 146 Civil action ...................................... 146, 291
To obtain patent ........................................ 145 Jurisdiction ...................................... 146, 291
Claim of patent: Time limit for filing for relief .................. 291
Independent or dependent ........ 41(a)(2), 112 Deposit with United States Postal Service . ..... 21
Independent or dependent, validity .......... 282 Depositions, Director may establish rules for ... 23
Invalid, effect of ...................................... 253 Deputy Commissioner .................. ...................... 6
Invalid, suits on patent with .................... 288 Member of Board ........................................ 6
Notice of rejection .................................... 132 Description of invention .............. .................. 112
Too extensive or narrow, remedy ............ 251 Design patents:
What to cover .......................................... 112 Double recovery, not allowed .................. 289
Classification of patents ................ .................... 8 Fees ............................................................ 41
Clerk of United States Court may summon witness For what granted ...................................... 171
in Liability for infringement of .................... 289
Contested cases .......................................... 24 Penalty for unauthorized use of patented design
Must notify Director of patent suits ........ 290 .................................................................... 289
Prior foreign applications ........................ 172

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 § INDEX MANUAL OF PATENT EXAMINING PROCEDURE

Right of priority ...................................... 172

E
Subject to same provisions as other patents ......
.................................................................... 171 Effective filing date, definition ......... ............. 100
Term of .................................................... 173 Elected office ................... ....................... 371, 372
Unauthorized use of ................................ 289 Employees of United States Patent and Trademark
Designated office ..................................................... Office .............................. .................................. 3
.......... 363, 366, 367, 371, 372, 381, 386, 389, 390 How appointed ............................................ 3
Determination of patent term adjustment . ..... 154 Restrictions on as to interest in patents ........ 4
Director: English language .................... ........................ 361
Annual report to Congress ........................ 13 Entry into national phase in United States .... 371
Consult with Patent Public Advisory Committee Error in naming inventors ............. ................. 116
........................................................................ 3 Establishment, United States Patent and Trademark
Duties of ...................................................... 6 Office .............................. .................................. 1
How appointed ............................................ 3 Examination:
Intellectual Property Policy Issues, advises Applicants shall be notified of rejection on ......
President, Federal Departments ................ 2 .................................................................... 132
May disbar attorneys .................................. 32 To be made of application and alleged invention
May establish charges ................................ 41 .................................................................... 131
May make rules for taking affidavits and Exceptions to prior art ................................ 102(b)
depositions ................................................ 23 Exchange of United States Patent and Trademark
Member of Board ........................................ 6 Office Publications for other publications ...... 10
Reexamination order ................................ 304 Exchange of printed copies of patents and published
Shall cause examination to be made ........ 131 application of patents with foreign countries ... 11
To establish regulations ................................ 3 Executors, administrators or guardians ... ....... 117
To furnish court with grounds of decision, on Extension of time to reply fee ...... .......... 41(a)(8)
appeal .................................................... 143
To prescribe rules and regulations governing F
recognition of attorneys and agents ............ 2 Falsely making or labeling articles as patented .......
To sign patents or have name printed thereon and .......................................................................... 292
attested .................................................... 153 Federal agency, defined ............... ................... 201
To superintend grant of patents .................... 3 Federal Assistance, inventions made with:
Disbarment of attorneys and agents .................. 32 Confidentiality ........................................ 205
Disclaimer: Definitions ................................................ 201
Fee .................................................... 41(a)(5) Disposition of rights ................................ 202
How filed and by whom .......................... 253 Domestic and foreign protection of federally
Must be filed before commencement of suit to owned inventions .................................... 207
recover costs .......................................... 288 Educational awards .................................. 212
Nature of .................................................. 253 March-in rights ........................................ 203
Disclosure, inventor initiated ........ ............ 102(b) Policy and objective of ............................ 200
District Court for Eastern District of Virginia: Precedence of chapter over other Acts .... 210
Jurisdiction .............................................. 146 Preference for United States industry ...... 204
Review of disbarment of attorneys and agents .. Regulations governing Federal licensing .. 208
...................................................................... 32 Relationship to antitrust laws .................. 211
Division of application ............... ................... 121 Restrictions on licensing of federally owned
Division of patent on reissue ........... ............... 251 inventions .............................................. 209
Drawing: Uniform clauses and regulations .............. 206
Attached to patent .................................... 154 Fees:
Part of patent ............................................ 154 Amount of .................................................. 41
Printing of .................................................. 10 For attorney awarded by court ................ 285
When necessary ...................................... 113 For records, publications, and services not
Duties of Director ..................... ......................... 3 specified in statute .......................... 41(d)(2)

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 PATENT LAWS § INDEX

How paid and refunded .............................. 42 Injunction ................................................ 283

Independent inventor, reduction ............ 41(h) Notice of, necessary to recovery of damages ....
International .................................... 361, 376 .................................................................... 287
Nonprofit organization, reduction ........ 41(h) Pleading defense and special matters to be proved
Payable to Director ................................ 42(a) in suit ...................................................... 282
Small business, reduction ...................... 41(h) Suit for, when a claim is invalid .............. 288
Small entity, reduction .................. 41(h), 133 Temporary presence in United States ...... 272
To witness contested cases ........................ 24 Time limitation ........................................ 286
Filing application by other than inventor ........ 118 Injunctions may be granted by court having
Filing date requirements .............. .................. 111 jurisdiction ........................ ............................ 283
Filing fee, Amount of ............. ................. 41(a)(1) Interference, patent:
Foreign applications: Agreements, between parties, relating to
License to file required ............................ 184 termination, to be filed in Patent and Trademark
Penalty for filing without license .... 185, 186 Office .................................... 135 (pre-AIA)
Foreign countries, exchange of printed copies of Appeal to court ...................... 141 (pre-AIA)
patents and published application of patents with . Arbitration .............................. 135 (pre-AIA)
............................................................................ 11 Determination of priority ..................................
Foreign patentee: ......................... 102 (pre-AIA), 135 (pre-AIA)
Jurisdiction .............................................. 293 Parties to be notified of .......... 135 (pre-AIA)
Service ...................................................... 293 Review of decision by civil action ....................
Foreign patents: ......................... 145 (pre-AIA), 146 (pre-AIA)
Copies of, exchanged for United States patents Rules for taking testimony ........................ 23
and published application of patents ........ 11 International application .. 351, 365, 366, 367, 375
Prior, effect on United States application for Fees .......................................................... 376
patent ...................................................... 102 National phase in United States .............. 371
Foreign priority ............ ................ 119(a)-(d), 365 Priority rights .......................................... 365
Fraudulent statements ....... ........... 18 U.S.C. 1001 International Bureau ..... ......... 351, 361, 362, 371
Funding agreement, defined ........... ............... 201 International Design Application:
Application Requirements ...................... 383
G
Examination ............................................ 389
Government interests in patents ........ ............ 267 Filing ........................................................ 382
.................................................................. 384
H Priority .................................................... 386
Holiday, time for action expiring on ...... .......... 21 Publication .............................................. 390
International Preliminary Examining Authority ......
I .......................................................... 362, 364, 368
Importation of products made by a patented process International Searching Authority ...........................
.......................................................................... 295 .................................................. 351, 362, 364, 368
Improvements, patents may be granted for .... 101 International studies ................... ....................... 2
Indexes of patents and patentees, printing of .... 10 Inter partes review:
Infringement, patent: Action for ........ ............ 281 Appeal of .................................................. 319
Attorney fees ............................................ 285 Conduct of ................................................ 316
By United States, time limitation in suit for ..... Decision of the Board .............................. 318
.................................................................... 286 Notice ...................................................... 314
Clerk of court to notify United States Patent and Petitions requirements .............................. 312
Trademark Office of suit ........................ 290 Preliminary response to petition .............. 313
Contributory ............................................ 271 Relation to other proceedings .................. 315
Damages for ............................................ 284 Request .................................................... 311
Defenses in suit for .......................... 273, 282 Settlement ................................................ 317
Defined .................................................... 271 Intervening rights on reissue ........... ............... 252
Design patent .......................................... 289 Invalid patent claim disclaimer ......... ............. 288

L-97 Rev. 08.2017, January 2018

 § INDEX MANUAL OF PATENT EXAMINING PROCEDURE

Invalidity of term extension ............ ................ 282 Micro entity defined .................. ...................... 123
Invention, defined ................... ....................... 100 Misjoinder of inventor ........ ............ 116, 202, 256
Inventions promotion, improper and deceptive ....... Mistake in patent, certificate thereof issued ............
.......................................................................... 297 .................................................................. 254, 255
Inventions in outer space .............. .................. 105 Model, shall be furnished if required .... ........ 114
Inventions patentable ................. ..................... 101 Money:
Inventions previously patented ......... ............. 102 Paid by mistake or in excess, refunded ...... 42
Inventor: Received for fees, etc. to be paid into Treasury
Correction of patent ................................ 256 ...................................................................... 42
Death or legal incapacity .......................... 117 Multiple dependent claim ............. ................. 112
Definition ................................................ 100 Fee .................................................... 41(a)(2)
Disclosure ............................................ 102(b) Mutilation of records ........ ............ 18 U.S.C. 2071
May obtain patent .................................... 101
N
Oath for joint ............................................ 116
Refuses to sign ........................................ 118 National Security ............. ................. 3, 122, 181
To make application ................................ 111 National stage of international application ..............
Inventors certificate priority right ....... ........... 119 .................................................................. 371, 372
Issue of patent ...................... .......................... 151 New matter inadmissible in reissue ...... .......... 251
Issue fee ....................... ........................... 41(a)(4) New matter, may not be introduced by amendment
If not paid within three months, patent withheld .......................................................................... 132
.................................................................... 151 Nonjoinder of inventor ............... ................... 256
Nonpayment .................................. 41(c), 151 Nonobviousness ..................... ......................... 103
Payment of .............................................. 151 Nonprofit organization, defined ........ ............ 201
Nonresident patentee ................. ..................... 293
J
Notice as regards patents:
Joinder of parties in patent cases ........ ............ 299 As to proof in infringement suits ............ 282
Joint inventors .............. .................. 100, 116, 256 Of allowance of patent ............................ 151
Joint owners ........................ ............................ 262 Of appeal to the Court of Appeals for the Federal
Joint research agreement defined ....... ........... 100 Circuit ............................................ 142, 143
Joint research agreement, common ownership under Of patent suit, decision to be given United States
...................................................................... 102(c) Patent and Trademark Office by clerk of court
Jurisdiction of District Court for the Eastern District .................................................................... 290
of Virginia ......... ............. 32, 145, 146, 154, 293 Of rejection of an application .................. 132
Of suit to be entered on file of patent ...... 290
L
To the public by Federal agency .............. 209
Legal representative of deceased or legally To the public that invention is patented .... 287
incapacitated inventor ............... ................... 117 Novelty ........................... ............................... 102
Liability of States ................... ....................... 296
O
Libraries, public, copies of patents and published
applications for patents for ....... ........... 12, 41(d) Oath in patent application ......... ............. 115, 152
Library .............................. .................................. 7 Before whom taken in foreign countries ...........
License for foreign filing ................................ 184 .............................................................. 25, 115
Limitation on damages ....... ........... 154, 286, 287 Before whom taken in the United States ... 115
Declaration in lieu of ................................ 25
M
Joint inventors .......................................... 116
Machines patentable ................. ..................... 100 Made by inventor .................................... 115
Maintenance fees .................. ...................... 41(b) Requirements of ...................................... 115
Late payment ........................................ 41(c) To be made by legal representative if inventor is
Manufactures patentable .............. .................. 101 deceased or legally incapacitated .... 115, 117
Marking articles falsely as patented ..... ......... 292 Obviousness ........................ ............................ 103
Marking articles patented ............. ................. 287

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 PATENT LAWS § INDEX

Officer of United States Patent and Trademark Office Fee on issuing ............................................ 41
may attest patents .......................................... 153 Filing application in foreign country ...... 184
Officers and employees: For what granted ...................................... 101
Of United States Patent and Trademark Office . How issued, attested, and recorded .......... 153
........................................................................ 3 May be granted to assignee ...................... 152
Of United States Patent and Trademark Office, May be withheld in certain cases ............ 181
restrictions on as to interests in patents ...... 4 Obtainable by civil action ........................ 145
Official Gazette: Personal property .................................... 261
Exchange for publications .......................... 11 Presumption of validity ............................ 282
Printing and distribution of ........................ 11 Price of copies .................................. 41(d)(2)
Public Advisory Committee Report ............ 5 Printing of .................................................. 10
Owners, joint ....................... ........................... 262 Reissuing of, when defective .................. 251
Ownership interest, recordation of ...... .......... 261 Rights of invention made with federal assistance
.......................................................... 200 - 212
P
Restrictions on officers and employees of United
Paris Convention .................... ........................ 119 States Patent and Trademark Office as to interest
Patent and Trademark Office: See United States in ................................................................ 4
Patent and Trademark Office Surrender of, to take effect on reissue ...... 251
Patent Cooperation Treaty: Term ................................................ 154, 156
Definitions ................................................ 351 Term adjustment ...................................... 154
Patent fees .......................... .............................. 41 Term extension ........................................ 156
Disposition of ............................................ 42 Time of issue, payment of issue fee ........ 151
Patent laws, printing of ................ .................... 10 To be authenticated by seal of United States
Patent pending, false marking as ........ ............ 292 Patent and Trademark Office ...................... 2
Patent Public Advisory Committee ...... .......... 3, 5 When to issue .......................................... 151
Appointment, timing and basis .................... 5 Withheld for nonpayment of issue fee .... 151
Duties .......................................................... 5 Patent rights in inventions made with Federal
Consultation with Director ...................... 3, 5 assistance ...................... .......................... 200-212
Patent term adjustment ............... ................... 154 Confidentiality ........................................ 205
Patent term extension application ....... ........... 156 Definitions ................................................ 201
Patentability, conditions for ........ ............ 102, 103 Disposition of rights ................................ 202
Patentable inventions ................. ..................... 101 Domestic and foreign protection of federally
Patented article, marked as such ........ ............ 287 owned inventions .................................... 207
Patent Trial and Appeal Board, how constituted ..... Educational awards .................................. 212
.............................................................................. 6 March-in rights ........................................ 203
Patentee: Policy and objective of ............................ 200
Defined .................................................... 100 Precedence of chapter over other Acts .... 210
Patents: Preference for United States industry ...... 204
Application for ........................................ 111 Regulations governing federal licensing ... 208
Assignment of .......................................... 261 Relationship to antitrust laws .................. 211
Based on international application .......... 375 Restrictions on licensing of federally owned
Certified copies of ........................................ 9 inventions .............................................. 209
Classification of .......................................... 8 Uniform clauses and regulations .............. 206
Contents and duration of .......................... 154 Period for response ............... ................... 21, 133
Copies supplied to public libraries .................... Photolithography, Headings of drawings printed ....
...................................................... 12, 41(d)(2) ............................................................................ 10
Date, duration, and form .......................... 154 Plant patents:
Design (See Design Patents or International Claim ................................................ 162, 164
Design Applications) Description ...................................... 162, 163
Exchange of printed copies with foreign Fees ............................................................ 41
countries .................................................. 11 Nature of right .......................................... 163

L-99 Rev. 08.2017, January 2018

 § INDEX MANUAL OF PATENT EXAMINING PROCEDURE

Plants patentable ...................................... 161 Publications regarding patents and trademarks .......
Secretary of Agriculture to furnish information ............................................................................ 10
and detail employees .............................. 164
R
Pleading and proof in action for infringement ........
.......................................................................... 282 Receiving Office .... ........ 351, 361, 364, 367, 368
Post-grant review: Recording of assignments ............. ................. 261
Appeal of .......................... .............................. 329 Reexamination order by Director ............................
Conduct of ......................... ............................. 326 ................................................. 304, 313 (pre-AIA)
Decision of the Board ................ .................... 328 Reexamination procedure:
Initiation of ........................ ............................ 321 Appeal ...............................................................
Notice ............................ ................................ 324 ........... 134, 141, 306, 315 (pre-AIA), 319, 329
Petitions requirements ................ .................... 322 Certificate of patentability, unpatentability, and
Preliminary response to petition ........ ............ 323 claim cancellation ........ 307, 316 (pre-AIA)
Relation to other proceedings .......... .............. 325 Conduct of reexamination proceedings .............
Settlement ......................... ............................. 327 ........................................... 305, 314 (pre-AIA)
Postal Service deposit ................. ..................... 21 Determination of issue by Director ...................
Practical application, defined .......... .............. 201 ........................................... 303, 312 (pre-AIA)
Pre-issuance opposition, when prohibited .... 122 Determination of new question .........................
Presumption of product made by patented process . ........................................... 303, 312 (pre-AIA)
.......................................................................... 295 Ex Parte ............................................ 302-307
Presumption of validity of patents .................. 282 Inter Partes ...... 311 (pre-AIA)-318 (pre-AIA)
Printed publication bar to a patent ........................... When prohibited .................. 317 (pre-AIA)
.................................................... 102(b) (pre-AIA) Reinstatement of proceedings .................... 27
Printing: Request .......................... 302, 311 (pre-AIA)
Decisions in patent cases .......................... 10 Special dispatch .............. 305, 314 (pre-AIA)
Of papers filed ............................................ 22 Stay of litigation ...................... 318 (pre-AIA)
United States Patent and Trademark Office ...... Reexamination to be made after first rejection, if
...................................................................... 10 desired ........................... ............................... 132
Printing headings of drawings by United States Patent References, to be cited on examination ... ....... 132
and Trademark Office ................ .................... 10 Refund of money paid by mistake or in excess .......
Prior art, defined .................... ........................ 102 ............................................................................ 42
Prior art, citation of .................. ...................... 301 Reissue of patents:
Prior commercial use as a defense to infringement . Application fee .......................................... 41
.......................................................................... 273 Application may be made by assignee in certain
Priority, foreign ............. ................. 119, 365, 386 cases ...................................................... 251
Priority, right of, under treaty or law .............. 119 By reason of defective claims .................. 251
For design applications .................... 172, 386 Effect of .................................................... 252
Process defined ..................... ......................... 100 For unexpired term of original patent ...... 251
Process Patent Amendment Act of 1988 .. ...... 287 Intervening rights .................................... 252
Process patentable ................... ....................... 101 Of defective patents .................................. 251
Product made by patent process ........ ............ 295 To contain no new matter ........................ 251
Property of United States Patent and Trademark Rejection, applicant shall be notified of reasons for
Office .............................. .................................. 2 .......................................................................... 132
Provisional applications ................ 111(b), 119(e) Remedy for infringement of patent ...... .......... 281
Provisional rights ................... ....................... 154 Removal of records ......... ............. 18 U.S.C. 2071
Protest and pre-issuance opposition, when prohibited Report to Congress, annual ............. ................. 13
............................... ................................... 122(c) Request for reexamination proceeding ....................
Public use or sale .................... ........................ 102 ................................................. 302, 311 (pre-AIA)
Publication of international application, effect ........ Restrictions on officers and employees of United
.......................................................................... 374 States Patent and Trademark Office as to interest in
Publication of patent applications ... ....... 122, 181 patents ............................. ................................. 4

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 PATENT LAWS § INDEX

Retention of revenue ................... ....................... 2 Limitation on damages ............................ 286

Revival if delay unintentional .......... .............. 133 Within which action must be taken .......... 133
Right of foreign priority .......... .............. 365, 386 Title of invention .................... ........................ 154
Right to compensation because of secrecy order ..... Trademark fees .................... ........................ 42(c)
.......................................................................... 183 Trademarks, reference to ......... ............. 1, 2, 3, 10
Rules for taking testimony, Director to establish .... Translation error in international application .. 375
............................................................................ 23
U
Rules of practice:
Authority for ................................................ 2 Unauthorized disclosure .............. .................. 182
Printing of .................................................. 10 Unauthorized person may not lawfully assist persons
in transaction of business before the Office .... 33
S
Under Secretary of Commerce for Intellectual
Saturday, time for action expiring on ..... ......... 21 Property ............................ ................................ 6
Seal of United States Patent and Trademark Office United States as designated office ...........................
.............................................................................. 2 ........................................... 363 381, 386, 389, 390
Secrecy of applications ............... ................... 122 United States, defined ................ .................... 100
Secrecy of certain inventions ...... .......... 181 - 188 United States Patent and Trademark Office:
Secrecy of international application ..... ......... 368 In Department of Commerce ...................... 1
Secrecy order ....................... ........................... 181 Library .......................................................... 7
Small business firm, defined ........... ............... 201 Printing ...................................................... 10
Small entity status ........... ............... 2(b)(2), 41(h) Rules, authority for ...................................... 2
Specification(s): Seal of .......................................................... 2
Contents of .............................................. 112 Unpatented article, penalty for deceptive marking ..
If defective, reissue to correct .................. 251 .......................................................................... 292
Part of patent ............................................ 154
V
Printing of .................................. 10, 41(d)(2)
Uncertified copies, price of .............. 41(d)(2) Verified translation requirement ........ ............ 372
Specimens, may be required ........... ............... 114 Voluntary arbitration ................. ..................... 294
Subpoenas to witnesses ................ .................... 24
Suit against the United States .......... .............. 286 W
Suit in equity (See Civil action) Withdrawal of international application .. ...... 366
Sunday, time for action expiring on .................. 21 Withdrawal of international design application .......
Supplemental examination ............ ................ 257 .......................................................................... 388
Surcharge for later filing of fee or oath ... ....... 111 Withholding of patent ................ .................... 181
T Witness:
Failing to attend or refusing to testify ........ 24
Term extension: Fees of, interference cases ........................ 24
For administrative delays ........................ 154 In interference summoned by clerk of United
For delays due to derivation proceedings, secrecy States court .............................................. 24
orders, and/or appellate review .............. 154 When in contempt, punishment ................ 24
Regulatory review .................................... 156
Term of patent:
Design ...................................................... 173
Disclaimer of ............................................ 253
Extension .................................................. 156
Period ...................................................... 154
Testimony, rules for taking ............. ................. 23
Time:
Expiring on Saturday, Sunday, or holiday ... 21
For payment of issue fee .......................... 151
For taking action in Government cases .... 267

L-101 Rev. 08.2017, January 2018