35 U.S.C. § 102 (2024) — Title 35: PATENTS / Chapter 10 / Section 102: Conditions for patentability; novelty
Conditions for patentability; novelty
Status: in_force

(a) Novelty; Prior Art.—A person shall be entitled to a patent unless—

(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or

(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.

(b) Exceptions.—

(1) Disclosures made 1 year or less before the effective filing date of the claimed invention.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—

(A) the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(B) the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

(2) Disclosures appearing in applications and patents.—A disclosure shall not be prior art to a claimed invention under subsection (a)(2) if—

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

(B) the subject matter disclosed had, before such subject matter was effectively filed under subsection (a)(2), been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or

(C) the subject matter disclosed and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person.

(c) Common Ownership Under Joint Research Agreements.—Subject matter disclosed and a claimed invention shall be deemed to have been owned by the same person or subject to an obligation of assignment to the same person in applying the provisions of subsection (b)(2)(C) if—

(1) the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, 1 or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention;

(2) the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; and

(3) the application for patent for the claimed invention discloses or is amended to disclose the names of the parties to the joint research agreement.

(d) Patents and Published Applications Effective as Prior Art.—For purposes of determining whether a patent or application for patent is prior art to a claimed invention under subsection (a)(2), such patent or application shall be considered to have been effectively filed, with respect to any subject matter described in the patent or application—

(1) if paragraph (2) does not apply, as of the actual filing date of the patent or the application for patent; or

(2) if the patent or application for patent is entitled to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c), based upon 1 or more prior filed applications for patent, as of the filing date of the earliest such application that describes the subject matter.

(July 19, 1952, ch. 950, 66 Stat. 797; Pub. L. 92–358, §2, July 28, 1972, 86 Stat. 502; Pub. L. 94–131, §5, Nov. 14, 1975, 89 Stat. 691; Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §§4505, 4806], Nov. 29, 1999, 113 Stat. 1536, 1501A–565, 1501A–590; Pub. L. 107–273, div. C, title III, §13205(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 112–29, §3(b)(1), Sept. 16, 2011, 125 Stat. 285; Pub. L. 112–211, title I, §102(2), Dec. 18, 2012, 126 Stat. 1531.)

Historical and Revision Notes

Paragraphs (a), (b), and (c) are based on Title 35, U.S.C., 1946 ed., §31 (R.S. 4886, amended (1) Mar. 3, 1897, ch. 391, §1, 29 Stat. 692, (2) May 23, 1930, ch. 312, §1, 46 Stat. 376, (3) Aug. 5, 1939, ch. 450, §1, 53 Stat. 1212).

No change is made in these paragraphs other than that due to division into lettered paragraphs. The interpretation by the courts of paragraph (a) as being more restricted than the actual language would suggest (for example, "known" has been held to mean "publicly known") is recognized but no change in the language is made at this time. Paragraph (a) together with section 104 contains the substance of Title 35, U.S.C., 1946 ed., §72 (R.S. 4923).

Paragraph (d) is based on Title 35, U.S.C., 1946 ed., §32, first paragraph (R.S. 4887 (first paragraph), amended (1) Mar. 3, 1897, ch. 391, §3, 29 Stat. 692, 693, (2) Mar. 3, 1903, ch. 1019, §1, 32 Stat. 1225, 1226, (3) June 19, 1936, ch. 594, 49 Stat. 1529).

The section has been changed so that the prior foreign patent is not a bar unless it was granted before the filing of the application in the United States.

Paragraph (e) is new and enacts the rule of Milburn v. Davis-Bournonville, 270 U.S. 390, by reason of which a United States patent disclosing an invention dates from the date of filing the application for the purpose of anticipating a subsequent inventor.

Paragraph (f) indicates the necessity for the inventor as the party applying for patent. Subsequent sections permit certain persons to apply in place of the inventor under special circumstances.

Paragraph (g) is derived from Title 35, U.S.C., 1946 ed., §69 (R.S. 4920, amended (1) Mar. 3, 1897, ch. 391, §2, 29 Stat. 692, (2) Aug. 5, 1939, ch. 450, §1, 53 Stat. 1212), the second defense recited in this section. This paragraph retains the present rules of law governing the determination of priority of invention.

Language relating specifically to designs is omitted for inclusion in subsequent sections.

Editorial Notes

Amendments

2012—Subsec. (d)(2). Pub. L. 112–211 substituted "to claim a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b), or to claim the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c)" for "to claim a right of priority under section 119, 365(a), or 365(b), or to claim the benefit of an earlier filing date under section 120, 121, or 365(c)".

2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to conditions for patentability; novelty and loss of right to patent.

2002—Subsec. (e). Pub. L. 107–273, amended Pub. L. 106–113, §1000(a)(9) [title IV, §4505]. See 1999 Amendment note below. Prior to being amended by Pub. L. 107–273, Pub. L. 106–113, §1000(a)(9) [title IV, §4505], had amended subsec. (e) to read as follows: "The invention was described in—

"(1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effect under this subsection of a national application published under section 122(b) only if the international application designating the United States was published under Article 21(2)(a) of such treaty in the English language; or

"(2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that a patent shall not be deemed filed in the United States for the purposes of this subsection based on the filing of an international application filed under the treaty defined in section 351(a); or".

1999—Subsec. (e). Pub. L. 106–113, §1000(a)(9) [title IV, §4505], as amended by Pub. L. 107–273, amended subsec. (e) generally. Prior to amendment, subsec. (e) read as follows: "the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent, or".

Subsec. (g). Pub. L. 106–113, §1000(a)(9) [title IV, §4806], amended subsec. (g) generally. Prior to amendment, subsec. (g) read as follows: "before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other."

1975—Par. (e). Pub. L. 94–131 inserted provision for nonentitlement to a patent where the invention was described in a patent granted on an international application by another who has fulfilled the requirements of pars. (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent.

1972—Subsec. (d). Pub. L. 92–358 inserted reference to inventions that were the subject of an inventors' certificate.

Statutory Notes and Related Subsidiaries

Effective Date of 2012 Amendment

Amendment by Pub. L. 112–211 effective on the later of the date that is 1 year after Dec. 18, 2012, or the date that the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs enters into force with respect to the United States (May 13, 2015), and applicable only to certain applications filed on and after that effective date and patents issuing thereon, with certain exceptions, see section 103 of Pub. L. 112–211, set out as a note under section 100 of this title.

Effective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title.

Effective Date of 1999 Amendment

Amendment by section 1000(a)(9) [title IV, §4505] of Pub. L. 106–113 effective Nov. 29, 2000 and applicable to all patents and all applications for patents pending on or filed after Nov. 29, 2000, see section 1000(a)(9) [title IV, §4508] of Pub. L. 106–113, as amended, set out as a note under section 10 of this title.

Effective Date of 1975 Amendment

Amendment by Pub. L. 94–131 effective Jan. 24, 1978, and applicable on and after that date to patent applications filed in the United States and to international applications, where applicable, see section 11 of Pub. L. 94–131, set out as an Effective Date note under section 351 of this title.

Effective Date of 1972 Amendment

Pub. L. 92–358, §3(b), July 28, 1972, 86 Stat. 502, provided that: "Section 2 of this Act [amending this section] shall take effect six months from the date when Articles 1 to 12 of the Paris Convention of March 20, 1883, for the Protection of Industrial Property, as revised at Stockholm, July 14, 1967, come into force with respect to the United States [Aug. 25, 1973] and shall apply to applications thereafter filed in the United States."

Savings Provisions

Provisions of former subsec. (g) of this section, as in effect on the day before the expiration of the 18-month period beginning on Sept. 16, 2011, apply to each claim of certain applications for patent, and certain patents issued thereon, for which the amendments made by section 3 of Pub. L. 112–29 also apply, see section 3(n)(2) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title.

Continuity of Intent Under the CREATE Act

Pub. L. 112–29, §3(b)(2), Sept. 16, 2011, 125 Stat. 287, provided that: "The enactment of section 102(c) of title 35, United States Code, under paragraph (1) of this subsection is done with the same intent to promote joint research activities that was expressed, including in the legislative history, through the enactment of the Cooperative Research and Technology Enhancement Act of 2004 (Public Law 108–453; the 'CREATE Act') [see Short Title of 2004 Amendment note set out under section 1 of this title], the amendments of which are stricken by subsection (c) of this section [amending section 103 of this title]. The United States Patent and Trademark Office shall administer section 102(c) of title 35, United States Code, in a manner consistent with the legislative history of the CREATE Act that was relevant to its administration by the United States Patent and Trademark Office."

Tax Strategies Deemed Within the Prior Art

Pub. L. 112–29, §14, Sept. 16, 2011, 125 Stat. 327, provided that:

"(a) In General.—For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.

"(b) Definition.—For purposes of this section, the term 'tax liability' refers to any liability for a tax under any Federal, State, or local law, or the law of any foreign jurisdiction, including any statute, rule, regulation, or ordinance that levies, imposes, or assesses such tax liability.

"(c) Exclusions.—This section does not apply to that part of an invention that—

"(1) is a method, apparatus, technology, computer program product, or system, that is used solely for preparing a tax or information return or other tax filing, including one that records, transmits, transfers, or organizes data related to such filing; or

"(2) is a method, apparatus, technology, computer program product, or system used solely for financial management, to the extent that it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.

"(d) Rule of Construction.—Nothing in this section shall be construed to imply that other business methods are patentable or that other business method patents are valid.

"(e) Effective Date; Applicability.—This section shall take effect on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent application that is pending on, or filed on or after, that date, and to any patent that is issued on or after that date."

Emergency Relief From Postal Situation Affecting Patent Cases

Relief as to filing date of patent application or patent affected by postal situation beginning on Mar. 18, 1970, and ending on or about Mar. 30, 1970, but patents issued with earlier filing dates not effective as prior art under subsec. (e) of this section as of such earlier filing dates, see section 1(a) of Pub. L. 92–34, formerly set out in a note under section 111 of this title.
35 U.S.C. § 317 (2024) — Title 35: PATENTS / Chapter 31 / Section 317: Settlement
Settlement
Status: in_force

(a) In General.—An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner's institution of that inter partes review. If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).

(b) Agreements in Writing.—Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.

(Added Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–570; amended Pub. L. 107–273, div. C, title III, §13202(a)(5), (c)(1), Nov. 2, 2002, 116 Stat. 1901, 1902; Pub. L. 112–29, §6(a), Sept. 16, 2011, 125 Stat. 303.)

Editorial Notes

Amendments

2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to restriction on subsequent request for inter partes reexamination.

2002—Pub. L. 107–273, §13202(c)(1), made technical correction to directory language of Pub. L. 106–113, which enacted this section.

Subsec. (a). Pub. L. 107–273, §13202(a)(5)(A), substituted "third-party requester nor its privies" for "patent owner nor the third-party requester, if any, nor privies of either".

Subsec. (b). Pub. L. 107–273, §13202(a)(5)(B), struck out "United States Code," after "title 28,".

Statutory Notes and Related Subsidiaries

Effective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent issued before, on, or after that effective date, with provisions for graduated implementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title.

Effective Date

Section effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, §4608(a)] of Pub. L. 106–113, set out as an Effective Date of 1999 Amendment note under section 41 of this title.
35 U.S.C. § 3 (2024) — Title 35: PATENTS / Chapter 1 / Section 3: Officers and employees
Officers and employees
Status: in_force

(a) Under Secretary and Director.—

(1) In general.—The powers and duties of the United States Patent and Trademark Office shall be vested in an Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (in this title referred to as the "Director"), who shall be a citizen of the United States and who shall be appointed by the President, by and with the advice and consent of the Senate. The Director shall be a person who has a professional background and experience in patent or trademark law.

(2) Duties.—

(A) In general.—The Director shall be responsible for providing policy direction and management supervision for the Office and for the issuance of patents and the registration of trademarks. The Director shall perform these duties in a fair, impartial, and equitable manner.

(B) Consulting with the public advisory committees.—The Director shall consult with the Patent Public Advisory Committee established in section 5 on a regular basis on matters relating to the patent operations of the Office, shall consult with the Trademark Public Advisory Committee established in section 5 on a regular basis on matters relating to the trademark operations of the Office, and shall consult with the respective Public Advisory Committee before submitting budgetary proposals to the Office of Management and Budget or changing or proposing to change patent or trademark user fees or patent or trademark regulations which are subject to the requirement to provide notice and opportunity for public comment under section 553 of title 5, as the case may be.

(3) Oath.—The Director shall, before taking office, take an oath to discharge faithfully the duties of the Office.

(4) Removal.—The Director may be removed from office by the President. The President shall provide notification of any such removal to both Houses of Congress.

(b) Officers and Employees of the Office.—

(1) Deputy under secretary and deputy director.—The Secretary of Commerce, upon nomination by the Director, shall appoint a Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office who shall be vested with the authority to act in the capacity of the Director in the event of the absence or incapacity of the Director. The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law.

(2) Commissioners.—

(A) Appointment and duties.—The Secretary of Commerce shall appoint a Commissioner for Patents and a Commissioner for Trademarks, without regard to chapter 33, 51, or 53 of title 5. The Commissioner for Patents shall be a citizen of the United States with demonstrated management ability and professional background and experience in patent law and serve for a term of 5 years. The Commissioner for Trademarks shall be a citizen of the United States with demonstrated management ability and professional background and experience in trademark law and serve for a term of 5 years. The Commissioner for Patents and the Commissioner for Trademarks shall serve as the chief operating officers for the operations of the Office relating to patents and trademarks, respectively, and shall be responsible for the management and direction of all aspects of the activities of the Office that affect the administration of patent and trademark operations, respectively. The Secretary may reappoint a Commissioner to subsequent terms of 5 years as long as the performance of the Commissioner as set forth in the performance agreement in subparagraph (B) is satisfactory.

(B) Salary and performance agreement.—The Commissioners shall be paid an annual rate of basic pay not to exceed the maximum rate of basic pay for the Senior Executive Service established under section 5382 of title 5, including any applicable locality-based comparability payment that may be authorized under section 5304(h)(2)(C) of title 5. The compensation of the Commissioners shall be considered, for purposes of section 207(c)(2)(A) of title 18, to be the equivalent of that described under clause (ii) of section 207(c)(2)(A) of title 18. In addition, the Commissioners may receive a bonus in an amount of up to, but not in excess of, 50 percent of the Commissioners' annual rate of basic pay, based upon an evaluation by the Secretary of Commerce, acting through the Director, of the Commissioners' performance as defined in an annual performance agreement between the Commissioners and the Secretary. The annual performance agreements shall incorporate measurable organization and individual goals in key operational areas as delineated in an annual performance plan agreed to by the Commissioners and the Secretary. Payment of a bonus under this subparagraph may be made to the Commissioners only to the extent that such payment does not cause the Commissioners' total aggregate compensation in a calendar year to equal or exceed the amount of the salary of the Vice President under section 104 of title 3.

(C) Removal.—The Commissioners may be removed from office by the Secretary for misconduct or nonsatisfactory performance under the performance agreement described in subparagraph (B), without regard to the provisions of title 5. The Secretary shall provide notification of any such removal to both Houses of Congress.

(3) Other officers and employees.—The Director shall—

(A) appoint such officers, employees (including attorneys), and agents of the Office as the Director considers necessary to carry out the functions of the Office; and

(B) define the title, authority, and duties of such officers and employees and delegate to them such of the powers vested in the Office as the Director may determine.

The Office shall not be subject to any administratively or statutorily imposed limitation on positions or personnel, and no positions or personnel of the Office shall be taken into account for purposes of applying any such limitation.

(4) Training of examiners.—The Office shall submit to the Congress a proposal to provide an incentive program to retain as employees patent and trademark examiners of the primary examiner grade or higher who are eligible for retirement, for the sole purpose of training patent and trademark examiners.

(5) National security positions.—The Director, in consultation with the Director of the Office of Personnel Management, shall maintain a program for identifying national security positions and providing for appropriate security clearances, in order to maintain the secrecy of certain inventions, as described in section 181, and to prevent disclosure of sensitive and strategic information in the interest of national security.

(6) Administrative patent judges and administrative trademark judges.—The Director may fix the rate of basic pay for the administrative patent judges appointed pursuant to section 6 and the administrative trademark judges appointed pursuant to section 17 of the Trademark Act of 1946 (15 U.S.C. 1067) at not greater than the rate of basic pay payable for level III of the Executive Schedule under section 5314 of title 5. The payment of a rate of basic pay under this paragraph shall not be subject to the pay limitation under section 5306(e) or 5373 of title 5.

(c) Continued Applicability of Title 5.—Officers and employees of the Office shall be subject to the provisions of title 5, relating to Federal employees.

(d) Adoption of Existing Labor Agreements.—The Office shall adopt all labor agreements which are in effect, as of the day before the effective date of the Patent and Trademark Office Efficiency Act, with respect to such Office (as then in effect).

(e) Carryover of Personnel.—

(1) From pto.—Effective as of the effective date of the Patent and Trademark Office Efficiency Act, all officers and employees of the Patent and Trademark Office on the day before such effective date shall become officers and employees of the Office, without a break in service.

(2) Other personnel.—Any individual who, on the day before the effective date of the Patent and Trademark Office Efficiency Act, is an officer or employee of the Department of Commerce (other than an officer or employee under paragraph (1)) shall be transferred to the Office, as necessary to carry out the purposes of that Act, if—

(A) such individual serves in a position for which a major function is the performance of work reimbursed by the Patent and Trademark Office, as determined by the Secretary of Commerce;

(B) such individual serves in a position that performed work in support of the Patent and Trademark Office during at least half of the incumbent's work time, as determined by the Secretary of Commerce; or

(C) such transfer would be in the interest of the Office, as determined by the Secretary of Commerce in consultation with the Director.

Any transfer under this paragraph shall be effective as of the same effective date as referred to in paragraph (1), and shall be made without a break in service.

(f) Transition Provisions.—

(1) Interim appointment of director.—On or after the effective date of the Patent and Trademark Office Efficiency Act, the President shall appoint an individual to serve as the Director until the date on which a Director qualifies under subsection (a). The President shall not make more than one such appointment under this subsection.

(2) Continuation in office of certain officers.—(A) The individual serving as the Assistant Commissioner for Patents on the day before the effective date of the Patent and Trademark Office Efficiency Act may serve as the Commissioner for Patents until the date on which a Commissioner for Patents is appointed under subsection (b).

(B) The individual serving as the Assistant Commissioner for Trademarks on the day before the effective date of the Patent and Trademark Office Efficiency Act may serve as the Commissioner for Trademarks until the date on which a Commissioner for Trademarks is appointed under subsection (b).

(July 19, 1952, ch. 950, 66 Stat. 792; Pub. L. 85–933, §1, Sept. 6, 1958, 72 Stat. 1793; Pub. L. 86–370, §1(a), Sept. 23, 1959, 73 Stat. 650; Pub. L. 88–426, title III, §305(26), Aug. 14, 1964, 78 Stat. 425; Pub. L. 93–596, §1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 93–601, §1, Jan. 2, 1975, 88 Stat. 1956; Pub. L. 97–247, §4, Aug. 27, 1982, 96 Stat. 319; Pub. L. 97–366, §4, Oct. 25, 1982, 96 Stat. 1760; Pub. L. 98–622, title IV, §405, Nov. 8, 1984, 98 Stat. 3392; Pub. L. 105–304, title IV, §401(a)(1), Oct. 28, 1998, 112 Stat. 2887; Pub. L. 106–44, §2(c), Aug. 5, 1999, 113 Stat. 223; Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4713], Nov. 29, 1999, 113 Stat. 1536, 1501A–575; Pub. L. 107–273, div. C, title III, §13206(a)(2), Nov. 2, 2002, 116 Stat. 1904; Pub. L. 112–29, §§20(i)(1), 21(b), Sept. 16, 2011, 125 Stat. 334, 336.)

Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., §2 (R.S. 476, amended (1) Feb. 15, 1916, ch. 22, §1, 39 Stat. 8, (2) Feb. 14, 1927, ch. 139, §1, 44 Stat. 1098, (3) Apr. 11, 1930, ch. 132, §1, 46 Stat. 155).

The temporary designation of the assistant commissioner as Commissioner in case of a vacancy in office is added. This will eliminate complications since present applicable general statutes (5 U.S.C., 1946 ed., §7) permit a vacancy to be temporarily filled only for not more than 30 days.

Changes in language are made. "Assistant commissioners" is used in the second sentence (and elsewhere in the bill) as referring to all three assistants.

This entire title is subject to Reorganization Plan No. 5 of 1950 (64 Stat. 1263) which vests all functions of the Patent Office in the Secretary of Commerce and authorizes delegation by him. It has been found impractical to so word the various sections of the title, and a general provision has been inserted as the second paragraph of this section of the bill, leaving the wording of various sections of the title in terms of officers previously specified and to whom the functions presently stand delegated.

Editorial Notes

References in Text

The Patent and Trademark Office Efficiency Act, referred to in subsecs. (d) to (f), is Pub. L. 106–113, div. B, §1000(a)(9) [title IV, subtitle G (§4701 et seq.)], Nov. 29, 1999, 113 Stat. 1536, 1501A–572. For the effective date of the Act as 4 months after Nov. 29, 1999, see section 1009(a)(9) [title IV, §4731] of Pub. L. 106–113, set out as an Effective Date of 1999 Amendment note under section 1 of this title. For complete classification of this Act to the Code, see Short Title of 1999 Amendment note set out under section 1 of this title and Tables.

Amendments

2011—Subsec. (b)(6). Pub. L. 112–29, §21(b), added par. (6).

Subsec. (e)(2). Pub. L. 112–29, §20(i)(1), substituted "that Act," for "this Act," in introductory provisions.

2002—Subsec. (a)(2)(B). Pub. L. 107–273, §13206(a)(2)(A), struck out "United States Code," after "title 5,".

Subsec. (b)(2)(A). Pub. L. 107–273, §13206(a)(2)(B)(i), struck out ", United States Code" after "title 5".

Subsec. (b)(2)(B). Pub. L. 107–273, §13206(a)(2)(B)(ii)–(iv), in first sentence, struck out "United States Code," after "section 5382 of title 5," and ", United States Code" after "section 5304(h)(2)(C) of title 5", in second sentence, struck out "United States Code," after "for purposes of section 207(c)(2)(A) of title 18," and ", United States Code" after "clause (ii) of section 207(c)(2)(A) of title 18", and in last sentence, struck out ", United States Code" after "title 3".

Subsec. (b)(2)(C). Pub. L. 107–273, §13206(a)(2)(B)(v), struck out ", United States Code" after "title 5".

Subsec. (c). Pub. L. 107–273, §13206(a)(2)(C), in heading, struck out ", United States Code" before period at end, and in text, struck out "United States Code," after "title 5,".

1999—Pub. L. 106–113 reenacted section catchline without change and amended text generally. Prior to amendment, text read as follows:

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

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

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

"(d) The Commissioner of Patents and Trademarks shall be an Assistant Secretary of Commerce and shall receive compensation at the rate in effect for level III of the Executive Schedule under section 5314 of title 5, United States Code.

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

Subsec. (d). Pub. L. 106–44 struck out ", United States Code" after "title 5".

1998—Subsec. (d). Pub. L. 105–304 substituted "in effect for level III of the Executive Schedule under section 5314 of title 5, United States Code" for "prescribed by law for Assistant Secretaries of Commerce".

1984—Subsec. (e). Pub. L. 98–622 added subsec. (e).

1982—Subsec. (a). Pub. L. 97–247 struck out "not more than fifteen" after "two Assistant Commissioners, and", and inserted "appointed under section 7 of this title" after "examiners-in-chief".

Subsec. (d). Pub. L. 97–366 added subsec. (d).

1975—Pub. L. 93–596 substituted "Patent and Trademark Office" for "Patent Office", and "Commissioner of Patents and Trademarks" for "Commissioner of Patents", wherever appearing.

Subsec. (a). Pub. L. 93–601 designated first par. as subsec. (a), redesignated first assistant commissioner as a Deputy Commissioner, granted authority for appointment of not more than fifteen examiners-in-chief to Secretary of Commerce instead of the President, and struck out provision relating to performance by assistant commissioners of duties assigned by Commissioner.

Subsecs. (b), (c). Pub. L. 93–601 designated second and third pars. as subsecs. (b) and (c), respectively.

1964—Pub. L. 88–426 repealed provisions which prescribed annual rate of compensation of Commissioner.

1959—Pub. L. 86–370 authorized Secretary of Commerce to fix compensation of examiners-in-chief.

1958—Pub. L. 85–933 increased number of examiners-in-chief from nine to not more than fifteen and specified annual compensation of Commissioner.

Statutory Notes and Related Subsidiaries

Effective Date of 2011 Amendment

Notwithstanding section 35 of Pub. L. 112–29 (set out as a note under section 1 of this title), amendment by section 21 of Pub. L. 112–29 effective as of Sept. 16, 2011, see section 1(g) of Pub. L. 112–274, set out as a note under section 2 of this title.

Amendment by section 20(i)(1) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1999 Amendment

Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, §4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Effective Date of 1984 Amendment

Pub. L. 98–622, title IV, §406(b), Nov. 8, 1984, 98 Stat. 3393, provided that: "The amendments made by sections 401, 402, and 405 of this Act [amending this section and sections 361, 366, 371, 372, and 376 of this title] shall take effect six months after the date of the enactment of this Act [Nov. 8, 1984]."

Effective Date of 1982 Amendment

Amendment by Pub. L. 97–247 effective Aug. 27, 1982, see section 17(a) of Pub. L. 97–247, set out as a note under section 41 of this title.

Effective Date of 1975 Amendment

Pub. L. 93–601, §4(b), Jan. 2, 1975, 88 Stat. 1957, provided that: "This Act [amending this section and sections 7 and 151 of this title and enacting provisions set out as a note under section 151 of this title] shall be effective upon enactment [Jan. 2, 1975]. Examiners-in-chief in office on the date of enactment shall continue in office under and in accordance with their then existing appointments."

Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade.

Effective Date of 1964 Amendment

Amendment by Pub. L. 88–426 effective on first day of first pay period which begins on or after July 1, 1964, except to the extent provided in section 501(c) of Pub. L. 88–426, see section 501 of Pub. L. 88–426.

Effective Date of 1959 Amendment

Pub. L. 86–370, §7(b), Sept. 23, 1959, 73 Stat. 653, provided that: "Sections 1 [amending this section, section 7 of this title, and provisions set out as a note below], 3 [amending sections 2205 and 2208 of former Title 5, Executive Departments and Government Officers and Employees], and 6 [amending section 1082 of former Title 5 and section 903 of Title 20, Education] of this Act shall become effective on the first day of the first pay period which begins after the date of enactment of this Act [Sept. 23, 1959]." Such section 7(b) was repealed by Pub. L. 89–554, §8(a), Sept. 6, 1966, 80 Stat. 660.

Existing Positions, Compensation, and Appointments Unaffected by Pub. L. 86–370 Until Action Taken Under Amendments

Pub. L. 86–370, §1(c), Sept. 23, 1959, 73 Stat. 650, provided that: "The amendments made by this section [amending sections 1 and 7 of this title] shall not affect—

"(1) any position of examiner-in-chief or designated examiner-in-chief existing immediately prior to the effective date of this section [see Effective Date of 1959 Amendment note set out above], or

"(2) any incumbent of any such position, his appointment thereto, his rate of compensation, or his right to receive such compensation,

until appropriate action is taken under authority of such amendments."
35 U.S.C. § 28 (2024) — Title 35: PATENTS / Chapter 2 / Section 28: Award of certificates to accelerate certain matters at the Patent and Trademark Office
Award of certificates to accelerate certain matters at the Patent and Trademark Office
Status: in_force

(a) Definition.—In this section, the term "eligible entity" means an entity that—

(1) submits an application under subsection (d) for a patent that addresses a humanitarian issue; and

(2) meets the requirements specified by the Director.

(b) Establishment.—There is established a competition, to be held not less frequently than biennially, to award eligible entities certificates that can be redeemed to accelerate one of the following matters:

(1) An ex parte reexamination proceeding, including 1 appeal to the Patent Trial and Appeal Board from that proceeding.

(2) An application for a patent, including 1 appeal to the Patent Trial and Appeal Board from that application.

(3) An appeal to the Patent Trial and Appeal Board of a claim twice rejected in a patent application or reissue application or finally rejected in an ex parte reexamination, without accelerating the underlying matter that generated the appeal.

(4) A matter identified by the Director.

(c) Administration.—The Director shall administer the competition established under subsection (b).

(d) Application.—An entity seeking an award under subsection (b) shall submit to the Director an application at such time, in such manner, and containing such information as the Director may require.

(e) Promotion of Competition.—The Director shall promote the competition established under subsection (b) through the satellite offices established pursuant to section 1.

(f) Treatment as Successor.—The competition established under subsection (b) shall be treated as a successor to the Patents for Humanity Program (established in the notice entitled "Humanitarian Awards Pilot Program", published at 77 Fed. Reg. 6544 (February 8, 2012)).

(Added Pub. L. 117–245, §2(a), Dec. 20, 2022, 136 Stat. 2343.)

Statutory Notes and Related Subsidiaries

Rule of Construction

Pub. L. 117–245, §2(b), Dec. 20, 2022, 136 Stat. 2344, provided that: "Nothing in this section [enacting this section], or the amendments made by this section, may be construed as affecting any action taken by the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office before the date of enactment of this Act [Dec. 20, 2022] with respect to the administration of the Patents for Humanity Program established in the notice entitled 'Humanitarian Awards Pilot Program', published at 77 Fed. Reg. 6544 (February 8, 2012)."
35 U.S.C. § 41 (2024) — Title 35: PATENTS / Chapter 4 / Section 41: Patent fees; patent and trademark search systems
Patent fees; patent and trademark search systems
Status: in_force

(a) General Fees.—The Director shall charge the following fees:

(1) Filing and basic national fees.—

(A) On filing each application for an original patent, except for design, plant, or provisional applications, $330.

(B) On filing each application for an original design patent, $220.

(C) On filing each application for an original plant patent, $220.

(D) On filing each provisional application for an original patent, $220.

(E) On filing each application for the reissue of a patent, $330.

(F) The basic national fee for each international application filed under the treaty defined in section 351(a) entering the national stage under section 371, $330.

(G) In addition, excluding any sequence listing or computer program listing filed in an electronic medium as prescribed by the Director, for any application the specification and drawings of which exceed 100 sheets of paper (or equivalent as prescribed by the Director if filed in an electronic medium), $270 for each additional 50 sheets of paper (or equivalent as prescribed by the Director if filed in an electronic medium) or fraction thereof.

(2) Excess claims fees.—

(A) In general.—In addition to the fee specified in paragraph (1)—

(i) on filing or on presentation at any other time, $220 for each claim in independent form in excess of 3;

(ii) on filing or on presentation at any other time, $52 for each claim (whether dependent or independent) in excess of 20; and

(iii) for each application containing a multiple dependent claim, $390.

(B) Multiple dependent claims.—For the purpose of computing fees under subparagraph (A), a multiple dependent claim referred to in section 112 or any claim depending therefrom shall be considered as separate dependent claims in accordance with the number of claims to which reference is made.

(C) Refunds; errors in payment.—The Director may by regulation provide for a refund of any part of the fee specified in subparagraph (A) for any claim that is canceled before an examination on the merits, as prescribed by the Director, has been made of the application under section 131. Errors in payment of the additional fees under this paragraph may be rectified in accordance with regulations prescribed by the Director.

(3) Examination fees.—

(A) In general.—

(i) For examination of each application for an original patent, except for design, plant, provisional, or international applications, $220.

(ii) For examination of each application for an original design patent, $140.

(iii) For examination of each application for an original plant patent, $170.

(iv) For examination of the national stage of each international application, $220.

(v) For examination of each application for the reissue of a patent, $650.

(B) Applicability of other fee provisions.—The provisions of paragraphs (3) and (4) of section 111(a) relating to the payment of the fee for filing the application shall apply to the payment of the fee specified in subparagraph (A) with respect to an application filed under section 111(a). The provisions of section 371(d) relating to the payment of the national fee shall apply to the payment of the fee specified in subparagraph (A) with respect to an international application.

(4) Issue fees.—

(A) For issuing each original patent, except for design or plant patents, $1,510.

(B) For issuing each original design patent, $860.

(C) For issuing each original plant patent, $1,190.

(D) For issuing each reissue patent, $1,510.

(5) Disclaimer fee.—On filing each disclaimer, $140.

(6) Appeal fees.—

(A) On filing an appeal from the examiner to the Patent Trial and Appeal Board, $540.

(B) In addition, on filing a brief in support of the appeal, $540, and on requesting an oral hearing in the appeal before the Patent Trial and Appeal Board, $1,080.

(7) Revival fees.—On filing each petition for the revival of an abandoned application for a patent, for the delayed payment of the fee for issuing each patent, for the delayed response by the patent owner in any reexamination proceeding, for the delayed payment of the fee for maintaining a patent in force, for the delayed submission of a priority or benefit claim, or for the extension of the 12-month period for filing a subsequent application, $1,700.00. The Director may refund any part of the fee specified in this paragraph, in exceptional circumstances as determined by the Director 1

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

(A) on filing a first petition, $130;

(B) on filing a second petition, $360; and

(C) on filing a third or subsequent petition, $620.

(b) Maintenance Fees.—

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

(A) Three years and 6 months after grant, $980.

(B) Seven years and 6 months after grant, $2,480.

(C) Eleven years and 6 months after grant, $4,110.

(2) Grace period; surcharge.—Unless payment of the applicable maintenance fee under paragraph (1) is received in the Office on or before the date the fee is due or within a grace period of 6 months thereafter, the patent shall expire as of the end of such grace period. The Director may require the payment of a surcharge as a condition of accepting within such 6-month grace period the payment of an applicable maintenance fee.

(3) No maintenance fee for design or plant patent.—No fee may be established for maintaining a design or plant patent in force.

(c) Delays in Payment of Maintenance Fees.—

(1) Acceptance.—The Director may accept the payment of any maintenance fee required by subsection (b) after the 6-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional. The Director may require the payment of the fee specified in subsection (a)(7) as a condition of accepting payment of any maintenance fee after the 6-month grace period. If the Director accepts payment of a maintenance fee after the 6-month grace period, the patent shall be considered as not having expired at the end of the grace period.

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

(d) Patent Search and Other Fees.—

(1) Patent search fees.—

(A) In general.—The Director shall charge the fees specified under subparagraph (B) for the search of each application for a patent, except for provisional applications. The Director shall adjust the fees charged under this paragraph to ensure that the fees recover an amount not to exceed the estimated average cost to the Office of searching applications for patent by Office personnel.

(B) Specific fees.—The fees referred to in subparagraph (A) are—

(i) $540 for each application for an original patent, except for design, plant, provisional, or international applications;

(ii) $100 for each application for an original design patent;

(iii) $330 for each application for an original plant patent;

(iv) $540 for the national stage of each international application; and

(v) $540 for each application for the reissue of a patent.

(C) Applicability of other provisions.—The provisions of paragraphs (3) and (4) of section 111(a) relating to the payment of the fee for filing the application shall apply to the payment of the fee specified in this paragraph with respect to an application filed under section 111(a). The provisions of section 371(d) relating to the payment of the national fee shall apply to the payment of the fee specified in this paragraph with respect to an international application.

(D) Refunds.—The Director may by regulation provide for a refund of any part of the fee specified in this paragraph for any applicant who files a written declaration of express abandonment as prescribed by the Director before an examination has been made of the application under section 131.

(2) Other fees.—

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

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

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

(iii) For each black and white copy of a patent, $3.

(B) Copies for libraries.—The yearly fee for providing a library specified in section 12 with uncertified printed copies of the specifications and drawings for all patents in that year shall be $50.

(e) Waiver of Fees; Copies Regarding Notice.—The Director may waive the payment of any fee for any service or material related to patents in connection with an occasional or incidental request made by a department or agency of the Government, or any officer thereof. The Director may provide any applicant issued a notice under section 132 with a copy of the specifications and drawings for all patents referred to in that notice without charge.

(f) Adjustment of Fees.—The fees established in subsections (a) and (b) of this section may be adjusted by the Director on October 1, 1992, and every year thereafter, to reflect any fluctuations occurring during the previous 12 months in the Consumer Price Index, as determined by the Secretary of Labor. Changes of less than 1 per centum may be ignored.

[(g) Repealed. Pub. L. 112–29, §11(e)(3), Sept. 16, 2011, 125 Stat. 323.]

(h) Fees for Small Entities.—

(1) Reductions in fees.—Subject to paragraph (3), fees charged under subsections (a), (b), and (d)(1) shall be reduced by 60 percent with respect to their application to any small business concern as defined under section 3 of the Small Business Act, and to any independent inventor or nonprofit organization as defined in regulations issued by the Director.

(2) Surcharges and other fees.—With respect to its application to any entity described in paragraph (1), any surcharge or fee charged under subsection (c) or (d) shall not be higher than the surcharge or fee required of any other entity under the same or substantially similar circumstances.

(3) Reduction for electronic filing.—The fee charged under subsection (a)(1)(A) shall be reduced by 80 percent with respect to its application to any entity to which paragraph (1) applies, if the application is filed by electronic means as prescribed by the Director.

(i) Electronic Patent and Trademark Data.—

(1) Maintenance of collections.—The Director shall maintain, for use by the public, paper, microform, or electronic collections of United States patents, foreign patent documents, and United States trademark registrations arranged to permit search for and retrieval of information. The Director may not impose fees directly for the use of such collections, or for the use of the public patent or trademark search rooms or libraries.

(2) Availability of automated search systems.—The Director shall provide for the full deployment of the automated search systems of the Patent and Trademark Office so that such systems are available for use by the public, and shall assure full access by the public to, and dissemination of, patent and trademark information, using a variety of automated methods, including electronic bulletin boards and remote access by users to mass storage and retrieval systems.

(3) Access fees.—The Director may establish reasonable fees for access by the public to the automated search systems of the Patent and Trademark Office. If such fees are established, a limited amount of free access shall be made available to users of the systems for purposes of education and training. The Director may waive the payment by an individual of fees authorized by this subsection upon a showing of need or hardship, and if such a waiver is in the public interest.

(4) Annual report to congress.—The Director shall submit to the Congress an annual report on the automated search systems of the Patent and Trademark Office and the access by the public to such systems. The Director shall also publish such report in the Federal Register. The Director shall provide an opportunity for the submission of comments by interested persons on each such report.

(j) Penalty for False Assertions.—In addition to any other penalty available under law, an entity that is found to have falsely asserted entitlement to a fee reduction under this section shall, unless the entity shows that the assertion was made in good faith, be subject to a fine, to be determined by the Director, the amount of which shall be not less than 3 times the amount that the entity failed to pay as a result of the false assertion, whether the Director discovers the false assertion before or after the date on which a patent has been issued.

(July 19, 1952, ch. 950, 66 Stat. 796; Pub. L. 89–83, §§1, 2, July 24, 1965, 79 Stat. 259; Pub. L. 93–596, §1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 94–131, §3, Nov. 14, 1975, 89 Stat. 690; Pub. L. 96–517, §2, Dec. 12, 1980, 94 Stat. 3017; Pub. L. 97–247, §3(a)–(e), Aug. 27, 1982, 96 Stat. 317–319; Pub. L. 97–256, title I, §101(1)–(4), Sept. 8, 1982, 96 Stat. 816; Pub. L. 98–622, title II, §204(a), Nov. 8, 1984, 98 Stat. 3388; Pub. L. 99–607, §1(b)(2), Nov. 6, 1986, 100 Stat. 3470; Pub. L. 102–204, §5(a)–(c)(1), (d)(1), (2)(A), Dec. 10, 1991, 105 Stat. 1637–1639; Pub. L. 102–444, §1, Oct. 23, 1992, 106 Stat. 2245; Pub. L. 103–465, title V, §§532(b)(2), 533(b)(1), Dec. 8, 1994, 108 Stat. 4986, 4988; Pub. L. 105–358, §3, Nov. 10, 1998, 112 Stat. 3272; Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §§4202, 4605(a), 4732(a)(5), (10)(A), 4804(d)(1)], Nov. 29, 1999, 113 Stat. 1536, 1501A–554, 1501A–570, 1501A–582, 1501A–589; Pub. L. 107–273, div. C, title III, §13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, §§11(a)–(e), 20(j), Sept. 16, 2011, 125 Stat. 320–323, 335; Pub. L. 112–211, title II, §202(b)(1), Dec. 18, 2012, 126 Stat. 1535; Pub. L. 117–328, div. W, §107(a), (b)(1), Dec. 29, 2022, 136 Stat. 5521; Pub. L. 118–151, §1(1), Dec. 17, 2024, 138 Stat. 1685.)

Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., §78 (R.S. 4934, amended (1) May 27, 1908, ch. 200, §1 (part), 35 Stat. 317, 343; (2) June 25, 1910, ch. 414, §2, 35 Stat. 843; (3) Feb. 18, 1922, ch. 58, §9, 42 Stat. 389, 393; (4) Feb. 14, 1927, ch. 139, §2, 44 Stat. 1098, 1099; (5) Mar. 2, 1927, ch. 273, §13, 44 Stat. 1335, 1337; (6) April 11, 1930, ch. 132, §3, 46 Stat. 155; (7) June 30, 1932, ch. 314, §§308, 309, 47 Stat. 382, 410; (8) Aug. 9, 1939, ch. 619, §3, 53 Stat. 1293; July 5, 1946, ch. 541, §301 (part), 60 Stat. 446, 471).

The items in the schedule of fees are rearranged in a few instances and are numbered for convenient reference.

The obsolete fee for appeal from the examiners of interferences to the Board of Appeals is omitted.

The fee for appeal to the Board of Appeals is changed from $15 to $25.

Two provisos in the corresponding section of the existing statute have been made separate sections, see sections 12 and 13.

The fee for a certificate is changed from 50 cents to $1 to correspond to the same fee in the trade-mark statute.

A new item (8) is added to go with section 205.

An omnibus item to take care of miscellaneous minor fees is added; in view of this, two items in the present schedule are omitted.

The fee for reissue applications is changed slightly.

Editorial Notes

References in Text

Section 3 of the Small Business Act, referred to in subsec. (h)(1), is classified to section 632 of Title 15, Commerce and Trade.

Amendments

2024—Subsec. (j). Pub. L. 118–151 inserted ", unless the entity shows that the assertion was made in good faith," before "be subject".

2022—Subsec. (h)(1). Pub. L. 117–328, §107(a)(1), substituted "60 percent" for "50 percent".

Subsec. (h)(3). Pub. L. 117–328, §107(a)(2), substituted "80 percent" for "75 percent".

Subsec. (j). Pub. L. 117–328, §107(b)(1), added subsec. (j).

2012—Subsec. (a)(7). Pub. L. 112–211, §202(b)(1)(A), added par. (7) and struck out former par. (7). Prior to amendment, text read as follows: "On filing each petition for the revival of an unintentionally abandoned application for a patent, for the unintentionally delayed payment of the fee for issuing each patent, or for an unintentionally delayed response by the patent owner in any reexamination proceeding, $1,620, unless the petition is filed under section 133 or 151, in which case the fee shall be $540."

Subsec. (c)(1). Pub. L. 112–211, §202(b)(1)(B), added par. (1) and struck out former par. (1). Prior to amendment, text read as follows: "The Director may accept the payment of any maintenance fee required by subsection (b) of this section which is made within twenty-four months after the six-month grace period if the delay is shown to the satisfaction of the Director to have been unintentional, or at any time after the six-month grace period if the delay is shown to the satisfaction of the Director to have been unavoidable. The Director may require the payment of a surcharge as a condition of accepting payment of any maintenance fee after the six-month grace period. If the Director accepts payment of a maintenance fee after the six-month grace period, the patent shall be considered as not having expired at the end of the grace period."

2011—Subsecs. (a), (b). Pub. L. 112–29, §11(a), amended subsecs. (a) and (b) generally. Prior to amendment, subsecs. (a) and (b) required the Director to charge certain fees for filing applications, disclaimers, petitions, and appeal documents, presenting claims, and issuing patents, and to charge certain fees for maintaining in force patents based on applications filed on or after Dec. 12, 1980, respectively.

Subsec. (c). Pub. L. 112–29, §11(b), inserted subsec. heading and headings of pars. (1) and (2).

Subsec. (d). Pub. L. 112–29, §11(c), amended subsec. (d) generally. Prior to amendment, subsec. (d) read as follows: "The Director shall establish fees for all other processing, services, or materials relating to patents not specified in this section to recover the estimated average cost to the Office of such processing, services, or materials, except that the Director shall charge the following fees for the following services:

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

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

"(3) For each black and white copy of a patent, $3.

The yearly fee for providing a library specified in section 13 of this title with uncertified printed copies of the specifications and drawings for all patents in that year shall be $50."

Subsec. (e). Pub. L. 112–29, §20(j), struck out "of this title" after "132".

Pub. L. 112–29, §11(e)(1), inserted heading.

Subsec. (f). Pub. L. 112–29, §11(e)(2), inserted heading.

Subsec. (g). Pub. L. 112–29, §11(e)(3), struck out subsec. (g) which read as follows: "No fee established by the Director under this section shall take effect until at least 30 days after notice of the fee has been published in the Federal Register and in the Official Gazette of the Patent and Trademark Office."

Subsec. (h). Pub. L. 112–29, §11(d), amended subsec. (h) generally. Prior to amendment, subsec. (h) read as follows:

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

"(2) With respect to its application to any entity described in paragraph (1), any surcharge or fee charged under subsection (c) or (d) shall not be higher than the surcharge or fee required of any other entity under the same or substantially similar circumstances."

Subsec. (i). Pub. L. 112–29, §11(e)(4), inserted subsec. heading and headings of pars. (1) to (4).

2002—Subsec. (a). Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)]. See 1999 Amendment note below.

1999—Subsec. (a). Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)], as amended by Pub. L. 107–273, substituted "Director" for "Commissioner" in introductory and concluding provisions.

Subsec. (a)(1)(A), (4)(A). Pub. L. 106–113, §1000(a)(9) [title IV, §4202(a), (b)], substituted "$690" for "$760".

Subsec. (a)(7). Pub. L. 106–113, §1000(a)(9) [title IV, §4605(a)], amended par. (7) generally. Prior to amendment, par. (7) read as follows: "On filing each petition for the revival of an unintentionally abandoned application for a patent or for the unintentionally delayed payment of the fee for issuing each patent, $1,210, unless the petition is filed under section 133 or 151 of this title, in which case the fee shall be $110."

Subsec. (a)(8). Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)], substituted "Director" for "Commissioner" in introductory provisions.

Subsec. (a)(10). Pub. L. 106–113, §1000(a)(9) [title IV, §4202(c)], substituted "$690" for "$760".

Subsec. (b). Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)], substituted "Director" for "Commissioner" in introductory and concluding provisions.

Subsec. (b)(1). Pub. L. 106–113, §1000(a)(9) [title IV, §4202(d)], substituted "$830" for "$940".

Subsecs. (c) to (g). Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)], substituted "Director" for "Commissioner" wherever appearing.

Subsec. (h)(1). Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(5)], substituted "Director" for "Commissioner of Patents and Trademarks".

Subsec. (i)(1). Pub. L. 106–113, §1000(a)(9) [title IV, §4804(d)(1)], substituted "paper, microform, or electronic" for "paper or microform".

Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)] substituted "Director" for "Commissioner" in two places.

Subsec. (i)(2) to (4). Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)], substituted "Director" for "Commissioner" wherever appearing.

1998—Subsec. (a). Pub. L. 105–358, §3(a), added subsec. (a) and struck out former subsec. (a) which listed fees for patent services.

Subsec. (b). Pub. L. 105–358, §3(b), added subsec. (b) and struck out former subsec. (b) which read as follows: "The Commissioner shall charge the following fees for maintaining in force all patents based on applications filed on or after December 12, 1980:

"(1) 3 years and 6 months after grant, $650.

"(2) 7 years and 6 months after grant, $1,310.

"(3) 11 years and 6 months after grant, $1,980.

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

1994—Subsec. (a)(1)(C). Pub. L. 103–465, §532(b)(2), added subpar. (C).

Subsec. (c)(2). Pub. L. 103–465, §533(b)(1), amended par. (2) generally. Prior to amendment, par. (2) read as follows: "No patent, the term of which has been maintained as a result of the acceptance of a payment of a maintenance fee under this subsection, shall abridge or affect the right of any person or his successors in business who made, purchased or used after the six-month grace period but prior to the acceptance of a maintenance fee under this subsection anything protected by the patent, to continue the use of, or to sell to others to be used or sold, the specific thing so made, purchased, or used. The court before which such matter is in question may provide for the continued manufacture, use or sale of the thing made, purchased, or used as specified, or for the manufacture, use or sale of which substantial preparation was made after the six-month grace period but before the acceptance of a maintenance fee under this subsection, and it may also provide for the continued practice of any process, practiced, or for the practice of which substantial preparation was made, after the six-month grace period but prior to the acceptance of a maintenance fee under this subsection, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced after the six-month grace period but before the acceptance of a maintenance fee under the subsection."

1992—Subsec. (c)(1). Pub. L. 102–444 inserted after "section" in first sentence "which is made within twenty-four months after the six-month grace period if the delay is shown to the satisfaction of the Commissioner to have been unintentional, or at any time".

1991—Pub. L. 102–204, §5(d)(2)(A), inserted "; patent and trademark search systems" after "fees" in section catchline.

Subsec. (a). Pub. L. 102–204, §5(a)(1), amended subsec. (a) generally. Prior to amendment, subsec. (a) read as follows: "The Commissioner shall charge the following fees:

"1. On filing each application for an original patent, except in design or plant cases, $300; in addition, on filing or on presentation at any other time, $30 for each claim in independent form which is in excess of three, $10 for each claim (whether independent or dependent) which is in excess of twenty, and $100 for each application containing a multiple dependent claim. For the purpose of computing fees, a multiple dependent claim as referred to in section 112 of this title or any claim depending therefrom shall be considered as separate dependent claims in accordance with the number of claims to which reference is made. Errors in payment of the additional fees may be rectified in accordance with regulations of the Commissioner.

"2. For issuing each original or reissue patent, except in design or plant cases, $500.

"3. In design and plant cases:

"a. On filing each design application, $125.

"b. On filing each plant application, $200.

"c. On issuing each design patent, $175.

"d. On issuing each plant patent, $250.

"4. On filing each application for the reissue of a patent, $300; in addition, on filing or on presentation at any other time, $30 for each claim in independent form which is in excess of the number of independent claims of the original patent, and $10 for each claim (whether independent or dependent) which is in excess of twenty and also in excess of the number of claims of the original patent. Errors in payment of the additional fees may be rectified in accordance with regulations of the Commissioner.

"5. On filing each disclaimer, $50.

"6. On filing an appeal from the examiner to the Board of Patent Appeals and Interferences, $115; in addition, on filing a brief in support of the appeal, $115, and on requesting an oral hearing in the appeal before the Board of Patent Appeals and Interferences, $100.

"7. On filing each petition for the revival of an unintentionally abandoned application for a patent or for the unintentionally delayed payment of the fee for issuing each patent, $500, unless the petition is filed under sections 133 or 151 of this title, in which case the fee shall be $50.

"8. For petitions for one-month extensions of time to take actions required by the Commissioner in an application:

"a. On filing a first petition, $50.

"b. On filing a second petition, $100.

"c. On filing a third or subsequent petition, $200."

Subsec. (b). Pub. L. 102–204, §5(a)(2), substituted "in force all patents based on applications filed on or after December 12, 1980:

"(1) 3 years and 6 months after grant, $650.

"(2) 7 years and 6 months after grant, $1,310.

"(3) 11 years and 6 months after grant, $1,980."

for "a patent in force:

"1. Three years and six months after grant, $400.

"2. Seven years and six months after grant, $800.

"3. Eleven years and six months after grant, $1,200."

Subsec. (d). Pub. L. 102–204, §5(a)(3), amended subsec. (d) generally. Prior to amendment, subsec. (d) read as follows: "The Commissioner will establish fees for all other processing, services, or materials related to patents not specified above to recover the estimated average cost to the Office of such processing, services, or materials. The yearly fee for providing a library specified in section 13 of this title with uncertified printed copies of the specifications and drawings for all patents issued in that year will be $50."

Subsec. (f). Pub. L. 102–204, §5(b), substituted "on October 1, 1992, and every year thereafter, to reflect any fluctuations occurring during the previous 12 months" for "on October 1, 1985, and every third year thereafter, to reflect any fluctuations occurring during the previous three years".

Subsec. (g). Pub. L. 102–204, §5(c)(1), amended subsec. (g) generally. Prior to amendment, subsec. (g) read as follows: "No fee established by the Commissioner under this section will take effect prior to sixty days following notice in the Federal Register."

Subsec. (i). Pub. L. 102–204, §5(d)(1), added subsec. (i).

1986—Subsec. (h). Pub. L. 99–607 added subsec. (h).

1984—Subsec. (a)(6). Pub. L. 98–622 substituted "Patent Appeals and Interferences" for "Appeals" in two places and inserted "in the appeal" after "oral hearing".

1982—Subsec. (a). Pub. L. 97–247, §3(a), substituted provisions setting a schedule of fees for provisions which had directed that the Commissioner establish fees for the processing of an application for a patent, from filing through disposition by issuance or abandonment, for maintaining a patent in force, and for providing all other services and materials related to patents and that fee would be established for maintaining a design patent in force.

Pub. L. 97–256, §101(1), struck out "of Patents" after "Commissioner".

Subsec. (b). Pub. L. 97–247, §3(b), substituted provisions setting a fee schedule for maintaining a patent in force for provisions which had directed that, fees for the actual processing of an application for a patent, other than for a design patent, from filing through disposition by issuance or abandonment, were to recover in aggregate 25 per centum of the estimated average cost to the Office of such processing and that fees for the processing of an application for a design patent, from filing through disposition by issuance or abandonment, were to recover in aggregate 50 per centum of the estimated average cost to the Office of such processing.

Pub. L. 97–256, §101(2), substituted "October 1, 1982" for "the first day of the first fiscal year beginning on or after one calendar year after enactment of this Act" and "the first day of the first fiscal year beginning on or after one calendar year after enactment".

Subsec. (c). Pub. L. 97–247, §3(c), substituted maintenance provisions for provisions which had directed that fees for maintaining patents in force were to recover 25 per centum of the estimated cost to the Office, for the year in which such maintenance fees were received, of the actual processing all applications for patents, other than for design patents, from filing through disposition by issuance or abandonment, that fees for maintaining a patent in force would be due three years and six months, seven years and six months, and eleven years and six months after the grant of the patent, that unless payment of the applicable maintenance fee was received in the Patent and Trademark Office on or before the date the fee was due or within a grace period of six months thereafter, the patent would expire as of the end of such grace period, and that the Commissioner could require the payment of a surcharge as a condition of accepting within such six-month grace period the late payment of an applicable maintenance fee.

Pub. L. 97–256, §101(3), substituted "October 1, 1996" for "the fifteenth fiscal year following the date of enactment of this Act".

Subsec. (d). Pub. L. 97–247, §3(d), substituted provisions relating to fees for all other processing services or materials relating to patents not previously specified for provisions directing that fees for all other services or materials related to patents were to recover the estimated average cost to the Office of performing the service or furnishing the material.

Pub. L. 97–256, §101(4), substituted "October 1, 1982" for "the first day of the first fiscal year beginning on or after one calendar year after enactment".

Subsec. (f). Pub. L. 97–247, §3(e), substituted provisions relating to the adjustment of fees to reflect CPI fluctuations for provisions directing that fees were to be adjusted by the Commissioner to achieve the levels of recovery specified in this section but that no patent application processing fee or fee for maintaining a patent in force was to be adjusted more than once every three years.

1980—Pub. L. 96–517 in revising fee provisions by substituting subsecs. (a) to (g) for prior subsecs. (a) to (c), required the Commissioner to establish fees based on recovery of estimated average cost of processing applications, performing miscellaneous services and providing material, required fees for maintenance of patents in force and provided for expiration of patents for nonpayments, prescribed $50 library fee for copies of specifications and drawings, authorized triennial adjustments, prescribed effective date for fees, and incorporated in subsec. (e) waiver provision of former subsec. (c).

1975—Subsec. (a)1. Pub. L. 94–131 inserted sentence respecting consideration of a multiple dependent claim as referred to in section 112 of this title or any claim depending therefrom as separate dependent claims in accordance with the number of claims to which reference is made for the purpose of computing fees.

Subsec. (b). Pub. L. 93–596 substituted "Patent and Trademark Office" for "Patent Office".

1965—Subsec. (a)1. Pub. L. 89–83, §1, increased the filing fee for original patents from $30 to $65, changed the additional fee from $1 for each claim in excess of twenty to $10 for each claim in independent form which is in excess of one and $2 for each claim (whether independent or dependent) which is in excess of ten, and permitted the rectification of errors in the payment of the additional fees in accordance with regulations of the Commissioner.

Subsec. (a)2. Pub. L. 89–83, §1, applied the issue fee to reissue patents as well as to original patents, increased such fee from $30 to $100, and changed the additional fee from $1 for each claim in excess of twenty to $10 for each page (or portion thereof) of specification as printed and $2 for each sheet of drawing.

Subsec. (a)3. Pub. L. 89–83, §1, changed the fee structure applicable to design patents from a filing fee of $10, $15, or $30 for terms of 3½, 7, or 14 years, respectively, to a filing fee of $20 and an issue fee of $10, $20, or $30 for terms of 3½, 7, or 14 years, respectively.

Subsec. (a)4. Pub. L. 89–83, §1, increased the filing fee for reissue patents from $30 to $65, changed the additional fee from $1 for each claim in excess of twenty over and above the number of claims in the original patent to $10 for each claim in independent form which is in excess of the number of independent claims of the original patent and $2 for each claim (whether independent or dependent) which is in excess of ten and also in excess of the number of claims in the original patent, and permitted the rectification of errors in the payment of the additional fees in accordance with regulations of the Commissioner.

Subsec. (a)5. Pub. L. 89–83, §1, increased the fee for filing disclaimers from $10 to $15.

Subsec. (a)6. Pub. L. 89–83, §1, increased the fee on appeal for the first time from the examiner to the Board of Appeals from $25 to $50, and added the additional $50 fee for filing a brief in support of the appeal.

Subsec. (a)7. Pub. L. 89–83, §1, increased the fee for filing a petition for the revival of an abandoned application or for the delayed payment of the issuance fee from $10 to $15.

Subsec. (a)8. Pub. L. 89–83, §1, inserted fee for the certificate under section 256 of this title, and increased the fee for a certificate under section 255 of this title from $10 to $15.

Subsec. (a)9. Pub. L. 89–83, §1, increased the fee for copies of specifications and drawings of patents (other than design patents) from 25 cents to 50 cents per copy and the fee for copies of specifications and drawings of design patents from 10 cents to 20 cents per copy, and permitted the Commissioner to establish a charge not to exceed $1 per copy for patents in excess of twenty-five pages of drawings and specifications and for plant patents printed in color and to provide applicants, without charge, with copies of specifications and drawings when referred to in a section 132 notice.

Subsec. (a)10. Pub. L. 89–83, §1, changed the recording fee from $3 for every document not exceeding six pages and $1 for each additional two pages or less to a flat $20 fee for every document, and substituted a $3 fee for each additional item where the document relates to more than one patent or application for a 50 cents additional fee for each additional patent or application included in one writing where more than one is so included.

Subsec. (c). Pub. L. 89–83, §2, added subsec. (c).

Statutory Notes and Related Subsidiaries

Effective Date of 2012 Amendment

Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litigation commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title.

Effective Date of 2011 Amendment

Pub. L. 112–29, §11(j), Sept. 16, 2011, 125 Stat. 325, provided that: "Except as otherwise provided in this section [amending this section and enacting and amending provisions set out as notes under this section], this section and the amendments made by this section shall take effect on the date of the enactment of this Act [Sept. 16, 2011]."

Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1999 Amendment

Pub. L. 106–113, div. B, §1000(a)(9) [title IV, subtitle B, §4206], Nov. 29, 1999, 113 Stat. 1536, 1501A–555, provided that:

"(a) In General.—Except as provided in subsection (b), the amendments made by this subtitle [amending this section and section 42 of this title] shall take effect on the date of the enactment of this Act [Nov. 29, 1999].

"(b) Section 4202.—The amendments made by section 4202 [amending this section] of this subtitle shall take effect 30 days after the date of the enactment of this Act."

Pub. L. 106–113, div. B, §1000(a)(9) [title IV, subtitle F, §4608], Nov. 29, 1999, 113 Stat. 1536, 1501A–572, provided that:

"(a) In General.—Subject to subsection (b), this subtitle [enacting chapter 31 of this title, amending this section and sections 100, 134, 141, 143, and 145 of this title, and enacting provisions set out as notes under sections 1, 311, and 315 of this title] and the amendments made by this subtitle shall take effect on the date of the enactment of this Act [Nov. 29, 1999] and shall apply to any patent that issues from an original application filed in the United States on or after that date.

"(b) Section 4605(a).—The amendments made by section 4605(a) [amending this section] shall take effect on the date that is 1 year after the date of the enactment of this Act."

Amendment by section 1000(a)(9) [title IV, §§4732(a)] of Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, §4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Effective Date of 1998 Amendment

Pub. L. 105–358, §5, Nov. 10, 1998, 112 Stat. 3274, provided that: "This Act [amending this section and section 42 of this title and enacting provisions set out as a note under section 1 of this title] and the amendments made by this Act shall take effect on October 1, 1998."

Effective Date of 1994 Amendment

Amendment by section 532(b)(2) of Pub. L. 103–465 effective 6 months after Dec. 8, 1994, and applicable to all patent applications filed in the United States on or after that effective date, with provisions relating to earliest filed patent application, see section 534(b)(1), (3) of Pub. L. 103–465, set out as a note under section 154 of this title.

Amendment by section 533(b)(1) of Pub. L. 103–465 effective on date that is one year after date on which the WTO Agreement enters into force with respect to the United States [Jan. 1, 1995], with provisions relating to earliest filed patent application, see section 534(a), (b)(3) of Pub. L. 103–465, set out as a note under section 154 of this title.

Effective Date of 1992 Amendment

Pub. L. 102–444, §2, Oct. 23, 1992, 106 Stat. 2245, provided that: "The amendment made by section 1 [amending this section] shall take effect on the date of the enactment of this Act [Oct. 23, 1992]."

Effective Date of 1991 Amendment

Pub. L. 102–204, §13, Dec. 10, 1991, 105 Stat. 1642, provided that: "This Act [amending this section, sections 6, 42, 202, 371, and 376 of this title, and section 1113 of Title 15, Commerce and Trade, enacting provisions set out as notes under this section, section 6 of this title, and section 1113 of Title 15, and amending and repealing provisions set out as notes under this section] takes effect on the date of the enactment of this Act [Dec. 10, 1991], except that the fees established by the amendment made by section 5(a) [amending this section] shall take effect on or after 1 day after such fees are published in the Federal Register."

Effective Date of 1984 Amendment

Pub. L. 98–622, title II, §207, Nov. 8, 1984, 98 Stat. 3389, provided that: "Section 206 of this Act [98 Stat. 3388] and the amendments made by this title [amending this section, sections 7, 134, 135, 141, 145, 146, and 305 of this title, section 1295 of Title 28, Judiciary and Judicial Procedure, and sections 2182 and 2457 of Title 42, The Public Health and Welfare] shall take effect three months after the date of the enactment of this Act [Nov. 8, 1984]."

Effective Date of 1982 Amendment

Pub. L. 97–247, §17(a), Aug. 27, 1982, 96 Stat. 322, provided that: "Sections 1, 2, 4, 7, and 13 through 15 of this Act [amending sections 3, 6, 13, 115, and 261 of this title and section 1061 of Title 15, Commerce and Trade] shall take effect on the date of enactment of this Act [Aug. 27, 1982]. Sections 3 and 16 of this Act [amending this section, sections 42 and 173 of this title, and section 113 of Title 15] shall take effect on October 1, 1982. The maintenance fees provided for in section 3(b) of this Act [amending this section] shall not apply to patents applied for prior to the date of enactment of this Act. Each patent applied for on or after the date of enactment of this Act shall be subject to the maintenance fees established pursuant to section 3(b) of this Act or to maintenance fees hereafter established by law, as to the amounts paid and the number and timing of the payments."

Effective Date of 1980 Amendment

Pub. L. 96–517, §8, Dec. 12, 1980, 94 Stat. 3027, provided that:

"(a) Sections 2, 4, and 5 of this Act [amending this section, section 154 of this title, and section 1113 of Title 15, Commerce and Trade] will take effect upon enactment [Dec. 12, 1980].

"(b) Section 1 of this Act [enacting sections 301 to 307 of this title] will take effect on the first day of the seventh month beginning after its enactment [Dec. 12, 1980] and will apply to patents in force as of that date or issued thereafter.

"(c) Section 3 of this Act [amending section 42 of this title] will take effect on the first day of the first fiscal year beginning on or after one calendar year after enactment [Dec. 12, 1980]. However, until section 3 takes effect, the Commissioner may credit the Patent and Trademark Office appropriation account in the Treasury of the United States with the revenues from collected reexamination fees, which will be available to pay the costs to the Office of reexamination proceedings.

"(d) Any fee in effect as of the date of enactment of this Act [Dec. 12, 1980] will remain in effect until a corresponding fee established under section 41 of title 35, United States Code, or section 1113 of title 15, United States Code, takes effect.

"(e) Fees for maintaining a patent in force will not be applicable to patents applied for prior to the date of enactment of this Act [Dec. 12, 1980].

"(f) Sections 6 and 7 of this Act [enacting sections 200 to 211 of this title and amending sections 2186, 2457, and 5908 of Title 42, The Public Health and Welfare] will take effect on the first day of the seventh month beginning after its enactment [Dec. 12, 1980]. Implementing regulations may be issued earlier.

"(g) Sections 8 and 9 [enacting this note and provision set out as a note under section 14 of this title] will take effect on the date of enactment of this Act [Dec. 12, 1980]."

Effective Date of 1975 Amendments

Amendment by Pub. L. 94–131 effective Jan. 24, 1978, and applicable on and after that date to patent applications filed in the United States and to international applications, where applicable, see section 11 of Pub. L. 94–131, set out as an Effective Date note under section 351 of this title.

Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade.

Effective Date of 1965 Amendment

Pub. L. 89–83, §7, July 24, 1965, 79 Stat. 261, provided that:

"(a) This Act [amending this section, sections 112, 151, 154, and 282 of this title, and section 1113 of Title 15, Commerce and Trade, and repealing section 266 of this title] shall take effect three months after its enactment [July 24, 1965].

"(b) Items 1, 3, and 4 of section 41(a) of title 35, United States Code, as amended by section 1 of this Act, do not apply in further proceedings in applications filed prior to the effective date of this Act.

"(c) Item 2 of section 41(a), as amended by section 1 of this Act [item 2 of subsec. (a) of this section], and section 4 of this Act [amending section 151 of this title] do not apply in cases in which the notice of allowance of the application was sent, or in which a patent issued, prior to the effective date; and, in such cases, the fee due is the fee specified in this title prior to the effective date of this Act.

"(d) Item 3 of section 31 of the Trademark Act, as amended by section 3 of this Act [item 3 of section 1113(a) of Title 15], applies only in the case of registrations issued and registrations published under the provisions of section 12(c) of the Trademark Act [section 1062(c) of Title 15] on or after the effective date of this Act."

Termination of Reporting Requirements

For termination, effective May 15, 2000, of provisions in subsec. (i)(4) of this section relating to annual reports to Congress, see section 3003 of Pub. L. 104–66, as amended, set out as a note under section 1113 of Title 31, Money and Finance, and page 55 of House Document No. 103–7.

Fee Setting Authority

Pub. L. 112–29, §10, Sept. 16, 2011, 125 Stat. 316, as amended by Pub. L. 115–273, §4, Oct. 31, 2018, 132 Stat. 4159; Pub. L. 117–328, div. W, §107(c), Dec. 29, 2022, 136 Stat. 5522, provided that:

"(a) Fee Setting.—

"(1) In general.—The Director [Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office] may set or adjust by rule any fee established, authorized, or charged under title 35, United States Code, or the Trademark Act of 1946 (15 U.S.C. 1051 et seq.), for any services performed by or materials furnished by, the [United States Patent and Trademark] Office, subject to paragraph (2).

"(2) Fees to recover costs.—Fees may be set or adjusted under paragraph (1) only to recover the aggregate estimated costs to the Office for processing, activities, services, and materials relating to patents (in the case of patent fees) and trademarks (in the case of trademark fees), including administrative costs of the Office with respect to such patent or trademark fees (as the case may be).

"(b) Small and Micro Entities.—The fees set or adjusted under subsection (a) for filing, searching, examining, issuing, appealing, and maintaining patent applications and patents shall be reduced by 60 percent with respect to the application of such fees to any small entity that qualifies for reduced fees under section 41(h)(1) of title 35, United States Code, and shall be reduced by 80 percent with respect to the application of such fees to any micro entity as defined in section 123 of that title (as added by subsection (g) of this section).

"(c) Reduction of Fees in Certain Fiscal Years.—In each fiscal year, the Director—

"(1) shall consult with the Patent Public Advisory Committee and the Trademark Public Advisory Committee on the advisability of reducing any fees described in subsection (a); and

"(2) after the consultation required under paragraph (1), may reduce such fees.

"(d) Role of the Public Advisory Committee.—The Director shall—

"(1) not less than 45 days before publishing any proposed fee under subsection (a) in the Federal Register, submit the proposed fee to the Patent Public Advisory Committee or the Trademark Public Advisory Committee, or both, as appropriate;

"(2)(A) provide the relevant advisory committee described in paragraph (1) a 30-day period following the submission of any proposed fee, in which to deliberate, consider, and comment on such proposal;

"(B) require that, during that 30-day period, the relevant advisory committee hold a public hearing relating to such proposal; and

"(C) assist the relevant advisory committee in carrying out that public hearing, including by offering the use of the resources of the Office to notify and promote the hearing to the public and interested stakeholders;

"(3) require the relevant advisory committee to make available to the public a written report setting forth in detail the comments, advice, and recommendations of the committee regarding the proposed fee; and

"(4) consider and analyze any comments, advice, or recommendations received from the relevant advisory committee before setting or adjusting (as the case may be) the fee.

"(e) Publication in the Federal Register.—

"(1) Publication and rationale.—The Director shall—

"(A) publish any proposed fee change under this section in the Federal Register;

"(B) include, in such publication, the specific rationale and purpose for the proposal, including the possible expectations or benefits resulting from the proposed change; and

"(C) notify, through the Chair and Ranking Member of the Committees on the Judiciary of the Senate and the House of Representatives, the Congress of the proposed change not later than the date on which the proposed change is published under subparagraph (A).

"(2) Public comment period.—The Director shall, in the publication under paragraph (1), provide the public a period of not less than 45 days in which to submit comments on the proposed change in fees.

"(3) Publication of final rule.—The final rule setting or adjusting a fee under this section shall be published in the Federal Register and in the Official Gazette of the Patent and Trademark Office.

"(4) Congressional comment period.—A fee set or adjusted under subsection (a) may not become effective—

"(A) before the end of the 45-day period beginning on the day after the date on which the Director publishes the final rule adjusting or setting the fee under paragraph (3); or

"(B) if a law is enacted disapproving such fee.

"(5) Rule of construction.—Rules prescribed under this section shall not diminish—

"(A) the rights of an applicant for a patent under title 35, United States Code, or for a mark under the Trademark Act of 1946; or

"(B) any rights under a ratified treaty.

"(f) Retention of Authority.—The Director retains the authority under subsection (a) to set or adjust fees only during such period as the Patent and Trademark Office remains an agency within the Department of Commerce.

"(g) Micro Entity Defined.—[Enacted section 123 of this title and amended analysis of this chapter.]

"(h) Electronic Filing Incentive.—

"(1) In general.—Notwithstanding any other provision of this section, an additional fee of $400 shall be established for each application for an original patent, except for a design, plant, or provisional application, that is not filed by electronic means as prescribed by the Director. The fee established by this subsection shall be reduced by 50 percent for small entities that qualify for reduced fees under section 41(h)(1) of title 35, United States Code. All fees paid under this subsection shall be deposited in the Treasury as an offsetting receipt that shall not be available for obligation or expenditure.

"(2) Effective date.—This subsection shall take effect upon the expiration of the 60-day period beginning on the date of the enactment of this Act [Sept. 16, 2011].

"(i) Effective Date; Sunset.—

"(1) Effective date.—Except as provided in subsection (h), this section [enacting section 123 of this title] and the amendments made by this section shall take effect on the date of the enactment of this Act [Sept. 16, 2011].

"(2) Sunset.—The authority of the Director to set or adjust any fee under subsection (a) shall terminate upon the expiration of the 15-year period beginning on the date of the enactment of this Act.

"(3) Prior regulations not affected.—The termination of authority under this subsection shall not affect any regulations issued under this section before the effective date of such termination or any rulemaking proceeding for the issuance of regulations under this section that is pending on such date."

[For definitions of terms used in section 10 of Pub. L. 112–29, set out above, see section 2 of Pub. L. 112–29, set out as a Definitions note under section 1 of this title.]

Prioritized Examination Fee

Pub. L. 112–29, §11(h), Sept. 16, 2011, 125 Stat. 324, provided that:

"(1) In general.—

"(A) Fee.—

"(i) Prioritized examination fee.—A fee of $4,800 shall be established for filing a request, pursuant to section 2(b)(2)(G) of title 35, United States Code, for prioritized examination of a nonprovisional application for an original utility or plant patent.

"(ii) Additional fees.—In addition to the prioritized examination fee under clause (i), the fees due on an application for which prioritized examination is being sought are the filing, search, and examination fees (including any applicable excess claims and application size fees), processing fee, and publication fee for that application.

"(B) Regulations; limitations.—

"(i) Regulations.—The Director [Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office] may by regulation prescribe conditions for acceptance of a request under subparagraph (A) and a limit on the number of filings for prioritized examination that may be accepted.

"(ii) Limitation on claims.—Until regulations are prescribed under clause (i), no application for which prioritized examination is requested may contain or be amended to contain more than 4 independent claims or more than 30 total claims.

"(iii) Limitation on total number of requests.—The Director may not accept in any fiscal year more than 10,000 requests for prioritization until regulations are prescribed under this subparagraph setting another limit.

"(2) Reduction in fees for small entities.—The Director shall reduce fees for providing prioritized examination of nonprovisional applications for original utility and plant patents by 50 percent for small entities that qualify for reduced fees under section 41(h)(1) of title 35, United States Code.

"(3) Deposit of fees.—All fees paid under this subsection shall be credited to the United States Patent and Trademark Office Appropriation Account, shall remain available until expended, and may be used only for the purposes specified in section 42(c)(3)(A) of title 35, United States Code.

"(4) Effective date and termination.—

"(A) Effective date.—This subsection shall take effect on the date that is 10 days after the date of the enactment of this Act [Sept. 16, 2011].

"(B) Termination.—The fee imposed under paragraph (1)(A)(i), and the reduced fee under paragraph (2), shall terminate on the effective date of the setting or adjustment of the fee under paragraph (1)(A)(i) pursuant to the exercise of the authority under section 10 [enacting section 123 of this title and provisions set out as a note under this section] for the first time with respect to that fee."

Appropriation Account Transition Fees

Pub. L. 112–29, §11(i), Sept. 16, 2011, 125 Stat. 325, provided that:

"(1) Surcharge.—

"(A) In general.—There shall be a surcharge of 15 percent, rounded by standard arithmetic rules, on all fees charged or authorized by subsections (a), (b), and (d)(1) of section 41, and section 132(b), of title 35, United States Code. Any surcharge imposed under this subsection is, and shall be construed to be, separate from and in addition to any other surcharge imposed under this Act [see Short Title of 2011 Amendment note set out under section 1 of this title] or any other provision of law.

"(B) Deposit of amounts.—Amounts collected pursuant to the surcharge imposed under subparagraph (A) shall be credited to the United States Patent and Trademark Appropriation Account, shall remain available until expended, and may be used only for the purposes specified in section 42(c)(3)(A) of title 35, United States Code.

"(2) Effective date and termination of surcharge.—The surcharge provided for in paragraph (1)—

"(A) shall take effect on the date that is 10 days after the date of the enactment of this Act [Sept. 16, 2011]; and

"(B) shall terminate, with respect to a fee to which paragraph (1)(A) applies, on the effective date of the setting or adjustment of that fee pursuant to the exercise of the authority under section 10 [enacting section 123 of this title and provisions set out as a note under this section] for the first time with respect to that fee."

Authority of PTO Director To Use Trademark Funds

Pub. L. 111–45, §1, Aug. 7, 2009, 123 Stat. 1968, provided that:

"(a) Authority.—

"(1) In general.—The Director of the United States Patent and Trademark Office—

"(A) may use funds made available for fiscal year 2009, pursuant to section 31 of the Trademark Act of 1946 (15 U.S.C. 1113), under the heading 'Department of Commerce—United States Patent and Trademark Office—Salaries and Expenses' in title I of division B of the Omnibus Appropriations Act, 2009 (Public Law 111–8), up to $70,000,000, to support the processing of patents and other activities, services, and materials relating to patents, notwithstanding section 42(c) of title 35, United States Code; and

"(B) notwithstanding any other provision of law, shall, upon the exercise of the authority under subparagraph (A), establish a surcharge, in amounts up to $70,000,000, on patent fees in effect under title 35, United States Code, to repay any funds drawn down pursuant to subparagraph (A),

if the Director certifies in writing to the Congress that the use of the funds described in subparagraph (A) is reasonably necessary to avoid furloughs or a reduction-in-force, or both, in the United States Patent and Trademark Office, and does not create a substantial risk of a furlough or reduction-in-force of personnel working in the Trademark Operation of the United States Patent and Trademark Office.

"(2) Surcharges deposited in treasury.—All surcharges paid under paragraph (1)(B) shall be deposited in the Treasury as an offsetting receipt that shall not be available for obligation or expenditure.

"(b) Limitations on Authority.—The authority under subsection (a)(1)(A) shall terminate on June 30, 2010. The surcharge established under subsection (a)(1)(B) shall take effect no later than September 30, 2011, and all funds drawn down pursuant to subsection (a)(1)(A) shall be repaid pursuant to subsection (a)(1)(B) no later than September 30, 2014.

"(c) Definitions.—In this section:

"(1) Director.—The terms 'Director of the United States Patent and Trademark Office' and 'Director' mean the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.

"(2) Trademark act of 1946.—The term 'Trademark Act of 1946' means the Act entitled 'An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes', approved July 5, 1946 (15 U.S.C. 1051 et seq.)."

Patent and Trademark Fees in Certain Fiscal Years After 2005

Pub. L. 108–447, div. B, title VIII, Dec. 8, 2004, 118 Stat. 2924, as amended by Pub. L. 109–289, div. B, title II, §20933, as added by Pub. L. 110–5, §2, Feb. 15, 2007, 121 Stat. 45; Pub. L. 112–29, §11(f), (g), Sept. 16, 2011, 125 Stat. 324, provided that:

"SEC. 801. FEES FOR PATENT SERVICES.

"(a) General Patent Fees.—During fiscal years 2005, 2006, and 2007, subsection (a) of section 41 of title 35, United States Code, shall be administered as though that subsection reads as follows:

" '(a) General Fees.—The Director shall charge the following fees:

" '(1) Filing and basic national fees.—

" '(A) On filing each application for an original patent, except for design, plant, or provisional applications, $300.

" '(B) On filing each application for an original design patent, $200.

" '(C) On filing each application for an original plant patent, $200.

" '(D) On filing each provisional application for an original patent, $200.

" '(E) On filing each application for the reissue of a patent, $300.

" '(F) The basic national fee for each international application filed under the treaty defined in section 351(a) of this title entering the national stage under section 371 of this title, $300.

" '(G) In addition, excluding any sequence listing or computer program listing filed in an electronic medium as prescribed by the Director, for any application the specification and drawings of which exceed 100 sheets of paper (or equivalent as prescribed by the Director if filed in an electronic medium), $250 for each additional 50 sheets of paper (or equivalent as prescribed by the Director if filed in an electronic medium) or fraction thereof.

" '(2) Excess claims fees.—In addition to the fee specified in paragraph (1)—

" '(A) on filing or on presentation at any other time, $200 for each claim in independent form in excess of 3;

" '(B) on filing or on presentation at any other time, $50 for each claim (whether dependent or independent) in excess of 20; and

" '(C) for each application containing a multiple dependent claim, $360.

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

" '(3) Examination fees.—

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

" '(B) For examination of each application for an original design patent, $130.

" '(C) For examination of each application for an original plant patent, $160.

" '(D) For examination of the national stage of each international application, $200.

" '(E) For examination of each application for the reissue of a patent, $600.

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

" '(4) Issue fees.—

" '(A) For issuing each original patent, except for design or plant patents, $1,400.

" '(B) For issuing each original design patent, $800.

" '(C) For issuing each original plant patent, $1,100.

" '(D) For issuing each reissue patent, $1,400.

" '(5) Disclaimer fee.—On filing each disclaimer, $130.

" '(6) Appeal fees.—

" '(A) On filing an appeal from the examiner to the Board of Patent Appeals and Interferences, $500.

" '(B) In addition, on filing a brief in support of the appeal, $500, and on requesting an oral hearing in the appeal before the Board of Patent Appeals and Interferences, $1,000.

" '(7) Revival fees.—On filing each petition for the revival of an unintentionally abandoned application for a patent, for the unintentionally delayed payment of the fee for issuing each patent, or for an unintentionally delayed response by the patent owner in any reexamination proceeding, $1,500, unless the petition is filed under section 133 or 151 of this title, in which case the fee shall be $500.

" '(8) Extension fees.—For petitions for 1-month extensions of time to take actions required by the Director in an application—

" '(A) on filing a first petition, $120;

" '(B) on filing a second petition, $330; and

" '(C) on filing a third or subsequent petition, $570.'

"(b) Patent Maintenance Fees.—During fiscal years 2005, 2006, and 2007, subsection (b) of section 41 of title 35, United States Code, shall be administered as though that subsection reads as follows:

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

" '(1) 3 years and 6 months after grant, $900.

" '(2) 7 years and 6 months after grant, $2,300.

" '(3) 11 years and 6 months after grant, $3,800.

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

"(c) Patent Search Fees.—During fiscal years 2005, 2006, and 2007, subsection (d) of section 41 of title 35, United States Code, shall be administered as though that subsection reads as follows:

" '(d) Patent Search and Other Fees.—

" '(1) Patent search fees.—

" '(A) The Director shall charge a fee for the search of each application for a patent, except for provisional applications. The Director shall establish the fees charged under this paragraph to recover an amount not to exceed the estimated average cost to the Office of searching applications for patent either by acquiring a search report from a qualified search authority, or by causing a search by Office personnel to be made, of each application for patent. For the 3-year period beginning on the date of enactment of this Act, the fee for a search by a qualified search authority of a patent application described in clause (i), (iv), or (v) of subparagraph (B) may not exceed $500, of a patent application described in clause (ii) of subparagraph (B) may not exceed $100, and of a patent application described in clause (iii) of subparagraph (B) may not exceed $300. The Director may not increase any such fee by more than 20 percent in each of the next three 1-year periods, and the Director may not increase any such fee thereafter.

" '(B) For purposes of determining the fees to be established under this paragraph, the cost to the Office of causing a search of an application to be made by Office personnel shall be deemed to be—

" '(i) $500 for each application for an original patent, except for design, plant, provisional, or international applications;

" '(ii) $100 for each application for an original design patent;

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

" '(iv) $500 for the national stage of each international application; and

" '(v) $500 for each application for the reissue of a patent.

" '(C) The provisions of section 111(a)(3) of this title relating to the payment of the fee for filing the application shall apply to the payment of the fee specified in this paragraph with respect to an application filed under section 111(a) of this title. The provisions of section 371(d) of this title relating to the payment of the national fee shall apply to the payment of the fee specified in this paragraph with respect to an international application.

" '(D) The Director may by regulation provide for a refund of any part of the fee specified in this paragraph for any applicant who files a written declaration of express abandonment as prescribed by the Director before an examination has been made of the application under section 131 of this title, and for any applicant who provides a search report that meets the conditions prescribed by the Director.

" '(E) For purposes of subparagraph (A), a "qualified search authority" may not include a commercial entity unless—

" '(i) the Director conducts a pilot program of limited scope, conducted over a period of not more than 18 months, which demonstrates that searches by commercial entities of the available prior art relating to the subject matter of inventions claimed in patent applications—

     " '(I) are accurate; and

     " '(II) meet or exceed the standards of searches conducted by and used by the Patent and Trademark Office during the patent examination process;

" '(ii) the Director submits a report on the results of the pilot program to Congress and the Patent Public Advisory Committee that includes—

     " '(I) a description of the scope and duration of the pilot program;

     " '(II) the identity of each commercial entity participating in the pilot program;

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

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

" '(aa) patentability determinations;

" '(bb) productivity of the Patent and Trademark Office;

" '(cc) costs to the Patent and Trademark Office;

" '(dd) costs to patent applicants; and

" '(ee) other relevant factors;

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

     " '(I) an independent evaluation of the effects that the pilot program, as compared to searches conducted by the Patent and Trademark Office, had and will have on the factors set forth in clause (ii)(IV); and

     " '(II) an analysis of the reasonableness, appropriateness, and effectiveness of the methods used in the pilot program to make the evaluations required under clause (ii)(IV); and

" '(iv) Congress does not, during the 1-year period beginning on the date on which the Patent Public Advisory Committee submits its report to the Congress under clause (iii), enact a law prohibiting searches by commercial entities of the available prior art relating to the subject matter of inventions claimed in patent applications.

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

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

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

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

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

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

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

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

" '(C) For each black and white copy of a patent, $3.

The yearly fee for providing a library specified in section 12 of this title with uncertified printed copies of the specifications and drawings for all patents in that year shall be $50.'

"(d) Adjustments.—During fiscal years 2005, 2006, and 2007, subsection (f) of section 41 of title 35, United States Code, shall apply to the fees established under this section.

"(e) Fees For Small Entities.—During fiscal years 2005, 2006, and 2007, subsection (h) of section 41 of title 35, United States Code, shall be administered as though that subsection is amended—

"(1) in paragraph (1), by striking 'Fees charged under subsection (a) or (b)' and inserting 'Subject to paragraph (3), fees charged under subsections (a), (b), and (d)(1)'; and

"(2) by adding at the end the following new paragraph:

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

"SEC. 802. ADJUSTMENT OF TRADEMARK FEES.

"(a) Fee For Filing Application.—Until such time as the Director sets or adjusts the fees otherwise, under such conditions as may be prescribed by the Director, the fee under section 31(a) of the Trademark Act of 1946 (15 U.S.C. 1113(a)) for: (1) the filing of a paper application for the registration of a trademark shall be $375; (2) the filing of an electronic application shall be $325; and (3) the filing of an electronic application meeting certain additional requirements prescribed by the Director shall be $275. The provisions of the second and third sentences of section 31(a) of the Trademark Act of 1946 shall apply to the fees established under this section.

"(b) Reference to Trademark Act of 1946.—For purposes of this section, the 'Trademark Act of 1946' refers to the Act entitled 'An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes.', approved July 5, 1946 (15 U.S.C. 1051 et seq.).

"SEC. 803. EFFECTIVE DATE, APPLICABILITY, AND TRANSITIONAL PROVISION.

"(a) Effective Date.—Except as otherwise provided in this title (including this section), the provisions of this title shall take effect on the date of the enactment of this Act [Dec. 8, 2004].

"(b) Applicability.—

"(1)(A) Except as provided in subparagraphs (B) and (C), the provisions of section 801 shall apply to all patents, whenever granted, and to all patent applications pending on or filed after the effective date set forth in subsection (a) of this section.

"(B)(i) Except as provided in clause (ii), subsections (a)(1) and (3) and (d)(1) of section 41 of title 35, United States Code, as administered as provided in this title, shall apply only to—

"(I) applications for patents filed under section 111 of title 35, United States Code, on or after the effective date set forth in subsection (a) of this section, and

"(II) international applications entering the national stage under section 371 of title 35, United States Code, for which the basic national fee specified in section 41 of title 35, United States Code, was not paid before the effective date set forth in subsection (a) of this section.

"(ii) Section 41(a)(1)(D) of title 35, United States Code, as administered as provided in this title, shall apply only to applications for patent filed under section 111(b) of title 35, United States Code, before, on, or after the effective date set forth in subsection (a) of this section in which the filing fee specified in section 41 of title 35, United States Code, was not paid before the effective date set forth in subsection (a) of this section.

"(C) Section 41(a)(2) of title 35, United States Code, as administered as provided in this title, shall apply only to the extent that the number of excess claims, after giving effect to any cancellation of claims, is in excess of the number of claims for which the excess claims fee specified in section 41 of title 35, United States Code, was paid before the effective date set forth in subsection (a) of this section.

"(2) The provisions of section 802 shall apply to all applications for the registration of a trademark filed or amended on or after the effective date set forth in subsection (a) of this section.

"(c) Transitional Provisions.—

"(1) Search fees.—During fiscal years 2005, 2006, and 2007, the Director shall charge—

"(A) for the search of each application for an original patent, except for design, plant, provisional, or international application, $500;

"(B) for the search of each application for an original design patent, $100;

"(C) for the search of each application for an original plant patent, $300;

"(D) for the search of the national stage of each international application, $500; and

"(E) for the search of each application for the reissue of a patent, $500.

"(2) Timing of fees.—The provisions of section 111(a)(3) of title 35, United States Code, relating to the payment of the fee for filing the application shall apply to the payment of the fee specified in paragraph (1) with respect to an application filed under section 111(a) of title 35, United States Code. The provisions of section 371(d) of title 35, United States Code, relating to the payment of the national fee shall apply to the payment of the fee specified in paragraph (1) with respect to an international application.

"SEC. 804. DEFINITION.

"In this title, the term 'Director' means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office."

[Pub. L. 111–117, div. B, title I, Dec. 16, 2009, 123 Stat. 3116, provided in part: "That sections 801, 802, and 803 of division B, Public Law 108–447 [set out above] shall remain in effect during fiscal year 2010".]

[Pub. L. 111–8, div. B, title I, Mar. 11, 2009, 123 Stat. 564, provided in part: "That sections 801, 802, and 803 of division B, Public Law 108–447 [set out above] shall remain in effect during fiscal year 2009".]

[Pub. L. 110–161, div. B, title I, Dec. 26, 2007, 121 Stat. 1888, provided in part: "That sections 801, 802, and 803 of division B, Public Law 108–447 [set out above] shall remain in effect during fiscal year 2008".]

Study on Alternative Fee Structures

Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4204], Nov. 29, 1999, 113 Stat. 1536, 1501A–555, provided that: "The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office shall conduct a study of alternative fee structures that could be adopted by the United States Patent and Trademark Office to encourage maximum participation by the inventor community in the United States. The Director shall submit such study to the Committees on the Judiciary of the House of Representatives and the Senate not later than 1 year after the date of the enactment of this Act [Nov. 29, 1999]."

Cost Recovery for Publication

Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4506], Nov. 29, 1999, 113 Stat. 1536, 1501A–565, provided that: "The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office shall recover the cost of early publication required by the amendment made by section 4502 [amending section 122 of this title] by charging a separate publication fee after notice of allowance is given under section 151 of title 35, United States Code."

Continuation of Maintenance

Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4804(d)(2)], Nov. 29, 1999, 113 Stat. 1536, 1501A–590, provided that: "The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office shall not, pursuant to the amendment made by paragraph (1) [amending this section], cease to maintain, for use by the public, paper or microform collections of United States patents, foreign patent documents, and United States trademark registrations, except pursuant to notice and opportunity for public comment and except that the Director shall first submit a report to the Committees on the Judiciary of the Senate and the House of Representatives detailing such plan, including a description of the mechanisms in place to ensure the integrity of such collections and the data contained therein, as well as to ensure prompt public access to the most current available information, and certifying that the implementation of such plan will not negatively impact the public."

Access to Electronic Patent Information

Pub. L. 105–289, §4, Oct. 27, 1998, 112 Stat. 2781, provided that:

"(a) In General.—The United States Patent and Trademark Office shall develop and implement statewide computer networks with remote library sites in requesting rural States such that citizens in those States will have enhanced access to information in their State's patent and trademark depository library.

"(b) Definition.—In this section, the term 'rural States' means the States that qualified on January 1, 1997, as rural States under section 1501(b) of the Omnibus Crime Control and Safe Streets Act of 1968 (42 U.S.C. 379bb(b) [former 42 U.S.C. 3796bb(b), now 34 U.S.C. 10351(b)])."

Waiver of Certain Restrictions

Pub. L. 102–204, §2(c), Dec. 10, 1991, 105 Stat. 1636, provided that: "Surcharges established for fiscal year 1992 under section 10101(c) of the Omnibus Budget Reconciliation Act of 1990 [Pub. L. 101–508, set out below] may take effect on or after 1 day after such surcharges are published in the Federal Register. Section 553 of title 5, United States Code, shall not apply to the establishment of such surcharges for fiscal year 1992."

Unspecified Patent Fees for Fiscal Year 1992; Effective Date Contingent Upon Publication in Federal Register

Pub. L. 102–204, §5(c)(2), Dec. 10, 1991, 105 Stat. 1639, provided that fees established by the Commissioner of Patents and Trademarks under subsec. (d) of this section during fiscal year 1992 could take effect on or after 1 day after being published in the Federal Register, and that former subsec. (g) of this section and section 553 of title 5 were not to apply to the establishment of such fees during fiscal year 1992.

Patent Information Dissemination

Pub. L. 102–204, §11, Dec. 10, 1991, 105 Stat. 1641, set out definitions, established a patent information demonstration program, stipulated the information to be disseminated, provided for fees for CD-ROM purchase, and required a report to Congress one year after Dec. 10, 1991.

Surcharges on Patent Fees

Pub. L. 101–508, title X, §10101(a)–(c), Nov. 5, 1990, 104 Stat. 1388–391, as amended by Pub. L. 102–204, §2(b), Dec. 10, 1991, 105 Stat. 1636; Pub. L. 103–66, title VIII, §8001, Aug. 10, 1993, 107 Stat. 402, provided for surcharges for fees under this section during fiscal years 1991 through 1998, and stipulated how surcharges would be used and credited in those fiscal years.

Effect on Other Laws

Pub. L. 101–508, title X, §10103, Nov. 5, 1990, 104 Stat. 1388–392, provided that: "Except for section 10101(d) [not classified to the Code], nothing in this subtitle [subtitle B (§§10101–10103) of title X of Pub. L. 101–508, enacting provisions set out as notes under this section and section 1 of this title] affects the provisions of Public Law 100–703 (102 Stat. 4674 and following) [see Tables for classification]."

Public Access to Patent and Trademark Office Information

Pub. L. 100–703, title I, §104(b), (c), Nov. 19, 1988, 102 Stat. 4675, provided that the Commissioner of Patents and Trademarks maintain patent and trademark collections, search rooms, and libraries for use by the public without fees and authorized establishment of fees for access by the public to automated search systems of the Patent and Trademark Office, prior to repeal by Pub. L. 102–204, §9, Dec. 10, 1991, 105 Stat. 1641. See section 41(i) of this title.

Pub. L. 99–607, §4, Nov. 6, 1986, 100 Stat. 3471, provided that the Commissioner of Patents and Trademarks could not impose a fee for use of public patent or trademark search rooms and libraries and that costs of such rooms and libraries should come from amounts appropriated by Congress, prior to repeal by Pub. L. 100–703, title I, §104(a), Nov. 19, 1988, 102 Stat. 4675.

Patent Fees

Pub. L. 100–703, title I, §103(b), Nov. 19, 1988, 102 Stat. 4674, prohibited Commissioner of Patents and Trademarks, during fiscal years 1989, 1990, and 1991, from increasing fees established under subsec. (d) of this section, except for purposes of making adjustments which in the aggregate did not exceed fluctuations during the previous three years in the Consumer Price Index, and from establishing additional fees under such section during such fiscal years. Similar provisions were contained in Pub. L. 99–607, §3(b), Nov. 6, 1986, 100 Stat. 3471.

Pub. L. 98–622, title IV, §404, Nov. 8, 1984, 98 Stat. 3392, provided that:

"(a) Notwithstanding section 41 of title 35, United States Code, as in effect before the enactment of Public Law 97–247 (96 Stat. 317) [Aug. 27, 1982], no fee shall be collected for maintaining a plant patent in force.

"(b) Notwithstanding section 41(c) of title 35, United States Code, as in effect before the enactment of Public Law 97–247 (96 Stat. 317) [Aug. 27, 1982], the Commissioner of Patents and Trademarks [now Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office] may accept, after the six-month grace period referred to in such section 41(c), the payment of any maintenance fee due on any patent based on an application filed in the Patent and Trademark Office on or after December 12, 1980, and before August 27, 1982, to the same extent as in the case of patents based on applications filed in the Patent and Trademark Office on or after August 27, 1982."

1 So in original. Probably should be followed by a period.
35 U.S.C. § 103 (2024) — Title 35: PATENTS / Chapter 10 / Section 103: Conditions for patentability; non-obvious subject matter
Conditions for patentability; non-obvious subject matter
Status: in_force

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

(July 19, 1952, ch. 950, 66 Stat. 798; Pub. L. 98–622, title I, §103, Nov. 8, 1984, 98 Stat. 3384; Pub. L. 104–41, §1, Nov. 1, 1995, 109 Stat. 351; Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4807(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–591; Pub. L. 108–453, §2, Dec. 10, 2004, 118 Stat. 3596; Pub. L. 112–29, §§3(c), 20(j), Sept. 16, 2011, 125 Stat. 287, 335.)

Historical and Revision Notes

There is no provision corresponding to the first sentence explicitly stated in the present statutes, but the refusal of patents by the Patent Office, and the holding of patents invalid by the courts, on the ground of lack of invention or lack of patentable novelty has been followed since at least as early as 1850. This paragraph is added with the view that an explicit statement in the statute may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out.

The second sentence states that patentability as to this requirement is not to be negatived by the manner in which the invention was made, that is, it is immaterial whether it resulted from long toil and experimentation or from a flash of genius.

Editorial Notes

Amendments

2011—Pub. L. 112–29, §3(c), amended section generally. Prior to amendment, section consisted of subsecs. (a) to (c) and related to conditions for patentability; non-obvious subject matter.

Subsecs. (a), (c)(1). Pub. L. 112–29, §20(j), struck out "of this title" after "102".

2004—Subsec. (c). Pub. L. 108–453 amended subsec. (c) generally. Prior to amendment, subsec. (c) read as follows: "Subject matter developed by another person, which qualifies as prior art only under one or more of subsections (e), (f), and (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person."

1999—Subsec. (c). Pub. L. 106–113 substituted "one or more of subsections (e), (f), and (g)" for "subsection (f) or (g)".

1995—Pub. L. 104–41 designated first and second pars. as subsecs. (a) and (c), respectively, and added subsec. (b).

1984—Pub. L. 98–622 inserted "Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person."

Statutory Notes and Related Subsidiaries

Effective Date of 2011 Amendment

Amendment by section 3(c) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title.

Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 2004 Amendment

Pub. L. 108–453, §3, Dec. 10, 2004, 118 Stat. 3596, provided that:

"(a) In General.—The amendments made by this Act [amending this section] shall apply to any patent granted on or after the date of the enactment of this Act [Dec. 10, 2004].

"(b) Special Rule.—The amendments made by this Act shall not affect any final decision of a court or the United States Patent and Trademark Office rendered before the date of the enactment of this Act, and shall not affect the right of any party in any action pending before the United States Patent and Trademark Office or a court on the date of the enactment of this Act to have that party's rights determined on the basis of the provisions of title 35, United States Code, in effect on the day before the date of the enactment of this Act."

Effective Date of 1999 Amendment

Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4807(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A–591, provided that: "The amendment made by this section [amending this section] shall apply to any application for patent filed on or after the date of the enactment of this Act [Nov. 29, 1999]."

Effective Date of 1995 Amendment

Pub. L. 104–41, §3, Nov. 1, 1995, 109 Stat. 352, provided that: "The amendments made by section 1 [amending this section] shall apply to any application for patent filed on or after the date of enactment of this Act [Nov. 1, 1995] and to any application for patent pending on such date of enactment, including (in either case) an application for the reissuance of a patent."

Effective Date of 1984 Amendment

Pub. L. 98–622, title I, §106, Nov. 8, 1984, 98 Stat. 3385, provided that:

"(a) Subject to subsections (b), (c), (d), and (e) of this section, the amendments made by this Act [probably should be "this title", meaning title I of Pub. L. 98–622, enacting section 157 of this title, amending this section and sections 116, 120, 135, and 271 of this title, and enacting a provision set out as a note under section 157 of this title] shall apply to all United States patents granted before, on, or after the date of enactment of this Act [Nov. 8, 1984], and to all applications for United States patents pending on or filed after the date of enactment.

"(b) The amendments made by this Act shall not affect any final decision made by the court or the Patent and Trademark Office before the date of enactment of this Act [Nov. 8, 1984], with respect to a patent or application for patent, if no appeal from such decision is pending and the time for filing an appeal has expired.

"(c) Section 271(f) of title 35, United States Code, added by section 101 of this Act shall apply only to the supplying, or causing to be supplied, of any component or components of a patented invention after the date of enactment of this Act [Nov. 8, 1984].

"(d) No United States patent granted before the date of enactment of this Act [Nov. 8, 1984] shall abridge or affect the right of any person or his successors in business who made, purchased, or used prior to such effective date anything protected by the patent, to continue the use of, or to sell to others to be used or sold, the specific thing so made, purchased, or used, if the patent claims were invalid or otherwise unenforceable on a ground obviated by section 103 or 104 of this Act [amending this section and sections 116 and 120 of this title] and the person made, purchased, or used the specific thing in reasonable reliance on such invalidity or unenforceability. If a person reasonably relied on such invalidity or unenforceability, the court before which such matter is in question may provide for the continued manufacture, use, or sale of the thing made, purchased, or used as specified, or for the manufacture, use, or sale of which substantial preparation was made before the date of enactment of this Act, and it may also provide for the continued practice of any process practiced, or for the practice of which substantial preparation was made, prior to the date of enactment, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the date of enactment.

"(e) The amendments made by this Act shall not affect the right of any party in any case pending in court on the date of enactment [Nov. 8, 1984] to have their rights determined on the basis of the substantive law in effect prior to the date of enactment."
35 U.S.C. § 143 (2024) — Title 35: PATENTS / Chapter 13 / Section 143: Proceedings on appeal
Proceedings on appeal
Status: in_force

With respect to an appeal described in section 142, the Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the Patent and Trademark Office. The court may request that the Director forward the original or certified copies of such documents during pendency of the appeal. In an ex parte case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all of the issues raised in the appeal. The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32. The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal.

(July 19, 1952, ch. 950, 66 Stat. 802; Pub. L. 93–596, §1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97–164, title I, §163(a)(7), Apr. 2, 1982, 96 Stat. 49; Pub. L. 98–620, title IV, §414(a), Nov. 8, 1984, 98 Stat. 3363; Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §§4605(d), 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–571, 1501A–582; Pub. L. 107–273, div. C, title III, §§13202(b)(2), 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1901, 1906; Pub. L. 112–29, §§7(c)(3), 20(j), Sept. 16, 2011, 125 Stat. 314, 335.)

Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., §61 (R.S. 4913, amended Mar. 2, 1927, ch. 273, §10, 44 Stat. 1336).

Language is changed. The requirement that the Commissioner notify the parties is omitted and a requirement that the court notify the parties is added. The statement relating to filing the papers and testimony is made more explicit.

Editorial Notes

Amendments

2011—Pub. L. 112–29, §20(j), struck out "of this title" after "142".

Pub. L. 112–29, §7(c)(3), substituted "In an ex parte case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all of the issues raised in the appeal. The Director shall have the right to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board in a derivation proceeding under section 135 or in an inter partes or post-grant review under chapter 31 or 32." for "In an ex parte case or any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal." and struck out second occurrence of "The court shall, before hearing an appeal, give notice of the time and place of the hearing to the Director and the parties in the appeal." at the end.

2002—Pub. L. 107–273, §13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)]. See 1999 Amendment note below.

Pub. L. 107–273, §13202(b)(2), amended third sentence generally and added fourth sentence identical to existing fourth (now fifth) sentence. Prior to amendment, third sentence read as follows: "In any reexamination case, the Director shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal."

1999—Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)], as amended by Pub. L. 107–273, §13206(b)(1)(B), substituted "Director" for "Commissioner" the first, second, and fourth places appearing.

Pub. L. 106–113, §1000(a)(9) [title IV, §4605(d)], amended third sentence generally. Prior to amendment, third sentence read as follows: "In an ex parte case, the Commissioner shall submit to the court in writing the grounds for the decision of the Patent and Trademark Office, addressing all the issues involved in the appeal."

1984—Pub. L. 98–620 substituted provisions requiring the Commissioner to transmit to the court a certified list of the documents comprising the record in the Patent and Trademark Office, with respect to an appeal described in section 142 of this title, for provision which required the Commissioner to transmit to the court certified copies of all the necessary original papers and evidence in the case specified by the appellant and the appellee, and inserted provision that the court may request that the Commissioner forward the original or certified copies of such documents during the pendency of the appeal.

1982—Pub. L. 97–164 substituted "Court of Appeals for the Federal Circuit" for "Court of Customs and Patent Appeals".

1975—Pub. L. 93–596 substituted "Patent and Trademark Office" for "Patent Office".

Statutory Notes and Related Subsidiaries

Effective Date of 2011 Amendment

Amendment by section 7(c)(3) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, with certain exceptions, see section 7(e) of Pub. L. 112–29, set out as a note under section 6 of this title.

Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1999 Amendment

Amendment by section 1000(a)(9) [title IV, §4605(d)] of Pub. L. 106–113 effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, §4608(a)] of Pub. L. 106–113, set out as a note under section 41 of this title.

Amendment by section 1000(a)(9) [title IV, §4732(a)(10)(A)] of Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, §4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Effective Date of 1984 Amendment

Amendment by Pub. L. 98–620 applicable to proceedings pending in the Patent and Trademark Office on Nov. 8, 1984, and to appeals pending in the United States Court of Appeals for the Federal Circuit on such date, see section 414(c) of Pub. L. 98–620, set out as a note under section 142 of this title.

Effective Date of 1982 Amendment

Amendment by Pub. L. 97–164 effective Oct. 1, 1982, see section 402 of Pub. L. 97–164, set out as a note under section 171 of Title 28, Judiciary and Judicial Procedure.

Effective Date of 1975 Amendment

Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade.
35 U.S.C. § 119 (2024) — Title 35: PATENTS / Chapter 11 / Section 119: Benefit of earlier filing date; right of priority
Benefit of earlier filing date; right of priority
Status: in_force

(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application in this country within the 12-month period was unintentional.

(b)(1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the application number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.

(2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim under this section.

(3) The Director may require a certified copy of the original foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.

(c) In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country instead of the first filed foreign application, provided that any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority.

(d) Applications for inventors' certificates filed in a foreign country in which applicants have a right to apply, at their discretion, either for a patent or for an inventor's certificate shall be treated in this country in the same manner and have the same effect for purpose of the right of priority under this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents, provided such applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of such filing.

(e)(1) An application for patent filed under section 111(a) or section 363 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.

(2) A provisional application filed under section 111(b) may not be relied upon in any proceeding in the Patent and Trademark Office unless the fee set forth in subparagraph (A) or (C) of section 41(a)(1) has been paid.

(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeeding secular or business day. For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional 2-month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351.

(f) Applications for plant breeder's rights filed in a WTO member country (or in a foreign UPOV Contracting Party) shall have the same effect for the purpose of the right of priority under subsections (a) through (c) of this section as applications for patents, subject to the same conditions and requirements of this section as apply to applications for patents.

(g) As used in this section—

(1) the term "WTO member country" has the same meaning as the term is defined in section 104(b)(2); and

(2) the term "UPOV Contracting Party" means a member of the International Convention for the Protection of New Varieties of Plants.

(July 19, 1952, ch. 950, 66 Stat. 800; Pub. L. 87–333, §1, Oct. 3, 1961, 75 Stat. 748; Pub. L. 92–358, §1, July 28, 1972, 86 Stat. 501; Pub. L. 93–596, §1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 103–465, title V, §532(b)(1), Dec. 8, 1994, 108 Stat. 4985; Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §§4503(a), (b)(2), 4801(b), (c), 4802], Nov. 29, 1999, 113 Stat. 1536, 1501A–563, 1501A–564, 1501A–588, 1501A–589; Pub. L. 107–273, div. C, title III, §13206(b)(2), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, §§3(g)(6), 15(b), 20(j), Sept. 16, 2011, 125 Stat. 288, 328, 335; Pub. L. 112–211, title II, §§201(c)(1), 202(b)(2), Dec. 18, 2012, 126 Stat. 1534, 1536.)

Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., §32, second paragraph (R.S. 4887, second paragraph, amended (1) Mar. 3, 1903, ch. 1019, §1, 32 Stat. 1225, 1226, (2) June 19, 1936, ch. 594, 49 Stat. 1529, (3) Aug. 5, 1939, ch. 450, §1, 53 Stat. 1212).

The first paragraph is the same as the present law with changes in language. The references to designs have been removed for inclusion in another section and the opening clause has been modified to accord with actual practice and the requirements of the International Convention for the Protection of Industrial Property.

The second paragraph is new, making an additional procedural requirement for obtaining the right of priority. Copies of the foreign papers on which the right of priority is based are required so that the record of the United States patent will be complete in this country.

Editorial Notes

References in Text

The Stockholm Revision of the Paris Convention, referred to in subsec. (d), means the Convention revising the Convention of the Union of Paris of Mar. 20, 1883, as revised, for the protection of industrial property, done at Stockholm July 14, 1967, entered into force for the United States Sept. 5, 1970, with the exception of Articles 1 through 12 which entered into force for the United States Aug. 25, 1973. See 21 UST 1583; 24 UST 2140; TIAS 6293, 7727.

Amendments

2012—Subsec. (a). Pub. L. 112–211, §201(c)(1)(A), substituted "12" for "twelve" and inserted at end "The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application in this country within the 12-month period was unintentional."

Subsec. (b)(2). Pub. L. 112–211, §202(b)(2), substituted "including the requirement for payment of the fee specified in section 41(a)(7)" for "including the payment of a surcharge".

Subsec. (e)(1). Pub. L. 112–211, §201(c)(1)(B)(i), inserted "The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional." after "reference to the provisional application." and, in last sentence, substituted "including the payment of the fee specified in section 41(a)(7)" for "including the payment of a surcharge" and struck out "during the pendency of the application" before period at end.

Subsec. (e)(3). Pub. L. 112–211, §201(c)(1)(B)(ii), inserted at end "For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional 2-month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351."

2011—Subsec. (a). Pub. L. 112–29, §3(g)(6), struck out "; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing" before the period at the end.

Subsec. (e)(1). Pub. L. 112–29, §20(j), struck out "of this title" after "363" in two places and after "111(b)" in two places.

Pub. L. 112–29, §15(b), substituted "section 112(a) (other than the requirement to disclose the best mode)" for "the first paragraph of section 112 of this title".

Subsec. (e)(2). Pub. L. 112–29, §20(j), struck out "of this title" after "111(b)" and after "41(a)(1)".

Subsec. (g)(1). Pub. L. 112–29, §20(j), struck out "of this title" after "104(b)(2)".

2002—Subsec. (a). Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, §1000(a)(9) [title IV, §4802(1)]. See 1999 Amendment note below.

1999—Subsec. (a). Pub. L. 106–113, §1000(a)(9) [title IV, §4802(1)], as amended by Pub. L. 107–273, inserted "or in a WTO member country," after "or to citizens of the United States,".

Subsec. (b). Pub. L. 106–113, §1000(a)(9) [title IV, §4503(a)], amended subsec. (b) generally. Prior to amendment, subsec. (b) read as follows: "No application for patent shall be entitled to this right of priority unless a claim therefor and a certified copy of the original foreign application, specification and drawings upon which it is based are filed in the Patent and Trademark Office before the patent is granted, or at such time during the pendency of the application as required by the Commissioner not earlier than six months after the filing of the application in this country. Such certification shall be made by the patent office of the foreign country in which filed and show the date of the application and of the filing of the specification and other papers. The Commissioner may require a translation of the papers filed if not in the English language and such other information as he deems necessary."

Subsec. (e)(1). Pub. L. 106–113, §1000(a)(9) [title IV, §4503(b)(2)], inserted at end: "No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this subsection. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this subsection during the pendency of the application."

Subsec. (e)(2). Pub. L. 106–113, §1000(a)(9) [title IV, §4801(c)], struck out before period at end "and the provisional application was pending on the filing date of the application for patent under section 111(a) or section 363 of this title".

Subsec. (e)(3). Pub. L. 106–113, §1000(a)(9) [title IV, §4801(b)], added par. (3).

Subsecs. (f), (g). Pub. L. 106–113, §1000(a)(9) [title IV, §4802(2)], added subsecs. (f) and (g).

1994—Pub. L. 103–465, in section catchline, struck out "in foreign country" after "date", designated four undesignated paragraphs as subsecs. (a) to (d), and added subsec. (e).

1975—Pub. L. 93–596 substituted "Patent and Trademark Office" for "Patent Office".

1972—Pub. L. 92–358 inserted last paragraph providing that under certain circumstances, applications for inventors' certificate filed in a foreign country would be given the same priority as applications for patents, if the applicants are entitled to the benefits of the Stockholm Revision of the Paris Convention at the time of filing.

1961—Pub. L. 87–333 authorized the right provided by this section to be based upon a subsequent application in the same foreign country, instead of the first application, provided that any foreign application filed prior to such subsequent one was withdrawn, or otherwise disposed of, without having been open to public inspection and without leaving any rights outstanding, nor any basis for claiming priority.

Statutory Notes and Related Subsidiaries

Effective Date of 2012 Amendment

Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litigation commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title.

Effective Date of 2011 Amendment

Amendment by section 3(g)(6) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title.

Pub. L. 112–29, §15(c), Sept. 16, 2011, 125 Stat. 328, provided that: "The amendments made by this section [amending this section and sections 120 and 282 of this title] shall take effect upon the date of the enactment of this Act [Sept. 16, 2011] and shall apply to proceedings commenced on or after that date."

Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1999 Amendment

Amendment by section 1000(a)(9) [title IV, §4503(a), (b)(2)] of Pub. L. 106–113 effective Nov. 29, 2000, and applicable only to applications (including international applications designating the United States) filed on or after that date, see section 1000(a)(9) [title IV, §4508] of Pub. L. 106–113, as amended, set out as a note under section 10 of this title.

Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4801(d)], Nov. 29, 1999, 113 Stat. 1536, 1501A–589, provided that: "The amendments made by this section [amending this section and section 111 of this title] shall take effect on the date of the enactment of this Act [Nov. 29, 1999] and shall apply to any provisional application filed on or after June 8, 1995, except that the amendments made by subsections (b) and (c) [amending this section] shall have no effect with respect to any patent which is the subject of litigation in an action commenced before such date of enactment."

Effective Date of 1994 Amendment

Amendment by Pub. L. 103–465 effective 6 months after Dec. 8, 1994, and applicable to all patent applications filed in the United States on or after that effective date, with provisions relating to earliest filed patent application, see section 534(b)(1), (3) of Pub. L. 103–465, set out as a note under section 154 of this title.

Effective Date of 1975 Amendment

Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade.

Effective Date of 1972 Amendment

Pub. L. 92–358, §3(a), July 28, 1972, 86 Stat. 502, provided that: "Section 1 of this Act [amending this section] shall take effect on the date when Articles 1–12 of the Paris Convention of March 20, 1883, for the Protection of Industrial Property, as revised at Stockholm, July 14, 1967, come into force with respect to the United States [Aug. 25, 1973] and shall apply only to applications thereafter filed in the United States."

Effective Date of 1961 Amendment

Amendment by Pub. L. 87–333 effective on the date when the Convention of Paris for the Protection of Industrial Property of March 20, 1883, as revised at Lisbon, Oct. 31, 1958, comes into force with respect to the United States [Jan. 4, 1962] and shall apply only to applications thereafter filed in the United States by persons entitled to the benefit of said convention, as revised at the time of such filing, see section 3 of Pub. L. 87–333, set out as a note under section 1126 of Title 15, Commerce and Trade.

Japanese and Certain German Nationals; Temporary Extension of Priority Rights

Act Aug. 23, 1954, ch. 823, 68 Stat. 764, provided that the priority rights specified in section 101 of former Title 35, Patents, which arose before Apr. 1, 1950, were extended, with respect to inventions made subsequent to Jan. 1, 1946, in favor of certain Japanese and German nationals, to a date nine months after Aug. 23, 1954, subject to conditions and limitations specified in sections 104, 110, 112, and 114 of former title 35.
35 U.S.C. § 318 (2024) — Title 35: PATENTS / Chapter 31 / Section 318: Decision of the Board
Decision of the Board
Status: in_force

(a) Final Written Decision.—If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).

(b) Certificate.—If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.

(c) Intervening Rights.—Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review under this chapter shall have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate under subsection (b).

(d) Data on Length of Review.—The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each inter partes review.

(Added Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–570; amended Pub. L. 107–273, div. C, title III, §13202(c)(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 112–29, §6(a), Sept. 16, 2011, 125 Stat. 303.)

Editorial Notes

Amendments

2011—Pub. L. 112–29 amended section generally. Prior to amendment, text read as follows: "Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice."

2002—Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, which enacted this section.

Statutory Notes and Related Subsidiaries

Effective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent issued before, on, or after that effective date, with provisions for graduated implementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title.

Effective Date

Section effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, §4608(a)] of Pub. L. 106–113, set out as an Effective Date of 1999 Amendment note under section 41 of this title.
35 U.S.C. § 313 (2024) — Title 35: PATENTS / Chapter 31 / Section 313: Preliminary response to petition
Preliminary response to petition
Status: in_force

If an inter partes review petition is filed under section 311, the patent owner shall have the right to file a preliminary response to the petition, within a time period set by the Director, that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter.

(Added Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–568; amended Pub. L. 107–273, div. C, title III, §13202(c)(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 112–29, §6(a), (c)(3)(A)(ii), Sept. 16, 2011, 125 Stat. 300, 305.)

Editorial Notes

Amendments

2011—Pub. L. 112–29, §6(c)(3)(A)(ii), which directed substitution of "it has been shown that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request" for "a substantial new question of patentability affecting a claim of the patent is raised", was executed by making the substitution for "a substantial new question of patentability affecting a claim of a patent is raised", to reflect the probable intent of Congress.

Pub. L. 112–29, §6(a), amended section generally. Prior to amendment, text read as follows: "If, in a determination made under section 312(a), the Director finds that it has been shown that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request, the determination shall include an order for inter partes reexamination of the patent for resolution of the question. The order may be accompanied by the initial action of the Patent and Trademark Office on the merits of the inter partes reexamination conducted in accordance with section 314."

2002—Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, which enacted this section.

Statutory Notes and Related Subsidiaries

Effective Date of 2011 Amendment

Amendment by section 6(a) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent issued before, on, or after that effective date, with provisions for graduated implementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title.

Amendment by section 6(c)(3)(A)(ii) of Pub. L. 112–29 effective Sept. 16, 2011, and applicable to requests for inter partes reexamination filed on or after Sept. 16, 2011, but before the effective date set forth in section 6(c)(2)(A) of Pub. L. 112–29, with continued applicability of prior provisions, see section 6(c)(3)(B), (C) of Pub. L. 112–29, set out as a note under section 312 of this title.

Effective Date

Section effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, §4608(a)] of Pub. L. 106–113, set out as an Effective Date of 1999 Amendment note under section 41 of this title.
35 U.S.C. § 12 (2024) — Title 35: PATENTS / Chapter 1 / Section 12: Copies of patents and applications for public libraries
Copies of patents and applications for public libraries
Status: in_force

The Director may supply copies of specifications and drawings of patents and published applications for patents in printed or electronic form to public libraries in the United States which shall maintain such copies for the use of the public, at the rate for each year's issue established for this purpose in section 41(d).

(July 19, 1952, ch. 950, 66 Stat. 794, §13; Pub. L. 97–247, §15, Aug. 27, 1982, 96 Stat. 321; renumbered §12 and amended Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §§4507(3), 4717(1), 4732(a)(10)(A), 4804(c)], Nov. 29, 1999, 113 Stat. 1536, 1501A–565, 1501A–580, 1501A–582, 1501A–589; Pub. L. 107–273, div. C, title III, §§13205(2)(C), 13206(b)(1)(B), (3)(B), Nov. 2, 2002, 116 Stat. 1903, 1906; Pub. L. 112–29, §20(j), Sept. 16, 2011, 125 Stat. 335.)

Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., §78, part (R.S. 4934, Feb. 18, 1922, ch. 58, §9, 42 Stat. 389, 393, amended June 15, 1950, ch. 249, 64 Stat. 215).

The proviso in the schedule of fees of the existing statute is made a separate section and some changes in language are made.

Editorial Notes

Prior Provisions

A prior section 12 was renumbered section 11 of this title.

Amendments

2011—Pub. L. 112–29 struck out "of this title" after "41(d)".

2002—Pub. L. 107–273, §13206(b)(3)(B), amended directory language of Pub. L. 106–113, §1000(a)(9) [title IV, §4804(c)]. See 1999 Amendment note below.

Pub. L. 107–273, §13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)]. See 1999 Amendment note below.

Pub. L. 107–273, §13205(2)(C), made technical correction to directory language of Pub. L. 106–113, §1000(a)(9) [title IV, §4507(3)]. See 1999 Amendment note below.

1999—Pub. L. 106–113, §1000(a)(9) [title IV, §4804(c)], as amended by Pub. L. 107–273, §13206(b)(3)(B), which directed amendment of section 12 of this title by substituting "copies of specifications and drawings of patents in printed or electronic form" for "printed copies of specifications and drawings of patents", was executed to this section, which was section 13 of this title, to reflect the probable intent of Congress. This section was subsequently renumbered section 12 of this title by Pub. L. 106–113, §1000(a)(9) [title IV, §4717(1)]. See note above and Effective Date of 1999 Amendment note below.

Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)], as amended by Pub. L. 107–273, §13206(b)(1)(B), substituted "Director" for "Commissioner".

Pub. L. 106–113, §1000(a)(9) [title IV, §4717(1)], renumbered section 13 of this title as this section.

Pub. L. 106–113, §1000(a)(9) [title IV, §4507(3)], as amended by Pub. L. 107–273, §13205(2)(C), inserted "and applications" after "patents" in section catchline and "and published applications for patents" after "patents" in text.

1982—Pub. L. 97–247 substituted "section 41(d)" for "section 41(a)9".

Statutory Notes and Related Subsidiaries

Effective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1999 Amendment

Amendment by section 1000(a)(9) [title IV, §4507(3)] of Pub. L. 106–113 effective Nov. 29, 2000, and applicable only to applications (including international applications designating the United States) filed on or after that date, see section 1000(a)(9) [title IV, §4508] of Pub. L. 106–113, as amended, set out as a note under section 10 of this title.

Amendment by section 1000(a)(9) [title IV, §§4717(1), 4732(a)(10)(A)] of Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, §4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Effective Date of 1982 Amendment

Amendment by Pub. L. 97–247 effective Aug. 27, 1982, see section 17(a) of Pub. L. 97–247, set out as a note under section 41 of this title.
35 U.S.C. § 365 (2024) — Title 35: PATENTS / Chapter 36 / Section 365: Right of priority; benefit of the filing date of a prior application
Right of priority; benefit of the filing date of a prior application
Status: in_force

(a) In accordance with the conditions and requirements of subsections (a) through (d) of section 119, a national application shall be entitled to the right of priority based on a prior filed international application which designated at least one country other than the United States.

(b) In accordance with the conditions and requirement of section 119(a) and the treaty and the Regulations, an international application designating the United States shall be entitled to the right of priority based on a prior foreign application, or a prior international application designating at least one country other than the United States. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim for priority under the treaty and the Regulations, and to accept a priority claim that pertains to an application that was not filed within the priority period specified in the treaty and Regulations, but was filed within the additional 2-month period specified under section 119(a) or the treaty and Regulations.

(c) In accordance with the conditions and requirements of section 120, an international application designating the United States shall be entitled to the benefit of the filing date of a prior national application, a prior international application designating the United States, or a prior international design application as defined in section 381(a)(6) designating the United States, and a national application shall be entitled to the benefit of the filing date of a prior international application designating the United States. If any claim for the benefit of an earlier filing date is based on a prior international application which designated but did not originate in the United States or a prior international design application as defined in section 381(a)(6) which designated but did not originate in the United States, the Director may require the filing in the Patent and Trademark Office of a certified copy of such application together with a translation thereof into the English language, if it was filed in another language.

(Added Pub. L. 94–131, §1, Nov. 14, 1975, 89 Stat. 686; amended Pub. L. 98–622, title IV, §403(a), Nov. 8, 1984, 98 Stat. 3392; Pub. L. 103–465, title V, §532(c)(4), Dec. 8, 1994, 108 Stat. 4987; Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, §13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, §20(j), Sept. 16, 2011, 125 Stat. 335; Pub. L. 112–211, title I, §102(8), title II, §201(c)(2), Dec. 18, 2012, 126 Stat. 1532, 1535.)

Editorial Notes

Amendments

2012—Subsec. (b). Pub. L. 112–211, §201(c)(2), inserted at end "The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed claim for priority under the treaty and the Regulations, and to accept a priority claim that pertains to an application that was not filed within the priority period specified in the treaty and Regulations, but was filed within the additional 2-month period specified under section 119(a) or the treaty and Regulations."

Subsec. (c). Pub. L. 112–211, §102(8), substituted ", a prior international application designating the United States, or a prior international design application as defined in section 381(a)(6) designating the United States" for "or a prior international application designating the United States" and inserted "or a prior international design application as defined in section 381(a)(6) which designated but did not originate in the United States" after "did not originate in the United States".

2011—Subsec. (a). Pub. L. 112–29 struck out "of this title" after "119".

Subsec. (b). Pub. L. 112–29 struck out "of this title" after "119(a)".

Subsec. (c). Pub. L. 112–29 struck out "of this title" after "120".

2002—Subsec. (c). Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113. See 1999 Amendment note below.

1999—Subsec. (c). Pub. L. 106–113, as amended by Pub. L. 107–273, substituted "Director" for "Commissioner".

1994—Subsec. (a). Pub. L. 103–465, §532(c)(4)(A), substituted "subsections (a) through (d) of section 119" for "section 119".

Subsec. (b). Pub. L. 103–465, §532(c)(4)(B), substituted "section 119(a)" for "the first paragraph of section 119".

1984—Subsec. (c). Pub. L. 98–622 substituted "Patent and Trademark Office" for "Patent Office".

Statutory Notes and Related Subsidiaries

Effective Date of 2012 Amendment

Amendment by section 102(8) of Pub. L. 112–211 effective on the later of the date that is 1 year after Dec. 18, 2012, or the date that the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs enters into force with respect to the United States (May 13, 2015), and applicable only to certain applications filed on and after that effective date and patents issuing thereon, see section 103 of Pub. L. 112–211, set out as a note under section 100 of this title.

Amendment by section 201(c)(2) of Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litigation commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title.

Effective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1999 Amendment

Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, §4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Effective Date of 1994 Amendment

Amendment by Pub. L. 103–465 effective 6 months after Dec. 8, 1994, and applicable to all patent applications filed in the United States on or after that effective date, with provisions relating to earliest filed patent application, see section 534(b)(1), (3) of Pub. L. 103–465, set out as a note under section 154 of this title.

Effective Date of 1984 Amendment

Amendment by Pub. L. 98–622 effective Nov. 8, 1984, see section 406(a) of Pub. L. 98–622, set out as a note under section 351 of this title.

Effective Date

Section effective Jan. 24, 1978, and applicable to international and national applications filed on and after that date, see section 11 of Pub. L. 94–131, set out as a note under section 351 of this title.
35 U.S.C. § 11 (2024) — Title 35: PATENTS / Chapter 1 / Section 11: Exchange of copies of patents and applications with foreign countries
Exchange of copies of patents and applications with foreign countries
Status: in_force

(a) In General.—The Director may exchange copies of specifications and drawings of United States patents and published applications for patents for those of foreign countries. The Director shall not enter into an agreement to provide such copies of specifications and drawings of United States patents and applications to a foreign country, other than a USMCA country or a WTO member country, without the express authorization of the Secretary of Commerce.

(b) Definitions.—In this section—

(1) the term "USMCA country" has the meaning given that term in section 3 of the United States-Mexico-Canada Agreement Implementation Act (19 U.S.C. 4502); and

(2) the term "WTO member country" has the meaning given that term in section 2(10) of the Uruguay Round Agreements Act (19 U.S.C. 3501(10)).

(July 19, 1952, ch. 950, 66 Stat. 794, §12; renumbered §11 and amended Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §§4507(2), 4717(1), 4732(a)(10)(A), 4808], Nov. 29, 1999, 113 Stat. 1536, 1501A–565, 1501A–580, 1501A–582, 1501A–591; Pub. L. 107–273, div. C, title III, §§13205(2)(B), 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1903, 1906; Pub. L. 116–260, div. O, title VI, §602(d), Dec. 27, 2020, 134 Stat. 2153.)

Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., §§15, and 78, part (Jan. 14, 1915, 38 Stat. 1221; Feb. 18, 1922, ch. 58, §9, proviso in, 42 Stat. 393).

The first act mentioned applies to Canada only, the second to any country; these are consolidated in one section, specific reference to one country not being necessary.

Language is changed.

Editorial Notes

Prior Provisions

A prior section 11 was renumbered section 10 of this title.

Amendments

2020—Pub. L. 116–260 designated existing provisions as subsec. (a) and inserted heading, substituted "other than a USMCA country" for "other than a NAFTA country", and substituted subsec. (b) for former third sentence which read as follows: "For purposes of this section, the terms 'NAFTA country' and 'WTO member country' have the meanings given those terms in section 104(b)."

2002—Pub. L. 107–273, §13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)]. See 1999 Amendment note below.

Pub. L. 107–273, §13205(2)(B), made technical correction to directory language of Pub. L. 106–113, §1000(a)(9) [title IV, §4507(2)]. See 1999 Amendment note below.

1999—Pub. L. 106–113, §1000(a)(9) [title IV, §4808], inserted at end "The Director shall not enter into an agreement to provide such copies of specifications and drawings of United States patents and applications to a foreign country, other than a NAFTA country or a WTO member country, without the express authorization of the Secretary of Commerce. For purposes of this section, the terms 'NAFTA country' and 'WTO member country' have the meanings given those terms in section 104(b)."

Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)], as amended by Pub. L. 107–273, §13206(b)(1)(B), substituted "Director" for "Commissioner".

Pub. L. 106–113, §1000(a)(9) [title IV, §4717(1)], renumbered section 12 of this title as this section.

Pub. L. 106–113, §1000(a)(9) [title IV, §4507(2)], as amended by Pub. L. 107–273, §13205(2)(B), inserted "and applications" after "patents" in section catchline and "and published applications for patents" after "patents" in text.

Statutory Notes and Related Subsidiaries

Effective Date of 2020 Amendment

Amendment by Pub. L. 116–260 effective July 1, 2020, see section 602(g) of div. O of Pub. L. 116–260, set out as a note under section 2578b of Title 19, Customs Duties.

Effective Date of 1999 Amendment

Amendment by section 1000(a)(9) [title IV, §4507(2)] of Pub. L. 106–113 effective Nov. 29, 2000, and applicable only to applications (including international applications designating the United States) filed on or after that date, see section 1000(a)(9) [title IV, §4508] of Pub. L. 106–113, as amended, set out as a note under section 10 of this title.

Amendment by section 1000(a)(9) [title IV, §§4717(1), 4732(a)(10)(A)] of Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, §4731] of Pub. L. 106–113, set out as a note under section 1 of this title.
35 U.S.C. § 201 (2024) — Title 35: PATENTS / Chapter 18 / Section 201: Definitions
Definitions
Status: in_force

As used in this chapter—

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

(b) The term "funding agreement" means any contract, grant, or cooperative agreement entered into between any Federal agency, other than the Tennessee Valley Authority, and any contractor for the performance of experimental, developmental, or research work funded in whole or in part by the Federal Government. Such term includes any assignment, substitution of parties, or subcontract of any type entered into for the performance of experimental, developmental, or research work under a funding agreement as herein defined.

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

(d) The term "invention" means any invention or discovery which is or may be patentable or otherwise protectable under this title or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.).

(e) The term "subject invention" means any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement: Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) 1 of the Plant Variety Protection Act (7 U.S.C. 2401(d))) must also occur during the period of contract performance.

(f) The term "practical application" means to manufacture in the case of a composition or product, to practice in the case of a process or method, or to operate in the case of a machine or system; and, in each case, under such conditions as to establish that the invention is being utilized and that its benefits are to the extent permitted by law or Government regulations available to the public on reasonable terms.

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

(h) The term "small business firm" means a small business concern as defined at section 2 of Public Law 85–536 (15 U.S.C. 632) and implementing regulations of the Administrator of the Small Business Administration.

(i) The term "nonprofit organization" means universities and other institutions of higher education or an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a)) or any nonprofit scientific or educational organization qualified under a State nonprofit organization statute.

(Added Pub. L. 96–517, §6(a), Dec. 12, 1980, 94 Stat. 3019; amended Pub. L. 98–620, title V, §501(1), (2), Nov. 8, 1984, 98 Stat. 3364; Pub. L. 99–514, §2, Oct. 22, 1986, 100 Stat. 2095; Pub. L. 107–273, div. C, title III, §13206(a)(12), Nov. 2, 2002, 116 Stat. 1904.)

Editorial Notes

References in Text

The Plant Variety Protection Act, referred to in subsec. (d), is Pub. L. 91–577, Dec. 24, 1970, 84 Stat. 1542, which is classified principally to chapter 57 (§2321 et seq.) of Title 7, Agriculture. For complete classification of this Act to the Code, see Short Title note set out under section 2321 of Title 7 and Tables.

Section 41 of the Plant Variety Protection Act (7 U.S.C. 2401(d)), referred to in subsec. (e), was subsequently amended, and no longer defines the term "date of determination".

Amendments

2002—Subsec. (a). Pub. L. 107–273 struck out "United States Code," after "section 105 of title 5," and ", United States Code" after "section 102 of title 5".

1986—Subsec. (i). Pub. L. 99–514 substituted "Internal Revenue Code of 1986" for "Internal Revenue Code of 1954".

1984—Subsec. (d). Pub. L. 98–620, §501(1), inserted "or any novel variety of plant which is or may be protectable under the Plant Variety Protection Act (7 U.S.C. 2321 et seq.)" after "title".

Subsec. (e). Pub. L. 98–620, §501(2), inserted ": Provided, That in the case of a variety of plant, the date of determination (as defined in section 41(d) of the Plant Variety Protection Act (7 U.S.C. 2401(d))) must also occur during the period of contract performance" after "agreement".

Statutory Notes and Related Subsidiaries

Effective Date

Section effective July 1, 1981, but implementing regulations authorized to be issued earlier, see section 8(f) of Pub. L. 96–517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.

1 See References in Text note below.
35 U.S.C. § 368 (2024) — Title 35: PATENTS / Chapter 36 / Section 368: Secrecy of certain inventions; filing international applications in foreign countries
Secrecy of certain inventions; filing international applications in foreign countries
Status: in_force

(a) International applications filed in the Patent and Trademark Office shall be subject to the provisions of chapter 17.

(b) In accordance with article 27(8) of the treaty, the filing of an international application in a country other than the United States on the invention made in this country shall be considered to constitute the filing of an application in a foreign country within the meaning of chapter 17, whether or not the United States is designated in that international application.

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

(Added Pub. L. 94–131, §1, Nov. 14, 1975, 89 Stat. 687; amended Pub. L. 98–622, title IV, §403(a), Nov. 8, 1984, 98 Stat. 3392; Pub. L. 99–616, §6, Nov. 6, 1986, 100 Stat. 3486; Pub. L. 112–29, §20(j), Sept. 16, 2011, 125 Stat. 335.)

Editorial Notes

Amendments

2011—Subsecs. (a), (b). Pub. L. 112–29 struck out "of this title" after "17".

1986—Subsec. (c). Pub. L. 99–616 substituted a comma for "or" after "Receiving Office" and "International Preliminary Examining Authority" for "both".

1984—Subsecs. (a), (c). Pub. L. 98–622 substituted "Patent and Trademark Office" for "Patent Office".

Statutory Notes and Related Subsidiaries

Effective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1986 Amendment

Amendment by Pub. L. 99–616 effective July 1, 1987, and applicable to all international applications pending before or after that date, see section 9 of Pub. L. 99–616, set out as a note under section 351 of this title.

Effective Date of 1984 Amendment

Amendment by Pub. L. 98–622 effective Nov. 8, 1984, see section 406(a) of Pub. L. 98–622, set out as a note under section 351 of this title.

Effective Date

Section effective Jan. 24, 1978, and applicable to international and national applications filed on and after that date, see section 11 of Pub. L. 94–131, set out as a note under section 351 of this title.