Appendix L   Patent Laws
United States Code Title 35 - Patents
Updated October 1, 2011. Incorporates
the changes made by the Leahy-Smith
America Invents Act, Public Law
112-29, 125 Stat. 284 (Sept. 16, 2011).
Uncodified law and amendments not
yet in effect are set forth in Editor's
Notes which follow the relevant
statutory sections.
PART I — PART I—UNITED STATES
PATENT AND TRADEMARK OFFICE
CHAPTER 1 — ESTABLISHMENT, OFFICERS
AND EMPLOYEES, FUNCTIONS
Sec.
1. 1 Establishment.
2. 2 Powers and duties.
3. 3 Officers and employees.
4. 4 Restrictions on officers and employees as to
interest in patents.
5. 5 Patent and Trademark Office Public Advisory
Committees.
6. 6 Board of Patent and Appeals and Interferences.
7. 7 Library.
8. 8 Classification of patents.
9. 9 Certified copies of records.
10. 10 Publications.
11. 11 Exchange of copies of patents and applications
with foreign countries.
12. 12 Copies of patents and applications for public
libraries.
13. 13 Annual report to Congress.
CHAPTER 2 — PROCEEDINGS IN THE PATENT
AND TRADEMARK OFFICE
14. 21 Filing date and day for taking action.
15. 22 Printing of papers filed.
16. 23 Testimony in Patent and Trademark Office cases.
17. 24 Subpoenas, witnesses.
18. 25 Declaration in lieu of oath.
19. 26 Effect of defective execution.CHAPTER 3 — PRACTICE BEFORE PATENT
AND TRADEMARK OFFICE
20. 31 [Repealed]
21. 32 Suspension or exclusion from practice.
22. 33 Unauthorized representation as practitioner.
CHAPTER 4 — PATENT FEES; FUNDING;
SEARCH SYSTEMS
23. 41 Patent fees; patent and trademark search systems.
24. 42 Patent and Trademark Office funding.
PART II — PART II—PATENTABILITY OF
INVENTIONS AND GRANT OF PATENTS
CHAPTER 10 — PATENTABILITY OF
INVENTIONS
25. 100 Definitions.
26. 101 Inventions patentable.
27. 102 Conditions for patentability; novelty and loss
of right to patent.
28. 103 Conditions for patentability; non-obvious
subject matter.
29. 104 Invention made abroad.
30. 105 Inventions in outer space.
CHAPTER 11 — APPLICATION FOR PATENT
31. 111 Application.
32. 112 Specification.
33. 113 Drawings.
34. 114 Models, specimens.
35. 115 Oath of applicant.
36. 116 Inventors.
37. 117 Death or incapacity of inventor.
38. 118 Filing by other than inventor.
39. 119 Benefit of earlier filing date; right of priority.
40. 120 Benefit of earlier filing date in the United
States.
41. 121 Divisional applications.
42. 122 Confidential status of applications; publication
of patent applications.
43. 123 Micro entity defined.
CHAPTER 12 — EXAMINATION OF
APPLICATION
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 44. 131 Examination of application.
45. 132 Notice of rejection; reexamination.
46. 133 Time for prosecuting application.
47. 134 Appeal to the Board of Patent Appeals and
Interferences.
48. 135 Interferences.
CHAPTER 13 — REVIEW OF PATENT AND
TRADEMARK OFFICE DECISION
49. 141 Appeal to Court of Appeals for the Federal
Circuit.
50. 142 Notice of appeal.
51. 143 Proceedings on appeal.
52. 144 Decision on appeal.
53. 145 Civil action to obtain patent.
54. 146 Civil action in case of interference.
CHAPTER 14 — ISSUE OF PATENT
55. 151 Issue of patent.
56. 152 Issue of patent to assignee.
57. 153 How issued.
58. 154 Contents and term of patent; provisional rights.
59. 155 Patent term extension.
60. 155A Patent term restoration.
61. 156 Extension of patent term.
62. 157 Statutory invention registration.
CHAPTER 15 — PLANT PATENTS
63. Patents for plants.
64. Description, claim.
65. Grant.
66. Assistance of the Department of Agriculture.
CHAPTER 16 — DESIGNS
67. 171 Patents for designs.
68. 172 Right of priority.
69. 173 Term of design patent.
CHAPTER 17 — SECRECY OF CERTAIN
INVENTIONS AND FILING APPLICATIONS IN
FOREIGN COUNTRIES
70. 181 Secrecy of certain inventions and withholding
of patent.71. 182 Abandonment of invention for unauthorized
disclosure.
72. 183 Right to compensation.
73. 184 Filing of application in foreign country.
74. 185 Patent barred for filing without license.
75. 186 Penalty.
76. 187 Nonapplicability to certain persons.
77. 188 Rules and regulations, delegation of power.
CHAPTER 18 — PATENT RIGHTS IN
INVENTIONS MADE WITH FEDERAL
ASSISTANCE
78. 200 Policy and objective.
79. 201 Definitions.
80. 202 Disposition of rights.
81. 203 March-in rights.
82. 204 Preference for United States industry.
83. 205 Confidentiality.
84. 206 Uniform clauses and regulations.
85. 207 Domestic and foreign protection of federally
owned inventions.
86. 208 Regulations governing Federal licensing.
87. 209 Licensing federally owned inventions.
88. 210 Precedence of chapter.
89. 211 Relationship to antitrust laws.
90. 212 Disposition of rights in educational awards.
PART III — PART III—PATENTS AND
PROTECTION OF PATENT RIGHTS
CHAPTER 25 — AMENDMENT AND
CORRECTION OF PATENTS
91. 251 Reissue of defective patents.
92. 252 Effect of reissue.
93. 253 Disclaimer.
94. 254 Certificate of correction of Patent and
Trademark Office mistake.
95. 255 Certificate of correction of applicant’s mistake.
96. 256 Correction of named inventor.
CHAPTER 26 — OWNERSHIP AND
ASSIGNMENT
97. 261 Ownership; assignment.
98. 262 Joint owners.
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 CHAPTER 27 — GOVERNMENT INTERESTS
IN PATENTS
99. 266 [Repealed.]
100. 267 Time for taking action in Government
applications.
CHAPTER 28 — INFRINGEMENT OF PATENTS
101. 271 Infringement of patent.
102. 272 Temporary presence in the United States.
103. 273 Defense to infringement based on prior
commercial use.
CHAPTER 29 — REMEDIES FOR
INFRINGEMENT OF PATENT, AND OTHER
ACTIONS
104. 281 Remedy for infringement of patent.
105. 282 Presumption of validity; defenses.
106. 283 Injunction.
107. 284 Damages.
108. 285 Attorney fees.
109. 286 Time limitation on damages.
110. 287 Limitation on damages and other remedies;
marking and notice.
111. 288 Action for infringement of a patent containing
an invalid claim.
112. 289 Additional remedy for infringement of design
patent.
113. 290 Notice of patent suits.
114. 291 Interfering patents.
115. 292 False marking.
116. 293 Nonresident patentee; service and notice.
117. 294 V oluntary arbitration.
118. 295 Presumptions: Product made by patented
process.
119. 296 Liability of States, instrumentalities of States,
and State officials for infringement of patents.
120. 297 Improper and deceptive invention promotion.
121. [298 Advice of counsel. (Sept. 16, 2012)]
122. 299 Joinder of parties.
CHAPTER 30 — PRIOR ART CITATIONS TO
OFFICE AND EX PARTE REEXAMINATION OF
PATENTS
123. 301 Citation of prior art.124. 302 Request for reexamination.
125. 303 Determination of issue by Director.
126. 304 Reexamination order by Director.
127. 305 Conduct of reexamination proceedings.
128. 306 Appeal.
129. 307 Certificate of patentability, unpatentability, and
claim cancellation.
CHAPTER 31 — OPTIONAL INTER PARTES
REEXAMINATION PROCEDURES
130. 311 Request for inter partes reexamination.
131. 312 Determination of issue by Director.
132. 313 Inter partes reexamination order by Director.
133. 314 Conduct of inter partes reexamination
proceedings.
134. 315 Appeal.
135. 316 Certificate of patentability, unpatentability, and
claim cancellation.
136. 317 Inter partes reexamination prohibited.
137. 318 Stay of litigation.
CHAPTER — CHAPTER 31—INTER PARTES
REVIEW
138. 311 Inter partes review.
139. 312 Petitions.
140. 313 Preliminary response to petition.
141. 314 Institution of inter partes review.
142. 315 Relation to other proceedings or actions.
143. 316 Conduct of inter partes review.
144. 317 Settlement.
145. 318 Decision of the Board.
146. 319 Appeal.
CHAPTER — CHAPTER 32—POST-GRANT
REVIEW
147. 321 Post-grant review.
148. 322 Petitions.
149. 323 Preliminary response to petition.
150. 324 Institution of post-grant review.
151. 325 Relation to other proceedings or actions.
152. 326 Conduct of post-grant review.
153. 327 Settlement.
154. 328 Decision of the Board.
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 155. 329 Appeal.
PART I — Pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec.
6, 125 Stat. 284, Chapter 31 of title 35, United
States Code, will be revised in its entirety
effective Sept. 16, 2012.
PART IV — PART IV—PATENT
COOPERATION TREATY
CHAPTER 35 — DEFINITIONS
156. 351 Definitions.
CHAPTER 36 — INTERNATIONAL STAGE
157. 361 Receiving Office.
158. 362 International Searching Authority and
International Preliminary Examining Authority.
159. 363 International application designating the United
States: Effect.
160. 364 International stage: Procedure.
161. 365 Right of priority; benefit of the filing date of a
prior application.
162. 366 Withdrawn international application.
163. 367 Actions of other authorities: Review.
164. 368 Secrecy of certain inventions; filing
international applications in foreign countries.
CHAPTER 37 — NATIONAL STAGE
165. 371 National stage: Commencement.
166. 372 National stage: Requirements and procedure.
167. 373 Improper applicant.
168. 374 Publication of international application: Effect.
169. 375 Patent issued on international application:
Effect.
170. 376 Fees.
United States Code Title 35 - Patents
Updated October 1, 2011. Incorporates the
changes made by the Leahy-Smith America
Invents Act, Public Law 112-29, 125 Stat. 284
(Sept. 16, 2011). Uncodified law and
amendments not yet in effect are set forth in
Editor's Notes which follow the relevant
statutory sections.
PART I — PART I—UNITED STATES
PATENT AND TRADEMARK OFFICECHAPTER 1 — ESTABLISHMENT, OFFICERS
AND EMPLOYEES, FUNCTIONS
Sec.
1. 1 Establishment.
2. 2 Powers and duties.
3. 3 Officers and employees.
4. 4 Restrictions on officers and employees as to
interest in patents.
5. 5 Patent and Trademark Office Public Advisory
Committees.
6. 6 Board of Patent and Appeals and Interferences.
7. 7 Library.
8. 8 Classification of patents.
9. 9 Certified copies of records.
10. 10 Publications.
11. 11 Exchange of copies of patents and applications
with foreign countries.
12. 12 Copies of patents and applications for public
libraries.
13. 13 Annual report to Congress.
35 U.S.C. 1
(a)  ESTABLISHMENT.— The United States Patent
and Trademark Office is established as an agency of the
United States, within the Department of Commerce. In
carrying out its functions, the United States Patent and
Trademark Office shall be subject to the policy direction
of the Secretary of Commerce, but otherwise shall retain
responsibility for decisions regarding the management
and administration of its operations and shall exercise
independent control of its budget allocations and
expenditures, personnel decisions and processes,
procurements, and other administrative and management
functions in accordance with this title and applicable
provisions of law. Those operations designed to grant and
issue patents and those operations which are designed to
facilitate the registration of trademarks shall be treated
as separate operating units within the Office.
(b)  OFFICES.— The United States Patent and
Trademark Office shall maintain its principal office in
the metropolitan Washington, D.C., area, for the service
of process and papers and for the purpose of carrying out
its functions. The United States Patent and Trademark
Office shall be deemed, for purposes of venue in civil
actions, to be a resident of the district in which its
principal office is located, except where jurisdiction is
otherwise provided by law. The United States Patent and
Trademark Office may establish satellite offices in such
other places in the United States as it considers necessary
and appropriate in the conduct of its business.
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 (c)  REFERENCE.— For purposes of this title, the
United States Patent and Trademark Office shall also be
referred to as the “Office” and the “Patent and Trademark
Office”.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; amended Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4711).)
35 U.S.C. 2
(a)  IN GENERAL.— The United States Patent and
Trademark Office, subject to the policy direction of the
Secretary of Commerce— (1)  shall be responsible for
the granting and issuing of patents and the registration of
trademarks; and
(2)  shall be responsible for disseminating to the
public information with respect to patents and trademarks.
(b)  SPECIFIC POWERS.— The Office— (1)  shall
adopt and use a seal of the Office, which shall be
judicially noticed and with which letters patent,
certificates of trademark registrations, and papers issued
by the Office shall be authenticated;
(2)  may establish regulations, not inconsistent
with law, which— (A)  shall govern the conduct of
proceedings in the Office;
(B)  shall be made in accordance with section
553 of title 5;
(C)  shall facilitate and expedite the
processing of patent applications, particularly those which
can be filed, stored, processed, searched, and retrieved
electronically, subject to the provisions of section 122
relating to the confidential status of applications;
(D)  may govern the recognition and conduct
of agents, attorneys, or other persons representing
applicants or other parties before the Office, and may
require them, before being recognized as representatives
of applicants or other persons, to show that they are of
good moral character and reputation and are possessed
of the necessary qualifications to render to applicants or
other persons valuable service, advice, and assistance in
the presentation or prosecution of their applications or
other business before the Office;
(E)  shall recognize the public interest in
continuing to safeguard broad access to the United States
patent system through the reduced fee structure for small
entities under section 41(h)(1)  of this title; and
(F)  provide for the development of a
performance-based process that includes quantitative and
qualitative measures and standards for evaluating
cost-effectiveness and is consistent with the principles of
impartiality and competitiveness;
(3)  may acquire, construct, purchase, lease, hold,
manage, operate, improve, alter, and renovate any real,
personal, or mixed property, or any interest therein, as it
considers necessary to carry out its functions;
(4)  (A)  may make such purchases, contracts for
the construction, or management and operation offacilities, and contracts for supplies or services, without
regard to the provisions of subtitle I and chapter 33 of
title 40, division C (except sections 3302, 3501(b), 3509,
3906, 4710, and 4711) of subtitle I of title 41, and the
McKinney-Vento Homeless Assistance Act (42 U.S.C.
11301 et seq.);
(B)  may enter into and perform such
purchases and contracts for printing services, including
the process of composition, platemaking, presswork, silk
screen processes, binding, microform, and the products
of such processes, as it considers necessary to carry out
the functions of the Office, without regard to sections 501
through 517 and 1101 through 1123 of title 44;
(5)  may use, with their consent, services,
equipment, personnel, and facilities of other departments,
agencies, and instrumentalities of the Federal Government,
on a reimbursable basis, and cooperate with such other
departments, agencies, and instrumentalities in the
establishment and use of services, equipment, and
facilities of the Office;
(6)  may, when the Director determines that it is
practicable, efficient, and cost-effective to do so, use, with
the consent of the United States and the agency,
instrumentality, Patent and Trademark Office, or
international organization concerned, the services, records,
facilities, or personnel of any State or local government
agency or instrumentality or foreign patent and trademark
office or international organization to perform functions
on its behalf;
(7)  may retain and use all of its revenues and
receipts, including revenues from the sale, lease, or
disposal of any real, personal, or mixed property, or any
interest therein, of the Office;
(8)  shall advise the President, through the
Secretary of Commerce, on national and certain
international intellectual property policy issues;
(9)  shall advise Federal departments and
agencies on matters of intellectual property policy in the
United States and intellectual property protection in other
countries;
(10)  shall provide guidance, as appropriate, with
respect to proposals by agencies to assist foreign
governments and international intergovernmental
organizations on matters of intellectual property
protection;
(11)  may conduct programs, studies, or
exchanges of items or services regarding domestic and
international intellectual property law and the
effectiveness of intellectual property protection
domestically and throughout the world;
(12)  (A)  shall advise the Secretary of
Commerce on programs and studies relating to intellectual
property policy that are conducted, or authorized to be
conducted, cooperatively with foreign intellectual property
offices and international intergovernmental organizations;
and
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 (B)  may conduct programs and studies
described in subparagraph (A); and
(13)  (A)  in coordination with the Department
of State, may conduct programs and studies cooperatively
with foreign intellectual property offices and international
intergovernmental organizations; and
(B)  with the concurrence of the Secretary of
State, may authorize the transfer of not to exceed
$100,000 in any year to the Department of State for the
purpose of making special payments to international
intergovernmental organizations for studies and programs
for advancing international cooperation concerning
patents, trademarks, and other matters.
(c)  CLARIFICATION OF SPECIFIC POWERS.—
(1)  The special payments under subsection (b)(13)(B)
shall be in addition to any other payments or contributions
to international organizations described in subsection
(b)(13)(B) and shall not be subject to any limitations
imposed by law on the amounts of such other payments
or contributions by the United States Government.
(2)  Nothing in subsection (b) shall derogate from
the duties of the Secretary of State or from the duties of
the United States Trade Representative as set forth in
section 141 of the Trade Act of 1974 (19 U.S.C. 2171).
(3)  Nothing in subsection (b) shall derogate from
the duties and functions of the Register of Copyrights or
otherwise alter current authorities relating to copyright
matters.
(4)  In exercising the Director’s powers under
paragraphs (3) and (4)(A) of subsection (b), the Director
shall consult with the Administrator of General Services.
(5)  In exercising the Director’s powers and
duties under this section, the Director shall consult with
the Register of Copyrights on all copyright and related
matters.
(d)  CONSTRUCTION.— Nothing in this section
shall be construed to nullify, void, cancel, or interrupt any
pending request-for-proposal let or contract issued by the
General Services Administration for the specific purpose
of relocating or leasing space to the United States Patent
and Trademark Office.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; amended Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4712);
subsection (b)(4)(A) amended Oct. 30, 2000, Public Law
106-400, sec. 2, 114 Stat. 1675; subsections (b)(2)(B) and
(b)(4)(B) amended Nov. 2, 2002, Public Law 107-273,
sec. 13206, 116 Stat. 1904; subsection (b)(4)(A) amended
Dec. 15, 2003, Public Law 108-178, sec. 4(g), 117 Stat.
2641; subsection (b)(4)(A) amended January 4, 2011,
Public Law 111-350, sec. 5(i)(1), 124 Stat. 3849.)
 [*Begin Editor's Note: 35 U.S.C. 2 (Sept. 16, 2012)] Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, 125 Stat. 284,
35 U.S.C. 2(b)(2) will read as follows:
35 U.S.C. 2
 *****
(b)  SPECIFIC POWERS.— The Office— *****
(2)  may establish regulations, not inconsistent
with law, which— (A)  shall govern the conduct of
proceedings in the Office;
(B)  shall be made in accordance with section
553 of title 5;
(C)  shall facilitate and expedite the
processing of patent applications, particularly those which
can be filed, stored, processed, searched, and retrieved
electronically, subject to the provisions of section 122
relating to the confidential status of applications;
(D)  may govern the recognition and conduct
of agents, attorneys, or other persons representing
applicants or other parties before the Office, and may
require them, before being recognized as representatives
of applicants or other persons, to show that they are of
good moral character and reputation and are possessed
of the necessary qualifications to render to applicants or
other persons valuable service, advice, and assistance in
the presentation or prosecution of their applications or
other business before the Office;
(E)  shall recognize the public interest in
continuing to safeguard broad access to the United States
patent system through the reduced fee structure for small
entities under section 41(h)(1);
(F)  provide for the development of a
performance-based process that includes quantitative and
qualitative measures and standards for evaluating
cost-effectiveness and is consistent with the principles of
impartiality and competitiveness; and
(G)  may, subject to any conditions
prescribed by the Director and at the request of the patent
applicant, provide for prioritization of examination of
applications for products, processes, or technologies that
are important to the national economy or national
competitiveness without recovering the aggregate extra
cost of providing such prioritization, notwithstanding
section 41 or any other provision of law;
 *****
(11)  may conduct programs, studies, or
exchanges of items or services regarding domestic and
international intellectual property law and the
effectiveness of intellectual property protection
domestically and throughout the world, and the Office is
authorized to expend funds to cover the subsistence
expenses and travel-related expenses, including per diem,
lodging costs, and transportation costs, of persons
attending such programs who are not Federal employees;
 *****
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 (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; amended Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4712);
subsection (b)(4)(A) amended Oct. 30, 2000, Public Law
106-400, sec. 2, 114 Stat. 1675; subsections (b)(2)(B) and
(b)(4)(B) amended Nov. 2, 2002, Public Law 107-273,
sec. 13206, 116 Stat. 1904; subsection (b)(4)(A) amended
Dec. 15, 2003, Public Law 108-178, sec. 4(g), 117 Stat.
2641; subsection (b)(4)(A) amended January 4, 2011,
Public Law 111-350, sec. 5(i)(1), 124 Stat. 3849;
subsection (b)(2)(G) added and subsections (b)(2)(E) and
(b)(11) amended Sept. 16, 2011, Leahy-Smith America
Invents Act, Public Law 112-29, secs. 20(j), 21(a), and
25, 125 Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 2 (Sept. 16, 2012)]
35 U.S.C. 3
(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)  REMOV AL.— The Director may be
removed from office by the President. The President shallprovide 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
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 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)  REMOV AL.— The Commissioners may
be removed from office by the Secretary for misconduct
or nonsatisfactory performance under the performance
agreement described in subparagraph (B), without regard
to the provisions of title 5. The Secretary shall provide
notification of any such removal to both Houses of
Congress.
(3)  OTHER OFFICERS AND EMPLOYEES.—
The Director shall— (A)  appoint such officers, employees
(including attorneys), and agents of the Office as the
Director considers necessary to carry out the functions of
the Office; and
(B)  define the title, authority, and duties of
such officers and employees and delegate to them such
of the powers vested in the Office as the Director may
determine. The Office shall not be subject to any
administratively or statutorily imposed limitation on
positions or personnel, and no positions or personnel of
the Office shall be taken into account for purposes of
applying any such limitation.
(4)  TRAINING OF EXAMINERS.— The
Office shall submit to the Congress a proposal to provide
an incentive program to retain as employees patent and
trademark examiners of the primary examiner grade or
higher who are eligible for retirement, for the sole purpose
of training patent and trademark examiners.
(5)  NATIONAL SECURITY POSITIONS.—
The Director, in consultation with the Director of the
Office of Personnel Management, shall maintain a
program for identifying national security positions and
providing for appropriate security clearances, in order to
maintain the secrecy of certain inventions, as described
in section 181 , and to prevent disclosure of sensitive and
strategic information in the interest of national security.
(c)  CONTINUED APPLICABILITY OF TITLE 5.
— Officers and employees of the Office shall be subject
to the provisions of title 5, relating to Federal employees.
(d)  ADOPTION OF EXISTING LABOR
AGREEMENTS.— The Office shall adopt all labor
agreements which are in effect, as of the day before the
effective date of the Patent and Trademark Office
Efficiency Act, with respect to such Office (as then in
effect).
(e)  CARRYOVER OF PERSONNEL.— (1)  FROM
PTO.— Effective as of the effective date of the Patent
and Trademark Office Efficiency Act, all officers and
employees of the Patent and Trademark Office on the day
before such effective date shall become officers and
employees of the Office, without a break in service.(2)  OTHER PERSONNEL.— Any individual
who, on the day before the effective date of the Patent
and Trademark Office Efficiency Act, is an officer or
employee of the Department of Commerce (other than an
officer or employee under paragraph (1)) shall be
transferred to the Office, as necessary to carry out the
purposes of this Act, if— (A)  such individual serves in
a position for which a major function is the performance
of work reimbursed by the Patent and Trademark Office,
as determined by the Secretary of Commerce;
(B)  such individual serves in a position that
performed work in support of the Patent and Trademark
Office during at least half of the incumbent’s work time,
as determined by the Secretary of Commerce; or
(C)  such transfer would be in the interest of
the Office, as determined by the Secretary of Commerce
in consultation with the Director.
Any transfer under this paragraph shall be effective as of
the same effective date as referred to in paragraph (1),
and shall be made without a break in service.
(f)  TRANSITION PROVISIONS.— (1)  INTERIM
APPOINTMENT OF DIRECTOR.— On or after the
effective date of the Patent and Trademark Office
Efficiency Act, the President shall appoint an individual
to serve as the Director until the date on which a Director
qualifies under subsection (a). The President shall not
make more than one such appointment under this
subsection.
(2)  CONTINUATION IN OFFICE OF
CERTAIN OFFICERS.— (A)  The individual serving as
the Assistant Commissioner for Patents on the day before
the effective date of the Patent and Trademark Office
Efficiency Act may serve as the Commissioner for Patents
until the date on which a Commissioner for Patents is
appointed under subsection (b).
(B)  The individual serving as the Assistant
Commissioner for Trademarks on the day before the
effective date of the Patent and Trademark Office
Efficiency Act may serve as the Commissioner for
Trademarks until the date on which a Commissioner for
Trademarks is appointed under subsection (b).
(Amended Sept. 6, 1958, Public Law 85-933, sec. 1, 72
Stat. 1793; Sept. 23, 1959, Public Law 86-370, sec. 1(a),
73 Stat. 650; Aug. 14, 1964, Public Law 88-426, sec.
305(26), 78 Stat. 425; Jan. 2, 1975, Public Law 93-596,
sec. 1, 88 Stat. 1949; Jan. 2, 1975, Public Law 93-601,
sec. 1, 88 Stat. 1956; Aug. 27, 1982, Public Law 97-247,
sec. 4, 96 Stat. 319; Oct. 25, 1982, Public Law 97-366,
sec. 4, 96 Stat. 1760; Nov. 8, 1984, Public Law 98-622,
sec. 405, 98 Stat. 3392; Oct. 28, 1998, Public Law
105-304, sec. 401(a)(1), 112 Stat. 2887; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-575
(S. 1948 sec. 4713); subsections (a)(2)(B), (b)(2), and (c)
amended Nov. 2, 2002, Public Law 107-273, sec. 13206,
116 Stat. 1904.)
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  [*Begin Editor's Note: 35 U.S.C. 3 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 3(e)(2) is amended
by striking ‘‘this Act,’’ and inserting ‘‘that Act,’’ and
35 U.S.C. 3(b)(6) will be added and read as follows:
35 U.S.C. 3
 *****
(b)  OFFICERS AND EMPLOYEES OF THE
OFFICE.— *****
(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 35 U .S.C. 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.
 *****
(Amended Sept. 6, 1958, Public Law 85-933, sec. 1, 72
Stat. 1793; Sept. 23, 1959, Public Law 86-370, sec. 1(a),
73 Stat. 650; Aug. 14, 1964, Public Law 88-426, sec.
305(26), 78 Stat. 425; Jan. 2, 1975, Public Law 93-596,
sec. 1, 88 Stat. 1949; Jan. 2, 1975, Public Law 93-601,
sec. 1, 88 Stat. 1956; Aug. 27, 1982, Public Law 97-247,
sec. 4, 96 Stat. 319; Oct. 25, 1982, Public Law 97-366,
sec. 4, 96 Stat. 1760; Nov. 8, 1984, Public Law 98-622,
sec. 405, 98 Stat. 3392; Oct. 28, 1998, Public Law
105-304, sec. 401(a)(1), 112 Stat. 2887; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-575
(S. 1948 sec. 4713); subsections (a)(2)(B), (b)(2), and (c)
amended Nov. 2, 2002, Public Law 107-273, sec. 13206,
116 Stat. 1904; subsection (b)(6) added and (e)(2)
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 20(i), 21(b), 125 Stat. 284,
effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 3 (Sept. 16, 2012)]
35 U.S.C. 4
Officers and employees of the Patent and Trademark
Office shall be incapable, during the period of their
appointments and for one year thereafter, of applying for
a patent and of acquiring, directly or indirectly, except
by inheritance or bequest, any patent or any right or
interest in any patent, issued or to be issued by the Office.
In patents applied for thereafter they shall not be entitled
to any priority date earlier than one year after the
termination of their appointment.(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949.)
35 U.S.C. 5
(a)  ESTABLISHMENT OF PUBLIC ADVISORY
COMMITTEES.— (1)  APPOINTMENT.— The United
States Patent and Trademark Office shall have a Patent
Public Advisory Committee and a Trademark Public
Advisory Committee, each of which shall have nine voting
members who shall be appointed by the Secretary of
Commerce and serve at the pleasure of the Secretary of
Commerce. Members of each Public Advisory Committee
shall be appointed for a term of 3 years, except that of the
members first appointed, three shall be appointed for a
term of 1 year, and three shall be appointed for a term of
2 years. In making appointments to each Committee, the
Secretary of Commerce shall consider the risk of loss of
competitive advantage in international commerce or other
harm to United States companies as a result of such
appointments.
(2)  CHAIR.— The Secretary shall designate a
chair of each Advisory Committee, whose term as chair
shall be for 3 years.
(3)  TIMING OF APPOINTMENTS.— Initial
appointments to each Advisory Committee shall be made
within 3 months after the effective date of the Patent and
Trademark Office Efficiency Act. Vacancies shall be
filled within 3 months after they occur.
(b)  BASIS FOR APPOINTMENTS.— Members of
each Advisory Committee— (1)  shall be citizens of the
United States who shall be chosen so as to represent the
interests of diverse users of the United States Patent and
Trademark Office with respect to patents, in the case of
the Patent Public Advisory Committee, and with respect
to trademarks, in the case of the Trademark Public
Advisory Committee;
(2)  shall include members who represent small
and large entity applicants located in the United States in
proportion to the number of applications filed by such
applicants, but in no case shall members who represent
small entity patent applicants, including small business
concerns, independent inventors, and nonprofit
organizations, constitute less than 25 percent of the
members of the Patent Public Advisory Committee, and
such members shall include at least one independent
inventor; and
(3)  shall include individuals with substantial
background and achievement in finance, management,
labor relations, science, technology, and office
automation. In addition to the voting members, each
Advisory Committee shall include a representative of
each labor organization recognized by the United States
Patent and Trademark Office. Such representatives shall
be nonvoting members of the Advisory Committee to
which they are appointed.
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 (c)  MEETINGS.— Each Advisory Committee shall
meet at the call of the chair to consider an agenda set by
the chair.
(d)  DUTIES.— Each Advisory Committee shall—
(1)  review the policies, goals, performance, budget, and
user fees of the United States Patent and Trademark Office
with respect to patents, in the case of the Patent Public
Advisory Committee, and with respect to Trademarks, in
the case of the Trademark Public Advisory Committee,
and advise the Director on these matters;
(2)  within 60 days after the end of each fiscal
year— (A)  prepare an annual report on the matters
referred to in paragraph (1);
(B)  transmit the report to the Secretary of
Commerce, the President, and the Committees on the
Judiciary of the Senate and the House of Representatives;
and
(C)  publish the report in the Official Gazette
of the United States Patent and Trademark Office.
(e)  COMPENSATION.— Each member of each
Advisory Committee shall be compensated for each day
(including travel time) during which such member is
attending meetings or conferences of that Advisory
Committee or otherwise engaged in the business of that
Advisory Committee, at the rate which is the daily
equivalent of the annual rate of basic pay in effect for
level III of the Executive Schedule under section 5314 of
title 5. While away from such member’s home or regular
place of business such member shall be allowed travel
expenses, including per diem in lieu of subsistence, as
authorized by section 5703 of title 5.
(f)  ACCESS TO INFORMATION.— Members of
each Advisory Committee shall be provided access to
records and information in the United States Patent and
Trademark Office, except for personnel or other privileged
information and information concerning patent
applications required to be kept in confidence by section
122.
(g)  APPLICABILITY OF CERTAIN ETHICS
LAWS.— Members of each Advisory Committee shall
be special Government employees within the meaning of
section 202 of title 18.
(h)  INAPPLICABILITY OF FEDERAL
ADVISORY COMMITTEE ACT.— The Federal
Advisory Committee Act (5 U.S.C. App.) shall not apply
to each Advisory Committee.
(i)  OPEN MEETINGS.— The meetings of each
Advisory Committee shall be open to the public, except
that each Advisory Committee may by majority vote meet
in executive session when considering personnel,
privileged, or other confidential information.
(j)  INAPPLICABILITY OF PATENT
PROHIBITION.— Section 4  shall not apply to voting
members of the Advisory Committees.(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-578 (S. 1948 sec. 4714);
subsections (e) and (g) amended Nov. 2, 2002, Public
Law 107-273, sec. 13206, 116 Stat. 1904; subsection (i)
amended and subsection (j) added Nov. 2, 2002, Public
Law 107-273, sec. 13203, 116 Stat. 1902.)
35 U.S.C. 6
(a)  ESTABLISHMENT AND COMPOSITION.—
There shall be in the United States Patent and Trademark
Office a Board of Patent Appeals and Interferences. The
Director, the Deputy Director, the Commissioner for
Patents, the Commissioner for Trademarks, and the
administrative patent judges shall constitute the Board.
The administrative patent judges shall be persons of
competent legal knowledge and scientific ability who are
appointed by the Secretary of Commerce, in consultation
with the Director.
(b)  DUTIES.— The Board of Patent Appeals and
Interferences shall, on written appeal of an applicant,
review adverse decisions of examiners upon applications
for patents and shall determine priority and patentability
of invention in interferences declared under section
135(a) . Each appeal and interference shall be heard by at
least three members of the Board, who shall be designated
by the Director. Only the Board of Patent Appeals and
Interferences may grant rehearings.
(c)  AUTHORITY OF THE SECRETARY .— The
Secretary of Commerce may, in his or her discretion,
deem the appointment of an administrative patent judge
who, before the date of the enactment of this subsection,
held office pursuant to an appointment by the Director to
take effect on the date on which the Director initially
appointed the administrative patent judge.
(d)  DEFENSE TO CHALLENGE OF
APPOINTMENT.— It shall be a defense to a challenge
to the appointment of an administrative patent judge on
the basis of the judge's having been originally appointed
by the Director that the administrative patent judge so
appointed was acting as a de facto officer.
(Repealed by Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-580 (S. 1948 sec. 4715(a).)
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(2));
subsection (a) amended Nov. 2, 2002, Public Law
107-273, sec. 13203, 116 Stat. 1902; subsection(a)
amended and subsections (c) and (d) added Aug. 12, 2008,
Public Law 110-313, sec. 1(a)(1), 122 Stat. 3014.)
 [*Begin Editor's Note: 35 U.S.C. 6 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 6 will read as
follows:
35 U.S.C. 6
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 (a)  IN GENERAL.—There shall be in the Office a
Patent Trial and Appeal Board. The Director, the Deputy
Director, the Commissioner for Patents, the Commissioner
for Trademarks, and the administrative patent judges shall
constitute the Patent Trial and Appeal Board. The
administrative patent judges shall be persons of competent
legal knowledge and scientific ability who are appointed
by the Secretary, in consultation with the Director. Any
reference in any Federal law, Executive order, rule,
regulation, or delegation of authority, or any document
of or pertaining to the Board of Patent Appeals and
Interferences is deemed to refer to the Patent Trial and
Appeal Board.
(b)  DUTIES.—The Patent Trial and Appeal Board
shall—(1)  on written appeal of an applicant, review
adverse decisions of examiners upon applications for
patents pursuant to section 134(a);
(2)  review appeals of reexaminations pursuant
to section 134(b);
(3)  conduct derivation proceedings pursuant to
section 135; and
(4)  conduct inter partes reviews and post-grant
reviews pursuant to chapters 31 and 32.
(c)  3-MEMBER PANELS.—Each appeal, derivation
proceeding, post-grant review, and inter partes review
shall be heard by at least 3 members of the Patent Trial
and Appeal Board, who shall be designated by the
Director. Only the Patent Trial and Appeal Board may
grant rehearings.
(d)  TREATMENT OF PRIOR
APPOINTMENTS.—The Secretary of Commerce may,
in the Secretary’s discretion, deem the appointment of an
administrative patent judge who, before the date of the
enactment of this subsection, held office pursuant to an
appointment by the Director to take effect on the date on
which the Director initially appointed the administrative
patent judge. It shall be a defense to a challenge to the
appointment of an administrative patent judge on the basis
of the judge’s having been originally appointed by the
Director that the administrative patent judge so appointed
was acting as a de facto officer.
(Repealed by Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-580 (S. 1948 sec. 4715(a).)
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(2));
subsection (a) amended Nov. 2, 2002, Public Law
107-273, sec. 13203, 116 Stat. 1902; subsection(a)
amended and subsections (c) and (d) added Aug. 12, 2008,
Public Law 110-313, sec. 1(a)(1), 122 Stat. 3014;
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 7(a), 125 Stat. 284, effective
Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 6 (Sept. 16, 2012)]35 U.S.C. 7
The Director shall maintain a library of scientific and
other works and periodicals, both foreign and domestic,
in the Patent and Trademark Office to aid the officers in
the discharge of their duties.
(Repealed Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 8 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948
sec. 4717(1)); amended Jan. 2, 1975, Public Law 93-596,
sec. 1, 88 Stat. 1949.)
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 8
The Director may revise and maintain the classification
by subject matter of United States letters patent, and such
other patents and printed publications as may be necessary
or practicable, for the purpose of determining with
readiness and accuracy the novelty of inventions for which
applications for patent are filed.
(Transferred to 35 U.S.C. 7 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948
sec. 4717(1)).)
(Transferred from 35 U.S.C. 9 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948
sec. 4717(1)).)
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 9
The Director may furnish certified copies of specifications
and drawings of patents issued by the Patent and
Trademark Office, and of other records available either
to the public or to the person applying therefor.
(Transferred to 35 U.S.C. 8 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948
sec. 4717(1)).)
(Transferred from 35 U.S.C. 10 Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S.
1948 sec. 4717(1)); amended Jan. 2, 1975, Public Law
93-596, sec. 1, 88 Stat. 1949.)
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 (Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 10
(a)  The Director may publish in printed, typewritten,
or electronic form, the following:(1)  Patents and
published applications for patents, including specifications
and drawings, together with copies of the same. The
Patent and Trademark Office may print the headings of
the drawings for patents for the purpose of
photolithography.
(2)  Certificates of trademark registrations,
including statements and drawings, together with copies
of the same.
(3)  The Official Gazette of the United States
Patent and Trademark Office.
(4)  Annual indexes of patents and patentees, and
of trademarks and registrants.
(5)  Annual volumes of decisions in patent and
trademark cases.
(6)  Pamphlet copies of the patent laws and rules
of practice, laws and rules relating to trademarks, and
circulars or other publications relating to the business of
the Office.
(b)  The Director may exchange any of the
publications specified in items 3, 4, 5, and 6 of subsection
(a) of this section for publications desirable for the use
of the Patent and Trademark Office.
(Transferred to 35 U.S.C. 9 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948
sec. 4717(1)).)
(Transferred from 35 U.S.C. 11 Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
(S 1948 sec. 4717(1)); amended Jan. 2, 1975, Public Law
93-596, sec. 1, 88 Stat. 1949; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948
sec. 4804(b)).)
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-565, 582 (S. 1948 secs.
4507(1) and 4732(a)(10)(A)).)
35 U.S.C. 11
The Director may exchange copies of specifications and
drawings of United States patents and published
applications for patents for those of foreign countries.
The Director shall not enter into an agreement to provide
such copies of specifications and drawings of United
States patents and applications to a foreign country, other
than a NAFTA country or a WTO member country,
without the express authorization of the Secretary ofCommerce. For purposes of this section, the terms
“NAFTA country” and “WTO member country” have the
meanings given those terms in section 104(b) .
(Transferred to 35 U.S.C. 10 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948
sec. 4717(1)).)
(Transferred from 35 U.S.C. 12 Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
(S 1948 sec. 4717(1)); amended Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-591 (S.
1948 sec. 4808).)
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-565, 582 (S. 1948 secs.
4507(2)(A), 4507(2)(B), and 4732(a)(10)(A)).)
35 U.S.C. 12
The Director may supply copies of specifications and
drawings of patents and published applications for patents
in printed or electronic form to public libraries in the
United States which shall maintain such copies for the
use of the public, at the rate for each year’s issue
established for this purpose in section 41(d)  of this title.
(Transferred to 35 U.S.C. 11 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948
sec. 4717(1)).)
(Transferred from 35 U.S.C. 13 Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
(S 1948 sec. 4717(1)); amended Aug. 27, 1982, Public
Law 97-247, sec. 15, 96 Stat. 321; amended Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-565, 566, 580, 582, and 589 (S. 1948 secs.
4507(3)(A), 4507(3)(B), 4507(4), 4717(1),
4732(a)(10)(A), and 4804(c)).)
 [*Begin Editor's Note: 35 U.S.C. 12 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 12 (Sept. 16, 2012)]
35 U.S.C. 13
The Director shall report to the Congress, not later than
180 days after the end of each fiscal year, the moneys
received and expended by the Office, the purposes for
which the moneys were spent, the quality and quantity of
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 the work of the Office, the nature of training provided to
examiners, the evaluation of the Commissioner of Patents
and the Commissioner of Trademarks by the Secretary
of Commerce, the compensation of the Commissioners,
and other information relating to the Office.
(Transferred to 35 U.S.C. 12 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948
sec. 4717(1)).)
(Transferred from 35 U.S.C. 14 Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-580
(S 1948 sec. 4717(1)).)
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-565, 581 (S. 1948 secs.
4507(2), 4718).)
CHAPTER 2 — PROCEEDINGS IN THE PATENT
AND TRADEMARK OFFICE
Sec.
14. 21 Filing date and day for taking action.
15. 22 Printing of papers filed.
16. 23 Testimony in Patent and Trademark Office cases.
17. 24 Subpoenas, witnesses.
18. 25 Declaration in lieu of oath.
19. 26 Effect of defective execution.
35 U.S.C. 21
(a)  The Director may by rule prescribe that any paper
or fee required to be filed in the Patent and Trademark
Office will be considered filed in the Office on the date
on which it was deposited with the United States Postal
Service or would have been deposited with the United
States Postal Service but for postal service interruptions
or emergencies designated by the Director.
(b)  When the day, or the last day, for taking any
action or paying any fee in the United States Patent and
Trademark Office falls on Saturday, Sunday, or a Federal
holiday within the District of Columbia, the action may
be taken, or fee paid, on the next succeeding secular or
business day.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Aug. 27, 1982, Public Law 97-247, sec.
12, 96 Stat. 321; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 22
The Director may require papers filed in the Patent and
Trademark Office to be printed, typewritten, or on an
electronic medium.(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 
Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582, 589 (S. 1948 secs.
4732(a)(10)(A), 4804(a)).)
35 U.S.C. 23
The Director may establish rules for taking affidavits and
depositions required in cases in the Patent and Trademark
Office. Any officer authorized by law to take depositions
to be used in the courts of the United States, or of the
State where he resides, may take such affidavits and
depositions.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 24
The clerk of any United States court for the district
wherein testimony is to be taken for use in any contested
case in the Patent and Trademark Office, shall, upon the
application of any party thereto, issue a subpoena for any
witness residing or being within such district,
commanding him to appear and testify before an officer
in such district authorized to take depositions and
affidavits, at the time and place stated in the subpoena.
The provisions of the Federal Rules of Civil Procedure
relating to the attendance of witnesses and to the
production of documents and things shall apply to
contested cases in the Patent and Trademark Office.
Every witness subpoenaed and in attendance shall be
allowed the fees and traveling expenses allowed to
witnesses attending the United States district courts.
A judge of a court whose clerk issued a subpoena may
enforce obedience to the process or punish disobedience
as in other like cases, on proof that a witness, served with
such subpoena, neglected or refused to appear or to testify.
No witness shall be deemed guilty of contempt for
disobeying such subpoena unless his fees and traveling
expenses in going to, and returning from, and one day’s
attendance at the place of examination, are paid or
tendered him at the time of the service of the subpoena;
nor for refusing to disclose any secret matter except upon
appropriate order of the court which issued the subpoena.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949.)
35 U.S.C. 25
(a)  The Director may by rule prescribe that any
document to be filed in the Patent and Trademark Office
and which is required by any law, rule, or other regulation
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 to be under oath may be subscribed to by a written
declaration in such form as the Director may prescribe,
such declaration to be in lieu of the oath otherwise
required.
(b)  Whenever such written declaration is used, the
document must warn the declarant that willful false
statements and the like are punishable by fine or
imprisonment, or both ( 18 U .S.C. 1001 ).
(Added Mar. 26, 1964, Public Law 88-292, sec. 1, 78 Stat.
171; amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 26
Any document to be filed in the Patent and Trademark
Office and which is required by any law, rule, or other
regulation to be executed in a specified manner may be
provisionally accepted by the Director despite a defective
execution, provided a properly executed document is
submitted within such time as may be prescribed.
(Added Mar. 26, 1964, Public Law 88-292, sec. 1, 78 Stat.
171; amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
CHAPTER 3 — PRACTICE BEFORE PATENT
AND TRADEMARK OFFICE
Sec.
20. 31 [Repealed]
21. 32 Suspension or exclusion from practice.
22. 33 Unauthorized representation as practitioner.
35 U.S.C. 31
(Repealed Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4715(b)).)
35 U.S.C. 32
The Director may, after notice and opportunity for a
hearing, suspend or exclude, either generally or in any
particular case, from further practice before the Patent
and Trademark Office, any person, agent, or attorney
shown to be incompetent or disreputable, or guilty of
gross misconduct, or who does not comply with the
regulations established under section 2(b)(2)(D)  of this
title, or who shall, by word, circular, letter, or advertising,
with intent to defraud in any manner, deceive, mislead,
or threaten any applicant or prospective applicant, or other
person having immediate or prospective business before
the Office. The reasons for any such suspension or
exclusion shall be duly recorded. The Director shall havethe discretion to designate any attorney who is an officer
or employee of the United States Patent and Trademark
Office to conduct the hearing required by this section. A
proceeding under this section shall be commenced not
later than the earlier of either the date that is 10 years after
the date on which the misconduct forming the basis for
the proceeding occurred, or 1 year after the date on which
the misconduct forming the basis for the proceeding is
made known to an officer or employee of the Office as
prescribed in the regulations established under section
2(b)(2)(D) . The United States District Court for the
Eastern District of Virginia, under such conditions and
upon such proceedings as it by its rules determines, may
review the action of the Director upon the petition of the
person so refused recognition or so suspended or
excluded.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat.1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-580, 581, 582 (S. 1948 secs.
4715(c), 4719, 4732(a)(10)(A)); amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
secs. 3(k), 9, 125 Stat. 284.)
 [*Begin Editor's Note: 35 U.S.C. 32 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 32 (Sept. 16, 2012)]
35 U.S.C. 33
Whoever, not being recognized to practice before the
Patent and Trademark Office, holds himself out or permits
himself to be held out as so recognized, or as being
qualified to prepare or prosecute applications for patent,
shall be fined not more than $1,000 for each offense.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949.)
CHAPTER 4 — PATENT FEES; FUNDING;
SEARCH SYSTEMS
Sec.
23. 41 Patent fees; patent and trademark search systems.
24. 42 Patent and Trademark Office funding.
35 U.S.C. 41
(a)  GENERAL FEES. — The Director shall charge
the following fees: (1)  FILING AND BASIC
NATIONAL FEES. — (A)  On filing each application
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 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 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
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)  REVIV AL 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, $1,620, unless the petition is
filed under section  133 or 151, in which case the fee shall
be $540.
(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
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 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) of this section which is made within
twenty-four months after the six-month grace period if
the delay is shown to the satisfaction of the Director to
have been unintentional, or at any time after the six-month
grace period if the delay is shown to the satisfaction of
the Director to have been unavoidable. The Director may
require the payment of a surcharge as a condition of
accepting payment of any maintenance fee after the
six-month grace period. If the Director accepts payment
of a maintenance fee after the six-month grace period, the
patent shall be considered as not having expired at the
end of the grace period.
(2)  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
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 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]
(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 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)  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)(l)(A)
shall be reduced by 75 percent with respect to its
application to any entity to which paragraph (1) applies,
if the application is filed by electronic means as prescribed
by the Director.
(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 and trademark search rooms or
libraries.
(2)  A V AILABILITY 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 systemsfor purposes of education and training. The Director may
waive the payment by an individual of fees authorized by
this subsection upon a showing of need or hardship, and
if such waiver is in the public interest.
(4)  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.
(Amended July 24, 1965, Public Law 89-83, sec. 1, 2, 79
Stat. 259; Jan. 2, 1975, Public Law 93-596, sec. 1, Jan.
2, 1975, 88 Stat. 1949; Nov. 14, 1975, Public Law 94-131,
sec. 3, 89 Stat. 690; subsection (g) amended Dec. 12,
1980, Public Law 96-517, sec. 2, 94 Stat. 3017; Aug. 27,
1982, Public Law 97-247, sec. 3(a)-(e), 96 Stat. 317;
subsections (a)-(d) amended Sept. 8, 1982, Public Law
97-256, sec. 101, 96 Stat. 816; subsection (a)(6) amended
Nov. 8, 1984, Public Law 98-622, sec. 204(a), 98 Stat.
3388; subsection (h) added Nov. 6, 1986, Public Law
99-607, sec. 1(b)(2), 100 Stat. 3470; subsections (a), (b),
(d), (f), and (g) amended Dec. 10, 1991, Public Law
102-204, sec. 5, 105 Stat. 1637; subsections (a)(9) - (15)
and (i) added Dec. 10, 1991, Public Law 102-204, sec. 5,
105 Stat. 1637; subsection (c)(1) amended Oct. 23, 1992,
Public Law 102-444, sec. 1, 106 Stat. 2245; subsection
(a)(1)(C) added Dec. 8, 1994, Public Law 103-465, sec.
532(b)(2), 108 Stat. 4986; subsection (c)(2) amended,
Dec. 8, 1994, Public Law 103-465, sec. 533(b)(1), 108
Stat. 4988; subsections (a)-(b) revised Nov. 10, 1998,
Public Law 105-358, sec. 3, 112 Stat. 3272.; amended
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-554, 570, 582, 589 (S. 1948 secs. 4202,
4605(a), 4732(a)(5), 4732(a)(10)(A)) and 4804(d));
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 10, 125 Stat. 284.)
 [*Begin Editor's Note: Fee Setting Authority (Sept. 16,
2011)]
 Leahy-Smith America Invents Act, Public Law 112-29,
sec. 10, 125 Stat. 284 provides as follows:
(a)  FEE SETTING.—(1)  IN GENERAL.—The
Director 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 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
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 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 50 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 75 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.[Effective Sept.
16, 2011, amended title 35, United States Code, to add
"Section 123. Micro entity defined."]
(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 [Nov. 16, 2011] upon the expiration of the
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 60-day period beginning on the date of the enactment of
this Act.
(i)  EFFECTIVE DATE; SUNSET.—(1)  Except as
provided in subsection (h), this section 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 7-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.
 [*End Editor's Note: Fee Setting Authority (Sept. 16,
2011)]
 [*Begin Editor's Note: Fees For Patent Services (Sept.
26, 2011)]
 Leahy-Smith America Invents Act, Public Law 112-29,
sec. 11(h)-(j), 125 Stat. 284 provides as follows:
(h)  PRIORITIZED EXAMINATION FEE.— (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 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 non-provisional 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 [Sept. 26, 2011] the date
that is 10 days after the date of the enactment of this Act.
(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
for the first time with respect to that fee.
(i)  APPROPRIATION ACCOUNT TRANSITION
FEES.— (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 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 [Sept. 26, 2011]
the date that is 10 days after the date of the enactment of
this Act; 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 for the first time
with respect to that fee.
(j)  EFFECTIVE DATE.—Except as otherwise
provided in this section, this section and the amendments
made by this section shall take effect on [Sept. 16, 2011]
the date of the enactment of this Act.
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  [*End Editor's Note: Fees For Patent Services (Sept.
26, 2011)]
35 U.S.C. 42
(a)  All fees for services performed by or materials
furnished by the Patent and Trademark Office will be
payable to the Director.
(b)  All fees paid to the Director and all
appropriations for defraying the costs of the activities of
the Patent and Trademark Office will be credited to the
Patent and Trademark Office Appropriation Account in
the Treasury of the United States.
(c)  (1)  To the extent and in the amounts provided
in advance in appropriations Acts, fees authorized in this
title or any other Act to be charged or established by the
Director shall be collected by and shall, subject to
paragraph (3), be available to the Director to carry out
the activities of the Patent and Trademark Office.
(2)  There is established in the Treasury a Patent
and Trademark Fee Reserve Fund. If fee collections by
the Patent and Trademark Office for a fiscal year exceed
the amount appropriated to the Office for that fiscal year,
fees collected in excess of the appro-priated amount shall
be deposited in the Patent and Trademark Fee Reserve
Fund. To the extent and in the amounts provided in
appropriations Acts, amounts in the Fund shall be made
available until expended only for obligation and
expenditure by the Office in accordance with paragraph
(3).
(3)  (A)  Any fees that are collected under
sections 41, 42, and 376, and any surcharges on such fees,
may only be used for expenses of the Office relating to
the processing of patent applications and for other
activities, services, and materials relating to patents and
to cover a share of the administrative costs of the Office
relating to patents.
(B)  Any fees that are collected under section
31 of the Trademark Act of 1946, and any surcharges on
such fees, may only be used for expenses of the Office
relating to the processing of trademark registrations and
for other activities, services, and materials relating to
trademarks and to cover a share of the administrative costs
of the Office relating to trademarks.
(d)  The Director may refund any fee paid by mistake
or any amount paid in excess of that required.
(e)  The Secretary of Commerce shall, on the day
each year on which the President submits the annual
budget to the Congress, provide to the Committees on the
Judiciary of the Senate and the House of
Representatives:(1)  a list of patent and trademark fee
collections by the Patent and Trademark Office during
the preceding fiscal year;
(2)  a list of activities of the Patent and
Trademark Office during the preceding fiscal year whichwere supported by patent fee expenditures, trademark fee
expenditures, and appropriations;
(3)  budget plans for significant programs,
projects, and activities of the Office, including out-year
funding estimates;
(4)  any proposed disposition of surplus fees by
the Office; and
(5)  such other information as the committees
consider necessary.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 4, 89
Stat. 690; Dec. 12, 1980, Public Law 96-517, sec. 3, 94
Stat. 3018; Aug. 27, 1982, Public Law 97-247, sec. 3(g),
96 Stat. 319; Sept. 13, 1982, Public Law 97-258, sec. 3(i),
96 Stat. 1065; subsection (c) amended Dec. 10, 1991,
Public Law 102-204, sec. 5(e), 105 Stat. 1640; subsection
(e) added Dec. 10, 1991, Public Law 102-204, sec. 4, 105
Stat. 1637; subsection (c) revised Nov. 10, 1998, Public
Law 105-358, sec. 4, 112 Stat. 3274; amended Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-555, 582 (S. 1948 secs. 4205 and 4732(a)(10)(A));
subsection (c) amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 22, 125
Stat. 284, effective Oct. 1, 2011.)
PART II — PART II—PATENTABILITY OF
INVENTIONS AND GRANT OF PATENTS
CHAPTER 10 — PATENTABILITY OF
INVENTIONS
Sec.
25. 100 Definitions.
26. 101 Inventions patentable.
27. 102 Conditions for patentability; novelty and loss
of right to patent.
28. 103 Conditions for patentability; non-obvious
subject matter.
29. 104 Invention made abroad.
30. 105 Inventions in outer space.
35 U.S.C. 100
When used in this title unless the context otherwise
indicates -
(a)  The term “invention” means invention or
discovery.
(b)  The term “process” means process, art, or
method, and includes a new use of a known process,
machine, manufacture, composition of matter, or material.
(c)  The terms “United States” and “this country”
mean the United States of America, its territories and
possessions.
(d)  The word “patentee” includes not only the
patentee to whom the patent was issued but also the
successors in title to the patentee.
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 (e)  The term “third-party requester” means a person
requesting ex parte reexamination under section 302  or
inter partes reexamination under section 311  who is not
the patent owner.
(Subsection (e) added Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-567 (S. 1948 sec. 4603).)
 [*Begin Editor's Note: 35 U.S.C. 100 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 100(e)-(j) will read
as follows:
35 U.S.C. 100
When used in this title unless the context otherwise
indicates -
*****
(e)  The term “third-party requester” means a person
requesting ex parte reexamination under section 302  who
is not the patent owner.
(f)  The term "inventor" means the individual or, if
a joint invention, the individuals collectively who invented
or discovered the subject matter of the invention.
(g)  The terms "joint inventor" and "coinventor" mean
any 1 of the individuals who invented or discovered the
subject matter of a joint invention.
(h)  The term "joint research agreement" means a
written contract, grant, or cooperative agreement entered
into by 2 or more persons or entities for the performance
of experimental, developmental, or research work in the
field of the claimed invention.
(i)  (1)  The term "effective filing date" for a claimed
invention in a patent or application for patent means—
(A)  if subparagraph (B) does not apply, the actual filing
date of the patent or the application for the patent
containing a claim to the invention; or
(B)  the filing date of the earliest application
for which the patent or application is entitled, as to such
invention, to a right of priority under section 119, 365(a),
or 365(b) or to the benefit of an earlier filing date under
section 120, 121, or 365(c).
(2)  The effective filing date for a claimed
invention in an application for reissue or reissued patent
shall be determined by deeming the claim to the invention
to have been contained in the patent for which reissue
was sought.
(j)  The term "claimed invention" means the subject
matter defined by a claim in a patent or an application for
a patent.
(Subsection (e) added Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-567 (S. 1948 sec. 4603);
subsection (e) amended and subsections (f) - (j) added
Sept. 16, 2011, Leahy-Smith America Invents Act, Public
Law 112-29, sec. 3(a), 125 Stat. 284, effective March 16,
2013.) [*End Editor's Note: 35 U.S.C. 100 (March 16, 2013)]
35 U.S.C. 101
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of
this title.
 [*Begin Editor's Note: Limitation on Issuance of
Patents (Sept. 16, 2011)]
 Leahy-Smith America Invents Act, Public Law 112-29,
sec. 33, 125 Stat. 284 provides as follows:
(a) LIMITATION.—Notwithstanding any other provision
of law, no patent may issue on a claim directed to or
encompassing a human organism.
(b) EFFECTIVE DATE.—
(1) IN GENERAL.—Subsection (a) shall apply to any
application for patent that is pending on, or filed on or
after, the date of the enactment of this Act [Sept. 16,
2011].
(2) PRIOR APPLICATIONS.—Subsection (a) shall not
affect the validity of any patent issued on an application
to which paragraph (1) does not apply.
 [*End Editor's Note: Limitation on Issuance of Patents
(Sept. 16, 2011)]
35 U.S.C. 102
A person shall be entitled to a patent unless —
(a)  the invention was known or used by others in
this country, or patented or described in a printed
publication in this or a foreign country, before the
invention thereof by the applicant for patent, or
(b)  the invention was patented or described in a
printed publication in this or a foreign country or in public
use or on sale in this country, more than one year prior
to the date of the application for patent in the United
States, or
(c)  he has abandoned the invention, or
(d)  the invention was first patented or caused to be
patented, or was the subject of an inventor’s certificate,
by the applicant or his legal representatives or assigns in
a foreign country prior to the date of the application for
patent in this country on an application for patent or
inventor’s certificate filed more than twelve months before
the filing of the application in the United States, or
(e)  the invention was described in — (1) an
application for patent, published under section 122(b) ,
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 by another filed in the United States before the invention
by the applicant for patent or (2) a patent granted on an
application for patent by another filed in the United States
before the invention by the applicant for patent, except
that an international application filed under the treaty
defined in section 351(a)  shall have the effects for the
purposes of this subsection of an application filed in the
United States only if the international application
designated the United States and was published under
Article 21(2)  of such treaty in the English language; or
(f)  he did not himself invent the subject matter
sought to be patented, or
(g)(1)  during the course of an interference conducted
under section 135  or section 291 , another inventor
involved therein establishes, to the extent permitted in
section 104 , that before such person’s invention thereof
the invention was made by such other inventor and not
abandoned, suppressed, or concealed, or (2) before such
person’s invention thereof, the invention was made in this
country by another inventor who had not abandoned,
suppressed, or concealed it. In determining priority of
invention under this subsection, there shall be considered
not only the respective dates of conception and reduction
to practice of the invention, but also the reasonable
diligence of one who was first to conceive and last to
reduce to practice, from a time prior to conception by the
other.
(Amended July 28, 1972, Public Law 92-358, sec. 2, 86
Stat. 501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89
Stat. 691; subsection (e) amended Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565 (S.
1948 sec. 4505); subsection (g) amended Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-590
(S. 1948 sec. 4806); subsection (e) amended Nov. 2, 2002,
Public Law 107-273, sec. 13205, 116 Stat. 1903.)
 [*Begin Editor's Note: Tax Strategies Deemed Within
the Prior Art (Sept. 16, 2011)]
 Leahy-Smith America Invents Act, Public Law 112-29,
sec. 14, 125 Stat. 284 provides as follows:
(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.]
 [*End Editor's Note: Tax Strategies Deemed Within
the Prior Art (Sept. 16, 2011)]
 [*Begin Editor's Note: 35 U.S.C. 102 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 102 will read as
follows, and shall apply to any application for patent,
and to any patent issuing thereon, that contains or
contained at any time—
(A)  a claim to a claimed invention that has an
effective filing date as defined in section 100(i) of title
35, United States Code, that is on or after March 16, 2013
(the effective date described in the Leahy Smith America
Invents Act sec. 3(b)); or
(B)  a specific reference under section 120, 121, or
365(c) of title 35, United States Code, to any patent or
application that contains or contained at any time such a
claim. NOTE:  The provisions of 35 U.S.C. 102(g), as in
effect on  March 15, 2013, shall apply to each claim of
an application for patent, and any patent issued thereon,
for which the amendments made by this section (Leahy
Smith America Invents Act sec. 3) also apply, if such
application or patent contains or contained at any time—
(A)  a claim to an invention having an effective filing
date as defined in section 100(i) of title 35, United States
Code, that occurs before March 16, 2013 (the effective
date set forth in the Leahy Smith America Invents Act
sec. 3); or
(B)  a specific reference under section 120, 121, or
365(c) of title 35, United States Code, to any patent or
application that contains or contained at any time such a
claim.
35 U.S.C. 102
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 (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), or 365(b), or to claim the benefit of an earlier
filing date under section 120, 121, or 365(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.
(Amended July 28, 1972, Public Law 92-358, sec. 2, 86
Stat. 501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89
Stat. 691; subsection (e) amended Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-565 (S.
1948 sec. 4505); subsection (g) amended Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-590
(S. 1948 sec. 4806); subsection (e) amended Nov. 2, 2002,
Public Law 107-273, sec. 13205, 116 Stat. 1903; amended
Sept. 16, 2011, Leahy-Smith America Invents Act, Public
Law 112-29, sec. 3(b), 125 Stat. 284, effective March 16,
2013.)
 [*End Editor's Note: 35 U.S.C. 102 (March 16, 2013)]
35 U.S.C. 103
(a)  A patent may not be obtained though the
invention is not identically disclosed or described as set
forth in section 102 of this title, if the differences between
the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have
been obvious at the time the invention was made to a
person having ordinary skill in the art to which said
subject matter pertains. Patentability shall not be negatived
by the manner in which the invention was made.
(b)  (1)  Notwithstanding subsection (a), and upon
timely election by the applicant for patent to proceed
under this subsection, a biotechnological process using
or resulting in a composition of matter that is novel under
section 102  and nonobvious under subsection (a) of this
section shall be considered nonobvious if-(A)  claims to
the process and the composition of matter are contained
in either the same application for patent or in separate
applications having the same effective filing date; and
(B)  the composition of matter, and the
process at the time it was invented, were owned by the
same person or subject to an obligation of assignment to
the same person.
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 (2)  A patent issued on a process under paragraph
(1)-(A)  shall also contain the claims to the composition
of matter used in or made by that process, or
(B)  shall, if such composition of matter is
claimed in another patent, be set to expire on the same
date as such other patent, notwithstanding section 154 .
(3)  For purposes of paragraph (1), the term
“biotechnological process” means-(A)  a process of
genetically altering or otherwise inducing a single- or
multi-celled organism to-(i)  express an exogenous
nucleotide sequence,
(ii)  inhibit, eliminate, augment, or alter
expression of an endogenous nucleotide sequence, or
(iii)  express a specific physiological
characteristic not naturally associated with said organism;
(B)  cell fusion procedures yielding a cell
line that expresses a specific protein, such as a monoclonal
antibody; and
(C)  a method of using a product produced
by a process defined by subparagraph (A) or (B), or a
combination of subparagraphs (A) and (B).
(c)  (1)  Subject matter developed by another person,
which qualifies as prior art only under one or more of
subsections (e), (f), and (g) of  section 102  of this title,
shall not preclude patentability under this section where
the subject matter and the claimed invention were, at the
time the claimed invention was made, owned by the same
person or subject to an obligation of assignment to the
same person.
(2)  For purposes of this subsection, subject
matter developed by another person and a claimed
invention shall be deemed to have been owned by the
same person or subject to an obligation of assignment to
the same person if — (A)  the claimed invention was made
by or on behalf of parties to a joint research agreement
that was in effect on or before the date the claimed
invention was made;
(B)  the claimed invention was made as a
result of activities undertaken within the scope of the joint
research agreement; and
(C)  the application for patent for the claimed
invention discloses or is amended to disclose the names
of the parties to the joint research agreement.
(3)  For purposes of paragraph (2), the term “joint
research agreement” means a written contract, grant, or
cooperative agreement entered into by two or more
persons or entities for the performance of experimental,
developmental, or research work in the field of the
claimed invention.
(Amended Nov. 8, 1984, Public Law 98-622, sec. 103,
98 Stat. 3384; Nov. 1, 1995, Public Law 104-41, sec.1,
109 Stat. 3511; subsection (c) amended Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-591
(S. 1948 sec. 4807); subsection (c) amended Dec. 10,
2004, Public Law 108-453 , sec. 2, 118 Stat. 3596.) [*Begin Editor's Note: Tax Strategies Deemed Within
the Prior Art (Sept. 16, 2011)]
 Leahy-Smith America Invents Act, Public Law 112-29,
sec. 14, 125 Stat. 284 provides as follows:
(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.]
 [*End Editor's Note: Tax Strategies Deemed Within
the Prior Art (Sept. 16, 2011)]
 [*Begin Editor's Note: 35 U.S.C. 103 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 103 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 103 (March 16, 2013)]
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  Effective March 16, 2013, 35 U.S.C. 103 will read as
follows, and shall apply to any application for patent,
and to any patent issuing thereon, that contains or
contained at any time—
(A)  a claim to a claimed invention that has an
effective filing date as defined in section 100(i) of title
35, United States Code, that is on or after March 16, 2013
(the effective date described in the Leahy Smith America
Invents Act sec. 3); or
(B)  a specific reference under section 120, 121, or
365(c) of title 35, United States Code, to any patent or
application that contains or contained at any time such a
claim.
35 U.S.C. 103
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.
(Amended Nov. 8, 1984, Public Law 98-622, sec. 103,
98 Stat. 3384; Nov. 1, 1995, Public Law 104-41, sec.1,
109 Stat. 3511; subsection (c) amended Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-591
(S. 1948 sec. 4807); subsection (c) amended Dec. 10,
2004, Public Law 108-453 , sec. 2, 118 Stat. 3596;
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, secs. 20(j) (effective Sept. 12,
2012) and 3(c) (effective March 16, 2013), 125 Stat. 284.)
 [*End Editor's Note: 35 U.S.C. 103 (March 16, 2013)]
35 U.S.C. 104
(a)  IN GENERAL.—(1)  PROCEEDINGS.—In
proceedings in the Patent and Trademark Office, in the
courts, and before any other competent authority, an
applicant for a patent, or a patentee, may not establish a
date of invention by reference to knowledge or use
thereof, or other activity with respect thereto, in a foreign
country other than a NAFTA country or a WTO member
country, except as provided in sections 119  and 365 of
this title.
(2)  RIGHTS.—If an invention was made by a
person, civil or military—(A)  while domiciled in the
United States, and serving in any other country in
connection with operations by or on behalf of the United
States,(B)  while domiciled in a NAFTA country
and serving in another country in connection with
operations by or on behalf of that NAFTA country, or
(C)  while domiciled in a WTO member
country and serving in another country in connection with
operations by or on behalf of that WTO member country,
that person shall be entitled to the same rights of priority
in the United States with respect to such invention as if
such invention had been made in the United States, that
NAFTA country, or that WTO member country, as the
case may be.
(3)  USE OF INFORMATION.—To the extent
that any information in a NAFTA country or a WTO
member country concerning knowledge, use, or other
activity relevant to proving or disproving a date of
invention has not been made available for use in a
proceeding in the Patent and Trademark Office, a court,
or any other competent authority to the same extent as
such information could be made available in the United
States, the Director, court, or such other authority shall
draw appropriate inferences, or take other action permitted
by statute, rule, or regulation, in favor of the party that
requested the information in the proceeding.
(b)  DEFINITIONS.—As used in this section—(1) 
The term “NAFTA country” has the meaning given that
term in section 2(4) of the North American Free Trade
Agreement Implementation Act; and
(2)  The term “WTO member country” has the
meaning given that term in section 2(10) of the Uruguay
Round Agreements Act.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Nov. 14, 1975, Public Law 94-131, sec. 6,
89 Stat. 691; Nov. 8, 1984, Public Law 98-622, sec.
403(a), 98 Stat. 3392; Dec. 8, 1993, Public Law 103-182,
sec. 331, 107 Stat. 2113; Dec. 8, 1994, Public Law
103-465, sec. 531(a), 108 Stat. 4982; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 104 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 104 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 104 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C 104 is repealed by
the Leahy-Smith America Invents Act, Public Law
112-29, sec. 3(d), 125 Stat. 284.
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  [*End Editor's Note: 35 U.S.C. 104 (March 16, 2013)]
35 U.S.C. 105
(a)  Any invention made, used, or sold in outer space
on a space object or component thereof under the
jurisdiction or control of the United States shall be
considered to be made, used or sold within the United
States for the purposes of this title, except with respect
to any space object or component thereof that is
specifically identified and otherwise provided for by an
international agreement to which the United States is a
party, or with respect to any space object or component
thereof that is carried on the registry of a foreign state in
accordance with the Convention on Registration of
Objects Launched into Outer Space.
(b)  Any invention made, used, or sold in outer space
on a space object or component thereof that is carried on
the registry of a foreign state in accordance with the
Convention on Registration of Objects Launched into
Outer Space, shall be considered to be made, used, or sold
within the United States for the purposes of this title if
specifically so agreed in an international agreement
between the United States and the state of registry.
(Added Nov. 15, 1990, Public Law 101-580, sec. 1(a),
104 Stat. 2863.)
CHAPTER 11 — APPLICATION FOR PATENT
Sec.
31. 111 Application.
32. 112 Specification.
33. 113 Drawings.
34. 114 Models, specimens.
35. 115 Oath of applicant.
36. 116 Inventors.
37. 117 Death or incapacity of inventor.
38. 118 Filing by other than inventor.
39. 119 Benefit of earlier filing date; right of priority.
40. 120 Benefit of earlier filing date in the United
States.
41. 121 Divisional applications.
42. 122 Confidential status of applications; publication
of patent applications.
43. 123 Micro entity defined.
35 U.S.C. 111
(a)  IN GENERAL.—(1)  WRITTEN
APPLICATION.—An application for patent shall be
made, or authorized to be made, by the inventor, except
as otherwise provided in this title, in writing to the
Director.(2)  CONTENTS.—Such application shall
include—(A)  a specification as prescribed by section
112 of this title;
(B)  a drawing as prescribed by section 113
of this title; and
(C)  an oath by the applicant as prescribed
by section 115  of this title.
(3)  FEE AND OATH.—The application must
be accompanied by the fee required by law. The fee and
oath may be submitted after the specification and any
required drawing are submitted, within such period and
under such conditions, including the payment of a
surcharge, as may be prescribed by the Director.
(4)  FAILURE TO SUBMIT.—Upon failure to
submit the fee and oath within such prescribed period,
the application shall be regarded as abandoned, unless it
is shown to the satisfaction of the Director that the delay
in submitting the fee and oath was unavoidable or
unintentional. The filing date of an application shall be
the date on which the specification and any required
drawing are received in the Patent and Trademark Office.
(b)  PROVISIONAL APPLICATION.—(1) 
AUTHORIZATION.—A provisional application for
patent shall be made or authorized to be made by the
inventor, except as otherwise provided in this title, in
writing to the Director. Such application shall
include—(A)  a specification as prescribed by the first
paragraph of section 112  of this title; and
(B)  a drawing as prescribed by section 113
of this title.
(2)  CLAIM.—A claim, as required by the
second through fifth paragraphs of section 112 , shall not
be required in a provisional application.
(3)  FEE.—(A)  The application must be
accompanied by the fee required by law.
(B)  The fee may be submitted after the
specification and any required drawing are submitted,
within such period and under such conditions, including
the payment of a surcharge, as may be prescribed by the
Director.
(C)  Upon failure to submit the fee within
such prescribed period, the application shall be regarded
as abandoned, unless it is shown to the satisfaction of the
Director that the delay in submitting the fee was
unavoidable or unintentional.
(4)  FILING DATE.—The filing date of a
provisional application shall be the date on which the
specification and any required drawing are received in
the Patent and Trademark Office.
(5)  ABANDONMENT.—Notwithstanding the
absence of a claim, upon timely request and as prescribed
by the Director, a provisional application may be treated
as an application filed under subsection (a). Subject to
section 119(e)(3)  of this title, if no such request is made,
the provisional application shall be regarded as abandoned
12 months after the filing date of such application and
shall not be subject to revival after such 12-month period.
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 (6)  OTHER BASIS FOR PROVISIONAL
APPLICATION.—Subject to all the conditions in this
subsection and section 119(e)  of this title, and as
prescribed by the Director, an application for patent filed
under subsection (a) may be treated as a provisional
application for patent.
(7)  NO RIGHT OF PRIORITY OR BENEFIT
OF EARLIEST FILING DATE.—A provisional
application shall not be entitled to the right of priority of
any other application under section 119  or 365(a)  of this
title or to the benefit of an earlier filing date in the United
States under section 120 , 121, or 365(c)  of this title.
(8)  APPLICABLE PROVISIONS.—The
provisions of this title relating to applications for patent
shall apply to provisional applications for patent, except
as otherwise provided, and except that provisional
applications for patent shall not be subject to sections
115, 131, 135, and 157 of this title.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96
Stat. 319; Dec. 8, 1994, Public Law 103-465, sec.
532(b)(3), 108 Stat. 4986; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588 (S.
1948 secs. 4732(a)(10)(A), 4801(a)).)
 [*Begin Editor's Note: 35 U.S.C. 111 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears except for the first
instance of the use of such term in section 111(b)(8).
Public Law 112-29, sec. 4 (paragraphs (a)(3) and (d))
further amends 35 U.S.C. 111 effective Sept. 16, 2012
as follows:
Section 111(a) of title 35, United States Code, is
amended—
in paragraph (2)(C), by striking ‘‘by the applicant’’
and inserting ‘‘or declaration’’;
in the heading for paragraph (3), by inserting ‘‘OR
DECLARATION’’ after ‘‘AND OATH’’; and
by inserting ‘‘or declaration’’ after ‘‘and oath’’ each
place it appears.
Section 111(b)(1)(A) of title 35, United States Code, is
amended by striking ‘‘the first paragraph of section 112
of this title’’ and inserting ‘‘section 112(a)’’.
Section 111(b)(2) of title 35, United States Code, is
amended by striking ‘‘the second through fifth paragraphs
of section 112,’’ and inserting ‘‘subsections (b) through
(e) of section 112,".
 [*End Editor's Note: 35 U.S.C. 111 (Sept. 16, 2012)] [*Begin Editor's Note: 35 U.S.C. 111 (March 16, 2013)]
 Effective March 16, 2013, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 3(e)(2),
125 Stat. 284, 35 U.S.C. 111(b)(8) is amended by striking
‘‘sections 115, 131, 135, and 157’’ and inserting
‘‘sections 131 and 135’’.
 [*End Editor's Note: 35 U.S.C. 111 (March 16, 2013)]
35 U.S.C. 112
The specification shall contain a written description of
the invention, and of the manner and process of making
and using it, in such full, clear, concise, and exact terms
as to enable any person skilled in the art to which it
pertains, or with which it is most nearly connected, to
make and use the same, and shall set forth the best mode
contemplated by the inventor of carrying out his invention.
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his
invention.
A claim may be written in independent or, if the nature
of the case admits, in dependent or multiple dependent
form.
Subject to the following paragraph, a claim in dependent
form shall contain a reference to a claim previously set
forth and then specify a further limitation of the subject
matter claimed. A claim in dependent form shall be
construed to incorporate by reference all the limitations
of the claim to which it refers.
A claim in multiple dependent form shall contain a
reference, in the alternative only, to more than one claim
previously set forth and then specify a further limitation
of the subject matter claimed. A multiple dependent claim
shall not serve as a basis for any other multiple dependent
claim. A multiple dependent claim shall be construed to
incorporate by reference all the limitations of the
particular claim in relation to which it is being considered.
An element in a claim for a combination may be expressed
as a means or step for performing a specified function
without the recital of structure, material, or acts in support
thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.
(Amended July 24, 1965, Public Law 89-83, sec. 9,
79 Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 7,
89 Stat. 691.)
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  [*Begin Editor's Note: 35 U.S.C. 112 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 112 will read as
follows:
35 U.S.C. 112
(a)  IN GENERAL.—The specification shall contain
a written description of the invention, and of the manner
and process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled
in the art to which it pertains, or with which it is most
nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor or joint
inventor of carrying out the invention.
(b)  CONCLUSION.—The specification shall
conclude with one or more claims particularly pointing
out and distinctly claiming the subject matter which the
inventor or a joint inventor regards as the invention.
(c)  FORM.—A claim may be written in independent
or, if the nature of the case admits, in dependent or
multiple dependent form.
(d)  REFERENCE IN DEPENDENT
FORMS.—Subject to subsection (e), a claim in dependent
form shall contain a reference to a claim previously set
forth and then specify a further limitation of the subject
matter claimed. A claim in dependent form shall be
construed to incorporate by reference all the limitations
of the claim to which it refers.
(e)  REFERENCE IN MULTIPLE DEPENDENT
FORM.—A claim in multiple dependent form shall
contain a reference, in the alternative only, to more than
one claim previously set forth and then specify a further
limitation of the subject matter claimed. A multiple
dependent claim shall not serve as a basis for any other
multiple dependent claim. A multiple dependent claim
shall be construed to incorporate by reference all the
limitations of the particular claim in relation to which it
is being considered.
(f)  ELEMENT IN CLAIM FOR A
COMBINATION.—An element in a claim for a
combination may be expressed as a means or step for
performing a specified function without the recital of
structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding
structure, material, or acts described in the specification
and equivalents thereof.
(Amended July 24, 1965, Public Law 89-83, sec. 9,
79 Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 7,
89 Stat. 691; amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 4(c), 125
Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 112 (Sept. 16, 2012)]
35 U.S.C. 113The applicant shall furnish a drawing where necessary
for the understanding of the subject matter sought to be
patented. When the nature of such subject matter admits
of illustration by a drawing and the applicant has not
furnished such a drawing, the Director may require its
submission within a time period of not less than two
months from the sending of a notice thereof. Drawings
submitted after the filing date of the application may not
be used (i) to overcome any insufficiency of the
specification due to lack of an enabling disclosure or
otherwise inadequate disclosure therein, or (ii) to
supplement the original disclosure thereof for the purpose
of interpretation of the scope of any claim.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 8, 89
Stat. 691; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 114
The Director may require the applicant to furnish a model
of convenient size to exhibit advantageously the several
parts of his invention.
When the invention relates to a composition of matter,
the Director may require the applicant to furnish
specimens or ingredients for the purpose of inspection or
experiment.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 115
The applicant shall make oath that he believes himself to
be the original and first inventor of the process, machine,
manufacture, or composition of matter, or improvement
thereof, for which he solicits a patent; and shall state of
what country he is a citizen. Such oath may be made
before any person within the United States authorized by
law to administer oaths, or, when made in a foreign
country, before any diplomatic or consular officer of the
United States authorized to administer oaths, or before
any officer having an official seal and authorized to
administer oaths in the foreign country in which the
applicant may be, whose authority is proved by certificate
of a diplomatic or consular officer of the United States,
or apostille of an official designated by a foreign country
which, by treaty or convention, accords like effect to
apostilles of designated officials in the United States.
Such oath is valid if it complies with the laws of the state
or country where made. When the application is made as
provided in this title by a person other than the inventor,
the oath may be so varied in form that it can be made by
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 him. For purposes of this section, a consular officer shall
include any United States citizen serving overseas,
authorized to perform notarial functions pursuant to
section 1750 of the Revised Statutes, as amended (22
U.S.C. 4221).
(Amended Aug. 27, 1982, Public Law 97-247, sec. 14(a),
96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec. 2222(d),
112 Stat. 2681-818.)
 [*Begin Editor's Note: 35 U.S.C. 115 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 115 will read as
follows:
35 U.S.C. 115
(a)  NAMING THE INVENTOR; INVENTOR’S
OATH OR DECLARATION.—An application for patent
that is filed under section 111(a) or commences the
national stage under section 371 shall include, or be
amended to include, the name of the inventor for any
invention claimed in the application. Except as otherwise
provided in this section, each individual who is the
inventor or a joint inventor of a claimed invention in an
application for patent shall execute an oath or declaration
in connection with the application.
(b)  REQUIRED STATEMENTS.—An oath or
declaration under subsection (a) shall contain statements
that— (1)  the application was made or was authorized
to be made by the affiant or declarant; and
(2)  such individual believes himself or herself
to be the original inventor or an original joint inventor of
a claimed invention in the application.
(c)  ADDITIONAL REQUIREMENTS.—The
Director may specify additional information relating to
the inventor and the invention that is required to be
included in an oath or declaration under subsection (a).
(d)  SUBSTITUTE STATEMENT.—(1)  IN
GENERAL.—In lieu of executing an oath or declaration
under subsection (a), the applicant for patent may provide
a substitute statement under the circumstances described
in paragraph (2) and such additional circumstances that
the Director may specify by regulation.
(2)  PERMITTED CIRCUMSTANCES.—A
substitute statement under paragraph (1) is permitted with
respect to any individual who—(A)  is unable to file the
oath or declaration under subsection (a) because the
individual— (i)  is deceased;
(ii)  is under legal incapacity; or
(iii)  cannot be found or reached after
diligent effort; or
(B)  is under an obligation to assign the
invention but has refused to make the oath or declaration
required under subsection (a).(3)  CONTENTS.—A substitute statement under
this subsection shall— (A)  identify the individual with
respect to whom the statement applies;
(B)  set forth the circumstances representing
the permitted basis for the filing of the substitute statement
in lieu of the oath or declaration under subsection (a); and
(C)  contain any additional information,
including any showing, required by the Director.
(e)  MAKING REQUIRED STATEMENTS IN
ASSIGNMENT OF RECORD.—An individual who is
under an obligation of assignment of an application for
patent may include the required statements under
subsections (b) and (c) in the assignment executed by the
individual, in lieu of filing such statements separately.
(f)  TIME FOR FILING.—A notice of allowance
under section 151 may be provided to an applicant for
patent only if the applicant for patent has filed each
required oath or declaration under subsection (a) or has
filed a substitute statement under subsection (d) or
recorded an assignment meeting the requirements of
subsection (e).
(g)  EARLIER-FILED APPLICATION
CONTAINING REQUIRED STATEMENTS OR
SUBSTITUTE STATEMENT.— (1) 
EXCEPTION.—The requirements under this section shall
not apply to an individual with respect to an application
for patent in which the individual is named as the inventor
or a joint inventor and who claims the benefit under
section 120, 121, or 365(c) of the filing of an earlier-filed
application, if— (A)  an oath or declaration meeting the
requirements of subsection (a) was executed by the
individual and was filed in connection with the
earlier-filed application;
(B)  a substitute statement meeting the
requirements of subsection (d) was filed in connection
with the earlier filed application with respect to the
individual; or
(C)  an assignment meeting the requirements
of subsection (e) was executed with respect to the
earlier-filed application by the individual and was
recorded in connection with the earlier-filed application.
(2)  COPIES OF OATHS, DECLARATIONS,
STATEMENTS, OR ASSIGNMENTS.—Notwithstanding
paragraph (1), the Director may require that a copy of the
executed oath or declaration, the substitute statement, or
the assignment filed in connection with the earlier-filed
application be included in the later-filed application.
(h)  SUPPLEMENTAL AND CORRECTED
STATEMENTS; FILING ADDITIONAL
STATEMENTS.— (1)  IN GENERAL.—Any person
making a statement required under this section may
withdraw, replace, or otherwise correct the statement at
any time. If a change is made in the naming of the
inventor requiring the filing of 1 or more additional
statements under this section, the Director shall establish
regulations under which such additional statements may
be filed.
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 (2)  SUPPLEMENTAL STATEMENTS NOT
REQUIRED.—If an individual has executed an oath or
declaration meeting the requirements of subsection (a) or
an assignment meeting the requirements of subsection (e)
with respect to an application for patent, the Director may
not thereafter require that individual to make any
additional oath, declaration, or other statement equivalent
to those required by this section in connection with the
application for patent or any patent issuing thereon.
(3)  SA VINGS CLAUSE.—A patent shall not
be invalid or unenforceable based upon the failure to
comply with a requirement under this section if the failure
is remedied as provided under paragraph (1).
(i)  ACKNOWLEDGMENT OF PENALTIES.—Any
declaration or statement filed pursuant to this section shall
contain an acknowledgment that any willful false
statement made in such declaration or statement is
punishable under section 1001 of title 18 by fine or
imprisonment of not more than 5 years, or both.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 14(a),
96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec. 2222(d),
112 Stat. 2681-818; amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 4(a), 125
Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 115 (Sept. 16, 2012)]
35 U.S.C. 116
When an invention is made by two or more persons
jointly, they shall apply for patent jointly and each make
the required oath, except as otherwise provided in this
title. Inventors may apply for a patent jointly even though
(1) they did not physically work together or at the same
time, (2) each did not make the same type or amount of
contribution, or (3) each did not make a contribution to
the subject matter of every claim of the patent.
If a joint inventor refuses to join in an application for
patent or cannot be found or reached after diligent effort,
the application may be made by the other inventor on
behalf of himself and the omitted inventor. The Director,
on proof of the pertinent facts and after such notice to the
omitted inventor as he prescribes, may grant a patent to
the inventor making the application, subject to the same
rights which the omitted inventor would have had if he
had been joined. The omitted inventor may subsequently
join in the application.
Whenever through error a person is named in an
application for patent as the inventor, or through an error
an inventor is not named in an application, and such error
arose without any deceptive intention on his part, the
Director may permit the application to be amended
accordingly, under such terms as he prescribes.(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(a),
96 Stat. 320; Nov. 8, 1984, Public Law 98-622, sec.
104(a), 98 Stat. 3384; Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 116 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 116 will read as
follows:
35 U.S.C. 116
(a)  JOINT INVENTIONS.—When an invention is
made by two or more persons jointly, they shall apply for
patent jointly and each make the required oath, except as
otherwise provided in this title. Inventors may apply for
a patent jointly even though (1) they did not physically
work together or at the same time, (2) each did not make
the same type or amount of contribution, or (3) each did
not make a contribution to the subject matter of every
claim of the patent.
(b)  OMITTED INVENTOR.—If a joint inventor
refuses to join in an application for patent or cannot be
found or reached after diligent effort, the application may
be made by the other inventor on behalf of himself and
the omitted inventor. The Director, on proof of the
pertinent facts and after such notice to the omitted
inventor as he prescribes, may grant a patent to the
inventor making the application, subject to the same rights
which the omitted inventor would have had if he had been
joined. The omitted inventor may subsequently join in
the application.
(c)  CORRECTION OF ERRORS IN
APPLICATION.—Whenever through error a person is
named in an application for patent as the inventor, or
through an error an inventor is not named in an
application, the Director may permit the application to be
amended accordingly, under such terms as he prescribes.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(a),
96 Stat. 320; Nov. 8, 1984, Public Law 98-622, sec.
104(a), 98 Stat. 3384; Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(a), 125
Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 116 (Sept. 16, 2012)]
35 U.S.C. 117
Legal representatives of deceased inventors and of those
under legal incapacity may make application for patent
upon compliance with the requirements and on the same
terms and conditions applicable to the inventor.
35 U.S.C. 118
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 Whenever an inventor refuses to execute an application
for patent, or cannot be found or reached after diligent
effort, a person to whom the inventor has assigned or
agreed in writing to assign the invention or who otherwise
shows sufficient proprietary interest in the matter
justifying such action, may make application for patent
on behalf of and as agent for the inventor on proof of the
pertinent facts and a showing that such action is necessary
to preserve the rights of the parties or to prevent
irreparable damage; and the Director may grant a patent
to such inventor upon such notice to him as the Director
deems sufficient, and on compliance with such regulations
as he prescribes.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 118 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 118 will read as
follows:
35 U.S.C. 118
A person to whom the inventor has assigned or is under
an obligation to assign the invention may make an
application for patent. A person who otherwise shows
sufficient proprietary interest in the matter may make an
application for patent on behalf of and as agent for the
inventor on proof of the pertinent facts and a showing
that such action is appropriate to preserve the rights of
the parties. If the Director grants a patent on an application
filed under this section by a person other than the inventor,
the patent shall be granted to the real party in interest and
upon such notice to the inventor as the Director considers
to be sufficient.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 4(b), 125
Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 118 (Sept. 16, 2012)]
35 U.S.C. 119
(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 applicationfor patent for the same invention was first filed in such
foreign country, if the application in this country is filed
within twelve months from the earliest date on which such
foreign application was filed; but no patent shall be
granted on any application for patent for an invention
which had been patented or described in a printed
publication in any country more than one year before the
date of the actual filing of the application in this country,
or which had been in public use or on sale in this country
more than one year prior to such filing.
(b)  (1)  No application for patent shall be entitled to
this right of priority unless a claim is filed in the Patent
and Trademark Office, identifying the foreign application
by specifying the application number on that foreign
application, the intellectual property authority or country
in or for which the application was filed, and the date of
filing the application, at such time during the pendency
of the application as required by the Director.
(2)  The Director may consider the failure of the
applicant to file a timely claim for priority as a waiver of
any such claim. The Director may establish procedures,
including the payment of a surcharge, to accept an
unintentionally delayed claim under this section.
(3)  The Director may require a certified copy of
the original foreign application, specification, and
drawings upon which it is based, a translation if not in
the English language, and such other information as the
Director considers necessary. Any such certification shall
be made by the foreign intellectual property authority in
which the foreign application was filed and show the date
of the application and of the filing of the specification
and other papers.
(c)  In like manner and subject to the same conditions
and requirements, the right provided in this section may
be based upon a subsequent regularly filed application in
the same foreign country instead of the first filed foreign
application, provided that any foreign application filed
prior to such subsequent application has been withdrawn,
abandoned, or otherwise disposed of, without having been
laid open to public inspection and without leaving any
rights outstanding, and has not served, nor thereafter shall
serve, as a basis for claiming a right of priority.
(d)  Applications for inventors’ certificates filed in
a foreign country in which applicants have a right to
apply, at their discretion, either for a patent or for an
inventor’s certificate shall be treated in this country in
the same manner and have the same effect for purpose of
the right of priority under this section as applications for
patents, subject to the same conditions and requirements
of this section as apply to applications for patents,
provided such applicants are entitled to the benefits of
the Stockholm Revision of the Paris Convention at the
time of such filing.
(e)  (1)  An application for patent filed under section
111(a)  or section 363  of this title for an invention
disclosed in the manner provided by section 112(a)  (other
than the requirement to disclose the best mode) in a
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 provisional application filed under section 111(b) of this
title, by an inventor or inventors named in the provisional
application, shall have the same effect, as to such
invention, as though filed on the date of the provisional
application filed under section 111(b)  of this title, if the
application for patent filed under section 111(a)  or section
363 of this title is filed not later than 12 months after the
date on which the provisional application was filed and
if it contains or is amended to contain a specific reference
to the provisional application. No application shall be
entitled to the benefit of an earlier filed provisional
application under this subsection unless an amendment
containing the specific reference to the earlier filed
provisional application is submitted at such time during
the pendency of the application as required by the
Director. The Director may consider the failure to submit
such an amendment within that time period as a waiver
of any benefit under this subsection. The Director may
establish procedures, including the payment of a
surcharge, to accept an unintentionally delayed submission
of an amendment under this subsection during the
pendency of the application
(2)  A provisional application filed under section
111(b) of this title may not be relied upon in any
proceeding in the Patent and Trademark Office unless the
fee set forth in subparagraph (A) or (C) of section 41(a)(1)
of this title has been paid.
(3)  If the day that is 12 months after the filing
date of a provisional application falls on a Saturday,
Sunday, or Federal holiday within the District of
Columbia, the period of pendency of the provisional
application shall be extended to the next succeeding
secular or business day.
(f)  Applications for plant breeder’s rights filed in a
WTO member country (or in a foreign UPOV Contracting
Party) shall have the same effect for the purpose of the
right of priority under subsections (a) through (c) of this
section as applications for patents, subject to the same
conditions and requirements of this section as apply to
applications for patents.
(g)  As used in this section— (1)  the term “WTO
member country” has the same meaning as the term is
defined in section 104(b)(2)  of this title; and
(2)  the term “UPOV Contracting Party” means
a member of the International Convention for the
Protection of New Varieties of Plants.
(Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75
Stat. 748; July 28, 1972, Public Law 92-358, sec. 1, 86
Stat. 501; Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; Dec. 8, 1994, Public Law 103-465, sec.
532(b)(1), 108 Stat. 4985; subsection (b) amended Nov.
29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-563 (S. 1948 sec.4503(a)); subsection (e) amended
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-564, 588, 589 (S. 1948 secs. 4503(b)(2), 4801and 4802; subsections (f) and (g) added Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-589
(S. 1948 sec. 4802); subsection (e)(1) amended Sept. 16,
2011, Leahy-Smith America Invents Act, Public Law
112-29, sec. 15(b), 125 Stat. 284.)
 [*Begin Editor's Note: 35 U.S.C. 119 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 119 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 119 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 119(a) is amended
to read as follows:
35 U.S.C. 119
(a)  An application for patent for an invention filed
in this country by any person who has, or whose legal
representatives or assigns have, previously regularly filed
an application for a patent for the same invention in a
foreign country which affords similar privileges in the
case of applications filed in the United States or to citizens
of the United States, or in a WTO member country, shall
have the same effect as the same application would have
if filed in this country on the date on which the application
for patent for the same invention was first filed in such
foreign country, if the application in this country is filed
within twelve months from the earliest date on which such
foreign application was filed.
*****
(Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75
Stat. 748; July 28, 1972, Public Law 92-358, sec. 1, 86
Stat. 501; Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; Dec. 8, 1994, Public Law 103-465, sec.
532(b)(1), 108 Stat. 4985; subsection (b) amended Nov.
29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-563 (S. 1948 sec.4503(a)); subsection (e) amended
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-564, 588, 589 (S. 1948 secs. 4503(b)(2), 4801
and 4802; subsections (f) and (g) added Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-589
(S. 1948 sec. 4802); subsection (e)(1) amended Sept. 16,
2011, Leahy-Smith America Invents Act, Public Law
112-29, sec. 15(b), 125 Stat. 284; amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
sec. 20(j), 125 Stat. 284, effective Sept. 16, 2012;
subsection (a) amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 3(g), 125
Stat. 284, effective March 16, 2013.)
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  [*End Editor's Note: 35 U.S.C. 119 (March 16, 2013)]
35 U.S.C. 120
An application for patent for an invention disclosed in
the manner provided by section 112(a)  (other than the
requirement to disclose the best mode) in an application
previously filed in the United States, or as provided by
section 363  of this title, which is filed by an inventor or
inventors named in the previously filed application shall
have the same effect, as to such invention, as though filed
on the date of the prior application, if filed before the
patenting or abandonment of or termination of
proceedings on the first application or on an application
similarly entitled to the benefit of the filing date of the
first application and if it contains or is amended to contain
a specific reference to the earlier filed application. No
application shall be entitled to the benefit of an earlier
filed application under this section unless an amendment
containing the specific reference to the earlier filed
application is submitted at such time during the pendency
of the application as required by the Director. The Director
may consider the failure to submit such an amendment
within that time period as a waiver of any benefit under
this section. The Director may establish procedures,
including the payment of a surcharge, to accept an
unintentionally delayed submission of an amendment
under this section.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 9, 89
Stat. 691; Nov. 8, 1984, Public Law 98-622, sec. 104(b),
98 Stat. 3385; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.
4503(b)(1)); amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 15(b), 125
Stat. 284.)
 [*Begin Editor's Note: 35 U.S.C. 120 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 120 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 120 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 120 is amended to
read as follows:
35 U.S.C. 120
An application for patent for an invention disclosed in
the manner provided by section 112(a)  (other than the
requirement to disclose the best mode) in an applicationpreviously filed in the United States, or as provided by
section 363  which names an inventor or joint inventor
named in the previously filed application shall have the
same effect, as to such invention, as though filed on the
date of the prior application, if filed before the patenting
or abandonment of or termination of proceedings on the
first application or on an application similarly entitled to
the benefit of the filing date of the first application and if
it contains or is amended to contain a specific reference
to the earlier filed application. No application shall be
entitled to the benefit of an earlier filed application under
this section unless an amendment containing the specific
reference to the earlier filed application is submitted at
such time during the pendency of the application as
required by the Director. The Director may consider the
failure to submit such an amendment within that time
period as a waiver of any benefit under this section. The
Director may establish procedures, including the payment
of a surcharge, to accept an unintentionally delayed
submission of an amendment under this section.
(Amended Nov. 14, 1975, Public Law 94-131, sec. 9, 89
Stat. 691; Nov. 8, 1984, Public Law 98-622, sec. 104(b),
98 Stat. 3385; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.
4503(b)(1)); amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 15(b), 125
Stat. 284, and further amended by Public Law 112-29,
sec. 20(j) (effective Sept. 16, 2012) and sec. 3(f) (effective
March 16, 2013).)
 [*End Editor's Note: 35 U.S.C. 120 (March 16, 2013)]
35 U.S.C. 121
If two or more independent and distinct inventions are
claimed in one application, the Director may require the
application to be restricted to one of the inventions. If the
other invention is made the subject of a divisional
application which complies with the requirements of
section 120  of this title it shall be entitled to the benefit
of the filing date of the original application. A patent
issuing on an application with respect to which a
requirement for restriction under this section has been
made, or on an application filed as a result of such a
requirement, shall not be used as a reference either in the
Patent and Trademark Office or in the courts against a
divisional application or against the original application
or any patent issued on either of them, if the divisional
application is filed before the issuance of the patent on
the other application. If a divisional application is directed
solely to subject matter described and claimed in the
original application as filed, the Director may dispense
with signing and execution by the inventor. The validity
of a patent shall not be questioned for failure of the
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 Director to require the application to be restricted to one
invention.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 121 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 121 will read as
follows:
35 U.S.C. 121
If two or more independent and distinct inventions are
claimed in one application, the Director may require the
application to be restricted to one of the inventions. If the
other invention is made the subject of a divisional
application which complies with the requirements of
section 120  it shall be entitled to the benefit of the filing
date of the original application. A patent issuing on an
application with respect to which a requirement for
restriction under this section has been made, or on an
application filed as a result of such a requirement, shall
not be used as a reference either in the Patent and
Trademark Office or in the courts against a divisional
application or against the original application or any patent
issued on either of them, if the divisional application is
filed before the issuance of the patent on the other
application. The validity of a patent shall not be
questioned for failure of the Director to require the
application to be restricted to one invention.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, secs. 4(a), 20(j),
125 Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 121 (Sept. 16, 2012)]
35 U.S.C. 122
(a)  CONFIDENTIALITY .— Except as provided in
subsection (b), applications for patents shall be kept in
confidence by the Patent and Trademark Office and no
information concerning the same given without authority
of the applicant or owner unless necessary to carry out
the provisions of an Act of Congress or in such special
circumstances as may be determined by the Director.
(b)  PUBLICATION.— (1)  IN GENERAL.— (A) 
Subject to paragraph (2), each application for a patent
shall be published, in accordance with procedures
determined by the Director, promptly after the expiration
of a period of 18 months from the earliest filing date forwhich a benefit is sought under this title. At the request
of the applicant, an application may be published earlier
than the end of such 18-month period.
(B)  No information concerning published
patent applications shall be made available to the public
except as the Director determines.
(C)  Notwithstanding any other provision of
law, a determination by the Director to release or not to
release information concerning a published patent
application shall be final and nonreviewable.
(2)  EXCEPTIONS.— (A)  An application shall
not be published if that application is— (i)  no longer
pending;
(ii)  subject to a secrecy order under
section 181 of this title;
(iii)  a provisional application filed under
section 111(b)  of this title; or
(iv)  an application for a design patent
filed under chapter 16  of this title.
(B)  (i)  If an applicant makes a request upon
filing, certifying that the invention disclosed in the
application has not and will not be the subject of an
application filed in another country, or under a multilateral
international agreement, that requires publication of
applications 18 months after filing, the application shall
not be published as provided in paragraph (1).
(ii)  An applicant may rescind a request
made under clause (i) at any time.
(iii)  An applicant who has made a
request under clause (i) but who subsequently files, in a
foreign country or under a multilateral international
agreement specified in clause (i), an application directed
to the invention disclosed in the application filed in the
Patent and Trademark Office, shall notify the Director of
such filing not later than 45 days after the date of the filing
of such foreign or international application. A failure of
the applicant to provide such notice within the prescribed
period shall result in the application being regarded as
abandoned, unless it is shown to the satisfaction of the
Director that the delay in submitting the notice was
unintentional.
(iv)  If an applicant rescinds a request
made under clause (i) or notifies the Director that an
application was filed in a foreign country or under a
multilateral international agreement specified in clause
(i), the application shall be published in accordance with
the provisions of paragraph (1) on or as soon as is
practical after the date that is specified in clause (i).
(v)  If an applicant has filed applications
in one or more foreign countries, directly or through a
multilateral international agreement, and such foreign
filed applications corresponding to an application filed
in the Patent and Trademark Office or the description of
the invention in such foreign filed applications is less
extensive than the application or description of the
invention in the application filed in the Patent and
Trademark Office, the applicant may submit a redacted
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 copy of the application filed in the Patent and Trademark
Office eliminating any part or description of the invention
in such application that is not also contained in any of the
corresponding applications filed in a foreign country. The
Director may only publish the redacted copy of the
application unless the redacted copy of the application is
not received within 16 months after the earliest effective
filing date for which a benefit is sought under this title.
The provisions of section 154(d)  shall not apply to a claim
if the description of the invention published in the
redacted application filed under this clause with respect
to the claim does not enable a person skilled in the art to
make and use the subject matter of the claim.
(c)  PROTEST AND PRE-ISSUANCE
OPPOSITION.— The Director shall establish appropriate
procedures to ensure that no protest or other form of
pre-issuance opposition to the grant of a patent on an
application may be initiated after publication of the
application without the express written consent of the
applicant.
(d)  NATIONAL SECURITY .— No application for
patent shall be published under subsection (b)(1) if the
publication or disclosure of such invention would be
detrimental to the national security. The Director shall
establish appropriate procedures to ensure that such
applications are promptly identified and the secrecy of
such inventions is maintained in accordance with chapter
17 of this title.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.
4503(b)(1)).)
 [*Begin Editor's Note: 35 U.S.C. 122 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears. Public Law 112-29,
sec. 8 further amends 35 U.S.C. 122 effective Sept. 16,
2012 to add subsection (e) which will read as follows:
35 U.S.C. 122
*****
(e)  PREISSUANCE SUBMISSIONS BY THIRD
PARTIES.—(1)  IN GENERAL.—Any third party may
submit for consideration and inclusion in the record of a
patent application, any patent, published patent
application, or other printed publication of potential
relevance to the examination of the application, if such
submission is made in writing before the earlier of— (A) 
the date a notice of allowance under section 151 is given
or mailed in the application for patent; or
(B)  the later of—(i)  6 months after the date
on which the application for patent is first published under
section 122 by the Office, or(ii)  the date of the first rejection under
section 132 of any claim by the examiner during the
examination of the application for patent.
(2)  OTHER REQUIREMENTS.—Any
submission under paragraph (1) shall—(A)  set forth a
concise description of the asserted relevance of each
submitted document;
(B)  be accompanied by such fee as the
Director may prescribe; and
(C)  include a statement by the person
making such submission affirming that the submission
was made in compliance with this section.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec. 4503(b)(1);
amended and subsection (e) added Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
secs. 8, 20(j), 125 Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 122 (Sept. 16, 2012)]
35 U.S.C. 123
(a)  IN GENERAL.—For purposes of this title, the
term "micro entity" means an applicant who makes a
certification that the applicant— (1)  qualifies as a small
entity, as defined in regulations issued by the Director;
(2)  has not been named as an inventor on more
than 4 previously filed patent applications, other than
applications filed in another country, provisional
applications under section 111(b), or international
applications filed under the treaty defined in section
351(a) for which the basic national fee under section 41(a)
was not paid;
(3)  did not, in the calendar year preceding the
calendar year in which the applicable fee is being paid,
have a gross income, as defined in section 61(a) of the
Internal Revenue Code of 1986, exceeding 3 times the
median household income for that preceding calendar
year, as most recently reported by the Bureau of the
Census; and
(4)  has not assigned, granted, or conveyed, and
is not under an obligation by contract or law to assign,
grant, or convey, a license or other ownership interest in
the application concerned to an entity that, in the calendar
year preceding the calendar year in which the applicable
fee is being paid, had a gross income, as defined in section
61(a) of the Internal Revenue Code of 1986, exceeding
3 times the median household income for that preceding
calendar year, as most recently reported by the Bureau of
the Census.
(b)  APPLICATIONS RESULTING FROM PRIOR
EMPLOYMENT.—An applicant is not considered to be
named on a previously filed application for purposes of
subsection (a)(2) if the applicant has assigned, or is under
an obligation by contract or law to assign, all ownership
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 rights in the application as the result of the applicant’s
previous employment.
(c)  FOREIGN CURRENCY EXCHANGE
RATE.—If an applicant’s or entity’s gross income in the
preceding calendar year is not in United States dollars,
the average currency exchange rate, as reported by the
Internal Revenue Service, during that calendar year shall
be used to determine whether the applicant’s or entity’s
gross income exceeds the threshold specified in
paragraphs (3) or (4) of subsection (a).
(d)  INSTITUTIONS OF HIGHER
EDUCATION.—For purposes of this section, a micro
entity shall include an applicant who certifies that—(1)  
the applicant’s employer, from which the applicant obtains
the majority of the applicant’s income, is an institution
of higher education as defined in section 101(a) of the
Higher Education Act of 1965 (20 U.S.C. 1001(a)); or
(2)  the applicant has assigned, granted,
conveyed, or is under an obligation by contract or law, to
assign, grant, or convey, a license or other ownership
interest in the particular applications to such an institution
of higher education.
(e)  DIRECTOR’S AUTHORITY .—In addition to
the limits imposed by this section, the Director may, in
the Director’s discretion, impose income limits, annual
filing limits, or other limits on who may qualify as a micro
entity pursuant to this section if the Director determines
that such additional limits are reasonably necessary to
avoid an undue impact on other patent applicants or
owners or are otherwise reasonably necessary and
appropriate. At least 3 months before any limits proposed
to be imposed pursuant to this subsection take effect, the
Director shall inform the Committee on the Judiciary of
the House of Representatives and the Committee on the
Judiciary of the Senate of any such proposed limits.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 10(g), 125 Stat. 284.)
CHAPTER 12 — EXAMINATION OF
APPLICATION
Sec.
44. 131 Examination of application.
45. 132 Notice of rejection; reexamination.
46. 133 Time for prosecuting application.
47. 134 Appeal to the Board of Patent Appeals and
Interferences.
48. 135 Interferences.
35 U.S.C. 131
The Director shall cause an examination to be made of
the application and the alleged new invention; and if on
such examination it appears that the applicant is entitledto a patent under the law, the Director shall issue a patent
therefor.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 132
(a)  Whenever, on examination, any claim for a patent
is rejected, or any objection or requirement made, the
Director shall notify the applicant thereof, stating the
reasons for such rejection, or objection or requirement,
together with such information and references as may be
useful in judging of the propriety of continuing the
prosecution of his application; and if after receiving such
notice, the applicant persists in his claim for a patent, with
or without amendment, the application shall be
reexamined. No amendment shall introduce new matter
into the disclosure of the invention.
(b)  The Director shall prescribe regulations to
provide for the continued examination of applications for
patent at the request of the applicant. The Director may
establish appropriate fees for such continued examination
and shall provide a 50 percent reduction in such fees for
small entities that qualify for reduced fees under section
41(h)(1)  of this title.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-560, 582 (S. 1948 secs. 4403
and 4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 132 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 132 (Sept. 16, 2012)]
35 U.S.C. 133
Upon failure of the applicant to prosecute the application
within six months after any action therein, of which notice
has been given or mailed to the applicant, or within such
shorter time, not less than thirty days, as fixed by the
Director in such action, the application shall be regarded
as abandoned by the parties thereto, unless it be shown
to the satisfaction of the Director that such delay was
unavoidable.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 134
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 (a)  PATENT APPLICANT.— An applicant for a
patent, any of whose claims has been twice rejected, may
appeal from the decision of the primary examiner to the
Board of Patent Appeals and Interferences, having once
paid the fee for such appeal.
(b)  PATENT OWNER.— A patent owner in any
reexamination proceeding may appeal from the final
rejection of any claim by the primary examiner to the
Board of Patent Appeals and Interferences, having once
paid the fee for such appeal.
(c)  THIRD-PARTY .— A third-party requester in an
inter partes proceeding may appeal to the Board of Patent
Appeals and Interferences from the final decision of the
primary examiner favorable to the patentability of any
original or proposed amended or new claim of a patent,
having once paid the fee for such appeal.
(Amended Nov. 8, 1984, Public Law 98-622, sec.
204(b)(1), 98 Stat. 3388; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948
sec. 4605(b)); subsections (a)-(c) amended Nov. 2, 2002,
Public Law 107-273, secs. 13106 and 13202, 116 Stat.
1901.)
 [*Begin Editor's Note: 35 U.S.C. 134 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 134 will read as
follows:
35 U.S.C. 134
(a)  PATENT APPLICANT.— An applicant for a
patent, any of whose claims has been twice rejected, may
appeal from the decision of the primary examiner to the
Board of Patent Appeals and Interferences, having once
paid the fee for such appeal.
(b)  PATENT OWNER.— A patent owner in a
reexamination may appeal from the final rejection of any
claim by the primary examiner to the Board of Patent
Appeals and Interferences, having once paid the fee for
such appeal.
(Amended Nov. 8, 1984, Public Law 98-622, sec.
204(b)(1), 98 Stat. 3388; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948
sec. 4605(b)); subsections (a)-(c) amended Nov. 2, 2002,
Public Law 107-273, secs. 13106 and 13202, 116 Stat.
1901; amended Sept. 16, 2011, Leahy-Smith America
Invents Act, Public Law 112-29, sec. 7(b), 125 Stat. 284,
effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 134 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 134 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 134 will read as
follows:35 U.S.C. 134
(a)  PATENT APPLICANT.— An applicant for a
patent, any of whose claims has been twice rejected, may
appeal from the decision of the primary examiner to the
Patent Trial and Appeal Board, having once paid the fee
for such appeal.
(b)  PATENT OWNER.— A patent owner in any
reexamination proceeding may appeal from the final
rejection of any claim by the primary examiner to the
Patent Trial and Appeal Board, having once paid the fee
for such appeal.
(Amended Nov. 8, 1984, Public Law 98-622, sec.
204(b)(1), 98 Stat. 3388; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948
sec. 4605(b)); subsections (a)-(c) amended Nov. 2, 2002,
Public Law 107-273, secs. 13106 and 13202, 116 Stat.
1901; amended Sept. 16, 2011, Leahy-Smith America
Invents Act, Public Law 112-29, sec. 7(b), 125 Stat. 284,
effective Sept. 16, 2012, and further amended by Public
Law 112-29, sec. 3(j), effective March 16, 2013.)
 [*End Editor's Note: 35 U.S.C. 134 (March 16, 2013)]
35 U.S.C. 135
(a)  Whenever an application is made for a patent
which, in the opinion of the Director, would interfere with
any pending application, or with any unexpired patent,
an interference may be declared and the Director shall
give notice of such declaration to the applicants, or
applicant and patentee, as the case may be. The Board of
Patent Appeals and Interferences shall determine questions
of priority of the inventions and may determine questions
of patentability. Any final decision, if adverse to the claim
of an applicant, shall constitute the final refusal by the
Patent and Trademark Office of the claims involved, and
the Director may issue a patent to the applicant who is
adjudged the prior inventor. A final judgment adverse to
a patentee from which no appeal or other review has been
or can be taken or had shall constitute cancellation of the
claims involved in the patent, and notice of such
cancellation shall be endorsed on copies of the patent
distributed after such cancellation by the Patent and
Trademark Office.
(b)  (1)  A claim which is the same as, or for the same
or substantially the same subject matter as, a claim of an
issued patent may not be made in any application unless
such a claim is made prior to one year from the date on
which the patent was granted.
(2)  A claim which is the same as, or for the same
or substantially the same subject matter as, a claim of an
application published under section 122(b) of this title
may be made in an application filed after the application
is published only if the claim is made before 1 year after
the date on which the application is published.
(c)  Any agreement or understanding between parties
to an interference, including any collateral agreements
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 referred to therein, made in connection with or in
contemplation of the termination of the interference, shall
be in writing and a true copy thereof filed in the Patent
and Trademark Office before the termination of the
interference as between the said parties to the agreement
or understanding. If any party filing the same so requests,
the copy shall be kept separate from the file of the
interference, and made available only to Government
agencies on written request, or to any person on a showing
of good cause. Failure to file the copy of such agreement
or understanding shall render permanently unenforceable
such agreement or understanding and any patent of such
parties involved in the interference or any patent
subsequently issued on any application of such parties so
involved. The Director may, however, on a showing of
good cause for failure to file within the time prescribed,
permit the filing of the agreement or understanding during
the six-month period subsequent to the termination of the
interference as between the parties to the agreement or
understanding.The Director shall give notice to the parties
or their attorneys of record, a reasonable time prior to said
termination, of the filing requirement of this section. If
the Director gives such notice at a later time, irrespective
of the right to file such agreement or understanding within
the six-month period on a showing of good cause, the
parties may file such agreement or understanding within
sixty days of the receipt of such notice.Any discretionary
action of the Director under this subsection shall be
reviewable under section 10 of the Administrative
Procedure Act.
(d)  Parties to a patent interference, within such time
as may be specified by the Director by regulation, may
determine such contest or any aspect thereof by
arbitration. Such arbitration shall be governed by the
provisions of title 9 to the extent such title is not
inconsistent with this section. The parties shall give notice
of any arbitration award to the Director, and such award
shall, as between the parties to the arbitration, be
dispositive of the issues to which it relates. The arbitration
award shall be unenforceable until such notice is given.
Nothing in this subsection shall preclude the Director
from determining patentability of the invention involved
in the interference.
(Subsection (c) added Oct. 15, 1962, Public Law 87-831,
76 Stat. 958; subsections (a) and (c) amended, Jan. 2,
1975, Public Law 93-596, sec. 1, 88 Stat. 1949; subsection
(a) amended Nov. 8, 1984, Public Law 98-622, sec. 202,
98 Stat. 3386; subsection (d) added Nov. 8, 1984, Public
Law 98-622, sec. 105, 98 Stat. 3385; amended Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-566, 582 (S. 1948 secs. 4507(11) and
4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 135 (Sept. 16, 2012)] Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 135 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 135 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 135 will read as
follows and shall apply to any application for patent,
and to any patent issuing thereon, that contains or
contained at any time—
(A)  a claim to a claimed invention that has an
effective filing date as defined in section 100(i) of title
35, United States Code, that is on or after March 16, 2013
(the effective date described in the Leahy-Smith America
Invents Act, Public Law 112-29, sec. 3); or
(B)  a specific reference under section 120, 121, or
365(c) of title 35, United States Code, to any patent or
application that contains or contained at any time such a
claim. NOTE:  The provisions of 35 U.S.C. 135, as in
effect on  March 15, 2013, shall apply to each claim of
an application for patent, and any patent issued thereon,
for which the amendments made by this section (Leahy
Smith America Invents Act sec. 3) also apply, if such
application or patent contains or contained at any time—
(A)  a claim to an invention having an effective filing
date as defined in section 100(i) of title 35, United States
Code, that occurs before March 16, 2013 (the effective
date set forth in the Leahy Smith America Invents Act
sec. 3); or
(B)  a specific reference under section 120, 121, or
365(c) of title 35, United States Code, to any patent or
application that contains or contained at any time such a
claim.
35 U.S.C. 135
(a)  INSTITUTION OF PROCEEDING.—An
applicant for patent may file a petition to institute a
derivation proceeding in the Office. The petition shall set
forth with particularity the basis for finding that an
inventor named in an earlier application derived the
claimed invention from an inventor named in the
petitioner’s application and, without authorization, the
earlier application claiming such invention was filed. Any
such petition may be filed only within the 1-year period
beginning on the date of the first publication of a claim
to an invention that is the same or substantially the same
as the earlier application’s claim to the invention, shall
be made under oath, and shall be supported by substantial
evidence. Whenever the Director determines that a petition
filed under this subsection demonstrates that the standards
for instituting a derivation proceeding are met, the
Director may institute a derivation proceeding. The
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 determination by the Director whether to institute a
derivation proceeding shall be final and nonappealable.
(b)  DETERMINATION BY PATENT TRIAL AND
APPEAL BOARD.— In a derivation proceeding instituted
under subsection (a), the Patent Trial and Appeal Board
shall determine whether an inventor named in the earlier
application derived the claimed invention from an inventor
named in the petitioner’s application and, without
authorization, the earlier application claiming such
invention was filed. In appropriate circumstances, the
Patent Trial and Appeal Board may correct the naming
of the inventor in any application or patent at issue. The
Director shall prescribe regulations setting forth standards
for the conduct of derivation proceedings, including
requiring parties to provide sufficient evidence to prove
and rebut a claim of derivation.
(c)  DEFERRAL OF DECISION.—The Patent Trial
and Appeal Board may defer action on a petition for a
derivation proceeding until the expiration of the 3-month
period beginning on the date on which the Director issues
a patent that includes the claimed invention that is the
subject of the petition. The Patent Trial and Appeal Board
also may defer action on a petition for a derivation
proceeding, or stay the proceeding after it has been
instituted, until the termination of a proceeding under
chapter 30, 31, or 32 involving the patent of the earlier
applicant.
(d)  EFFECT OF FINAL DECISION.—The final
decision of the Patent Trial and Appeal Board, if adverse
to claims in an application for patent, shall constitute the
final refusal by the Office on those claims. The final
decision of the Patent Trial and Appeal Board, if adverse
to claims in a patent, shall, if no appeal or other review
of the decision has been or can be taken or had, constitute
cancellation of those claims, and notice of such
cancellation shall be endorsed on copies of the patent
distributed after such cancellation.
(e)  SETTLEMENT.—Parties to a proceeding
instituted under subsection (a) may terminate the
proceeding by filing a written statement reflecting the
agreement of the parties as to the correct inventors of the
claimed invention in dispute. Unless the Patent Trial and
Appeal Board finds the agreement to be inconsistent with
the evidence of record, if any, it shall take action
consistent with the agreement. Any written settlement or
understanding of the parties shall be filed with the
Director. 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 or applications, and shall be
made available only to Government agencies on written
request, or to any person on a showing of good cause.
(f)  ARBITRATION.—Parties to a proceeding
instituted under subsection (a) may, within such time as
may be specified by the Director by regulation, determine
such contest or any aspect thereof by arbitration. Such
arbitration shall be governed by the provisions of title 9,to the extent such title is not inconsistent with this section.
The parties shall give notice of any arbitration award to
the Director, and such award shall, as between the parties
to the arbitration, be dispositive of the issues to which it
relates. The arbitration award shall be unenforceable until
such notice is given. Nothing in this subsection shall
preclude the Director from determining the patentability
of the claimed inventions involved in the proceeding.
(Subsection (c) added Oct. 15, 1962, Public Law 87-831,
76 Stat. 958; subsections (a) and (c) amended, Jan. 2,
1975, Public Law 93-596, sec. 1, 88 Stat. 1949; subsection
(a) amended Nov. 8, 1984, Public Law 98-622, sec. 202,
98 Stat. 3386; subsection (d) added Nov. 8, 1984, Public
Law 98-622, sec. 105, 98 Stat. 3385; amended Nov. 29,
1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-566, 582 (S. 1948 secs. 4507(11) and
4732(a)(10)(A)); amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, secs. 20(j), 125
Stat. 284, effective Sept. 16, 2012, and further amended
in its entirety by Public Law 112-29, sec. (3)(i), effective
March 16, 2013).
 [*End Editor's Note: 35 U.S.C. 135 (March 16, 2013)]
CHAPTER 13 — REVIEW OF PATENT AND
TRADEMARK OFFICE DECISION
Sec.
49. 141 Appeal to Court of Appeals for the Federal
Circuit.
50. 142 Notice of appeal.
51. 143 Proceedings on appeal.
52. 144 Decision on appeal.
53. 145 Civil action to obtain patent.
54. 146 Civil action in case of interference.
35 U.S.C. 141
An applicant dissatisfied with the decision in an appeal
to the Board of Patent Appeals and Interferences under
section 134  of this title may appeal the decision to the
United States Court of Appeals for the Federal Circuit.
By filing such an appeal the applicant waives his or her
right to proceed under section 145  of this title. A patent
owner, or a third-party requester in an inter partes
reexamination proceeding, who is in any reexamination
proceeding dissatisfied with the final decision in an appeal
to the Board of Patent Appeals and Interferences under
section 134  may appeal the decision only to the United
States Court of Appeals for the Federal Circuit. A party
to an interference dissatisfied with the decision of the
Board of Patent Appeals and Interferences on the
interference may appeal the decision to the United States
Court of Appeals for the Federal Circuit, but such appeal
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 shall be dismissed if any adverse party to such
interference, within twenty days after the appellant has
filed notice of appeal in accordance with section 142  of
this title, files notice with the Director that the party elects
to have all further proceedings conducted as provided in
section 146  of this title. If the appellant does not, within
thirty days after filing of such notice by the adverse party,
file a civil action under section 146 , the decision appealed
from shall govern the further proceedings in the case.
(Amended Apr. 2, 1982, Public Law 97-164, sec.
163(a)(7), (b)(2), 96 Stat. 49, 50; Nov. 8, 1984, Public
Law 98-622, sec. 203(a), 98 Stat. 3387; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-571, 582 (S. 1948 secs. 4605(c) and
4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec.
13106, 116 Stat. 1901.)
 [*Begin Editor's Note: 35 U.S.C. 141 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 141 will read as
follows:
35 U.S.C. 141
(a)  EXAMINATIONS.—An applicant who is
dissatisfied with the final decision in an appeal to the
Patent Trial and Appeal Board under section 134(a) may
appeal the Board’s decision to the United States Court of
Appeals for the Federal Circuit. By filing such an appeal,
the applicant waives his or her right to proceed under
section 145.
(b)  REEXAMINATIONS.—A patent owner who is
dissatisfied with the final decision in an appeal of a
reexamination to the Patent Trial and Appeal Board under
section 134(b) may appeal the Board’s decision only to
the United States Court of Appeals for the Federal Circuit.
(c)  POST-GRANT AND INTER PARTES
REVIEWS.—A party to an inter partes review or a
post-grant review who is dissatisfied with the final written
decision of the Patent Trial and Appeal Board under
section 318(a) or 328(a) (as the case may be) may appeal
the Board’s decision only to the United States Court of
Appeals for the Federal Circuit.
(d)  DERIV ATION PROCEEDINGS.—A party to
a derivation proceeding who is dissatisfied with the final
decision of the Patent Trial and Appeal Board in the
proceeding may appeal the decision to the United States
Court of Appeals for the Federal Circuit, but such appeal
shall be dismissed if any adverse party to such derivation
proceeding, within 20 days after the appellant has filed
notice of appeal in accordance with section 142, files
notice with the Director that the party elects to have all
further proceedings conducted as provided in section 146.
If the appellant does not, within 30 days after the filing
of such notice by the adverse party, file a civil actionunder section 146, the Board’s decision shall govern the
further proceedings in the case.
(Amended Apr. 2, 1982, Public Law 97-164, sec.
163(a)(7), (b)(2), 96 Stat. 49, 50; Nov. 8, 1984, Public
Law 98-622, sec. 203(a), 98 Stat. 3387; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-571, 582 (S. 1948 secs. 4605(c) and
4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec.
13106, 116 Stat. 1901; amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
sec. 7(c), 125 Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 141 (Sept. 16, 2012)]
35 U.S.C. 142
When an appeal is taken to the United States Court of
Appeals for the Federal Circuit, the appellant shall file in
the Patent and Trademark Office a written notice of appeal
directed to the Director, within such time after the date
of the decision from which the appeal is taken as the
Director prescribes, but in no case less than 60 days after
that date.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-620,
sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
sec. 4732(a)(10)(A)).)
35 U.S.C. 143
With respect to an appeal described in section 142  of this
title, the Director shall transmit to the United States Court
of Appeals for the Federal Circuit a certified list of the
documents comprising the record in the Patent and
Trademark Office. The court may request that the Director
forward the original or certified copies of such documents
during the pendency of the appeal. In an ex parte case or
any reexamination case, the Director shall submit to the
court in writing the grounds for the decision of the Patent
and Trademark Office, addressing all the issues involved
in the appeal. The court shall, before hearing an appeal,
give notice of the time and place of the hearing to the
Director and the parties in the appeal.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-620,
sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S.
1948 secs. 4605(d) and 4732(a)(10)(A)); Nov. 2, 2002,
Public Law 107-273, sec. 13202, 116 Stat. 1901.)
 [*Begin Editor's Note: 35 U.S.C. 143 (Sept. 16, 2012)]
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  Effective Sept. 16, 2012, 35 U.S.C. 143 will read as
follows:
35 U.S.C. 143
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 the 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.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-620,
sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S.
1948 secs. 4605(d) and 4732(a)(10)(A)); Nov. 2, 2002,
Public Law 107-273, sec. 13202, 116 Stat. 1901; ;
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, secs. 7(c), 20(j), 125 Stat. 284,
effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 143 (Sept. 16, 2012)]
35 U.S.C. 144
The United States Court of Appeals for the Federal Circuit
shall review the decision from which an appeal is taken
on the record before the Patent and Trademark Office.
Upon its determination the court shall issue to the Director
its mandate and opinion, which shall be entered of record
in the Patent and Trademark Office and shall govern the
further proceedings in the case.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-620,
sec. 414(a), 98 Stat. 3363; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
sec. 4732(a)(10)(A)).)
35 U.S.C. 145
An applicant dissatisfied with the decision of the Board
of Patent Appeals and Interferences in an appeal under
section 134(a)  of this title may, unless appeal has been
taken to the United States Court of Appeals for the FederalCircuit, have remedy by civil action against the Director
in the United States District Court for the Eastern District
of Virginia if commenced within such time after such
decision, not less than sixty days, as the Director appoints.
The court may adjudge that such applicant is entitled to
receive a patent for his invention, as specified in any of
his claims involved in the decision of the Board of Patent
Appeals and Interferences, as the facts in the case may
appear, and such adjudication shall authorize the Director
to issue such patent on compliance with the requirements
of law. All the expenses of the proceedings shall be paid
by the applicant.
(Amended Apr. 2, 1982, Public Law 97-164, sec.
163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622,
sec. 203(b), 98 Stat. 3387; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S.
1948 secs. 4605(e) and 4732(a)(10)(A) ); amended Sept.
16, 2011, Leahy-Smith America Invents Act, Public Law
112-29, sec. 9, 125 Stat. 284.)
 [*Begin Editor's Note: 35 U.S.C. 145 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 145 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 145 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 145 will read as
follows:
35 U.S.C. 145
An applicant dissatisfied with the decision of the Patent
Trial and Appeal Board in an appeal under section 134(a)
may, unless appeal has been taken to the United States
Court of Appeals for the Federal Circuit, have remedy by
civil action against the Director in the United States
District Court for the Eastern District of Virginia if
commenced within such time after such decision, not less
than sixty days, as the Director appoints. The court may
adjudge that such applicant is entitled to receive a patent
for his invention, as specified in any of his claims
involved in the decision of the Patent Trial and Appeal
Board, as the facts in the case may appear, and such
adjudication shall authorize the Director to issue such
patent on compliance with the requirements of law. All
the expenses of the proceedings shall be paid by the
applicant.
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 (Amended Apr. 2, 1982, Public Law 97-164, sec.
163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622,
sec. 203(b), 98 Stat. 3387; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-571, 582 (S.
1948 secs. 4605(e) and 4732(a)(10)(A) ); amended Sept.
16, 2011, Leahy-Smith America Invents Act, Public Law
112-29, sec. 9, 125 Stat. 284, further amended by Public
Law 112-29, secs. 20(j) (effective Sept. 16, 2012), and
3(j) (effective March 16, 2013.)
 [*End Editor's Note: 35 U.S.C. 145 (March 16, 2013)]
35 U.S.C. 146
Any party to an interference dissatisfied with the decision
of the Board of Patent Appeals and Interferences may
have remedy by civil action, if commenced within such
time after such decision, not less than sixty days, as the
Director appoints or as provided in section 141  of this
title, unless he has appealed to the United States Court of
Appeals for the Federal Circuit, and such appeal is
pending or has been decided. In such suits the record in
the Patent and Trademark Office shall be admitted on
motion of either party upon the terms and conditions as
to costs, expenses, and the further cross-examination of
the witnesses as the court imposes, without prejudice to
the right of the parties to take further testimony. The
testimony and exhibits of the record in the Patent and
Trademark Office when admitted shall have the same
effect as if originally taken and produced in the suit.
Such suit may be instituted against the party in interest
as shown by the records of the Patent and Trademark
Office at the time of the decision complained of, but any
party in interest may become a party to the action. If there
be adverse parties residing in a plurality of districts not
embraced within the same state, or an adverse party
residing in a foreign country, the United States District
Court for the Eastern District of Virginia shall have
jurisdiction and may issue summons against the adverse
parties directed to the marshal of any district in which
any adverse party resides. Summons against adverse
parties residing in foreign countries may be served by
publication or otherwise as the court directs. The Director
shall not be a necessary party but he shall be notified of
the filing of the suit by the clerk of the court in which it
is filed and shall have the right to intervene. Judgment of
the court in favor of the right of an applicant to a patent
shall authorize the Director to issue such patent on the
filing in the Patent and Trademark Office of a certified
copy of the judgment and on compliance with the
requirements of law.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622,sec. 203(c), 98 Stat. 3387; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
sec. 4732(a)(10)(A)); amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
sec. 9, 125 Stat. 284.)
 [*Begin Editor's Note: 35 U.S.C. 146 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 146 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 146 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 146 will read as
follows:
35 U.S.C. 146
Any party to a derivation proceeding dissatisfied with the
decision of the Patent Trial and Appeal Board may have
remedy by civil action, if commenced within such time
after such decision, not less than sixty days, as the
Director appoints or as provided in section 141 , unless
he has appealed to the United States Court of Appeals for
the Federal Circuit, and such appeal is pending or has
been decided. In such suits the record in the Patent and
Trademark Office shall be admitted on motion of either
party upon the terms and conditions as to costs, expenses,
and the further cross-examination of the witnesses as the
court imposes, without prejudice to the right of the parties
to take further testimony. The testimony and exhibits of
the record in the Patent and Trademark Office when
admitted shall have the same effect as if originally taken
and produced in the suit.
Such suit may be instituted against the party in interest
as shown by the records of the Patent and Trademark
Office at the time of the decision complained of, but any
party in interest may become a party to the action. If there
be adverse parties residing in a plurality of districts not
embraced within the same state, or an adverse party
residing in a foreign country, the United States District
Court for the Eastern District of Virginia shall have
jurisdiction and may issue summons against the adverse
parties directed to the marshal of any district in which
any adverse party resides. Summons against adverse
parties residing in foreign countries may be served by
publication or otherwise as the court directs. The Director
shall not be a necessary party but he shall be notified of
the filing of the suit by the clerk of the court in which it
is filed and shall have the right to intervene. Judgment of
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 the court in favor of the right of an applicant to a patent
shall authorize the Director to issue such patent on the
filing in the Patent and Trademark Office of a certified
copy of the judgment and on compliance with the
requirements of law.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Apr. 2, 1982, Public Law 97-164, sec.
163(a)(7), 96 Stat. 49; Nov. 8, 1984, Public Law 98-622,
sec. 203(c), 98 Stat. 3387; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
sec. 4732(a)(10)(A)); amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
sec. 9, 125 Stat. 284, further amended by Public Law
112-29, secs. 20(j) (effective Sept. 16, 2012) and 3(j)
(effective March 16, 2013.)
 [*End Editor's Note: 35 U.S.C. 146 (March 16, 2013)]
CHAPTER 14 — ISSUE OF PATENT
Sec.
55. 151 Issue of patent.
56. 152 Issue of patent to assignee.
57. 153 How issued.
58. 154 Contents and term of patent; provisional rights.
59. 155 Patent term extension.
60. 155A Patent term restoration.
61. 156 Extension of patent term.
62. 157 Statutory invention registration.
35 U.S.C. 151
If it appears that applicant is entitled to a patent under the
law, a written notice of allowance of the application shall
be given or mailed to the applicant. The notice shall
specify a sum, constituting the issue fee or a portion
thereof, which shall be paid within three months
thereafter.
Upon payment of this sum the patent shall issue, but if
payment is not timely made, the application shall be
regarded as abandoned.
Any remaining balance of the issue fee shall be paid
within three months from the sending of a notice thereof,
and, if not paid, the patent shall lapse at the termination
of this three-month period. In calculating the amount of
a remaining balance, charges for a page or less may be
disregarded.
If any payment required by this section is not timely made,
but is submitted with the fee for delayed payment and thedelay in payment is shown to have been unavoidable, it
may be accepted by the Director as though no
abandonment or lapse had ever occurred.
(Amended July 24, 1965, Public Law 89-83, sec. 4,
79 Stat. 260; Jan. 2, 1975, Public Law 93-601, sec. 3, 88
Stat. 1956; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 152
Patents may be granted to the assignee of the inventor of
record in the Patent and Trademark Office, upon the
application made and the specification sworn to by the
inventor, except as otherwise provided in this title.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949.)
35 U.S.C. 153
Patents shall be issued in the name of the United States
of America, under the seal of the Patent and Trademark
Office, and shall be signed by the Director or have his
signature placed thereon and shall be recorded in the
Patent and Trademark Office.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); Nov. 2, 2002, Public Law 107-273, sec.
13203, 116 Stat. 1902.)
35 U.S.C. 154
(a)  IN GENERAL.—(1)  CONTENTS.—Every
patent shall contain a short title of the invention and a
grant to the patentee, his heirs or assigns, of the right to
exclude others from making, using, offering for sale, or
selling the invention throughout the United States or
importing the invention into the United States, and, if the
invention is a process, of the right to exclude others from
using, offering for sale or selling throughout the United
States, or importing into the United States, products made
by that process, referring to the specification for the
particulars thereof.
(2)  TERM.—Subject to the payment of fees
under this title, such grant shall be for a term beginning
on the date on which the patent issues and ending 20 years
from the date on which the application for the patent was
filed in the United States or, if the application contains a
specific reference to an earlier filed application or
applications under section 120 , 121, or 365(c)  of this title,
from the date on which the earliest such application was
filed.
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 (3)  PRIORITY .—Priority under section 119 ,
365(a) , or 365(b ) of this title shall not be taken into
account in determining the term of a patent.
(4)  SPECIFICATION AND DRAWING.—A
copy of the specification and drawing shall be annexed
to the patent and be a part of such patent.
(b)  ADJUSTMENT OF PATENT TERM.— (1) 
PATENT TERM GUARANTEES.— (A)  GUARANTEE
OF PROMPT PATENT AND TRADEMARK OFFICE
RESPONSES.— Subject to the limitations under
paragraph (2), if the issue of an original patent is delayed
due to the failure of the Patent and Trademark Office to—
(i)  provide at least one of the notifications under section
132 of this title or a notice of allowance under section
151 of this title not later than 14 months after— (I)  the
date on which an application was filed under section
111(a)  of this title; or
(II)  the date on which an
international application fulfilled the requirements of
section 371  of this title;
(ii)  respond to a reply under section 132 ,
or to an appeal taken under section 134 , within 4 months
after the date on which the reply was filed or the appeal
was taken;
(iii)  act on an application within
4 months after the date of a decision by the Board of
Patent Appeals and Interferences under section 134  or
135 or a decision by a Federal court under section 141 ,
145, or 146 in a case in which allowable claims remain
in the application; or
(iv)  issue a patent within 4 months after
the date on which the issue fee was paid under section
151 and all outstanding requirements were satisfied, the
term of the patent shall be extended 1 day for each day
after the end of the period specified in clause (i), (ii), (iii),
or (iv), as the case may be, until the action described in
such clause is taken.
(B)  GUARANTEE OF NO MORE THAN
3-YEAR APPLICATION PENDENCY .— Subject to the
limitations under paragraph (2), if the issue of an original
patent is delayed due to the failure of the United States
Patent and Trademark Office to issue a patent within
3 years after the actual filing date of the application in
the United States, not including— (i)  any time consumed
by continued examination of the application requested by
the applicant under section 132(b );
(ii)  any time consumed by a proceeding
under section 135(a) , any time consumed by the
imposition of an order under section 181 , or any time
consumed by appellate review by the Board of Patent
Appeals and Interferences or by a Federal court; or
(iii)  any delay in the processing of the
application by the United States Patent and Trademark
Office requested by the applicant except as permitted by
paragraph (3)(C), the term of the patent shall be extended
1 day for each day after the end of that 3-year period until
the patent is issued.(C)  GUARANTEE OR ADJUSTMENTS
FOR DELAYS DUE TO INTERFERENCES, SECRECY
ORDERS, AND APPEALS.— Subject to the limitations
under paragraph (2), if the issue of an original patent is
delayed due to— (i)  a proceeding under section 135(a) ;
(ii)  the imposition of an order under
section 181 ; or
(iii)  appellate review by the Board of
Patent Appeals and Interferences or by a Federal court in
a case in which the patent was issued under a decision in
the review reversing an adverse determination of
patentability, the term of the patent shall be extended 1
day for each day of the pendency of the proceeding, order,
or review, as the case may be.
(2)  LIMITATIONS.— (A)  IN GENERAL.—
To the extent that periods of delay attributable to grounds
specified in paragraph (1) overlap, the period of any
adjustment granted under this subsection shall not exceed
the actual number of days the issuance of the patent was
delayed.
(B)  DISCLAIMED TERM.— No patent the
term of which has been disclaimed beyond a specified
date may be adjusted under this section beyond the
expiration date specified in the disclaimer.
(C)  REDUCTION OF PERIOD OF
ADJUSTMENT.— (i)  The period of adjustment of the
term of a patent under paragraph (1) shall be reduced by
a period equal to the period of time during which the
applicant failed to engage in reasonable efforts to conclude
prosecution of the application.
(ii)  With respect to adjustments to patent
term made under the authority of paragraph (1)(B), an
applicant shall be deemed to have failed to engage in
reasonable efforts to conclude processing or examination
of an application for the cumulative total of any periods
of time in excess of 3 months that are taken to respond to
a notice from the Office making any rejection, objection,
argument, or other request, measuring such 3-month
period from the date the notice was given or mailed to
the applicant.
(iii)  The Director shall prescribe
regulations establishing the circumstances that constitute
a failure of an applicant to engage in reasonable efforts
to conclude processing or examination of an application.
(3)  PROCEDURES FOR PATENT TERM
ADJUSTMENT DETERMINATION.— (A)  The Director
shall prescribe regulations establishing procedures for the
application for and determination of patent term
adjustments under this subsection.
(B)  Under the procedures established under
subparagraph (A), the Director shall— (i)  make a
determination of the period of any patent term adjustment
under this subsection, and shall transmit a notice of that
determination with the written notice of allowance of the
application under section 151 ; and
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 (ii)  provide the applicant one opportunity
to request reconsideration of any patent term adjustment
determination made by the Director.
(C)  The Director shall reinstate all or part
of the cumulative period of time of an adjustment under
paragraph (2)(C) if the applicant, prior to the issuance of
the patent, makes a showing that, in spite of all due care,
the applicant was unable to respond within the 3-month
period, but in no case shall more than three additional
months for each such response beyond the original
3-month period be reinstated.
(D)  The Director shall proceed to grant the
patent after completion of the Director’s determination
of a patent term adjustment under the procedures
established under this subsection, notwithstanding any
appeal taken by the applicant of such determination.
(4)  APPEAL OF PATENT TERM
ADJUSTMENT DETERMINATION.— (A)  An applicant
dissatisfied with a determination made by the Director
under paragraph (3) shall have remedy by a civil action
against the Director filed in the United States District
Court for the Eastern District of Virginia within 180 days
after the grant of the patent. Chapter 7 of title 5 shall apply
to such action. Any final judgment resulting in a change
to the period of adjustment of the patent term shall be
served on the Director, and the Director shall thereafter
alter the term of the patent to reflect such change.
(B)  The determination of a patent term
adjustment under this subsection shall not be subject to
appeal or challenge by a third party prior to the grant of
the patent.
(c)  CONTINUATION.—(1) 
DETERMINATION.—The term of a patent that is in
force on or that results from an application filed before
the date that is 6 months after the date of the enactment
of the Uruguay Round Agreements Act shall be the greater
of the 20-year term as provided in subsection (a), or 17
years from grant, subject to any terminal disclaimers.
(2)  REMEDIES.—The remedies of sections
283, 284, and 285 of this title shall not apply to acts which
—(A)  were commenced or for which substantial
investment was made before the date that is 6 months
after the date of the enactment of the Uruguay Round
Agreements Act; and
(B)  became infringing by reason of
paragraph (1).
(3)  REMUNERATION.—The acts referred to
in paragraph (2) may be continued only upon the payment
of an equitable remuneration to the patentee that is
determined in an action brought under  chapter 28  and
chapter 29  (other than those provisions excluded by
paragraph (2)) of this title.
(d)  PROVISIONAL RIGHTS.— (1)  IN
GENERAL.— In addition to other rights provided by this
section, a patent shall include the right to obtain a
reasonable royalty from any person who, during the period
beginning on the date of publication of the applicationfor such patent under section 122(b) , or in the case of an
international application filed under the treaty defined in
section 351(a)  designating the United States under Article
21(2)(a)  of such treaty, the date of publication of the
application, and ending on the date the patent is issued—
(A)  (i) makes, uses, offers for sale, or sells in the United
States the invention as claimed in the published patent
application or imports such an invention into the United
States; or(ii)  if the invention as claimed in the published
patent application is a process, uses, offers for sale, or
sells in the United States or imports into the United States
products made by that process as claimed in the published
patent application; and
(B)  had actual notice of the published patent
application and, in a case in which the right arising under
this paragraph is based upon an international application
designating the United States that is published in a
language other than English, had a translation of the
international application into the English language.
(2)  RIGHT BASED ON SUBSTANTIALLY
IDENTICAL INVENTIONS.— The right under paragraph
(1) to obtain a reasonable royalty shall not be available
under this subsection unless the invention as claimed in
the patent is substantially identical to the invention as
claimed in the published patent application.
(3)  TIME LIMITATION ON OBTAINING A
REASONABLE ROYALTY .— The right under paragraph
(1) to obtain a reasonable royalty shall be available only
in an action brought not later than 6 years after the patent
is issued. The right under paragraph (1) to obtain a
reasonable royalty shall not be affected by the duration
of the period described in paragraph (1).
(4)  REQUIREMENTS FOR INTERNATIONAL
APPLICATIONS— (A)  EFFECTIVE DATE.— The
right under paragraph (1) to obtain a reasonable royalty
based upon the publication under the treaty defined in
section 351(a)  of an international application designating
the United States shall commence on the date of
publication under the treaty of the international
application, or, if the publication under the treaty of the
international application is in a language other than
English, on the date on which the Patent and Trademark
Office receives a translation of the publication in the
English language.
(B)  COPIES.— The Director may require
the applicant to provide a copy of the international
application and a translation thereof.
(Amended July 24, 1965, Public Law 89-83, sec. 5, 79
Stat. 261; Dec. 12, 1980, Public Law 96-517, sec. 4, 94
Stat. 3018; Aug. 23, 1988, Public Law 100-418, sec. 9002,
102 Stat. 1563; Dec. 8, 1994, Public Law 103-465, sec.
532 (a)(1), 108 Stat. 4983; Oct. 11, 1996, Public Law
104-295, sec. 20(e)(1), 110 Stat. 3529; subsection (b)
amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-557 (S. 1948 sec. 4402(a));
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 subsection (d) added Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-564 (S. 1948 sec. 4504);
subsection (b)(4) amended Nov. 2, 2002, Public Law
107-273, sec. 13206, 116 Stat. 1904; subsection (d)(4)(A)
amended Nov. 2, 2002, Public Law 107-273, sec. 13204,
116 Stat. 1902 ; subsection (b)(4)(A) amended Sept. 16,
2011, Leahy-Smith America Invents Act, Public Law
112-29, sec. 9, 125 Stat. 284.)
 [*Begin Editor's Note: 35 U.S.C. 154 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 154 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 154 (March 16, 2013)]
 Effective March 16, 2013, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 3(j), 125
Stat. 284, this section is amended by striking "Board of
Patent Appeals and Interferences" each place it appears
and inserting "Patent Trial and Appeal Board", and
the subparagraph heading for section 154(b)(1)(C) of
title 35, United States Code, is amended to read as
follows: ‘‘(C) GUARANTEE OF ADJUSTMENTS FOR
DELAYS DUE TO DERIVATION PROCEEDINGS,
SECRECY ORDERS, AND APPEALS.—’’.
 [*End Editor's Note: 35 U.S.C. 154 (March 16, 2013)]
35 U.S.C. 155
Notwithstanding the provisions of section 154 , the term
of a patent which encompasses within its scope a
composition of matter or a process for using such
composition shall be extended if such composition or
process has been subjected to a regulatory review by the
Federal Food and Drug Administration pursuant to the
Federal Food, Drug and Cosmetic Act leading to the
publication of regulation permitting the interstate
distribution and sale of such composition or process and
for which there has thereafter been a stay of regulation
of approval imposed pursuant to section 409 of the Federal
Food, Drug and Cosmetic Act, which stay was in effect
on January 1, 1981, by a length of time to be measured
from the date such stay of regulation of approval was
imposed until such proceedings are finally resolved and
commercial marketing permitted. The patentee, his heirs,
successors, or assigns shall notify the Director within 90
days of the date of enactment of this section or the date
the stay of regulation of approval has been removed,
whichever is later, of the number of the patent to beextended and the date the stay was imposed and the date
commercial marketing was permitted. On receipt of such
notice, the Director shall promptly issue to the owner of
record of the patent a certificate of extension, under seal,
stating the fact and length of the extension and identifying
the composition of matter or process for using such
composition to which such extension is applicable. Such
certificate shall be recorded in the official file of each
patent extended and such certificate shall be considered
as part of the original patent, and an appropriate notice
shall be published in the Official Gazette of the Patent
and Trademark Office.
(Added Jan. 4, 1983, Public Law 97-414, sec. 11(a),
96 Stat. 2065; amended Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
secs. 4732(a)(6) and 4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 155 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 155 is repealed by
the Leahy-Smith America Invents Act, Public Law
112-29, sec. 20(k), 125 Stat. 284.
 [*End Editor's Note: 35 U.S.C. 155 (Sept. 16, 2012)]
35 U.S.C. 155A
(a)  Notwithstanding section 154  of this title, the term
of each of the following patents shall be extended in
accordance with this section:(1)  Any patent which
encompasses within its scope a composition of matter
which is a new drug product, if during the regulatory
review of the product by the Federal Food and Drug
Administration —(A)  the Federal Food and Drug
Administration notified the patentee, by letter dated
February 20, 1976, that such product’s new drug
application was not approvable under section 505(b)(1)
of the Federal Food, Drug and Cosmetic Act;
(B)  in 1977 the patentee submitted to the
Federal Food and Drug Administration the results of a
health effects test to evaluate the carcinogenic potential
of such product;
(C)  the Federal Food and Drug
Administration approved, by letter dated December 18,
1979, the new drug application for such application; and
(D)  the Federal Food and Drug
Administration approved, by letter dated May 26, 1981,
a supplementary application covering the facility for the
production of such product.
(2)  Any patent which encompasses within its
scope a process for using the composition described in
paragraph (1).
(b)  The term of any patent described in subsection
(a) shall be extended for a period equal to the period
beginning February 20, 1976, and ending May 26, 1981,
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 and such patent shall have the effect as if originally issued
with such extended term.
(c)  The patentee of any patent described in
subsection (a) of this section shall, within ninety days
after the date of enactment of this section, notify the
Director of the number of any patent so extended. On
receipt of such notice, the Director shall confirm such
extension by placing a notice thereof in the official file
of such patent and publishing an appropriate notice of
such extension in the  Official Gazette of the Patent and
Trademark Office.
(Added Oct. 13, 1983, Public Law 98-127, sec. 4(a), 97
Stat. 832; amended Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 secs.
4732(a)(7) and 4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 155A (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 155A is repealed by
the Leahy-Smith America Invents Act, Public Law
112-29, sec. 20(k), 125 Stat. 284.
 [*End Editor's Note: 35 U.S.C. 155A (Sept. 16, 2012)]
35 U.S.C. 156
(a)  The term of a patent which claims a product, a
method of using a product, or a method of manufacturing
a product shall be extended in accordance with this section
from the original expiration date of the patent, which shall
include any patent term adjustment granted under section
154(b) if —(1)  the term of the patent has not expired
before an application is submitted under subsection (d)(1)
for its extension;
(2)  the term of the patent has never been
extended under subsection (e)(1) of this section;
(3)  an application for extension is submitted by
the owner of record of the patent or its agent and in
accordance with the requirements of paragraphs (1)
through (4) of subsection (d);
(4)  the product has been subject to a regulatory
review period before its commercial marketing or use;
(5)  (A)  except as provided in subparagraph (B)
or (C), the permission for the commercial marketing or
use of the product after such regulatory review period is
the first permitted commercial marketing or use of the
product under the provision of law under which such
regulatory review period occurred;
(B)  in the case of a patent which claims a
method of manufacturing the product which primarily
uses recombinant DNA technology in the manufacture of
the product, the permission for the commercial marketing
or use of the product after such regulatory period is the
first permitted commercial marketing or use of a product
manufactured under the process claimed in the patent; or
(C)  for purposes of subparagraph (A), in the
case of a patent which —(i)  claims a new animal drugor a veterinary biological product which (I) is not covered
by the claims in any other patent which has been extended,
and (II) has received permission for the commercial
marketing or use in non-food-producing animals and in
food-producing animals, and
(ii)  was not extended on the basis of the
regulatory review period for use in non-food-producing
animals,
the permission for the commercial marketing or use of
the drug or product after the regulatory review period for
use in food-producing animals is the first permitted
commercial marketing or use of the drug or product for
administration to a food-producing animal.
The product referred to in paragraphs (4) and (5) is
hereinafter in this section referred to as the “approved
product.”
(b)  Except as provided in subsection (d)(5)(F), the
rights derived from any patent the term of which is
extended under this section shall during the period during
which the term of the patent is extended —(1)  in the case
of a patent which claims a product, be limited to any use
approved for the product —(A)  before the expiration of
the term of the patent —(i)  under the provision of law
under which the applicable regulatory review occurred,
or
(ii)  under the provision of law under
which any regulatory review described in paragraph (1),
(4), or (5) of subsection (g) occurred, and
(B)  on or after the expiration of the
regulatory review period upon which the extension of the
patent was based;
(2)  in the case of a patent which claims a method
of using a product, be limited to any use claimed by the
patent and approved for the product —(A)  before the
expiration of the term of the patent —(i)  under any
provision of law under which an applicable regulatory
review occurred, and
(ii)  under the provision of law under
which any regulatory review described in paragraph (1),
(4), or (5) of subsection (g) occurred, and
(B)  on or after the expiration of the
regulatory review period upon which the extension of the
patent was based; and
(3)  in the case of a patent which claims a method
of manufacturing a product, be limited to the method of
manufacturing as used to make —(A)  the approved
product, or
(B)  the product if it has been subject to a
regulatory review period described in paragraph (1), (4),
or (5) of subsection (g).As used in this subsection, the
term “product” includes an approved product.
(c)  The term of a patent eligible for extension under
subsection (a) shall be extended by the time equal to the
regulatory review period for the approved product which
period occurs after the date the patent is issued, except
that—(1)  each period of the regulatory review period
shall be reduced by any period determined under
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 subsection (d)(2)(B) during which the applicant for the
patent extension did not act with due diligence during
such period of the regulatory review period;
(2)  after any reduction required by paragraph
(1), the period of extension shall include only one-half of
the time remaining in the periods described in paragraphs
(1)(B)(i), (2)(B)(i), (3)(B)(i), (4)(B)(i), and (5)(B)(i) of
subsection (g);
(3)  if the period remaining in the term of a patent
after the date of the approval of the approved product
under the provision of law under which such regulatory
review occurred when added to the regulatory review
period as revised under paragraphs (1) and (2) exceeds
fourteen years, the period of extension shall be reduced
so that the total of both such periods does not exceed
fourteen years, and
(4)  in no event shall more than one patent be
extended under subsection (e)(i) for the same regulatory
review period for any product.
(d)  (1)  To obtain an extension of the term of a patent
under this section, the owner of record of the patent or its
agent shall submit an application to the Director. Except
as provided in paragraph (5), such an application may
only be submitted within the sixty-day period beginning
on the date the product received permission under the
provision of law under which the applicable regulatory
review period occurred for commercial marketing or use.
The application shall contain —(A)  the identity of the
approved product and the Federal statute under which
regulatory review occurred;
(B)  the identity of the patent for which an
extension is being sought and the identity of each claim
of such patent which claims the approved product or a
method of using or manufacturing the approved product;
(C)  information to enable the Director to
determine under subsections (a) and (b) the eligibility of
a patent for extension and the rights that will be derived
from the extension and information to enable the Director
and the Secretary of Health and Human Services or the
Secretary of Agriculture to determine the period of the
extension under subsection (g);
(D)  a brief description of the activities
undertaken by the applicant during the applicable
regulatory review period with respect to the approved
product and the significant dates applicable to such
activities; and
(E)  such patent or other information as the
Director may require.
(2)  (A)  Within 60 days of the submittal of an
application for extension of the term of a patent under
paragraph (1), the Director shall notify —(i)  the Secretary
of Agriculture if the patent claims a drug product or a
method of using or manufacturing a drug product and the
drug product is subject to the Virus-Serum-Toxin Act,
and
(ii)  the Secretary of Health and Human
Services if the patent claims any other drug product, amedical device, or a food additive or color additive or a
method of using or manufacturing such a product, device,
or additive and if the product, device, and additive are
subject to the Federal Food, Drug and Cosmetic Act, of
the extension application and shall submit to the Secretary
who is so notified a copy of the application. Not later than
30 days after the receipt of an application from the
Director, the Secretary reviewing the application shall
review the dates contained in the application pursuant to
paragraph (1)(C) and determine the applicable regulatory
review period, shall notify the Director of the
determination, and shall publish in the Federal Register
a notice of such determination.
(B)  (i)  If a petition is submitted to the
Secretary making the determination under subparagraph
(A), not later than 180 days after the publication of the
determination under subparagraph (A), upon which it may
reasonably be determined that the applicant did not act
with due diligence during the applicable regulatory review
period, the Secretary making the determination shall, in
accordance with regulations promulgated by the Secretary,
determine if the applicant acted with due diligence during
the applicable regulatory review period. The Secretary
making the determination shall make such determination
not later than 90 days after the receipt of such a petition.
For a drug product, device, or additive subject to the
Federal Food, Drug, and Cosmetic Act or the Public
Health Service Act, the Secretary may not delegate the
authority to make the determination prescribed by this
clause to an office below the Office of the Commissioner
of Food and Drugs. For a product subject to the
Virus-Serum-Toxin Act, the Secretary of Agriculture may
not delegate the authority to make the determination
prescribed by this clause to an office below the Office of
the Assistant Secretary for Marketing and Inspection
Services.
(ii)  The Secretary making a
determination under clause (i) shall notify the Director
of the determination and shall publish in the Federal
Register a notice of such determination together with the
factual and legal basis for such determination. Any
interested person may request, within the 60-day period
beginning on the publication of a determination, the
Secretary making the determination to hold an informal
hearing on the determination. If such a request is made
within such period, such Secretary shall hold such hearing
not later than 30 days after the date of the request, or at
the request of the person making the request, not later
than 60 days after such date. The Secretary who is holding
the hearing shall provide notice of the hearing to the
owner of the patent involved and to any interested person
and provide the owner and any interested person an
opportunity to participate in the hearing. Within 30 days
after the completion of the hearing, such Secretary shall
affirm or revise the determination which was the subject
of the hearing and notify the Director of any revision of
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 the determination and shall publish any such revision in
the Federal Register.
(3)  For the purposes of paragraph (2)(B), the
term “due diligence” means that degree of attention,
continuous directed effort, and timeliness as may
reasonably be expected from, and are ordinarily exercised
by, a person during a regulatory review period.
(4)  An application for the extension of the term
of a patent is subject to the disclosure requirements
prescribed by the Director.
(5)  (A)  If the owner of record of the patent or
its agent reasonably expects that the applicable regulatory
review period described in paragraphs (1)(B)(ii),
(2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection
(g) that began for a product that is the subject of such
patent may extend beyond the expiration of the patent
term in effect, the owner or its agent may submit an
application to the Director for an interim extension during
the period beginning 6 months, and ending 15 days before
such term is due to expire. The application shall
contain—(i)  the identity of the product subject to
regulating review and the Federal statute under which
such review is occurring;
(ii)  the identity of the patent for which
interim extension is being sought and the identity of each
claim of such patent which claims the product under
regulatory review or a method of using or manufacturing
the product;
(iii)  information to enable the Director
to determine under subsection (a)(1), (2), and (3) the
eligibility of a patent for extension;
(iv)  a brief description of the activities
undertaken by the applicant during the applicable
regulatory review period to date with respect to the
product under review and the significant dates applicable
to such activities; and
(v)  such patent or other information as
the Director may require.
(B)  If the Director determines that, except
for permission to market or use the product commercially,
the patent would be eligible for an extension of the patent
term under this section, the Director shall publish in the
Federal Register a notice of such determination, including
the identity of the product under regulatory review, and
shall issue to the applicant a certificate of interim
extension for a period of not more than 1 year.
(C)  The owner of record of a patent, or its
agent, for which an interim extension has been granted
under subparagraph (B), may apply for not more than
4 subsequent interim extensions under this paragraph,
except that, in the case of a patent subject to subsection
(g)(6)(C), the owner of record of the patent, or its agent,
may apply for only 1 subsequent interim extension under
this paragraph. Each such subsequent application shall
be made during the period beginning 60 days before, and
ending 30 days before, the expiration of the preceding
interim extension.(D)  Each certificate of interim extension
under this paragraph shall be recorded in the official file
of the patent and shall be considered part of the original
patent.
(E)  Any interim extension granted under this
paragraph shall terminate at the end of the 60-day period
beginning on the day on which the product involved
receives permission for commercial marketing or use,
except that, if within that 60-day period, the applicant
notifies the Director of such permission and submits any
additional information under paragraph (1) of this
subsection not previously contained in the application for
interim extension, the patent shall be further extended, in
accordance with the provisions of this section—(i)  for
not to exceed 5 years from the date of expiration of the
original patent term; or
(ii)  if the patent is subject to subsection
(g)(6)(C), from the date on which the product involved
receives approval for commercial marketing or use.
(F)  The rights derived from any patent the
term of which is extended under this paragraph shall,
during the period of interim extension—(i)  in the case
of a patent which claims a product, be limited to any use
then under regulatory review;
(ii)  in the case of a patent which claims
a method of using a product, be limited to any use claimed
by the patent then under regulatory review; and
(iii)  in the case of a patent which claims
a method of manufacturing a product, be limited to the
method of manufacturing as used to make the product
then under regulatory review.
(e)  (1)  A determination that a patent is eligible for
extension may be made by the Director solely on the basis
of the representations contained in the application for the
extension. If the Director determines that a patent is
eligible for extension under subsection (a) and that the
requirements of paragraphs (1) through (4) of subsection
(d) have been complied with, the Director shall issue to
the applicant for the extension of the term of the patent a
certificate of extension, under seal, for the period
prescribed by subsection (c). Such certificate shall be
recorded in the official file of the patent and shall be
considered as part of the original patent.
(2)  If the term of a patent for which an
application has been submitted under subsection (d)(1)
would expire before a certificate of extension is issued or
denied under paragraph (1) respecting the application, the
Director shall extend, until such determination is made,
the term of the patent for periods of up to one year if he
determines that the patent is eligible for extension.
(f)  For purposes of this section:(1)  The term
“product” means:(A)  A drug product.
(B)  Any medical device, food additive, or
color additive subject to regulation under the Federal
Food, Drug, and Cosmetic Act.
(2)  The term “drug product” means the active
ingredient of—(A)  a new drug, antibiotic drug, or human
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 biological product (as those terms are used in the Federal
Food, Drug, and Cosmetic Act and the Public Health
Service Act), or
(B)  a new animal drug or veterinary
biological product (as those terms are used in the Federal
Food, Drug, and Cosmetic Act and the Virus-Serum-Toxin
Act) which is not primarily manufactured using
recombinant DNA, recombinant RNA, hybridoma
technology, or other processes involving site specific
genetic manipulation techniques
including any salt or ester of the active ingredient, as a
single entity or in combination with another active
ingredient.
(3)  The term “major health or environmental
effects test” means a test which is reasonably related to
the evaluation of the health or environmental effects of a
product, which requires at least six months to conduct,
and the data from which is submitted to receive
permission for commercial marketing or use. Periods of
analysis or evaluation of test results are not to be included
in determining if the conduct of a test required at least six
months.
(4)  (A)  Any reference to section 351 is a
reference to section 351 of the Public Health Service Act.
(B)  Any reference to section 503, 505, 512,
or 515 is a reference to section 503, 505, 512, or 515 of
the Federal Food, Drug and Cosmetic Act.
(C)  Any reference to the Virus-Serum-Toxin
Act is a reference to the Act of March 4, 1913 (21 U.S.C.
151 - 158).
(5)  The term “informal hearing” has the meaning
prescribed for such term by section 201(y) of the Federal
Food, Drug and Cosmetic Act.
(6)  The term “patent” means a patent issued by
the United States Patent and Trademark Office.
(7)  The term “date of enactment” as used in this
section means September 24, 1984, for human drug
product, a medical device, food additive, or color additive.
(8)  The term “date of enactment” as used in this
section means the date of enactment of the Generic
Animal Drug and Patent Term Restoration Act for an
animal drug or a veterinary biological product.
(g)  For purposes of this section, the term “regulatory
review period” has the following meanings:(1)  (A)  In
the case of a product which is a new drug, antibiotic drug,
or human biological product, the term means the period
described in subparagraph (B) to which the limitation
described in paragraph (6) applies.
(B)  The regulatory review period for a new
drug, antibiotic drug, or human biological product is the
sum of —(i)  the period beginning on the date an
exemption under subsection (i) of section 505 or
subsection (d) of section 507 became effective for the
approved product and ending on the date an application
was initially submitted for such drug product under section
351, 505, or 507, and(ii)  the period beginning on the date the
application was initially submitted for the approved
product under section 351, subsection (b) of section 505,
or section 507 and ending on the date such application
was approved under such section.
(2)  (A)  In the case of a product which is a food
additive or color additive, the term means the period
described in subparagraph (B) to which the limitation
described in paragraph (6) applies.
(B)  The regulatory review period for a food
or color additive is the sum of —(i)  the period beginning
on the date a major health or environmental effects test
on the additive was initiated and ending on the date a
petition was initially submitted with respect to the product
under the Federal Food, Drug, and Cosmetic Act
requesting the issuance of a regulation for use of the
product, and
(ii)  the period beginning on the date a
petition was initially submitted with respect to the product
under the Federal Food, Drug, and Cosmetic Act
requesting the issuance of a regulation for use of the
product, and ending on the date such regulation became
effective or, if objections were filed to such regulation,
ending on the date such objections were resolved and
commercial marketing was permitted or, if commercial
marketing was permitted and later revoked pending further
proceedings as a result of such objections, ending on the
date such proceedings were finally resolved and
commercial marketing was permitted.
(3)  (A)  In the case of a product which is a
medical device, the term means the period described in
subparagraph (B) to which the limitation described in
paragraph (6) applies.
(B)  The regulatory review period for a
medical device is the sum of —(i)  the period beginning
on the date a clinical investigation on humans involving
the device was begun and ending on the date an
application was initially submitted with respect to the
device under section 515, and
(ii)  the period beginning on the date an
application was initially submitted with respect to the
device under section 515 and ending on the date such
application was approved under such Act or the period
beginning on the date a notice of completion of a product
development protocol was initially submitted under
section 515(f)(5) and ending on the date the protocol was
declared completed under section 515(f)(6).
(4)  (A)  In the case of a product which is a new
animal drug, the term means the period described in
subparagraph (B) to which the limitation described in
paragraph (6) applies.
(B)  The regulatory review period for a new
animal drug product is the sum of —(i)  the period
beginning on the earlier of the date a major health or
environmental effects test on the drug was initiated or the
date an exemption under subsection (j) of section 512
became effective for the approved new animal drug
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 product and ending on the date an application was initially
submitted for such animal drug product under section
512, and
(ii)  the period beginning on the date the
application was initially submitted for the approved
animal drug product under subsection (b) of section 512
and ending on the date such application was approved
under such section.
(5)  (A)  In the case of a product which is a
veterinary biological product, the term means the period
described in subparagraph (B) to which the limitation
described in paragraph (6) applies.
(B)  The regulatory period for a veterinary
biological product is the sum of —(i)  the period
beginning on the date the authority to prepare an
experimental biological product under the Virus-
Serum-Toxin Act became effective and ending on the
date an application for a license was submitted under the
Virus-Serum-Toxin Act, and
(ii)  the period beginning on the date an
application for a license was initially submitted for
approval under the Virus-Serum-Toxin Act and ending
on the date such license was issued.
(6)  A period determined under any of the
preceding paragraphs is subject to the following
limitations:(A)  If the patent involved was issued after
the date of the enactment of this section, the period of
extension determined on the basis of the regulatory review
period determined under any such paragraph may not
exceed five years.
(B)  If the patent involved was issued before
the date of the enactment of this section and —(i)  no
request for an exemption described in paragraph (1)(B)
or (4)(B) was submitted and no request for the authority
described in paragraph (5)(B) was submitted,
(ii)  no major health or environment
effects test described in paragraph (2)(B) or (4)(B) was
initiated and no petition for a regulation or application
for registration described in such paragraph was
submitted, or
(iii)  no clinical investigation described
in paragraph (3) was begun or product development
protocol described in such paragraph was submitted,
before such date for the approved product the period of
extension determined on the basis of the regulatory review
period determined under any such paragraph may not
exceed five years.
(C)  If the patent involved was issued before
the date of the enactment of this section and if an action
described in subparagraph (B) was taken before the date
of enactment of this section with respect to the approved
product and the commercial marketing or use of the
product has not been approved before such date, the period
of extension determined on the basis of the regulatory
review period determined under such paragraph may not
exceed two years or in the case of an approved product
which is a new animal drug or veterinary biologicalproduct (as those terms are used in the Federal Food,
Drug, and Cosmetic Act or the Virus-Serum-Toxin Act),
three years.
(h)  The Director may establish such fees as the
Director determines appropriate to cover the costs to the
Office of receiving and acting upon applications under
this section.
(Added Sept. 24, 1984, Public Law 98-417, sec. 201(a),
98 Stat. 1598; amended Nov. 16, 1988, Public Law
100-670, sec. 201(a)-(h), 102 Stat. 3984; Dec. 3, 1993,
Public Law 103-179, secs. 5, 6, 107 Stat. 2040, 2042;
Dec. 8, 1994, Public Law 103-465, sec. 532(c)(1), 108
Stat. 4987; subsection (f) amended Nov. 21, 1997, Public
Law 105-115, sec. 125(b)(2)(P), 111 Stat. 2326; amended
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-560, 582 (S. 1948 secs. 4404 and
4732(a)(10)(A)); subsections (b)(3)(B), (d)(2)(B)(i), and
(g)(6)(B)(iii) amended Nov. 2, 2002, Public Law 107-273,
sec. 13206, 116 Stat. 1904.)
 [*Begin Editor's Note: 35 U.S.C. 156 (Sept. 16, 2011)]
 The Leahy-Smith America Invents Act, Public Law
112-29, sec. 37, 125 Stat. 284 provides as follows:
(a)  IN GENERAL.—Section 156(d)(1) of title 35,
United States Code, is amended by adding at the end the
following flush sentence: For purposes of determining
the date on which a product receives permission under
the second sentence of this paragraph, if such permission
is transmitted after 4:30 P.M., Eastern Time, on a business
day, or is transmitted on a day that is not a business day,
the product shall be deemed to receive such permission
on the next business day. For purposes of the preceding
sentence, the term "business day" means any Monday,
Tuesday, Wednesday, Thursday, or Friday, excluding any
legal holiday under section 6103 of title 5.
(b)  APPLICABILITY .—The amendment made by
subsection (a) shall apply to any application for extension
of a patent term under section 156 of title 35, United
States Code, that is pending on, that is filed after, or as
to which a decision regarding the application is subject
to judicial review on, the date of the enactment of this
Act [Sept. 16, 2011].
 [*End Editor's Note: 35 U.S.C. 156 (Sept. 16, 2011)]
35 U.S.C. 157
(a)  Notwithstanding any other provision of this title,
the Director is authorized to publish a statutory invention
registration containing the specification and drawings of
a regularly filed application for a patent without
examination if the applicant —(1)  meets the requirements
of section 112  of this title;
(2)  has complied with the requirements for
printing, as set forth in regulations of the Director;
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 (3)  waives the right to receive a patent on the
invention within such period as may be prescribed by the
Director; and
(4)  pays application, publication, and other
processing fees established by the Director.If an
interference is declared with respect to such an
application, a statutory invention registration may not be
published unless the issue of priority of invention is finally
determined in favor of the applicant.
(b)  The waiver under subsection (a)(3) of this section
by an applicant shall take effect upon publication of the
statutory invention registration.
(c)  A statutory invention registration published
pursuant to this section shall have all of the attributes
specified for patents in this title except those specified in
section 183  and sections 271  through 289 of this title. A
statutory invention registration shall not have any of the
attributes specified for patents in any other provision of
law other than this title. A statutory invention registration
published pursuant to this section shall give appropriate
notice to the public, pursuant to regulations which the
Director shall issue, of the preceding provisions of this
subsection. The invention with respect to which a statutory
invention certificate is published is not a patented
invention for purposes of section 292  of this title.
(d)  The Director shall report to the Congress
annually on the use of statutory invention registrations.
Such report shall include an assessment of the degree to
which agencies of the federal government are making use
of the statutory invention registration system, the degree
to which it aids the management of federally developed
technology, and an assessment of the cost savings to the
Federal Government of the uses of such procedures.
(Added Nov. 8, 1984, Public Law 98-622, sec. 102(a),
98 Stat. 3383; amended Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 583 (S.
1948 secs. 4732(a)(10)(A) and 4732(a)(11)).)
 [*Begin Editor's Note: 35 U.S.C. 157 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C 157 is repealed by
the Leahy-Smith America Invents Act, Public Law
112-29, sec. 3(e), 125 Stat. 284.
 [*End Editor's Note: 35 U.S.C. 157 (March 16, 2013)]
CHAPTER 15 — PLANT PATENTS
Sec.
63. Patents for plants.
64. Description, claim.
65. Grant.
66. Assistance of the Department of Agriculture.
35 U.S.C. 161Whoever invents or discovers and asexually reproduces
any distinct and new variety of plant, including cultivated
sports, mutants, hybrids, and newly found seedlings, other
than a tuber propagated plant or a plant found in an
uncultivated state, may obtain a patent therefor, subject
to the conditions and requirements of this title.
The provisions of this title relating to patents for
inventions shall apply to patents for plants, except as
otherwise provided.
(Amended Sept. 3, 1954, 68 Stat. 1190.)
35 U.S.C. 162
No plant patent shall be declared invalid for
noncompliance with section 112  of this title if the
description is as complete as is reasonably possible.
The claim in the specification shall be in formal terms to
the plant shown and described.
 [*Begin Editor's Note: 35 U.S.C. 162 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 162 (Sept. 16, 2012)]
35 U.S.C. 163
In the case of a plant patent, the grant shall include the
right to exclude others from asexually reproducing the
plant, and from using, offering for sale, or selling the plant
so reproduced, or any of its parts, throughout the United
States, or from importing the plant so reproduced, or any
parts thereof, into the United States.
(Amended Oct. 27, 1998, Public Law 105-289, sec. 3,
112 Stat. 2781.)
35 U.S.C. 164
The President may by Executive order direct the Secretary
of Agriculture, in accordance with the requests of the
Director, for the purpose of carrying into effect the
provisions of this title with respect to plants (1) to furnish
available information of the Department of Agriculture,
(2) to conduct through the appropriate bureau or division
of the Department research upon special problems, or (3)
to detail to the Director officers and employees of the
Department.
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 (Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
CHAPTER 16 — DESIGNS
Sec.
67. 171 Patents for designs.
68. 172 Right of priority.
69. 173 Term of design patent.
35 U.S.C. 171
Whoever invents any new, original, and ornamental design
for an article of manufacture may obtain a patent therefor,
subject to the conditions and requirements of this title.
The provisions of this title relating to patents for
inventions shall apply to patents for designs, except as
otherwise provided.
35 U.S.C. 172
The right of priority provided for by subsections (a)
through (d) of section 119  of this title and the time
specified in section 102(d)  shall be six months in the case
of designs. The right of priority provided for by section
119(e)  of this title shall not apply to designs.
(Amended Dec. 8, 1994, Public Law 103-465, sec.
532(c)(2), 108 Stat. 4987.)
 [*Begin Editor's Note: 35 U.S.C. 172 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 172 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 172 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 172 will read as
follows:
35 U.S.C. 172
The right of priority provided for by subsections (a)
through (d) of section 119  shall be six months in the case
of designs. The right of priority provided for by section
119(e)  shall not apply to designs.
(Amended Dec. 8, 1994, Public Law 103-465, sec.
532(c)(2), 108 Stat. 4987; amended Sept. 16, 2011,Leahy-Smith America Invents Act, Public Law 112-29,
sec. 20(j)(effective Sept. 16, 2012) and sec. 3(g)(effective
March 16, 2013), 125 Stat. 284.)
 [*End Editor's Note: 35 U.S.C. 172 (March 16, 2013)]
35 U.S.C. 173
Patents for designs shall be granted for the term of
fourteen years from the date of grant.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 16,
96 Stat. 321; Dec. 8, 1994, Public Law 103-465, sec.
532(c)(3), 108 Stat. 4987.)
CHAPTER 17 — SECRECY OF CERTAIN
INVENTIONS AND FILING APPLICATIONS IN
FOREIGN COUNTRIES
Sec.
70. 181 Secrecy of certain inventions and withholding
of patent.
71. 182 Abandonment of invention for unauthorized
disclosure.
72. 183 Right to compensation.
73. 184 Filing of application in foreign country.
74. 185 Patent barred for filing without license.
75. 186 Penalty.
76. 187 Nonapplicability to certain persons.
77. 188 Rules and regulations, delegation of power.
35 U.S.C. 181
Whenever publication or disclosure by the publication of
an application or by the grant of a patent on an invention
in which the Government has a property interest might,
in the opinion of the head of the interested Government
agency, be detrimental to the national security, the
Commissioner of Patents upon being so notified shall
order that the invention be kept secret and shall withhold
the publication of an application or the grant of a patent
therefor under the conditions set forth hereinafter.
Whenever the publication or disclosure of an invention
by the publication of an application or by the granting of
a patent, in which the Government does not have a
property interest, might, in the opinion of the
Commissioner of Patents, be detrimental to the national
security, he shall make the application for patent in which
such invention is disclosed available for inspection to the
Atomic Energy Commission, the Secretary of Defense,
and the chief officer of any other department or agency
of the Government designated by the President as a
defense agency of the United States.
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 Each individual to whom the application is disclosed shall
sign a dated acknowledgment thereof, which
acknowledgment shall be entered in the file of the
application. If, in the opinion of the Atomic Energy
Commission, the Secretary of a Defense Department, or
the chief officer of another department or agency so
designated, the publication or disclosure of the invention
by the publication of an application or by the granting of
a patent therefor would be detrimental to the national
security, the Atomic Energy Commission, the Secretary
of a Defense Department, or such other chief officer shall
notify the Commissioner of Patents and the Commissioner
of Patents shall order that the invention be kept secret and
shall withhold the publication of the application or the
grant of a patent for such period as the national interest
requires, and notify the applicant thereof. Upon proper
showing by the head of the department or agency who
caused the secrecy order to be issued that the examination
of the application might jeopardize the national interest,
the Commissioner of Patents shall thereupon maintain
the application in a sealed condition and notify the
applicant thereof. The owner of an application which has
been placed under a secrecy order shall have a right to
appeal from the order to the Secretary of Commerce under
rules prescribed by him.
An invention shall not be ordered kept secret and the
publication of an application or the grant of a patent
withheld for a period of more than one year. The
Commissioner of Patents shall renew the order at the end
thereof, or at the end of any renewal period, for additional
periods of one year upon notification by the head of the
department or the chief officer of the agency who caused
the order to be issued that an affirmative determination
has been made that the national interest continues to so
require. An order in effect, or issued, during a time when
the United States is at war, shall remain in effect for the
duration of hostilities and one year following cessation
of hostilities. An order in effect, or issued, during a
national emergency declared by the President shall remain
in effect for the duration of the national emergency and
six months thereafter. The Commissioner of Patents may
rescind any order upon notification by the heads of the
departments and the chief officers of the agencies who
caused the order to be issued that the publication or
disclosure of the invention is no longer deemed
detrimental to the national security.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-566, 582 (S. 1948 secs.
4507(7) and 4732(a)(10)(B)).)
35 U.S.C. 182
The invention disclosed in an application for patent
subject to an order made pursuant to section 181  of thistitle may be held abandoned upon its being established
by the Commissioner of Patents that in violation of said
order the invention has been published or disclosed or
that an application for a patent therefor has been filed in
a foreign country by the inventor, his successors, assigns,
or legal representatives, or anyone in privity with him or
them, without the consent of the Commissioner of Patents.
The abandonment shall be held to have occurred as of the
time of violation. The consent of the Commissioner of
Patents shall not be given without the concurrence of the
heads of the departments and the chief officers of the
agencies who caused the order to be issued. A holding of
abandonment shall constitute forfeiture by the applicant,
his successors, assigns, or legal representatives, or anyone
in privity with him or them, of all claims against the
United States based upon such invention.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(B)).)
 [*Begin Editor's Note: 35 U.S.C. 182 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 182 (Sept. 16, 2012)]
35 U.S.C. 183
An applicant, his successors, assigns, or legal
representatives, whose patent is withheld as herein
provided, shall have the right, beginning at the date the
applicant is notified that, except for such order, his
application is otherwise in condition for allowance, or
February 1, 1952, whichever is later, and ending six years
after a patent is issued thereon, to apply to the head of
any department or agency who caused the order to be
issued for compensation for the damage caused by the
order of secrecy and/or for the use of the invention by the
Government, resulting from his disclosure. The right to
compensation for use shall begin on the date of the first
use of the invention by the Government. The head of the
department or agency is authorized, upon the presentation
of a claim, to enter into an agreement with the applicant,
his successors, assigns, or legal representatives, in full
settlement for the damage and/or use. This settlement
agreement shall be conclusive for all purposes
notwithstanding any other provision of law to the contrary.
If full settlement of the claim cannot be effected, the head
of the department or agency may award and pay to such
applicant, his successors, assigns, or legal representatives,
a sum not exceeding 75 per centum of the sum which the
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 head of the department or agency considers just
compensation for the damage and/or use. A claimant may
bring suit against the United States in the United States
Court of Federal Claims or in the District Court of the
United States for the district in which such claimant is a
resident for an amount which when added to the award
shall constitute just compensation for the damage and/or
use of the invention by the Government. The owner of
any patent issued upon an application that was subject to
a secrecy order issued pursuant to section 181  of this title,
who did not apply for compensation as above provided,
shall have the right, after the date of issuance of such
patent, to bring suit in the United States Court of Federal
Claims for just compensation for the damage caused by
reason of the order of secrecy and/or use by the
Government of the invention resulting from his disclosure.
The right to compensation for use shall begin on the date
of the first use of the invention by the Government. In a
suit under the provisions of this section the United States
may avail itself of all defenses it may plead in an action
under section 1498 of title 28. This section shall not confer
a right of action on anyone or his successors, assigns, or
legal representatives who, while in the full-time
employment or service of the United States, discovered,
invented, or developed the invention on which the claim
is based.
(Amended Apr. 2, 1982, Public Law 97-164, sec.
160(a)(12), 96 Stat. 48; Oct. 29, 1992, Public Law
102-572, sec. 902 (b)(1), 106 Stat. 4516.)
 [*Begin Editor's Note: 35 U.S.C. 183 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 183 (Sept. 16, 2012)]
35 U.S.C. 184
Except when authorized by a license obtained from the
Commissioner of Patents a person shall not file or cause
or authorize to be filed in any foreign country prior to six
months after filing in the United States an application for
patent or for the registration of a utility model, industrial
design, or model in respect of an invention made in this
country. A license shall not be granted with respect to an
invention subject to an order issued by the Commissioner
of Patents pursuant to section 181  of this title without the
concurrence of the head of the departments and the chief
officers of the agencies who caused the order to be issued.
The  license may be granted retroactively where an
application has been filed abroad through error andwithout deceptive intent and the application does not
disclose an invention within the scope of section 181  of
this title.
The term “application” when used in this chapter includes
applications and any modifications, amendments, or
supplements thereto, or divisions thereof.
The scope of a license shall permit subsequent
modifications, amendments, and supplements containing
additional subject matter if the application upon which
the request for the license is based is not, or was not,
required to be made available for inspection under section
181 of this title and if such modifications, amendments,
and supplements do not change the general nature of the
invention in a manner which would require such
application to be made available for inspection under such
section 181 . In any case in which a license is not, or was
not, required in order to file an application in any foreign
country, such subsequent modifications, amendments,
and supplements may be made, without a license, to the
application filed in the foreign country if the United States
application was not required to be made available for
inspection under section 181  and if such modifications,
amendments, and supplements do not, or did not, change
the general nature of the invention in a manner which
would require the United States application to have been
made available for inspection under such section 181 .
(Amended Aug. 23, 1988, Public Law 100-418, sec.
9101(b)(1), 102 Stat. 1567; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
sec. 4732(a)(10)(B)).)
 [*Begin Editor's Note: 35 U.S.C. 184 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 184 will read as
follows:
35 U.S.C. 184
(a)  FILING IN FOREIGN COUNTRY .—Except
when authorized by a license obtained from the
Commissioner of Patents a person shall not file or cause
or authorize to be filed in any foreign country prior to six
months after filing in the United States an application for
patent or for the registration of a utility model, industrial
design, or model in respect of an invention made in this
country. A license shall not be granted with respect to an
invention subject to an order issued by the Commissioner
of Patents pursuant to section 181  of this title without the
concurrence of the head of the departments and the chief
officers of the agencies who caused the order to be issued.
The  license may be granted retroactively where an
application has been filed abroad through error and the
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 application does not disclose an invention within the scope
of section 181  of this title.
(b)  APPLICATION.—The term “application” when
used in this chapter includes applications and any
modifications, amendments, or supplements thereto, or
divisions thereof.
(c)  SUBSEQUENT MODIFICATIONS,
AMENDMENTS, AND SUPPLEMENTS.—The scope
of a license shall permit subsequent modifications,
amendments, and supplements containing additional
subject matter if the application upon which the request
for the license is based is not, or was not, required to be
made available for inspection under section 181  of this
title and if such modifications, amendments, and
supplements do not change the general nature of the
invention in a manner which would require such
application to be made available for inspection under such
section 181 . In any case in which a license is not, or was
not, required in order to file an application in any foreign
country, such subsequent modifications, amendments,
and supplements may be made, without a license, to the
application filed in the foreign country if the United States
application was not required to be made available for
inspection under section 181  and if such modifications,
amendments, and supplements do not, or did not, change
the general nature of the invention in a manner which
would require the United States application to have been
made available for inspection under such section 181 .
scope
(Amended Aug. 23, 1988, Public Law 100-418, sec.
9101(b)(1), 102 Stat. 1567; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
sec. 4732(a)(10)(B)); amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
secs. 20(b), 20(j), 125 Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 184 (Sept. 16, 2012)]
35 U.S.C. 185
Notwithstanding any other provisions of law any person,
and his successors, assigns, or legal representatives, shall
not receive a United States patent for an invention if that
person, or his successors, assigns, or legal representatives
shall, without procuring the license prescribed in section
184 of this title, have made, or consented to or assisted
another’s making, application in a foreign country for a
patent or for the registration of a utility model, industrial
design, or model in respect of the invention. A United
States patent issued to such person, his successors,
assigns, or legal representatives shall be invalid, unless
the failure to procure such license was through error and
without deceptive intent, and the patent does not disclose
subject matter within the scope of section 181  of this title.(Amended Aug. 23, 1988, Public Law 100-418, sec.
9101(b)(2), 102 Stat. 1568; Nov. 2, 2002, Public Law
107-273, sec. 13206, 116 Stat. 1904.)
 [*Begin Editor's Note: 35 U.S.C. 185 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 185 will read as
follows:
35 U.S.C. 185
Notwithstanding any other provisions of law any person,
and his successors, assigns, or legal representatives, shall
not receive a United States patent for an invention if that
person, or his successors, assigns, or legal representatives
shall, without procuring the license prescribed in section
184, have made, or consented to or assisted another’s
making, application in a foreign country for a patent or
for the registration of a utility model, industrial design,
or model in respect of the invention. A United States
patent issued to such person, his successors, assigns, or
legal representatives shall be invalid, unless the failure
to procure such license was through error, and the patent
does not disclose subject matter within the scope of
section 181 .
(Amended Aug. 23, 1988, Public Law 100-418, sec.
9101(b)(2), 102 Stat. 1568; Nov. 2, 2002, Public Law
107-273, sec. 13206, 116 Stat. 1904; amended Sept. 16,
2011, Leahy-Smith America Invents Act, Public Law
112-29, secs. 20(c), 20(j), 125 Stat. 284, effective Sept.
16, 2012.)
 [*End Editor's Note: 35 U.S.C. 185 (Sept. 16, 2012)]
35 U.S.C. 186
Whoever, during the period or periods of time an
invention has been ordered to be kept secret and the grant
of a patent thereon withheld pursuant to section 181  of
this title, shall, with knowledge of such order and without
due authorization, willfully publish or disclose or
authorize or cause to be published or disclosed the
invention, or material information with respect thereto,
or whoever willfully, in violation of the provisions of
section 184  of this title, shall file or cause or authorize to
be filed in any foreign country an application for patent
or for the registration of a utility model, industrial design,
or model in respect of any invention made in the United
States, shall, upon conviction, be fined not more than
$10,000 or imprisoned for not more than two years, or
both.
(Amended Aug. 23, 1988, Public Law 100-418, sec.
9101(b)(3), 102 Stat. 1568.)
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  [*Begin Editor's Note: 35 U.S.C. 186 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 186 (Sept. 16, 2012)]
35 U.S.C. 187
The prohibitions and penalties of this chapter shall not
apply to any officer or agent of the United States acting
within the scope of his authority, nor to any person acting
upon his written instructions or permission.
35 U.S.C. 188
The Atomic Energy Commission, the Secretary of a
defense department, the chief officer of any other
department or agency of the Government designated by
the President as a defense agency of the United States,
and the Secretary of Commerce, may separately issue
rules and regulations to enable the respective department
or agency to carry out the provisions of this chapter, and
may delegate any power conferred by this chapter.
CHAPTER 18 — PATENT RIGHTS IN
INVENTIONS MADE WITH FEDERAL
ASSISTANCE
Sec.
78. 200 Policy and objective.
79. 201 Definitions.
80. 202 Disposition of rights.
81. 203 March-in rights.
82. 204 Preference for United States industry.
83. 205 Confidentiality.
84. 206 Uniform clauses and regulations.
85. 207 Domestic and foreign protection of federally
owned inventions.
86. 208 Regulations governing Federal licensing.
87. 209 Licensing federally owned inventions.
88. 210 Precedence of chapter.
89. 211 Relationship to antitrust laws.
90. 212 Disposition of rights in educational awards.
35 U.S.C. 200
It is the policy and objective of the Congress to use the
patent system to promote the utilization of inventions
arising from federally supported research or development;
to encourage maximum participation of small businessfirms in federally supported research and development
efforts; to promote collaboration between commercial
concerns and nonprofit organizations, including
universities; to ensure that inventions made by nonprofit
organizations and small business firms are used in a
manner to promote free competition and enterprise
without unduly encumbering future research and
discovery; to promote the commercialization and public
availability of inventions made in the United States by
United States industry and labor; to ensure that the
Government obtains sufficient rights in federally
supported inventions to meet the needs of the Government
and protect the public against nonuse or unreasonable use
of inventions; and to minimize the costs of administering
policies in this area.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3018; amended Nov. 1, 2000, Public Law 106-404,
sec. 5, 114 Stat. 1745.)
35 U.S.C. 201
As used in this chapter —
(a)  The term “Federal agency” means any executive
agency as defined in section 105 of title 5, and the military
departments as defined by section 102 of title 5.
(b)  The term “funding agreement” means any
contract, grant, or cooperative agreement entered into
between any Federal agency, other than the Tennessee
Valley Authority, and any contractor for the performance
of experimental, developmental, or research work funded
in whole or in part by the Federal Government. Such term
includes any assignment, substitution of parties, or
subcontract of any type entered into for the performance
of experimental, developmental, or research work under
a funding agreement as herein defined.
(c)  The term “contractor” means any person, small
business firm, or nonprofit organization that is a party to
a funding agreement.
(d)  The term “invention” means any invention or
discovery which is or may be patentable or otherwise
protectable under this title or any novel variety of plant
which is or may be protectable under the Plant Variety
Protection Act (7 U.S.C. 2321, et seq.).
(e)  The term “subject invention” means any
invention of the contractor conceived or first actually
reduced to practice in the performance of work under a
funding agreement:  Provided, That in the case of a variety
of plant, the date of determination (as defined in section
41(d) of the Plant Variety Protection Act (7 U.S.C.
2401(d)) must also occur during the period of contract
performance.
(f)  The term “practical application” means to
manufacture in the case of a composition or product, to
practice in the case of a process or method, or to operate
in the case of a machine or system; and, in each case,
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 under such conditions as to establish that the invention is
being utilized and that its benefits are to the extent
permitted by law or Government regulations available to
the public on reasonable terms.
(g)  The term “made” when used in relation to any
invention means the conception or first actual reduction
to practice of such invention.
(h)  The term “small business firm” means a small
business concern as defined at section 2 of Public Law
85-536 (15 U.S.C. 632) and implementing regulations of
the Administrator of the Small Business Administration.
(i)  The term “nonprofit organization” means
universities and other institutions of higher education or
an organization of the type described in section 501(c)(3)
of the Internal Revenue Code of 1986 (26 U.S.C. 501(c))
and exempt from taxation under section 501(a) of the
Internal Revenue Code (26 U.S.C. 501(a)) or any
nonprofit scientific or educational organization qualified
under a State nonprofit organization statute.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3019; subsection (d) amended Nov. 8, 1984, Public
Law 98-620, sec. 501(1), 98 Stat. 3364; subsection (e)
amended Nov. 8, 1984, Public Law 98-620, sec. 501(2),
98 Stat. 3364; subsection (i) amended Oct. 22, 1986,
Public Law 99-514, sec. 2, 100 Stat. 2095; subsection (a)
amended Nov. 2, 2002, Public Law 107-273, sec. 13206,
116 Stat. 1904.)
35 U.S.C. 202
(a)  Each nonprofit organization or small business
firm may, within a reasonable time after disclosure as
required by paragraph (c)(1) of this section, elect to retain
title to any subject invention:  Provided, however, That
a funding agreement may provide otherwise (i) when the
contractor is not located in the United States or does not
have a place of business located in the United States or
is subject to the control of a foreign government, (ii) in
exceptional circumstances when it is determined by the
agency that restriction or elimination of the right to retain
title to any subject invention will better promote the policy
and objectives of this chapter, (iii) when it is determined
by a Government authority which is authorized by statute
or Executive order to conduct foreign intelligence or
counterintelligence activities that the restriction or
elimination of the right to retain title to any subject
invention is necessary to protect the security of such
activities, or (iv) when the funding agreement includes
the operation of a Government-owned, contractor-operated
facility of the Department of Energy primarily dedicated
to that Department’s naval nuclear propulsion or weapons
related programs and all funding agreement limitations
under this subparagraph on the contractor’s right to elect
title to a subject invention are limited to inventions
occurring under the above two programs of the
Department of Energy. The rights of the nonprofit
organization or small business firm shall be subject to theprovisions of paragraph (c) of this section and the other
provisions of this chapter.
(b)  (1)  The rights of the Government under
subsection (a) shall not be exercised by a Federal agency
unless it first determines that at least one of the conditions
identified in clauses (i) through (iii) of subsection (a)
exists. Except in the case of subsection (a)(iii), the agency
shall file with the Secretary of Commerce, within thirty
days after the award of the applicable funding agreement,
a copy of such determination. In the case of a
determination under subsection (a)(ii), the statement shall
include an analysis justifying the determination. In the
case of determinations applicable to funding agreements
with small business firms, copies shall also be sent to the
Chief Counsel for Advocacy of the Small Business
Administration. If the Secretary of Commerce believes
that any individual determination or pattern of
determinations is contrary to the policies and objectives
of this chapter or otherwise not in conformance with this
chapter, the Secretary shall so advise the head of the
agency concerned and the Administrator of the Office of
Federal Procurement Policy, and recommend corrective
actions.
(2)  Whenever the Administrator of the Office
of Federal Procurement Policy has determined that one
or more Federal agencies are utilizing the authority of
clause (i) or (ii) of subsection (a) of this section in a
manner that is contrary to the policies and objectives of
this chapter the Administrator is authorized to issue
regulations describing classes of situations in which
agencies may not exercise the authorities of those clauses.
(3)  If the contractor believes that a determination
is contrary to the policies and objectives of this chapter
or constitutes an abuse of discretion by the agency, the
determination shall be subject to the section 203(b) .
(c)  Each funding agreement with a small business
firm or nonprofit organization shall contain appropriate
provisions to effectuate the following:(1)  That the
contractor disclose each subject invention to the Federal
agency within a reasonable time after it becomes known
to contractor personnel responsible for the administration
of patent matters, and that the Federal Government may
receive title to any subject invention not disclosed to it
within such time.
(2)  That the contractor make a written election
within two years after disclosure to the Federal agency
(or such additional time as may be approved by the
Federal agency) whether the contractor will retain title to
a subject invention:  Provided, That in any case where
publication, on sale, or public use, has initiated the one
year statutory period in which valid patent protection can
still be obtained in the United States, the period for
election may be shortened by the Federal agency to a date
that is not more than sixty days prior to the end of the
statutory period: And  provided further, That the Federal
Government may receive title to any subject invention in
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 which the contractor does not elect to retain rights or fails
to elect rights within such times.
(3)  That a contractor electing rights in a subject
invention agrees to file a patent application prior to any
statutory bar date that may occur under this title due to
publication, on sale, or public use, and shall thereafter
file corresponding patent applications in other countries
in which it wishes to retain title within reasonable times,
and that the Federal Government may receive title to any
subject inventions in the United States or other countries
in which the contractor has not filed patent applications
on the subject invention within such times.
(4)  With respect to any invention in which the
contractor elects rights, the Federal agency shall have a
nonexclusive, nontransferable, irrevocable, paid-up license
to practice or have practiced for or on behalf of the United
States any subject invention throughout the world:
 Provided, That the funding agreement may provide for
such additional rights, including the right to assign or
have assigned foreign patent rights in the subject
invention, as are determined by the agency as necessary
for meeting the obligations of the United States under any
treaty, international agreement, arrangement of
cooperation, memorandum of understanding, or similar
arrangement, including military agreements relating to
weapons development and production.
(5)  The right of the Federal agency to require
periodic reporting on the utilization or efforts at obtaining
utilization that are being made by the contractor or his
licensees or assignees:  Provided, That any such
information, as well as any information on utilization or
efforts at obtaining utilization obtained as part of a
proceeding under section 203 of this chapter shall be
treated by the Federal agency as commercial and financial
information obtained from a person and privileged and
confidential and not subject to disclosure under section
552 of title 5.
(6)  An obligation on the part of the contractor,
in the event a United States patent application is filed by
or on its behalf or by any assignee of the contractor, to
include within the specification of such application and
any patent issuing thereon, a statement specifying that
the invention was made with Government support and
that the Government has certain rights in the invention.
(7)  In the case of a nonprofit organization, (A)
a prohibition upon the assignment of rights to a subject
invention in the United States without the approval of the
Federal agency, except where such assignment is made
to an organization which has as one of its primary
functions the management of inventions (provided that
such assignee shall be subject to the same provisions as
the contractor); (B) a requirement that the contractor share
royalties with the inventor; (C) except with respect to a
funding agreement for the operation of a
Government-owned-contractor-operated facility, a
requirement that the balance of any royalties or income
earned by the contractor with respect to subject inventions,after payment of expenses (including payments to
inventors) incidental to the administration of subject
inventions, be utilized for the support of scientific
research, or education; (D) a requirement that, except
where it proves infeasible after a reasonable inquiry, in
the licensing of subject inventions shall be given to small
business firms; and (E) with respect to a funding
agreement for the operation of a
Government-owned-contractor-operator facility,
requirements (i) that after payment of patenting costs,
licensing costs, payments to inventors, and other expenses
incidental to the administration of subject inventions, 100
percent of the balance of any royalties or income earned
and retained by the contractor during any fiscal year, up
to an amount equal to 5 percent of the annual budget of
the facility, shall be used by the contractor for scientific
research, development, and education consistent with the
research and development mission and objectives of the
facility, including activities that increase the licensing
potential of other inventions of the facility provided that
if said balance exceeds 5 percent of the annual budget of
the facility, that 15 percent of such excess shall be paid
to the Treasury of the United States and the remaining 85
percent shall be used for the same purposes described
above in this clause; and (ii) that, to the extent it provides
the most effective technology transfer, the licensing of
subject inventions shall be administered by contractor
employees on location at the facility.
(8)  The requirements of sections 203  and 204
of this chapter.
(d)  If a contractor does not elect to retain title to a
subject invention in cases subject to this section, the
Federal agency may consider and after consultation with
the contractor grant requests for retention of rights by the
inventor subject to the provisions of this Act and
regulations promulgated hereunder.
(e)  In any case when a Federal employee is a
coinventor of any invention made with a nonprofit
organization, a small business firm, or a non-Federal
inventor, the Federal agency employing such coinventor
may, for the purpose of consolidating rights in the
invention and if it finds that it would expedite the
development of the invention— (1)  license or assign
whatever rights it may acquire in the subject invention to
the nonprofit organization, small business firm, or
non-Federal inventor in accordance with the provisions
of this chapter; or
(2)  acquire any rights in the subject invention
from the nonprofit organization, small business firm, or
non-Federal inventor, but only to the extent the party from
whom the rights are acquired voluntarily enters into the
transaction and no other transaction under this chapter is
conditioned on such acquisition.
(f)  (1)  No funding agreement with a small business
firm or nonprofit organization shall contain a provision
allowing a Federal agency to require the licensing to third
parties of inventions owned by the contractor that are not
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 subject inventions unless such provision has been
approved by the head of the agency and a written
justification has been signed by the head of the agency.
Any such provision shall clearly state whether the
licensing may be required in connection with the practice
of a subject invention, a specifically identified work
object, or both. The head of the agency may not delegate
the authority to approve provisions or sign justifications
required by this paragraph.
(2)  A Federal agency shall not require the
licensing of third parties under any such provision unless
the head of the agency determines that the use of the
invention by others is necessary for the practice of a
subject invention or for the use of a work object of the
funding agreement and that such action is necessary to
achieve the practical application of the subject invention
or work object. Any such determination shall be on the
record after an opportunity for an agency hearing. Any
action commenced for judicial review of such
determination shall be brought within sixty days after
notification of such determination.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3020; subsection (b)(4) added and subsections (a),
(b)(1), (b)(2), (c)(4), (c)(5), and (c)(7) amended Nov. 8,
1984, Public Law 98-620, sec. 501, 98 Stat. 3364;
subsection (b)(3) amended Dec. 10, 1991, Public Law
102-204, sec. 10, 105 Stat. 1641; subsection (a) amended
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-583 (S. 1948 sec. 4732(a)(12)); subsection
(e) amended Nov. 1, 2000, Public Law 106-404, sec. 6(1),
114 Stat. 1745; subsections (b)(4), (c)(4), and (c)(5)
amended Nov. 2, 2002, Public Law 107-273, sec. 13206,
116 Stat. 1905; paragraph (d)(4) redesignated as (d)(3)
and former paragraph (d)(3) struck Public Law 111-8,
div. G, title I, sec. 1301(h), Mar. 11, 2009, 123 Stat. 829;
subsection (c)(7)(E)(i) amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
sec. 13, 125 Stat. 284.)
 [*Begin Editor's Note: 35 U.S.C. 202 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 202(b)(3) is amended
by striking ‘‘the section 203(b)’’ and inserting ‘‘section
203(b)’’, and 35 U.S.C. 202(c)(7)(D) will read "a
requirement that, except where it is determined to be
infeasible following a reasonable inquiry, a preference
in the licensing of subject inventions shall be given to
small business firms; and".
 [*End Editor's Note: 35 U.S.C. 202 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 202 (March 16, 2013)] Effective March 16, 2013, 35 U.S.C. 202(c)(1)-(c)(3)
will read as follows:
35 U.S.C. 202
*****
(c)  Each funding agreement with a small business
firm or nonprofit organization shall contain appropriate
provisions to effectuate the following:*****
(2)  That the contractor make a written election
within two years after disclosure to the Federal agency
(or such additional time as may be approved by the
Federal agency) whether the contractor will retain title to
a subject invention:  Provided, That in any case where
the 1-year period referred to in section 102(b) would end
before the end of that 2-year period the period for election
may be shortened by the Federal agency to a date that is
not more than sixty days before the end of that 1-year
period: And  provided further , That the Federal
Government may receive title to any subject invention in
which the contractor does not elect to retain rights or fails
to elect rights within such times.
(3)  That a contractor electing rights in a subject
invention agrees to file a patent application prior to the
expiration of the 1-year period referred to in section
102(b), and shall thereafter file corresponding patent
applications in other countries in which it wishes to retain
title within reasonable times, and that the Federal
Government may receive title to any subject inventions
in the United States or other countries in which the
contractor has not filed patent applications on the subject
invention within such times.
*****
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3020; subsection (b)(4) added and subsections (a),
(b)(1), (b)(2), (c)(4), (c)(5), and (c)(7) amended Nov. 8,
1984, Public Law 98-620, sec. 501, 98 Stat. 3364;
subsection (b)(3) amended Dec. 10, 1991, Public Law
102-204, sec. 10, 105 Stat. 1641; subsection (a) amended
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-583 (S. 1948 sec. 4732(a)(12)); subsection
(e) amended Nov. 1, 2000, Public Law 106-404, sec. 6(1),
114 Stat. 1745; subsections (b)(4), (c)(4), and (c)(5)
amended Nov. 2, 2002, Public Law 107-273, sec. 13206,
116 Stat. 1905; paragraph (d)(4) redesignated as (d)(3)
and former paragraph (d)(3) struck Public Law 111-8,
div. G, title I, sec. 1301(h), Mar. 11, 2009, 123 Stat. 829;
subsection (c)(7)(E)(i) amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
sec. 13, 125 Stat. 284, subsections (b)(3) and (c)(7)(D)
amended by Public Law 112-29, sec. 20(i), effective Sept.
16, 2012, and subsections (c)(2) and (c)(3) amended by
Public Law 112-29, sec. 3(g), effective March 16, 2013.
)
 [*End Editor's Note: 35 U.S.C. 202 (March 16, 2013)]
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 35 U.S.C. 203
(a)  With respect to any subject invention in which
a small business firm or nonprofit organization has
acquired title under this chapter, the Federal agency under
whose funding agreement the subject invention was made
shall have the right, in accordance with such procedures
as are provided in regulations promulgated hereunder, to
require the contractor, an assignee, or exclusive licensee
of a subject invention to grant a nonexclusive, partially
exclusive, or exclusive license in any field of use to a
responsible applicant or applicants, upon terms that are
reasonable under the circumstances, and if the contractor,
assignee, or exclusive licensee refuses such request, to
grant such a license itself, if the Federal agency
determines that such —(1)  action is necessary because
the contractor or assignee has not taken, or is not expected
to take within a reasonable time, effective steps to achieve
practical application of the subject invention in such field
of use;
(2)  action is necessary to alleviate health or
safety needs which are not reasonably satisfied by the
contractor, assignee, or their licensees;
(3)  action is necessary to meet requirements for
public use specified by Federal regulations and such
requirements are not reasonably satisfied by the
contractor, assignee, or licensees; or
(4)  action is necessary because the agreement
required by section 204  has not been obtained or waived
or because a licensee of the exclusive right to use or sell
any subject invention in the United States is in breach of
its agreement obtained pursuant to section 204 .
(b)  A determination pursuant to this section or
section 202(b)(4)  shall not be subject to chapter 71 of
title 41. An administrative appeals procedure shall be
established by regulations promulgated in accordance
with section 206 . Additionally, any contractor, inventor,
assignee, or exclusive licensee adversely affected by a
determination under this section may, at any time within
sixty days after the determination is issued, file a petition
in the United States Court of Federal Claims, which shall
have jurisdiction to determine the appeal on the record
and to affirm, reverse, remand or modify, as appropriate,
the determination of the Federal agency. In cases
described in paragraphs (1) and (3) of subsection (a), the
agency’s determination shall be held in abeyance pending
the exhaustion of appeals or petitions filed under the
preceding sentence.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3022; amended Nov. 8, 1984, Public Law 98-620,
sec. 501(9), 98 Stat. 3367; Oct. 29, 1992, Public Law
102-572, sec. 902(b)(1), 106 Stat. 4516; amended Nov.
2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905;
subsection (b) amended Jan. 4, 2011, Public Law 111-350,
sec. 5(i)(2), 124 Stat. 3850.)
35 U.S.C. 204Notwithstanding any other provision of this chapter, no
small business firm or nonprofit organization which
receives title to any subject invention and no assignee of
any such small business firm or nonprofit organization
shall grant to any person the exclusive right to use or sell
any subject invention in the United States unless such
person agrees that any products embodying the subject
invention or produced through the use of the subject
invention will be manufactured substantially in the United
States. However, in individual cases, the requirement for
such an agreement may be waived by the Federal agency
under whose funding agreement the invention was made
upon a showing by the small business firm, nonprofit
organization, or assignee that reasonable but unsuccessful
efforts have been made to grant licenses on similar terms
to potential licensees that would be likely to manufacture
substantially in the United States or that under the
circumstances domestic manufacture is not commercially
feasible.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3023.)
35 U.S.C. 205
Federal agencies are authorized to withhold from
disclosure to the public information disclosing any
invention in which the Federal Government owns or may
own a right, title, or interest (including a nonexclusive
license) for a reasonable time in order for a patent
application to be filed. Furthermore, Federal agencies
shall not be required to release copies of any document
which is part of an application for patent filed with the
United States Patent and Trademark Office or with any
foreign patent office.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3023.)
35 U.S.C. 206
The Secretary of Commerce may issue regulations which
may be made applicable to Federal agencies implementing
the provisions of sections 202  through 204 of this chapter
and shall establish standard funding agreement provisions
required under this chapter. The regulations and the
standard funding agreement shall be subject to public
comment before their issuance.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3023; amended Nov. 8, 1984, Public Law 98-620,
sec. 501(10), 98 Stat. 3367.)
35 U.S.C. 207
(a)  Each Federal agency is authorized to —(1)  apply
for, obtain, and maintain patents or other forms of
protection in the United States and in foreign countries
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 on inventions in which the Federal Government owns a
right, title, or interest;
(2)  grant nonexclusive, exclusive, or partially
exclusive licenses under federally owned inventions,
royalty-free or for royalties or other consideration, and
on such terms and conditions, including the grant to the
licensee of the right of enforcement pursuant to the
provisions of chapter 29  of this title as determined
appropriate in the public interest;
(3)  undertake all other suitable and necessary
steps to protect and administer rights to federally owned
inventions on behalf of the Federal Government either
directly or through contract, including acquiring rights
for and administering royalties to the Federal Government
in any invention, but only to the extent the party from
whom the rights are acquired voluntarily enters into the
transaction, to facilitate the licensing of a federally owned
invention; and
(4)  transfer custody and administration, in whole
or in part, to another Federal agency, of the right, title, or
interest in any federally owned invention.
(b)  For the purpose of assuring the effective
management of Government-owned inventions, the
Secretary of Commerce authorized to -(1)  assist Federal
agency efforts to promote the licensing and utilization of
Government-owned inventions;
(2)  assist Federal agencies in seeking protection
and maintaining inventions in foreign countries, including
the payment of fees and costs connected therewith; and
(3)  consult with and advise Federal agencies as
to areas of science and technology research and
development with potential for commercial utilization.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3023; amended Nov. 8, 1984, Public Law 98-620,
sec. 501(11), 98 Stat. 3367; subsections (a)(2) and (a)(3)
amended Nov. 1, 2000, Public Law 106-404, sec. 6(2),
114 Stat. 1745.)
 [*Begin Editor's Note: 35 U.S.C. 207 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 207 (Sept. 16, 2012)]
35 U.S.C. 208
The Secretary of Commerce is authorized to promulgate
regulations specifying the terms and conditions upon
which any federally owned invention, other than
inventions owned by the Tennessee Valley Authority,
may be licensed on a nonexclusive, partially exclusive,
or exclusive basis.(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3024; amended Nov. 8, 1984, Public Law 98-620,
sec. 501(12), 98 Stat. 3367.)
35 U.S.C. 209
(a)  AUTHORITY .—A Federal agency may grant
an exclusive or partially exclusive license on a federally
owned invention under section 207(a)(2) only if—(1) 
granting the license is a reasonable and necessary
incentive to—(A)  call forth the investment capital and
expenditures needed to bring the invention to practical
application; or
(B)  otherwise promote the invention’s
utilization by the public;
(2)  the Federal agency finds that the public will
be served by the granting of the license, as indicated by
the applicant’s intentions, plans, and ability to bring the
invention to practical application or otherwise promote
the invention’s utilization by the public, and that the
proposed scope of exclusivity is not greater than
reasonably necessary to provide the incentive for bringing
the invention to practical application, as proposed by the
applicant, or otherwise to promote the invention’s
utilization by the public;
(3)  the applicant makes a commitment to achieve
practical application of the invention within a reasonable
time, which time may be extended by the agency upon
the applicant’s request and the applicant’s demonstration
that the refusal of such extension would be unreasonable;
(4)  granting the license will not tend to
substantially lessen competition or create or maintain a
violation of the Federal antitrust laws; and
(5)  in the case of an invention covered by a
foreign patent application or patent, the interests of the
Federal Government or United States industry in foreign
commerce will be enhanced.
(b)  MANUFACTURE IN UNITED STATES.—A
Federal agency shall normally grant a license under
section 207(a)(2) to use or sell any federally owned
invention in the United States only to a licensee who
agrees that any products embodying the invention or
produced through the use of the invention will be
manufactured substantially in the United States.
(c)  SMALL BUSINESS.—First preference for the
granting of any exclusive or partially exclusive licenses
under section 207(a)(2) shall be given to small business
firms having equal or greater likelihood as other applicants
to bring the invention to practical application within a
reasonable time.
(d)  TERMS AND CONDITIONS.—Any licenses
granted under section 207(a)(2) shall contain such terms
and conditions as the granting agency considers
appropriate, and shall include provisions—(1)  retaining
a nontransferrable, irrevocable, paid-up license for any
Federal agency to practice the invention or have the
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 invention practiced throughout the world by or on behalf
of the Government of the United States;
(2)  requiring periodic reporting on utilization of
the invention, and utilization efforts, by the licensee, but
only to the extent necessary to enable the Federal agency
to determine whether the terms of the license are being
complied with, except that any such report shall be treated
by the Federal agency as commercial and financial
information obtained from a person and privileged and
confidential and not subject to disclosure under section
552 of title 5; and
(3)  empowering the Federal agency to terminate
the license in whole or in part if the agency determines
that—(A)  the licensee is not executing its commitment
to achieve practical application of the invention, including
commitments contained in any plan submitted in support
of its request for a license, and the licensee cannot
otherwise demonstrate to the satisfaction of the Federal
agency that it has taken, or can be expected to take within
a reasonable time, effective steps to achieve practical
application of the invention;
(B)  the licensee is in breach of an agreement
described in subsection (b);
(C)  termination is necessary to meet
requirements for public use specified by Federal
regulations issued after the date of the license, and such
requirements are not reasonably satisfied by the licensee;
or
(D)  the licensee has been found by a court
of competent jurisdiction to have violated the Federal
antitrust laws in connection with its performance under
the license agreement.
(e)  PUBLIC NOTICE.—No exclusive or partially
exclusive license may be granted under section 207(a)(2)
unless public notice of the intention to grant an exclusive
or partially exclusive license on a federally owned
invention has been provided in an appropriate manner at
least 15 days before the license is granted, and the Federal
agency has considered all comments received before the
end of the comment period in response to that public
notice. This subsection shall not apply to the licensing of
inventions made under a cooperative research and
development agreement entered into under section 12 of
the Stevenson-Wydler Technology Innovation Act of
1980 (15 U.S.C. 3710a).
(f)  PLAN.—No Federal agency shall grant any
license under a patent or patent application on a federally
owned invention unless the person requesting the license
has supplied the agency with a plan for development or
marketing of the invention, except that any such plan shall
be treated by the Federal agency as commercial and
financial information obtained from a person and
privileged and confidential and not subject to disclosure
under section 552 of title 5.(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3024; amended Nov. 1, 2000, Public Law 106-404,
sec. 4, 114 Stat. 1743; subsections (d)(2) and (f) amended
Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat.
1905.)
 [*Begin Editor's Note: 35 U.S.C. 209 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(i), 125
Stat. 284, 35 U.S.C. 209(d)(1) is amended by striking
‘‘nontransferrable’’ and inserting ‘‘nontransferable".
 [*End Editor's Note: 35 U.S.C. 209 (Sept. 16, 2012)]
35 U.S.C. 210
(a)  This chapter shall take precedence over any other
Act which would require a disposition of rights in subject
inventions of small business firms or nonprofit
organizations contractors in a manner that is inconsistent
with this chapter, including but not necessarily limited to
the following:(1)  section 10(a) of the Act of June 29,
1935, as added by title I of the Act of August 14, 1946 (7
U.S.C. 427i(a); 60 Stat. 1085);
(2)  section 205(a) of the Act of August 14, 1946
(7 U.S.C. 1624(a); 60 Stat. 1090);
(3)  section 501(c) of the Federal Mine Safety
and Health Act of 1977 (30 U.S.C. 951(c); 83 Stat. 742);
(4)  section 30168(e) of title 49;
(5)  section 12 of the National Science
Foundation Act of 1950 (42 U.S.C. 1871(a); 82 Stat. 360);
(6)  section 152 of the Atomic Energy Act of
1954 (42 U.S.C. 2182; 68 Stat. 943);
(7)  section 20135 of title 51;
(8)  section 6 of the Coal Research and
Development Act of 1960 (30 U.S.C. 666; 74 Stat. 337);
(9)  section 4 of the Helium Act Amendments of
1960 (50 U.S.C. 167b; 74 Stat. 920);
(10)  section 32 of the Arms Control and
Disarmament Act of 1961 (22 U.S.C. 2572; 75 Stat. 634);
(11)  section 9 of the Federal Nonnuclear Energy
Research and Development Act of 1974 (42 U.S.C. 5908;
88 Stat. 1878);
(12)  section 5(d) of the Consumer Product
Safety Act (15 U.S.C. 2054(d); 86 Stat. 1211);
(13)  section 3 of the Act of April 5, 1944 (30
U.S.C. 323; 58 Stat. 191);
(14)  section 8001(c)(3) of the Solid Waste
Disposal Act (42 U.S.C. 6981(c); 90 Stat. 2829);
(15)  section 219 of the Foreign Assistance Act
of 1961 (22 U.S.C. 2179; 83 Stat. 806);
(16)  section 427(b) of the Federal Mine Health
and Safety Act of 1977 (30 U.S.C. 937(b); 86 Stat. 155);
(17)  section 306(d) of the Surface Mining and
Reclamation Act of 1977 (30 U.S.C. 1226(d); 91 Stat.
455);
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 (18)  section 21(d) of the Federal Fire Prevention
and Control Act of 1974 (15 U.S.C. 2218(d); 88 Stat.
1548);
(19)  section 6(b) of the Solar Photovoltaic
Energy Research Development and Demonstration Act
of 1978 (42 U.S.C. 5585(b); 92 Stat. 2516);
(20)  section 12 of the Native Latex
Commercialization and Economic Development Act of
1978 (7 U.S.C. 178j; 92 Stat. 2533); and
(21)  section 408 of the Water Resources and
Development Act of 1978 (42 U.S.C. 7879; 92 Stat. 1360).
The Act creating this chapter shall be construed to take
precedence over any future Act unless that Act specifically
cites this Act and provides that it shall take precedence
over this Act.
(b)  Nothing in this chapter is intended to alter the
effect of the laws cited in paragraph (a) of this section or
any other laws with respect to the disposition of rights in
inventions made in the performance of funding
agreements with persons other than nonprofit
organizations or small business firms.
(c)  Nothing in this chapter is intended to limit the
authority of agencies to agree to the disposition of rights
in inventions made in the performance of work under
funding agreements with persons other than nonprofit
organizations or small business firms in accordance with
the Statement of Government Patent Policy issued on
February 18, 1983, agency regulations, or other applicable
regulations or to otherwise limit the authority of agencies
to allow such persons to retain ownership of inventions,
except that all funding agreements, including those with
other than small business firms and nonprofit
organizations, shall include the requirements established
in section 202(c)(4)  and section 203 of this title. Any
disposition of rights in inventions made in accordance
with the Statement or implementing regulations, including
any disposition occurring before enactment of this section,
are hereby authorized.
(d)  Nothing in this chapter shall be construed to
require the disclosure of intelligence sources or methods
or to otherwise affect the authority granted to the Director
of Central Intelligence by statute or Executive order for
the protection of intelligence sources or methods.
(e)  The provisions of the Stevenson-Wydler
Technology Innovation Act of 1980 shall take precedence
over the provisions of this chapter to the extent that they
permit or require a disposition of rights in subject
inventions which is inconsistent with this chapter.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3026; subsection (c) amended Nov. 8, 1984, Public
Law 98-620, sec. 501(13), 98 Stat. 3367; subsection (e)
added Oct. 20, 1986, Public Law 99-502, sec. 9(c), 100
Stat. 1796; subsection (a)(4) amended July 5, 1994, Public
Law 103-272, sec. 5(j), 108 Stat. 1375; subsection (e)
amended Mar. 7, 1996, Public Law 104-113, sec. 7, 110Stat. 779.; subsection (a) amended Nov. 13, 1998, Public
Law 105-393, sec. 220(c)(2), 112 Stat. 3625; subsections
(a)(11), (a)(20), and (c) amended Nov. 2, 2002, Public
Law 107-273, sec. 13206, 116 Stat. 1905; subsection
(a)(8) amended Aug. 8, 2005, Public Law 109-58, sec.
1009(a)(2), 119 Stat. 934; subsection (a)(7) amended Dec.
18, 2010, Public Law 111-314, sec. 4(c), 124 Stat. 3440.)
 [*Begin Editor's Note: 35 U.S.C. 210 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 210 (Sept. 16, 2012)]
35 U.S.C. 211
Nothing in this chapter shall be deemed to convey to any
person immunity from civil or criminal liability, or to
create any defenses to actions, under any antitrust law.
(Added Dec.12, 1980, Public Law 96-517, sec. 6(a), 94
Stat. 3027.)
35 U.S.C. 212
No scholarship, fellowship, training grant, or other
funding agreement made by a Federal agency primarily
to an awardee for educational purposes will contain any
provision giving the Federal agency any rights to
inventions made by the awardee.
(Added Nov. 8, 1984, Public Law 98-620, sec. 501(14),
98 Stat. 3368.)
PART III — PART III—PATENTS AND
PROTECTION OF PATENT RIGHTS
CHAPTER 25 — AMENDMENT AND
CORRECTION OF PATENTS
Sec.
91. 251 Reissue of defective patents.
92. 252 Effect of reissue.
93. 253 Disclaimer.
94. 254 Certificate of correction of Patent and
Trademark Office mistake.
95. 255 Certificate of correction of applicant’s mistake.
96. 256 Correction of named inventor.
35 U.S.C. 251
Whenever any patent is, through error without any
deceptive intention, deemed wholly or partly inoperative
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 or invalid, by reason of a defective specification or
drawing, or by reason of the patentee claiming more or
less than he had a right to claim in the patent, the Director
shall, on the surrender of such patent and the payment of
the fee required by law, reissue the patent for the invention
disclosed in the original patent, and in accordance with a
new and amended application, for the unexpired part of
the term of the original patent. No new matter shall be
introduced into the application for reissue.
The Director may issue several reissued patents for
distinct and separate parts of the thing patented, upon
demand of the applicant, and upon payment of the
required fee for a reissue for each of such reissued patents.
The provisions of this title relating to applications for
patent shall be applicable to applications for reissue of a
patent, except that application for reissue may be made
and sworn to by the assignee of the entire interest if the
application does not seek to enlarge the scope of the
claims of the original patent.
No reissued patent shall be granted enlarging the scope
of the claims of the original patent unless applied for
within two years from the grant of the original patent.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 251 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 251 will read as
follows:
35 U.S.C. 251
(a)  IN GENERAL.—Whenever any patent is,
through error, deemed wholly or partly inoperative or
invalid, by reason of a defective specification or drawing,
or by reason of the patentee claiming more or less than
he had a right to claim in the patent, the Director shall,
on the surrender of such patent and the payment of the
fee required by law, reissue the patent for the invention
disclosed in the original patent, and in accordance with a
new and amended application, for the unexpired part of
the term of the original patent. No new matter shall be
introduced into the application for reissue.
(b)  MULTIPLE REISSUED PATENTS.— The
Director may issue several reissued patents for distinct
and separate parts of the thing patented, upon demand of
the applicant, and upon payment of the required fee for
a reissue for each of such reissued patents.
(c)  APPLICABILITY OF THIS TITLE.— The
provisions of this title relating to applications for patentshall be applicable to applications for reissue of a patent,
except that application for reissue may be made and sworn
to by the assignee of the entire interest if the application
does not seek to enlarge the scope of the claims of the
original patent or the application for the original patent
was filed by the assignee of the entire interest.
(d)  REISSUE PATENT ENLARGING SCOPE OF
CLAIMS.—No reissued patent shall be granted enlarging
the scope of the claims of the original patent unless
applied for within two years from the grant of the original
patent.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, secs. 4(b),
20(d), 125 Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 251 (Sept. 16, 2012)]
35 U.S.C. 252
The surrender of the original patent shall take effect upon
the issue of the reissued patent, and every reissued patent
shall have the same effect and operation in law, on the
trial of actions for causes thereafter arising, as if the same
had been originally granted in such amended form, but
in so far as the claims of the original and reissued patents
are substantially identical, such surrender shall not affect
any action then pending nor abate any cause of action
then existing, and the reissued patent, to the extent that
its claims are substantially identical with the original
patent, shall constitute a continuation thereof and have
effect continuously from the date of the original patent.
A reissued patent shall not abridge or affect the right of
any person or that person’s successors in business who,
prior to the grant of a reissue, made, purchased, offered
to sell, or used within the United States, or imported into
the United States, anything patented by the reissued
patent, to continue the use of, to offer to sell, or to sell to
others to be used, offered for sale, or sold, the specific
thing so made, purchased, offered for sale, used, or
imported unless the making, using, offering for sale, or
selling of such thing infringes a valid claim of the reissued
patent which was in the original patent. The court before
which such matter is in question may provide for the
continued manufacture, use, offer for sale, or sale of the
thing made, purchased, offered for sale, used, or imported
as specified, or for the manufacture, use, offer for sale,
or sale in the United States of which substantial
preparation was made before the grant of the reissue, and
the court may also provide for the continued practice of
any process patented by the reissue that is practiced, or
for the practice of which substantial preparation was
made, before the grant of the reissue, to the extent and
under such terms as the court deems equitable for the
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 protection of investments made or business commenced
before the grant of the reissue.
(Amended Dec. 8, 1994, Public Law 103-465, sec.
533(b)(2), 108 Stat. 4989; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948
sec. 4507(8)).)
35 U.S.C. 253
Whenever, without any deceptive intention, a claim of a
patent is invalid the remaining claims shall not thereby
be rendered invalid. A patentee, whether of the whole or
any sectional interest therein, may, on payment of the fee
required by law, make disclaimer of any complete claim,
stating therein the extent of his interest in such patent.
Such disclaimer shall be in writing and recorded in the
Patent and Trademark Office, and it shall thereafter be
considered as part of the original patent to the extent of
the interest possessed by the disclaimant and by those
claiming under him.
In like manner any patentee or applicant may disclaim or
dedicate to the public the entire term, or any terminal part
of the term, of the patent granted or to be granted.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949.)
 [*Begin Editor's Note: 35 U.S.C. 253 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 253 will read as
follows:
35 U.S.C. 253
(a)  IN GENERAL.—Whenever a claim of a patent
is invalid the remaining claims shall not thereby be
rendered invalid. A patentee, whether of the whole or any
sectional interest therein, may, on payment of the fee
required by law, make disclaimer of any complete claim,
stating therein the extent of his interest in such patent.
Such disclaimer shall be in writing and recorded in the
Patent and Trademark Office, and it shall thereafter be
considered as part of the original patent to the extent of
the interest possessed by the disclaimant and by those
claiming under him.
(b)  ADDITIONAL DISCLAIMER OR
DEDICATION.—In the manner set forth in subsection
(a), any patentee or applicant may disclaim or dedicate
to the public the entire term, or any terminal part of the
term, of the patent granted or to be granted.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; amended Sept. 16, 2011, Leahy-SmithAmerica Invents Act, Public Law 112-29, sec. 20(e), 125
Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 253 (Sept. 16, 2012)]
35 U.S.C. 254
Whenever a mistake in a patent, incurred through the fault
of the Patent and Trademark Office, is clearly disclosed
by the records of the Office, the Director may issue a
certificate of correction stating the fact and nature of such
mistake, under seal, without charge, to be recorded in the
records of patents. A printed copy thereof shall be attached
to each printed copy of the patent, and such certificate
shall be considered as part of the original patent. Every
such patent, together with such certificate, shall have the
same effect and operation in law on the trial of actions
for causes thereafter arising as if the same had been
originally issued in such corrected form. The Director
may issue a corrected patent without charge in lieu of and
with like effect as a certificate of correction.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 255
Whenever a mistake of a clerical or typographical nature,
or of minor character, which was not the fault of the Patent
and Trademark Office, appears in a patent and a showing
has been made that such mistake occurred in good faith,
the Director may, upon payment of the required fee, issue
a certificate of correction, if the correction does not
involve such changes in the patent as would constitute
new matter or would require reexamination. Such patent,
together with the certificate, shall have the same effect
and operation in law on the trial of actions for causes
thereafter arising as if the same had been originally issued
in such corrected form.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 256
Whenever through error a person is named in an issued
patent as the inventor, or through error an inventor is not
named in an issued patent and such error arose without
any deceptive intention on his part, the Director may, on
application of all the parties and assignees, with proof of
the facts and such other requirements as may be imposed,
issue a certificate correcting such error.
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 The error of omitting inventors or naming persons who
are not inventors shall not invalidate the patent in which
such error occurred if it can be corrected as provided in
this section. The court before which such matter is called
in question may order correction of the patent on notice
and hearing of all parties concerned and the Director shall
issue a certificate accordingly.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(b),
96 Stat. 320; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 256 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 256 will read as
follows:
35 U.S.C. 256
(a)  CORRECTION.—Whenever through error a
person is named in an issued patent as the inventor, or
through error an inventor is not named in an issued patent,
the Director may, on application of all the parties and
assignees, with proof of the facts and such other
requirements as may be imposed, issue a certificate
correcting such error.
(b)  PATENT V ALID IF ERROR CORRECTED.—
The error of omitting inventors or naming persons who
are not inventors shall not invalidate the patent in which
such error occurred if it can be corrected as provided in
this section. The court before which such matter is called
in question may order correction of the patent on notice
and hearing of all parties concerned and the Director shall
issue a certificate accordingly.
(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(b),
96 Stat. 320; Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(f), 125
Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 256 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 257 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 257 will be added
and read as follows:
35 U.S.C. 257
(a)  REQUEST FOR SUPPLEMENTAL
EXAMINATION.—A patent owner may request
supplemental examination of a patent in the Office to
consider, reconsider, or correct information believed to
be relevant to the patent, in accordance with suchrequirements as the Director may establish. Within 3
months after the date a request for supplemental
examination meeting the requirements of this section is
received, the Director shall conduct the supplemental
examination and shall conclude such examination by
issuing a certificate indicating whether the information
presented in the request raises a substantial new question
of patentability.
(b)  REEXAMINATION ORDERED.—If the
certificate issued under subsection (a) indicates that a
substantial new question of patentability is raised by 1 or
more items of information in the request, the Director
shall order reexamination of the patent. The reexamination
shall be conducted according to procedures established
by chapter 30, except that the patent owner shall not have
the right to file a statement pursuant to section 304.
During the reexamination, the Director shall address each
substantial new question of patentability identified during
the supplemental examination, notwithstanding the
limitations in chapter 30 relating to patents and printed
publication or any other provision of such chapter.
(c)  EFFECT.— (1)  IN GENERAL.—A patent shall
not be held unenforceable on the basis of conduct relating
to information that had not been considered, was
inadequately considered, or was incorrect in a prior
examination of the patent if the information was
considered, reconsidered, or corrected during a
supplemental examination of the patent. The making of
a request under subsection (a), or the absence thereof,
shall not be relevant to enforceability of the patent under
section 282.
(2)  EXCEPTIONS.— (A)  PRIOR
ALLEGATIONS.—Paragraph (1) shall not apply to an
allegation pled with particularity in a civil action, or set
forth with particularity in a notice received by the patent
owner under section 505(j)(2)(B)(iv)(II) of the Federal
Food, Drug, and Cosmetic Act (21 U.S.C.
355(j)(2)(B)(iv)(II)), before the date of a supplemental
examination request under subsection (a) to consider,
reconsider, or correct information forming the basis for
the allegation.
(B)  PATENT ENFORCEMENT
ACTIONS.—In an action brought under section 337(a)
of the Tariff Act of 1930 (19 U.S.C. 1337(a)), or section
281 of this title, paragraph (1) shall not apply to any
defense raised in the action that is based upon information
that was considered, reconsidered, or corrected pursuant
to a supplemental examination request under subsection
(a), unless the supplemental examination, and any
reexamination ordered pursuant to the request, are
concluded before the date on which the action is brought.
(d)  FEES AND REGULATIONS.— (1) 
FEES.—The Director shall, by regulation, establish fees
for the submission of a request for supplemental
examination of a patent, and to consider each item of
information submitted in the request. If reexamination is
ordered under subsection (b), fees established and
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 applicable to ex parte reexamination proceedings under
chapter 30 shall be paid, in addition to fees applicable to
supplemental examination.
(2)  REGULATIONS.—The Director shall issue
regulations governing the form, content, and other
requirements of requests for supplemental examination,
and establishing procedures for reviewing information
submitted in such requests.
(e)  FRAUD.—If the Director becomes aware, during
the course of a supplemental examination or
reexamination proceeding ordered under this section, that
a material fraud on the Office may have been committed
in connection with the patent that is the subject of the
supplemental examination, then in addition to any other
actions the Director is authorized to take, including the
cancellation of any claims found to be invalid under
section 307 as a result of a reexamination ordered under
this section, the Director shall also refer the matter to the
Attorney General for such further action as the Attorney
General may deem appropriate. Any such referral shall
be treated as confidential, shall not be included in the file
of the patent, and shall not be disclosed to the public
unless the United States charges a person with a criminal
offense in connection with such referral.
(f)  RULE OF CONSTRUCTION.—Nothing in this
section shall be construed— (1)  to preclude the
imposition of sanctions based upon criminal or antitrust
laws (including section 1001(a) of title 18, the first section
of the Clayton Act, and section 5 of the Federal Trade
Commission Act to the extent that section relates to unfair
methods of competition);
(2)  to limit the authority of the Director to
investigate issues of possible misconduct and impose
sanctions for misconduct in connection with matters or
proceedings before the Office; or
(3)  to limit the authority of the Director to issue
regulations under chapter 3 relating to sanctions for
misconduct by representatives practicing before the
Office.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 12, 125 Stat. 284, effective
Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 257 (Sept. 16, 2012)]
CHAPTER 26 — OWNERSHIP AND
ASSIGNMENT
Sec.
97. 261 Ownership; assignment.
98. 262 Joint owners.
35 U.S.C. 261Subject to the provisions of this title, patents shall have
the attributes of personal property.
Applications for patent, patents, or any interest therein,
shall be assignable in law by an instrument in writing.
The applicant, patentee, or his assigns or legal
representatives may in like manner grant and convey an
exclusive right under his application for patent, or patents,
to the whole or any specified part of the United States.
A certificate of acknowledgment under the hand and
official seal of a person authorized to administer oaths
within the United States, or, in a foreign country, of a
diplomatic or consular officer of the United States or an
officer authorized to administer oaths whose authority is
proved by a certificate of a diplomatic or consular officer
of the United States, or apostille of an official designated
by a foreign country which, by treaty or convention,
accords like effect to apostilles of designated officials in
the United States, shall be  prima facie evidence of the
execution of an assignment, grant, or conveyance of a
patent or application for patent.
An assignment, grant, or conveyance shall be void as
against any subsequent purchaser or mortgagee for a
valuable consideration, without notice, unless it is
recorded in the Patent and Trademark Office within three
months from its date or prior to the date of such
subsequent purchase or mortgage.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; Aug. 27, 1982, Public Law 97-247, sec.
14(b), 96 Stat. 321.)
35 U.S.C. 262
In the absence of any agreement to the contrary, each
of the joint owners of a patent may make, use, offer to
sell, or sell the patented invention within the United
States, or import the patented invention into the United
States, without the consent of and without accounting to
the other owners.
(Amended Dec. 8, 1994, Public Law 103-465, sec.
533(b)(3), 108 Stat. 4989.)
CHAPTER 27 — GOVERNMENT INTERESTS
IN PATENTS
Sec.
99. 266 [Repealed.]
100. 267 Time for taking action in Government
applications.
35 U.S.C. 266
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 (Repealed July 24, 1965, Public Law 89-83, sec. 8, 79
Stat. 261.)
35 U.S.C. 267
Notwithstanding the provisions of sections 133  and 151
of this title, the Director may extend the time for taking
any action to three years, when an application has become
the property of the United States and the head of the
appropriate department or agency of the Government has
certified to the Director that the invention disclosed
therein is important to the armament or defense of the
United States.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 267 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 267 (Sept. 16, 2012)]
CHAPTER 28 — INFRINGEMENT OF PATENTS
Sec.
101. 271 Infringement of patent.
102. 272 Temporary presence in the United States.
103. 273 Defense to infringement based on prior
commercial use.
35 U.S.C. 271
(a)  Except as otherwise provided in this title,
whoever without authority makes, uses, offers to sell, or
sells any patented invention, within the United States, or
imports into the United States any patented invention
during the term of the patent therefor, infringes the patent.
(b)  Whoever actively induces infringement of a
patent shall be liable as an infringer.
(c)  Whoever offers to sell or sells within the United
States or imports into the United States a component of
a patented machine, manufacture, combination, or
composition, or a material or apparatus for use in
practicing a patented process, constituting a material part
of the invention, knowing the same to be especially made
or especially adapted for use in an infringement of such
patent, and not a staple article or commodity of commerce
suitable for substantial noninfringing use, shall be liable
as a contributory infringer.
(d)  No patent owner otherwise entitled to relief for
infringement or contributory infringement of a patent
shall be denied relief or deemed guilty of misuse or illegalextension of the patent right by reason of his having done
one or more of the following: (1) derived revenue from
acts which if performed by another without his consent
would constitute contributory infringement of the patent;
(2) licensed or authorized another to perform acts which
if performed without his consent would constitute
contributory infringement of the patent; (3) sought to
enforce his patent rights against infringement or
contributory infringement; (4) refused to license or use
any rights to the patent; or (5) conditioned the license of
any rights to the patent or the sale of the patented product
on the acquisition of a license to rights in another patent
or purchase of a separate product, unless, in view of the
circumstances, the patent owner has market power in the
relevant market for the patent or patented product on
which the license or sale is conditioned.
(e)  (1)  It shall not be an act of infringement to make,
use, offer to sell, or sell within the United States or import
into the United States a patented invention (other than a
new animal drug or veterinary biological product (as those
terms are used in the Federal Food, Drug, and Cosmetic
Act and the Act of March 4, 1913) which is primarily
manufactured using recombinant DNA, recombinant
RNA, hybridoma technology, or other processes involving
site specific genetic manipulation techniques) solely for
uses reasonably related to the development and
submission of information under a Federal law which
regulates the manufacture, use, or sale of drugs or
veterinary biological products.
(2)  It shall be an act of infringement to submit
—(A)  an application under section 505(j) of the Federal
Food, Drug, and Cosmetic Act or described in section
505(b)(2) of such Act for a drug claimed in a patent or
the use of which is claimed in a patent,
(B)  an application under section 512 of such
Act or under the Act of March 4, 1913 (21 U.S.C. 151 -
158) for a drug or veterinary biological product which is
not primarily manufactured using recombinant DNA,
recombinant RNA, hybridoma technology, or other
processes involving site specific genetic manipulation
techniques and which is claimed in a patent or the use of
which is claimed in a patent, or
(C)  (i)  with respect to a patent that is
identified in the list of patents described in section
351(l)(3) of the Public Health Service Act (including as
provided under section 351(l)(7) of such Act), an
application seeking approval of a biological product, or
(ii)  if the applicant for the application
fails to provide the application and information required
under section 351(l)(2)(A) of such Act, an application
seeking approval of a biological product for a patent that
could be identified pursuant to section 351(l)(3)(A)(i) of
such Act,
if the purpose of such submission is to obtain approval
under such Act to engage in the commercial manufacture,
use, or sale of a drug, veterinary biological product, or
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 biological product claimed in a patent or the use of which
is claimed in a patent before the expiration of such patent.
(3)  In any action for patent infringement brought
under this section, no injunctive or other relief may be
granted which would prohibit the making, using, offering
to sell, or selling within the United States or importing
into the United States of a patented invention under
paragraph (1).
(4)  For an act of infringement described in
paragraph (2)—(A)  the court shall order the effective
date of any approval of the drug or veterinary biological
product involved in the infringement to be a date which
is not earlier than the date of the expiration of the patent
which has been infringed,
(B)  injunctive relief may be granted against
an infringer to prevent the commercial manufacture, use,
offer to sell, or sale within the United States or
importation into the United States of an approved drug,
veterinary biological product, or biological product,
(C)  damages or other monetary relief may
be awarded against an infringer only if there has been
commercial manufacture, use, offer to sell, or sale within
the United States or importation into the United States of
an approved drug, veterinary biological product, or
biological product, and
(D)  the court shall order a permanent
injunction prohibiting any infringement of the patent by
the biological product involved in the infringement until
a date which is not earlier than the date of the expiration
of the patent that has been infringed under paragraph
(2)(C), provided the patent is the subject of a final court
decision, as defined in section 351(k)(6) of the Public
Health Service Act, in an action for infringement of the
patent under section 351(l)(6) of such Act, and the
biological product has not yet been approved because of
section 351(k)(7) of such Act.
The remedies prescribed by subparagraphs (A), (B), (C),
and (D) are the only remedies which may be granted by
a court for an act of infringement described in paragraph
(2), except that a court may award attorney fees under
section 285 .
(5)  Where a person has filed an application
described in paragraph (2) that includes a certification
under subsection (b)(2)(A)(iv) or (j)(2)(A)(vii)(IV) of
section 505 of the Federal Food, Drug, and Cosmetic Act
(21 U.S.C. 355), and neither the owner of the patent that
is the subject of the certification nor the holder of the
approved application under subsection (b) of such section
for the drug that is claimed by the patent or a use of which
is claimed by the patent brought an action for infringement
of such patent before the expiration of 45 days after the
date on which the notice given under subsection (b)(3) or
(j)(2)(B) of such section was received, the courts of the
United States shall, to the extent consistent with the
Constitution, have subject matter jurisdiction in any action
brought by such person under section 2201 of title 28 fora declaratory judgment that such patent is invalid or not
infringed.
(6)  (A)  Subparagraph (B) applies, in lieu of
paragraph (4), in the case of a patent- (i)  that is identified,
as applicable, in the list of patents described in section
351(l)(4) of the Public Health Service Act or the lists of
patents described in section 351(l)(5)(B) of such Act with
respect to a biological product; and
(ii)  for which an action for infringement
of the patent with respect to the biological product - (I) 
was brought after the expiration of the 30-day period
described in subparagraph (A) or (B), as applicable, of
section 351(l)(6) of such Act; or
(II)  was brought before the
expiration of the 30-day period described in subclause
(I), but which was dismissed without prejudice or was
not prosecuted to judgment in good faith.
(B)  In an action for infringement of a patent
described in subparagraph (A), the sole and exclusive
remedy that may be granted by a court, upon a finding
that the making, using, offering to sell, selling, or
importation into the United States of the biological
product that is the subject of the action infringed the
patent, shall be a reasonable royalty.
(C)  The owner of a patent that should have
been included in the list described in section 351(l)(3)(A)
of the Public Health Service Act, including as provided
under section 351(l)(7) of such Act for a biological
product, but was not timely included in such list, may not
bring an action under this section for infringement of the
patent with respect to the biological product.
(f)  (1)  Whoever without authority supplies or causes
to be supplied in or from the United States all or a
substantial portion of the components of a patented
invention, where such components are uncombined in
whole or in part, in such manner as to actively induce the
combination of such components outside of the United
States in a manner that would infringe the patent if such
combination occurred within the United States, shall be
liable as an infringer.
(2)  Whoever without authority supplies or
causes to be supplied in or from the United States any
component of a patented invention that is especially made
or especially adapted for use in the invention and not a
staple article or commodity of commerce suitable for
substantial noninfringing use, where such component is
uncombined in whole or in part, knowing that such
component is so made or adapted and intending that such
component will be combined outside of the United States
in a manner that would infringe the patent if such
combination occurred within the United States, shall be
liable as an infringer.
(g)  Whoever without authority imports into the
United States or offers to sell, sells, or uses within the
United States a product which is made by a process
patented in the United States shall be liable as an infringer,
if the importation, offer to sell, sale, or use of the product
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 occurs during the term of such process patent. In an action
for infringement of a process patent, no remedy may be
granted for infringement on account of the noncommercial
use or retail sale of a product unless there is no adequate
remedy under this title for infringement on account of the
importation or other use, offer to sell, or sale of that
product. A product which is made by a patented process
will, for purposes of this title, not be considered to be so
made after —(1)  it is materially changed by subsequent
processes; or
(2)  it becomes a trivial and nonessential
component of another product.
(h)  As used in this section, the term “whoever”
includes any State, any instrumentality of a State, any
officer or employee of a State or instrumentality of a State
acting in his official capacity. Any State, and any such
instrumentality, officer, or employee, shall be subject to
the provisions of this title in the same manner and to the
same extent as any nongovernmental entity.
(i)  As used in this section, an “offer for sale” or an
“offer to sell” by a person other than the patentee or any
assignee of the patentee, is that in which the sale will
occur before the expiration of the term of the patent.
(Subsection (e) added Sept. 24, 1984, Public Law 98-417,
sec. 202, 98 Stat. 1603; subsection (f) added Nov. 8, 1984,
Public Law 98-622, sec. 101(a), 98 Stat. 3383; subsection
(g) added Aug. 23, 1988, Public Law 100-418, sec. 9003,
102 Stat. 1564; subsection (e) amended Nov. 16, 1988,
Public Law 100-670, sec. 201(i), 102 Stat. 3988;
subsection (d) amended Nov. 19, 1988, Public Law
100-703, sec. 201, 102 Stat. 4676; subsection (h) added
Oct. 28, 1992, Public Law 102-560, sec. 2(a)(1), 106 Stat.
4230.; subsections (a), (c), (e), and (g) amended Dec. 8,
1994, Public Law 103-465, sec. 533(a), 108 Stat. 4988;
subsection (i) added Dec. 8, 1994, Public Law 103-465,
sec. 533(a), 108 Stat. 4988.; subsection (e)(5) added Dec.
8, 2003, Public Law 108-173, sec. 1101(d), 117 Stat.
2457; subsection (e) amended March 23, 2010, Public
Law 111-148, title VII, sec. 7002(c)(1), 124 Stat. 815.)
35 U.S.C. 272
The use of any invention in any vessel, aircraft or vehicle
of any country which affords similar privileges to vessels,
aircraft, or vehicles of the United States, entering the
United States temporarily or accidentally, shall not
constitute infringement of any patent, if the invention is
used exclusively for the needs of the vessel, aircraft, or
vehicle and is not offered for sale or sold in or used for
the manufacture of anything to be sold in or exported
from the United States.
(Amended Dec. 8, 1994, Public Law 103-465, sec.
533(b)(4), 108 Stat. 4989.)
35 U.S.C. 273(a)  IN GENERAL.—A person shall be entitled to a
defense under section 282(b) with respect to subject matter
consisting of a process, or consisting of a machine,
manufacture, or composition of matter used in a
manufacturing or other commercial process, that would
otherwise infringe a claimed invention being asserted
against the person if— (1)  such person, acting in good
faith, commercially used the subject matter in the United
States, either in connection with an internal commercial
use or an actual arm’s length sale or other arm’s length
commercial transfer of a useful end result of such
commercial use; and
(2)  such commercial use occurred at least 1 year
before the earlier of either— (A)  the effective filing date
of the claimed invention; or
(B)  the date on which the claimed invention
was disclosed to the public in a manner that qualified for
the exception from prior art under section 102(b).
(b)  BURDEN OF PROOF.—A person asserting a
defense under this section shall have the burden of
establishing the defense by clear and convincing evidence.
(c)  ADDITIONAL COMMERCIAL USES.—(1) 
PREMARKETING REGULATORY REVIEW.— Subject
matter for which commercial marketing or use is subject
to a premarketing regulatory review period during which
the safety or efficacy of the subject matter is established,
including any period specified in section 156(g), shall be
deemed to be commercially used for purposes of
subsection (a)(1) during such regulatory review period.
(2)  NONPROFIT LABORATORY USE.—A
use of subject matter by a nonprofit research laboratory
or other nonprofit entity, such as a university or hospital,
for which the public is the intended beneficiary, shall be
deemed to be a commercial use for purposes of subsection
(a)(1), except that a defense under this section may be
asserted pursuant to this paragraph only for continued and
noncommercial use by and in the laboratory or other
nonprofit entity.
(d)  EXHAUSTION OF RIGHTS.—Notwithstanding
subsection (e)(1), the sale or other disposition of a useful
end result by a person entitled to assert a defense under
this section in connection with a patent with respect to
that useful end result shall exhaust the patent owner’s
rights under the patent to the extent that such rights would
have been exhausted had such sale or other disposition
been made by the patent owner.
(e)  LIMITATIONS AND EXCEPTIONS.—(1) 
PERSONAL DEFENSE.—(A)  IN GENERAL.—A
defense under this section may be asserted only by the
person who performed or directed the performance of the
commercial use described in subsection (a), or by an entity
that controls, is controlled by, or is under common control
with such person.
(B)  TRANSFER OF RIGHT.—Except for
any transfer to the patent owner, the right to assert a
defense under this section shall not be licensed or assigned
or transferred to another person except as an ancillary and
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 subordinate part of a good-faith assignment or transfer
for other reasons of the entire enterprise or line of business
to which the defense relates.
(C)  RESTRICTION ON SITES.—A defense
under this section, when acquired by a person as part of
an assignment or transfer described in subparagraph (B),
may only be asserted for uses at sites where the subject
matter that would otherwise infringe a claimed invention
is in use before the later of the effective filing date of the
claimed invention or the date of the assignment or transfer
of such enterprise or line of business.
(2)  DERIV ATION.—A person may not assert
a defense under this section if the subject matter on which
the defense is based was derived from the patentee or
persons in privity with the patentee.
(3)  NOT A GENERAL LICENSE.—The
defense asserted by a person under this section is not a
general license under all claims of the patent at issue, but
extends only to the specific subject matter for which it
has been established that a commercial use that qualifies
under this section occurred, except that the defense shall
also extend to variations in the quantity or volume of use
of the claimed subject matter, and to improvements in the
claimed subject matter that do not infringe additional
specifically claimed subject matter of the patent.
(4)  ABANDONMENT OF USE.—A person
who has abandoned commercial use (that qualifies under
this section) of subject matter may not rely on activities
performed before the date of such abandonment in
establishing a defense under this section with respect to
actions taken on or after the date of such abandonment.
(5)  UNIVERSITY EXCEPTION.—(A)  IN
GENERAL.—A person commercially using subject matter
to which subsection (a) applies may not assert a defense
under this section if the claimed invention with respect
to which the defense is asserted was, at the time the
invention was made, owned or subject to an obligation
of assignment to either an institution of higher education
(as defined in section 101(a) of the Higher Education Act
of 1965 (20 U.S.C. 1001(a)), or a technology transfer
organization whose primary purpose is to facilitate the
commercialization of technologies developed by one or
more such institutions of higher education.
(B)  EXCEPTION.—Subparagraph (A) shall
not apply if any of the activities required to reduce to
practice the subject matter of the claimed invention could
not have been under taken using funds provided by the
Federal Government.
(f)  UNREASONABLE ASSERTION OF
DEFENSE.—If the defense under this section is pleaded
by a person who is found to infringe the patent and who
subsequently fails to demonstrate a reasonable basis for
asserting the defense, the court shall find the case
exceptional for the purpose of awarding attorney fees
under section 285.(g)  INV ALIDITY .—A patent shall not be deemed
to be invalid under section 102 or 103 solely because a
defense is raised or established under this section.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-555 (S. 1948 sec. 4302);
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 5, 125 Stat. 284.)
CHAPTER 29 — REMEDIES FOR
INFRINGEMENT OF PATENT, AND OTHER
ACTIONS
Sec.
104. 281 Remedy for infringement of patent.
105. 282 Presumption of validity; defenses.
106. 283 Injunction.
107. 284 Damages.
108. 285 Attorney fees.
109. 286 Time limitation on damages.
110. 287 Limitation on damages and other remedies;
marking and notice.
111. 288 Action for infringement of a patent containing
an invalid claim.
112. 289 Additional remedy for infringement of design
patent.
113. 290 Notice of patent suits.
114. 291 Interfering patents.
115. 292 False marking.
116. 293 Nonresident patentee; service and notice.
117. 294 V oluntary arbitration.
118. 295 Presumptions: Product made by patented
process.
119. 296 Liability of States, instrumentalities of States,
and State officials for infringement of patents.
120. 297 Improper and deceptive invention promotion.
121. [298 Advice of counsel. (Sept. 16, 2012)]
122. 299 Joinder of parties.
35 U.S.C. 281
A patentee shall have remedy by civil action for
infringement of his patent.
35 U.S.C. 282
A patent shall be presumed valid. Each claim of a patent
(whether in independent, dependent, or multiple dependent
form) shall be presumed valid independently of the
validity of other claims; dependent or multiple dependent
claims shall be presumed valid even though dependent
upon an invalid claim. Notwithstanding the preceding
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 sentence, if a claim to a composition of matter is held
invalid and that claim was the basis of a determination of
nonobviousness under section 103(b)(1) , the process shall
no longer be considered nonobvious solely on the basis
of section 103(b)(1) . The burden of establishing invalidity
of a patent or any claim thereof shall rest on the party
asserting such invalidity.
The following shall be defenses in any action involving
the validity or infringement of a patent and shall be
pleaded:
(1)  Noninfringement, absence of liability for
infringement, or unenforceability,
(2)  Invalidity of the patent or any claim in suit on
any ground specified in part II  of this title as a condition
for patentability,
(3)  Invalidity of the patent or any claim in suit for
failure to comply with—(A)  any requirement of section
112, except that the failure to disclose the best mode shall
not be a basis on which any claim of a patent may be
canceled or held invalid or otherwise unenforceable; or
(B)  any requirement of section 251.
(4)  Any other fact or act made a defense by this title.
In actions involving the validity or infringement of a
patent the party asserting invalidity or noninfringement
shall give notice in the pleadings or otherwise in writing
to the adverse party at least thirty days before the trial, of
the country, number, date, and name of the patentee of
any patent, the title, date, and page numbers of any
publication to be relied upon as anticipation of the patent
in suit or, except in actions in the United States Court of
Federal Claims, as showing the state of the art, and the
name and address of any person who may be relied upon
as the prior inventor or as having prior knowledge of or
as having previously used or offered for sale the invention
of the patent in suit. In the absence of such notice proof
of the said matters may not be made at the trial except on
such terms as the court requires.
Invalidity of the extension of a patent term or any portion
thereof under section 154(b)  or 156 of this title because
of the material failure—
(1)  by the applicant for the extension, or
(2)  by the Director, to comply with the requirements
of such section shall be a defense in any action involving
the infringement of a patent during the period of the
extension of its term and shall be pleaded. A due diligence
determination under section 156(d)(2)  is not subject to
review in such an action.
(Amended July 24, 1965, Public Law 89-83, sec. 10, 79
Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 10,
89 Stat. 692; Apr. 2, 1982, Public Law 97-164, sec.
161(7), 96 Stat. 49; Sept. 24, 1984, Public Law 98-417,sec. 203, 98 Stat. 1603; Oct. 29, 1992, Public Law
102-572, sec. 902(b)(1), 106 Stat. 4516; Nov. 1, 1995,
Public Law 104-41, sec. 2, 109 Stat. 352; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-560, 582 (S. 1948 secs. 4402(b)(1) and
4732(a)(10)(A)), subsection (3) of second paragraph
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 15(a), 125 Stat. 284.)
 [*Begin Editor's Note: 35 U.S.C. 282 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 282 will read as
follows:
35 U.S.C. 282
(a)  IN GENERAL.—A patent shall be presumed
valid. Each claim of a patent (whether in independent,
dependent, or multiple dependent form) shall be presumed
valid independently of the validity of other claims;
dependent or multiple dependent claims shall be presumed
valid even though dependent upon an invalid claim. The
burden of establishing invalidity of a patent or any claim
thereof shall rest on the party asserting such invalidity.
(b)  DEFENSES.—The following shall be defenses
in any action involving the validity or infringement of a
patent and shall be pleaded:(1)  Noninfringement, absence
of liability for infringement, or unenforceability.
(2)  Invalidity of the patent or any claim in suit
on any ground specified in part II  as a condition for
patentability.
(3)  Invalidity of the patent or any claim in suit
for failure to comply with—(A)  any requirement of
section 112 , except that the failure to disclose the best
mode shall not be a basis on which any claim of a patent
may be canceled or held invalid or otherwise
unenforceable; or
(B)  any requirement of section 251.
(4)  Any other fact or act made a defense.
(c)  NOTICE OF ACTIONS; ACTIONS DURING
EXTENSION OF PATENT TERM.— In an action
involving the validity or infringement of a patent the party
asserting invalidity or noninfringement shall give notice
in the pleadings or otherwise in writing to the adverse
party at least thirty days before the trial, of the country,
number, date, and name of the patentee of any patent, the
title, date, and page numbers of any publication to be
relied upon as anticipation of the patent in suit or, except
in actions in the United States Court of Federal Claims,
as showing the state of the art, and the name and address
of any person who may be relied upon as the prior
inventor or as having prior knowledge of or as having
previously used or offered for sale the invention of the
patent in suit. In the absence of such notice proof of the
said matters may not be made at the trial except on such
terms as the court requires.Invalidity of the extension of
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 a patent term or any portion thereof under section 154(b)
or 156 because of the material failure—(1)  by the
applicant for the extension, or
(2)  by the Director, to comply with the
requirements of such section shall be a defense in any
action involving the infringement of a patent during the
period of the extension of its term and shall be pleaded.
A due diligence determination under section 156(d)(2)
is not subject to review in such an action.
(Amended July 24, 1965, Public Law 89-83, sec. 10, 79
Stat. 261; Nov. 14, 1975, Public Law 94-131, sec. 10,
89 Stat. 692; Apr. 2, 1982, Public Law 97-164, sec.
161(7), 96 Stat. 49; Sept. 24, 1984, Public Law 98-417,
sec. 203, 98 Stat. 1603; Oct. 29, 1992, Public Law
102-572, sec. 902(b)(1), 106 Stat. 4516; Nov. 1, 1995,
Public Law 104-41, sec. 2, 109 Stat. 352; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-560, 582 (S. 1948 secs. 4402(b)(1) and
4732(a)(10)(A)), subsection (3) of second paragraph
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 15(a), 125 Stat. 284;
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, secs. 20(g) and (j), 125 Stat.
284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 282 (Sept. 16, 2012)]
35 U.S.C. 283
The several courts having jurisdiction of cases under this
title may grant injunctions in accordance with the
principles of equity to prevent the violation of any right
secured by patent, on such terms as the court deems
reasonable.
35 U.S.C. 284
Upon finding for the claimant the court shall award the
claimant damages adequate to compensate for the
infringement but in no event less than a reasonable royalty
for the use made of the invention by the infringer, together
with interest and costs as fixed by the court.
When the damages are not found by a jury, the court shall
assess them. In either event the court may increase the
damages up to three times the amount found or assessed.
Increased damages under this paragraph shall not apply
to provisional rights under section 154(d)  of this title.
The court may receive expert testimony as an aid to the
determination of damages or of what royalty would be
reasonable under the circumstances.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(9)).) [*Begin Editor's Note: 35 U.S.C. 284 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 284 (Sept. 16, 2012)]
35 U.S.C. 285
The court in exceptional cases may award reasonable
attorney fees to the prevailing party.
35 U.S.C. 286
Except as otherwise provided by law, no recovery shall
be had for any infringement committed more than six
years prior to the filing of the complaint or counterclaim
for infringement in the action.
In the case of claims against the United States
Government for use of a patented invention, the period
before bringing suit, up to six years, between the date of
receipt of a written claim for compensation by the
department or agency of the Government having authority
to settle such claim, and the date of mailing by the
Government of a notice to the claimant that his claim has
been denied shall not be counted as a part of the period
referred to in the preceding paragraph.
35 U.S.C. 287
(a)  Patentees, and persons making, offering for sale,
or selling within the United States any patented article
for or under them, or importing any patented article into
the United States, may give notice to the public that the
same is patented, either by fixing thereon the word
“patent” or the abbreviation “pat.”, together with the
number of the patent, or by fixing thereon the word
“patent” or the abbreviation “pat.” together with an
address of a posting on the Internet, accessible to the
public without charge for accessing the address, that
associates the patented article with the number of the
patent, or when, from the character of the article, this
cannot be done, by fixing to it, or to the package wherein
one or more of them is contained, a label containing a
like notice. In the event of failure so to mark, no damages
shall be recovered by the patentee in any action for
infringement, except on proof that the infringer was
notified of the infringement and continued to infringe
thereafter, in which event damages may be recovered only
for infringement occurring after such notice. Filing of an
action for infringement shall constitute such notice.
(b)  (1)  An infringer under section 271(g)  shall be
subject to all the provisions of this title relating to
damages and injunctions except to the extent those
remedies are modified by this subsection or section 9006
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 of the Process Patent Amendments Act of 1988. The
modifications of remedies provided in this subsection
shall not be available to any person who —(A)  practiced
the patented process;
(B)  owns or controls, or is owned or
controlled by, the person who practiced the patented
process; or
(C)  had knowledge before the infringement
that a patented process was used to make the product the
importation, use, offer for sale, or sale of which constitutes
the infringement.
(2)  No remedies for infringement under section
271(g)  of this title shall be available with respect to any
product in the possession of, or in transit to, the person
subject to liability under such section before that person
had notice of infringement with respect to that product.
The person subject to liability shall bear the burden of
proving any such possession or transit.
(3)  (A)  In making a determination with respect
to the remedy in an action brought for infringement under
section 271(g) , the court shall consider—(i)  the good
faith demonstrated by the defendant with respect to a
request for disclosure;
(ii)  the good faith demonstrated by the
plaintiff with respect to a request for disclosure, and
(iii)  the need to restore the exclusive
rights secured by the patent.
(B)  For purposes of subparagraph (A), the
following are evidence of good faith:(i)  a request for
disclosure made by the defendant;
(ii)  a response within a reasonable time
by the person receiving the request for disclosure; and
(iii)  the submission of the response by
the defendant to the manufacturer, or if the manufacturer
is not known, to the supplier, of the product to be
purchased by the defendant, together with a request for a
written statement that the process claimed in any patent
disclosed in the response is not used to produce such
product.The failure to perform any acts described in the
preceding sentence is evidence of absence of good faith
unless there are mitigating circumstances. Mitigating
circumstances include the case in which, due to the nature
of the product, the number of sources for the product, or
like commercial circumstances, a request for disclosure
is not necessary or practicable to avoid infringement.
(4)  (A)  For purposes of this subsection, a
“request for disclosure” means a written request made to
a person then engaged in the manufacture of a product to
identify all process patents owned by or licensed to that
person, as of the time of the request, that the person then
reasonably believes could be asserted to be infringed
under section 271(g)  if that product were imported into,
or sold, offered for sale, or used in, the United States by
an unauthorized person. A request for disclosure is further
limited to a request—(i)  which is made by a person
regularly engaged in the United States in the sale of the
type of products as those manufactured by the person towhom the request is directed, or which includes facts
showing that the person making the request plans to
engage in the sale of such products in the United States;
(ii)  which is made by such person before
the person’s first importation, use, offer for sale, or sale
of units of the product produced by an infringing process
and before the person had notice of infringement with
respect to the product; and
(iii)  which includes a representation by
the person making the request that such person will
promptly submit the patents identified pursuant to the
request to the manufacturer, or if the manufacturer is not
known, to the supplier, of the product to be purchased by
the person making the request, and will request from that
manufacturer or supplier a written statement that none of
the processes claimed in those patents is used in the
manufacture of the product.
(B)  In the case of a request for disclosure
received by a person to whom a patent is licensed, that
person shall either identify the patent or promptly notify
the licensor of the request for disclosure.
(C)  A person who has marked, in the manner
prescribed by subsection (a), the number of the process
patent on all products made by the patented process which
have been offered for sale or sold by that person in the
United States, or imported by the person into the United
States, before a request for disclosure is received is not
required to respond to the request for disclosure. For
purposes of the preceding sentence, the term “all
products” does not include products made before the
effective date of the Process Patent Amendments Act of
1988.
(5)  (A)  For purposes of this subsection, notice
of infringement means actual knowledge, or receipt by a
person of a written notification, or a combination thereof,
of information sufficient to persuade a reasonable person
that it is likely that a product was made by a process
patented in the United States.
(B)  A written notification from the patent
holder charging a person with infringement shall specify
the patented process alleged to have been used and the
reasons for a good faith belief that such process was used.
The patent holder shall include in the notification such
information as is reasonably necessary to explain fairly
the patent holder’s belief, except that the patent holder is
not required to disclose any trade secret information.
(C)  A person who receives a written
notification described in subparagraph (B) or a written
response to a request for disclosure described in paragraph
(4) shall be deemed to have notice of infringement with
respect to any patent referred to in such written
notification or response unless that person, absent
mitigating circumstances—(i)  promptly transmits the
written notification or response to the manufacturer or, if
the manufacturer is not known, to the supplier, of the
product purchased or to be purchased by that person; and
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 (ii)  receives a written statement from the
manufacturer or supplier which on its face sets forth a
well grounded factual basis for a belief that the identified
patents are not infringed.
(D)  For purposes of this subsection, a person
who obtains a product made by a process patented in the
United States in a quantity which is abnormally large in
relation to the volume of business of such person or an
efficient inventory level shall be rebuttably presumed to
have actual knowledge that the product was made by such
patented process.
(6)  A person who receives a response to a
request for disclosure under this subsection shall pay to
the person to whom the request was made a reasonable
fee to cover actual costs incurred in complying with the
request, which may not exceed the cost of a commercially
available automated patent search of the matter involved,
but in no case more than $500.
(c)  (1)  With respect to a medical practitioner’s
performance of a medical activity that constitutes an
infringement under section 271(a)  or (b) of this title, the
provisions of sections 281 , 283, 284, and 285 of this title
shall not apply against the medical practitioner or against
a related health care entity with respect to such medical
activity.
(2)  For the purposes of this subsection:(A)  the
term “medical activity” means the performance of a
medical or surgical procedure on a body, but shall not
include (i) the use of a patented machine, manufacture,
or composition of matter in violation of such patent, (ii)
the practice of a patented use of a composition of matter
in violation of such patent, or (iii) the practice of a process
in violation of a biotechnology patent.
(B)  the term “medical practitioner” means
any natural person who is licensed by a State to provide
the medical activity described in subsection (c)(1) or who
is acting under the direction of such person in the
performance of the medical activity.
(C)  the term “related health care entity” shall
mean an entity with which a medical practitioner has a
professional affiliation under which the medical
practitioner performs the medical activity, including but
not limited to a nursing home, hospital, university,
medical school, health maintenance organization, group
medical practice, or a medical clinic.
(D)  the term “professional affiliation” shall
mean staff privileges, medical staff membership,
employment or contractual relationship, partnership or
ownership interest, academic appointment, or other
affiliation under which a medical practitioner provides
the medical activity on behalf of, or in association with,
the health care entity.
(E)  the term “body” shall mean a human
body, organ or cadaver, or a nonhuman animal used in
medical research or instruction directly relating to the
treatment of humans.(F)  the term “patented use of a composition
of matter” does not include a claim for a method of
performing a medical or surgical procedure on a body
that recites the use of a composition of matter where the
use of that composition of matter does not directly
contribute to achievement of the objective of the claimed
method.
(G)  the term “State” shall mean any state or
territory of the United States, the District of Columbia,
and the Commonwealth of Puerto Rico.
(3)  This subsection does not apply to the
activities of any person, or employee or agent of such
person (regardless of whether such person is a tax exempt
organization under section 501(c) of the Internal Revenue
Code), who is engaged in the commercial development,
manufacture, sale, importation, or distribution of a
machine, manufacture, or composition of matter or the
provision of pharmacy or clinical laboratory services
(other than clinical laboratory services provided in a
physician’s office), where such activities are:(A)  directly
related to the commercial development, manufacture,
sale, importation, or distribution of a machine,
manufacture, or composition of matter or the provision
of pharmacy or clinical laboratory services (other than
clinical laboratory services provided in a physician’s
office), and
(B)  regulated under the Federal Food, Drug,
and Cosmetic Act, the Public Health Service Act, or the
Clinical Laboratories Improvement Act.
(4)  This subsection shall not apply to any patent
issued based on an application the earliest effective filing
date of which is prior to September 30, 1996.
(Amended Aug. 23, 1988, Public Law 100-418, sec.
9004(a), 102 Stat. 1564; Dec. 8, 1994, Public Law
103-465, sec. 533(b)(5), 108 Stat. 4989; subsection (c)
added Sept. 30, 1996, Public Law 104-208, sec. 616, 110
Stat. 3009-67; amended Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-589 (S. 1948
sec. 4803; subsection (a) amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
sec. 16(a), 125 Stat. 284.)
 [*Begin Editor's Note: 35 U.S.C. 287 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears except for the
occurrence in 35 U.S.C. 287(b)(1). Public Law 112-29
sec. 20(i) furthers amends 35 U.S.C. 287(c)(2)(G)
effective Sept. 16, 2012 by striking ‘‘any state’’ and
inserting ‘‘any State’’.
 [*End Editor's Note: 35 U.S.C. 287 (Sept. 16, 2012)]
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  [*Begin Editor's Note: 35 U.S.C. 287 (March 16, 2013)]
 Effective March 16, 2013, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 3(g), 125
Stat. 284, 35 U.S.C. 287(c)(4) will read "This subsection
shall not apply to any patent issued based on an
application which has an effective filing date before
September 30, 1996."
 [*End Editor's Note: 35 U.S.C. 287 (March 16, 2013)]
35 U.S.C. 288
Whenever, without deceptive intention, a claim of a patent
is invalid, an action may be maintained for the
infringement of a claim of the patent which may be valid.
The patentee shall recover no costs unless a disclaimer
of the invalid claim has been entered at the Patent and
Trademark Office before the commencement of the suit.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949.)
 [*Begin Editor's Note: 35 U.S.C. 288 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 288 will read as
follows:
35 U.S.C. 288
Whenever a claim of a patent is invalid, an action may
be maintained for the infringement of a claim of the patent
which may be valid. The patentee shall recover no costs
unless a disclaimer of the invalid claim has been entered
at the Patent and Trademark Office before the
commencement of the suit.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949; amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(h), 125
Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 288 (Sept. 16, 2012)]
35 U.S.C. 289
Whoever during the term of a patent for a design, without
license of the owner, (1) applies the patented design, or
any colorable imitation thereof, to any article of
manufacture for the purpose of sale, or (2) sells or exposes
for sale any article of manufacture to which such design
or colorable imitation has been applied shall be liable to
the owner to the extent of his total profit, but not less than
$250, recoverable in any United States district court
having jurisdiction of the parties.Nothing in this section shall prevent, lessen, or impeach
any other remedy which an owner of an infringed patent
has under the provisions of this title, but he shall not twice
recover the profit made from the infringement.
35 U.S.C. 290
The clerks of the courts of the United States, within one
month after the filing of an action under this title, shall
give notice thereof in writing to the Director, setting forth
so far as known the names and addresses of the parties,
name of the inventor, and the designating number of the
patent upon which the action has been brought. If any
other patent is subsequently included in the action he shall
give like notice thereof. Within one month after the
decision is rendered or a judgment issued the clerk of the
court shall give notice thereof to the Director. The
Director shall, on receipt of such notices, enter the same
in the file of such patent.
(Amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 291
The owner of an interfering patent may have relief against
the owner of another by civil action, and the court may
adjudge the question of validity of any of the interfering
patents, in whole or in part. The provisions of the second
paragraph of section 146  of this title shall apply to actions
brought under this section.
 [*Begin Editor's Note: 35 U.S.C. 291 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 291 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 291 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 291 will read as
follows, and shall apply to any application for patent,
and to any patent issuing thereon, that contains or
contained at any time—
(A)  a claim to a claimed invention that has an
effective filing date as defined in section 100(i) of title
35, United States Code, that is on or after March 16, 2013
(the effective date described in the Leahy-Smith America
Invents Act, Public Law 112-29, sec. 3); or
(B)  a specific reference under section 120, 121, or
365(c) of title 35, United States Code, to any patent or
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 application that contains or contained at any time such a
claim. NOTE:  The provisions of 35 U.S.C. 291, as in
effect on  March 15, 2013, shall apply to each claim of
an application for patent, and any patent issued thereon,
for which the amendments made by this section (Leahy
Smith America Invents Act sec. 3) also apply, if such
application or patent contains or contained at any time—
(A)  a claim to an invention having an effective filing
date as defined in section 100(i) of title 35, United States
Code, that occurs before March 16, 2013 (the effective
date set forth in the Leahy Smith America Invents Act
sec. 3); or
(B)  a specific reference under section 120, 121, or
365(c) of title 35, United States Code, to any patent or
application that contains or contained at any time such a
claim.
35 U.S.C. 291
(a)  IN GENERAL.—The owner of a patent may
have relief by civil action against the owner of another
patent that claims the same invention and has an earlier
effective filing date, if the invention claimed in such other
patent was derived from the inventor of the invention
claimed in the patent owned by the person seeking relief
under this section.
(b)  FILING LIMITATION.—An action under this
section may be filed only before the end of the 1-year
period beginning on the date of the issuance of the first
patent containing a claim to the allegedly derived
invention and naming an individual alleged to have
derived such invention as the inventor or joint inventor.
(Amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, secs. 20(j) (effective Sept. 16,
2012), 3(h) (effective March 16, 2013), 125 Stat. 284.)
 [*End Editor's Note: 35 U.S.C. 291 (March 16, 2013)
]
35 U.S.C. 292
(a)  Whoever, without the consent of the patentee,
marks upon, or affixes to, or uses in advertising in
connection with anything made, used, offered for sale, or
sold by such person within the United States, or imported
by the person into the United States, the name or any
imitation of the name of the patentee, the patent number,
or the words “patent,” “patentee,” or the like, with the
intent of counterfeiting or imitating the mark of the
patentee, or of deceiving the public and inducing them to
believe that the thing was made, offered for sale, sold, or
imported into the United States by or with the consent of
the patentee; orWhoever marks upon, or affixes to, or
uses in advertising in connection with any unpatented
article the word “patent” or any word or number importing
the same is patented, for the purpose of deceiving the
public; orWhoever marks upon, or affixes to, or uses in
advertising in connection with any article the words“patent applied for,” “patent pending,” or any word
importing that an application for patent has been made,
when no application for patent has been made, or if made,
is not pending, for the purpose of deceiving the public
—Shall be fined not more than $500 for every such
offense. Only the United States may sue for the penalty
authorized by this subsection.
(b)  A person who has suffered a competitive injury
as a result of a violation of this section may file a civil
action in a district court of the United States for recovery
of damages adequate to compensate for the injury.
(c)  The marking of a product, in a manner described
in subsection (a), with matter relating to a patent that
covered that product but has expired is not a violation of
this section.
(Subsection (a) amended Dec. 8, 1994, Public Law
103-465, sec. 533(b)(6), 108 Stat. 4990; amended Sept.
16, 2011, Leahy-Smith America Invents Act, Public Law
112-29, sec. 16(b), 125 Stat. 284.)
35 U.S.C. 293
Every patentee not residing in the United States may file
in the Patent and Trademark Office a written designation
stating the name and address of a person residing within
the United States on whom may be served process or
notice of proceedings affecting the patent or rights
thereunder. If the person designated cannot be found at
the address given in the last designation, or if no person
has been designated, the United States District Court for
the Eastern District of Virginia shall have jurisdiction and
summons shall be served by publication or otherwise as
the court directs. The court shall have the same
jurisdiction to take any action respecting the patent or
rights thereunder that it would have if the patentee were
personally within the jurisdiction of the court.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1,
88 Stat. 1949 ; amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 9, 125 Stat.
284.)
35 U.S.C. 294
(a)  A contract involving a patent or any right under
a patent may contain a provision requiring arbitration of
any dispute relating to patent validity or infringement
arising under the contract. In the absence of such a
provision, the parties to an existing patent validity or
infringement dispute may agree in writing to settle such
dispute by arbitration. Any such provision or agreement
shall be valid, irrevocable, and enforceable, except for
any grounds that exist at law or in equity for revocation
of a contract.
(b)  Arbitration of such disputes, awards by
arbitrators, and confirmation of awards shall be governed
by title 9, to the extent such title is not inconsistent with
this section. In any such arbitration proceeding, the
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 defenses provided for under  section 282  of this title shall
be considered by the arbitrator if raised by any party to
the proceeding.
(c)  An award by an arbitrator shall be final and
binding between the parties to the arbitration but shall
have no force or effect on any other person. The parties
to an arbitration may agree that in the event a patent which
is the subject matter of an award is subsequently
determined to be invalid or unenforceable in a judgment
rendered by a court of competent jurisdiction from which
no appeal can or has been taken, such award may be
modified by any court of competent jurisdiction upon
application by any party to the arbitration. Any such
modification shall govern the rights and obligations
between such parties from the date of such modification.
(d)  When an award is made by an arbitrator, the
patentee, his assignee or licensee shall give notice thereof
in writing to the Director. There shall be a separate notice
prepared for each patent involved in such proceeding.
Such notice shall set forth the names and addresses of the
parties, the name of the inventor, and the name of the
patent owner, shall designate the number of the patent,
and shall contain a copy of the award. If an award is
modified by a court, the party requesting such
modification shall give notice of such modification to the
Director. The Director shall, upon receipt of either notice,
enter the same in the record of the prosecution of such
patent. If the required notice is not filed with the Director,
any party to the proceeding may provide such notice to
the Director.
(e)  The award shall be unenforceable until the notice
required by subsection (d) is received by the Director.
(Added Aug. 27, 1982, Public Law 97-247, sec. 17(b)(1),
96 Stat. 322; amended Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
sec. 4732(a)(10)(A)); subsections (b) and (c) amended
Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat.
1905.)
 [*Begin Editor's Note: 35 U.S.C. 294 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 294 (Sept. 16, 2012)]
35 U.S.C. 295
In actions alleging infringement of a process patent based
on the importation, sale, offered for sale, or use of a
product which is made from a process patented in the
United States, if the court finds—
(1)  that a substantial likelihood exists that the
product was made by the patented process, and(2)  that the plaintiff has made a reasonable effort to
determine the process actually used in the production of
the product and was unable so to determine, the product
shall be presumed to have been so made, and the burden
of establishing that the product was not made by the
process shall be on the party asserting that it was not so
made.
(Added Aug. 23, 1988, Public Law 100-418, sec. 9005(a),
102 Stat. 1566; amended Dec. 8, 1994, Public Law
103-465, sec. 533(b)(7), 108 Stat. 4990.)
35 U.S.C. 296
(a)  IN GENERAL. - Any State, any instrumentality
of a State, and any officer or employee of a State or
instrumentality of a State, acting in his official capacity,
shall not be immune, under the eleventh amendment of
the Constitution of the United States or under any other
doctrine of sovereign immunity, from suit in Federal court
by any person, including any governmental or
nongovernmental entity, for infringement of a patent under
section 271 , or for any other violation under this title.
(b)  REMEDIES. - In a suit described in subsection
(a) for a violation described in that subsection, remedies
(including remedies both at law and in equity) are
available for the violation to the same extent as such
remedies are available for such a violation in a suit against
any private entity. Such remedies include damages,
interest, costs, and treble damages under section 284 ,
attorney fees under section 285,  and the additional remedy
for infringement of design patents under section 289 .
(Added Oct. 28, 1992, Public Law 102-560, sec. 2(a)(2),
106 Stat. 4230.)
35 U.S.C. 297
(a)  IN GENERAL.— An invention promoter shall
have a duty to disclose the following information to a
customer in writing, prior to entering into a contract for
invention promotion services:(1)  the total number of
inventions evaluated by the invention promoter for
commercial potential in the past 5 years, as well as the
number of those inventions that received positive
evaluations, and the number of those inventions that
received negative evaluations;
(2)  the total number of customers who have
contracted with the invention promoter in the past 5 years,
not including customers who have purchased trade show
services, research, advertising, or other nonmarketing
services from the invention promoter, or who have
defaulted in their payment to the invention promoter;
(3)  the total number of customers known by the
invention promoter to have received a net financial profit
as a direct result of the invention promotion services
provided by such invention promoter;
(4)  the total number of customers known by the
invention promoter to have received license agreements
for their inventions as a direct result of the invention
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 promotion services provided by such invention promoter;
and
(5)  the names and addresses of all previous
invention promotion companies with which the invention
promoter or its officers have collectively or individually
been affiliated in the previous 10 years.
(b)  CIVIL ACTION.— (1)  Any customer who
enters into a contract with an invention promoter and who
is found by a court to have been injured by any material
false or fraudulent statement or representation, or any
omission of material fact, by that invention promoter (or
any agent, employee, director, officer, partner, or
independent contractor of such invention promoter), or
by the failure of that invention promoter to disclose such
information as required under subsection (a), may recover
in a civil action against the invention promoter (or the
officers, directors, or partners of such invention promoter),
in addition to reasonable costs and attorneys’ fees--(A) 
the amount of actual damages incurred by the customer;
or
(B)  at the election of the customer at any
time before final judgment is rendered, statutory damages
in a sum of not more than $5,000, as the court considers
just.
(2)  Notwithstanding paragraph (1), in a case
where the customer sustains the burden of proof, and the
court finds, that the invention promoter intentionally
misrepresented or omitted a material fact to such
customer, or willfully failed to disclose such information
as required under subsection (a), with the purpose of
deceiving that customer, the court may increase damages
to not more than three times the amount awarded, taking
into account past complaints made against the invention
promoter that resulted in regulatory sanctions or other
corrective actions based on those records compiled by the
Commissioner of Patents under subsection (d).
(c)  DEFINITIONS.— For purposes of this section—
(1)  a “contract for invention promotion services” means
a contract by which an invention promoter undertakes
invention promotion services for a customer;
(2)  a “customer” is any individual who enters
into a contract with an invention promoter for invention
promotion services;
(3)  the term “invention promoter” means any
person, firm, partnership, corporation, or other entity who
offers to perform or performs invention promotion
services for, or on behalf of, a customer, and who holds
itself out through advertising in any mass media as
providing such services, but does not include— (A)  any
department or agency of the Federal Government or of a
State or local government;
(B)  any nonprofit, charitable, scientific, or
educational organization, qualified under applicable State
law or described under section 170(b)(1)(A) of the Internal
Revenue Code of 1986;
(C)  any person or entity involved in the
evaluation to determine commercial potential of, oroffering to license or sell, a utility patent or a previously
filed nonprovisional utility patent application;
(D)  any party participating in a transaction
involving the sale of the stock or assets of a business; or
(E)  any party who directly engages in the
business of retail sales of products or the distribution of
products; and
(4)  the term “invention promotion services”
means the procurement or attempted procurement for a
customer of a firm, corporation, or other entity to develop
and market products or services that include the invention
of the customer.
(d)  RECORDS OF COMPLAINTS.— (1) 
RELEASE OF COMPLAINTS.— The Commissioner of
Patents shall make all complaints received by the Patent
and Trademark Office involving invention promoters
publicly available, together with any response of the
invention promoters. The Commissioner of Patents shall
notify the invention promoter of a complaint and provide
a reasonable opportunity to reply prior to making such
complaint publicly available.
(2)  REQUEST FOR COMPLAINTS.— The
Commissioner of Patents may request complaints relating
to invention promotion services from any Federal or State
agency and include such complaints in the records
maintained under paragraph (1), together with any
response of the invention promoters.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-552 (S. 1948 sec. 4102(a)).)
 [*Begin Editor's Note: 35 U.S.C. 298 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, 35 U.S.C. 298 will be added
and read as follows:
35 U.S.C. 298
The failure of an infringer to obtain the advice of counsel
with respect to any allegedly infringed patent, or the
failure of the infringer to present such advice to the court
or jury, may not be used to prove that the accused
infringer willfully infringed the patent or that the infringer
intended to induce infringement of the patent.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 17, 125 Stat. 284.)
 [*End Editor's Note: 35 U.S.C. 298 (Sept. 16, 2012)]
35 U.S.C. 299
(a)  JOINDER OF ACCUSED INFRINGERS.—With
respect to any civil action arising under any Act of
Congress relating to patents, other than an action or trial
in which an act of infringement under section 271(e)(2)
has been pled, parties that are accused infringers may be
joined in one action as defendants or counterclaim
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 defendants, or have their actions consolidated for trial, or
counterclaim defendants only if— (1)   any right to relief
is asserted against the parties jointly, severally, or in the
alternative with respect to or arising out of the same
transaction, occurrence, or series of transactions or
occurrences relating to the making, using, importing into
the United States, offering for sale, or selling of the same
accused product or process; and
(2)   questions of fact common to all defendants
or counterclaim defendants will arise in the action.
(b)   ALLEGATIONS INSUFFICIENT FOR
JOINDER.— For purposes of this subsection, accused
infringers may not be joined in one action as defendants
or counterclaim defendants, or have their actions
consolidated for trial,based solely on allegations that they
each have infringed the patent or patents in suit.
(c)   WAIVER.—A party that is an accused infringer
may waive the limitations set forth in this section with
respect to that party.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 19(d), 125 Stat. 284.)
CHAPTER 30 — PRIOR ART CITATIONS TO
OFFICE AND EX PARTE REEXAMINATION OF
PATENTS
Sec.
123. 301 Citation of prior art.
124. 302 Request for reexamination.
125. 303 Determination of issue by Director.
126. 304 Reexamination order by Director.
127. 305 Conduct of reexamination proceedings.
128. 306 Appeal.
129. 307 Certificate of patentability, unpatentability, and
claim cancellation.
35 U.S.C. 301
Any person at any time may cite to the Office in writing
prior art consisting of patents or printed publications
which that person believes to have a bearing on the
patentability of any claim of a particular patent. If the
person explains in writing the pertinency and manner of
applying such prior art to at least one claim of the patent,
the citation of such prior art and the explanation thereof
will become a part of the official file of the patent. At the
written request of the person citing the prior art, his or
her identity will be excluded from the patent file and kept
confidential.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3015.)
 [*Begin Editor's Note: 35 U.S.C. 301 (Sept. 16, 2012)] Effective Sept. 16, 2012, 35 U.S.C. 301 will read as
follows:
35 U.S.C. 301
(a)  IN GENERAL.—Any person at any time may
cite to the Office in writing— (1)  prior art consisting of
patents or printed publications which that person believes
to have a bearing on the patent ability of any claim of a
particular patent; or
(2)  statements of the patent owner filed in a
proceeding before a Federal court or the Office in which
the patent owner took a position on the scope of any claim
of a particular patent.
(b)  OFFICIAL FILE.—If the person citing prior art
or written statements pursuant to subsection (a) explains
in writing the pertinence and manner of applying the prior
art or written statements to at least 1 claim of the patent,
the citation of the prior art or written statements and the
explanation thereof shall become a part of the official file
of the patent.
(c)  ADDITIONAL INFORMATION.—A party that
submits a written statement pursuant to subsection (a)(2)
shall include any other documents, pleadings, or evidence
from the proceeding in which the statement was filed that
addresses the written statement.
(d)  LIMITATIONS.—A written statement submitted
pursuant to subsection (a)(2), and additional information
submitted pursuant to subsection (c), shall not be
considered by the Office for any purpose other than to
determine the proper meaning of a patent claim in a
proceeding that is ordered or instituted pursuant to section
304, 314, or 324. If any such written statement or
additional information is subject to an applicable
protective order, such statement or information shall be
redacted to exclude information that is subject to that
order.
(e)  CONFIDENTIALITY .—Upon the written
request of the person citing prior art or written statements
pursuant to subsection (a), that person’s identity shall be
excluded from the patent file and kept confidential.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3015; amended Sept. 16, 2011, Leahy-Smith America
Invents Act, Public Law 112-29, sec. 6(g), 125 Stat. 284,
effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 301 (Sept. 16, 2012)]
35 U.S.C. 302
Any person at any time may file a request for
reexamination by the Office of any claim of a patent on
the basis of any prior art cited under the provisions of
section 301  of this title. The request must be in writing
and must be accompanied by payment of a reexamination
fee established by the Director pursuant to the provisions
of section 41  of this title. The request must set forth the
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 pertinency and manner of applying cited prior art to every
claim for which reexamination is requested. Unless the
requesting person is the owner of the patent, the Director
promptly will send a copy of the request to the owner of
record of the patent.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 
Stat. 3015; amended Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 secs.
4732(a)(8) and 4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 302 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 302 (Sept. 16, 2012)]
35 U.S.C. 303
(a)  Within three months following the filing of a
request for reexamination under the provisions of section
302 of this title, the Director will determine whether a
substantial new question of patentability affecting any
claim of the patent concerned is raised by the request,
with or without consideration of other patents or printed
publications. On his own initiative, and any time, the
Director may determine whether a substantial new
question of patentability is raised by patents and
publications discovered by him or cited under the
provisions of section 301  of this title. The existence of a
substantial new question of patentability is not precluded
by the fact that a patent or printed publication was
previously cited by or to the Office or considered by the
Office.
(b)  A record of the Director’s determination under
subsection (a) of this section will be placed in the official
file of the patent, and a copy promptly will be given or
mailed to the owner of record of the patent and to the
person requesting reexamination, if any.
(c)  A determination by the Director pursuant to
subsection (a) of this section that no substantial new
question of patentability has been raised will be final and
nonappealable. Upon such a determination, the Director
may refund a portion of the reexamination fee required
under section 302  of this title.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3015; amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-581, 582 (S. 1948 secs.
4732(a)(9) and (4732(a)(10)(A)); subsection (a) amended
Nov. 2, 2002, Public Law 107-273, sec. 13105, 116 Stat.
1900.) [*Begin Editor's Note: 35 U.S.C. 303 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears, and 35 U.S.C. 303(a)
will read as follows:
35 U.S.C. 303
(a)  Within three months following the filing of a
request for reexamination under the provisions of section
302 , the Director will determine whether a substantial
new question of patentability affecting any claim of the
patent concerned is raised by the request, with or without
consideration of other patents or printed publications. On
his own initiative, and any time, the Director may
determine whether a substantial new question of
patentability is raised by patents and publications
discovered by him or cited under the provisions of section
301 or 302. The existence of a substantial new question
of patentability is not precluded by the fact that a patent
or printed publication was previously cited by or to the
Office or considered by the Office.
*****
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3015; amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-581, 582 (S. 1948 secs.
4732(a)(9) and (4732(a)(10)(A)); subsection (a) amended
Nov. 2, 2002, Public Law 107-273, sec. 13105, 116 Stat.
1900; amended Sept. 16, 2011, Leahy-Smith America
Invents Act, Public Law 112-29, secs. 6(h), 20(j), 125
Stat. 284, effective Sept. 16, 2012.)
 [*End Editor's Note: 35 U.S.C. 303 (Sept. 16, 2012)]
35 U.S.C. 304
If, in a determination made under the provisions of
subsection 303(a)  of this title, the Director finds that a
substantial new question of patentability affecting any
claim of a patent is raised, the determination will include
an order for reexamination of the patent for resolution of
the question. The patent owner will be given a reasonable
period, not less than two months from the date a copy of
the determination is given or mailed to him, within which
he may file a statement on such question, including any
amendment to his patent and new claim or claims he may
wish to propose, for consideration in the reexamination.
If the patent owner files such a statement, he promptly
will serve a copy of it on the person who has requested
reexamination under the provisions of section 302 of this
title. Within a period of two months from the date of
service, that person may file and have considered in the
reexamination a reply to any statement filed by the patent
owner. That person promptly will serve on the patent
owner a copy of any reply filed.
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 (Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3016; amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 304 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 304 (Sept. 16, 2012)]
35 U.S.C. 305
After the times for filing the statement and reply provided
for by  section 304  of this title have expired, reexamination
will be conducted according to the procedures established
for initial examination under the provisions of sections
132 and 133 of this title. In any reexamination proceeding
under this chapter, the patent owner will be permitted to
propose any amendment to his patent and a new claim or
claims thereto, in order to distinguish the invention as
claimed from the prior art cited under the provisions of
section 301  of this title, or in response to a decision
adverse to the patentability of a claim of a patent. No
proposed amended or new claim enlarging the scope of
a claim of the patent will be permitted in a reexamination
proceeding under this chapter. All reexamination
proceedings under this section, including any appeal to
the Board of Patent Appeals and Interferences, will be
conducted with special dispatch within the Office.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3016; amended Nov. 8, 1984, Public Law 98-622, sec.
204(c), 98 Stat. 3388.)
 [*Begin Editor's Note: 35 U.S.C. 305 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 305 (Sept. 16, 2012)]
35 U.S.C. 306
The patent owner involved in a reexamination proceeding
under this chapter may appeal under the provisions of
section 134  of this title, and may seek court review under
the provisions of sections 141  to 144 of this title, with
respect to any decision adverse to the patentability of any
original or proposed amended or new claim of the patent.(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3016; amended Sept. 16, 2011, Leahy-Smith America
Invents Act, Public Law 112-29, sec. 6(h)(2), 125 Stat.
284.)
 [*Begin Editor's Note: 35 U.S.C. 306 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 306 (Sept. 16, 2012)]
35 U.S.C. 307
(a)  In a reexamination proceeding under this chapter,
when the time for appeal has expired or any appeal
proceeding has terminated, the Director will issue and
publish a certificate canceling any claim of the patent
finally determined to be unpatentable, confirming any
claim of the patent determined to be patentable, and
incorporating in the patent any proposed amended or new
claim determined to be patentable.
(b)  Any proposed amended or new claim determined
to be patentable and incorporated into a patent following
a reexamination proceeding will have the same effect as
that specified in section 252  of this title for reissued
patents on the right of any person who made, purchased,
or used within the United States, or imported into the
United States, anything patented by such proposed
amended or new claim, or who made substantial
preparation for the same, prior to issuance of a certificate
under the provisions of subsection (a) of this section.
(Added Dec. 12, 1980, Public Law 96-517, sec. 1, 94 Stat.
3016; amended Dec. 8, 1994, Public Law 103-465, sec.
533(b)(8), 108 Stat. 4990; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
sec. 4732(a)(10)(A)).)
CHAPTER 31 — OPTIONAL INTER PARTES
REEXAMINATION PROCEDURES
Sec.
130. 311 Request for inter partes reexamination.
131. 312 Determination of issue by Director.
132. 313 Inter partes reexamination order by Director.
133. 314 Conduct of inter partes reexamination
proceedings.
134. 315 Appeal.
135. 316 Certificate of patentability, unpatentability, and
claim cancellation.
136. 317 Inter partes reexamination prohibited.
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 137. 318 Stay of litigation.
SUBCHAPTER  — [*Begin Editor's Note:
Chapter 31—Inter Partes Review (Sept. 16,
2012)
 Pursuant to the Leahy-Smith America Invents Act,
Public Law 112-29, sec. 6, 125 Stat. 284, Chapter 31 of
title 35, United States Code, will be revised in its entirety
effective Sept. 16, 2012.
 The text that will be in effect as of Sept. 16, 2012 is
reproduced in this document following 35 U.S.C. 318
(as added Nov. 29, 1999, Public Law 106-113) and
preceding Part IV—PATENT COOPERATION
TREATY.
 [*End Editor's Note: Chapter 31—Inter Partes Review
(Sept. 16, 2012)]
35 U.S.C. 311
(a)  IN GENERAL.— Any third-party requester at
any time may file a request for inter partes reexamination
by the Office of a patent on the basis of any prior art cited
under the provisions of section 301 .
(b)  REQUIREMENTS.— The request shall— (1) 
be in writing, include the identity of the real party in
interest, and be accompanied by payment of an inter partes
reexamination fee established by the Director under
section 41 ; and
(2)  set forth the pertinency and manner of
applying cited prior art to every claim for which
reexamination is requested.
(c)  COPY .— The Director promptly shall send a
copy of the request to the owner of record of the patent.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
subsections (a) and (c) amended Nov. 2, 2002, Public
Law 107-273, sec. 13202, 116 Stat. 1901.)
 [*Begin Editor's Note: 35 U.S.C. 311 Effective date
provision (Sept. 16, 2011)]
 The Leahy-Smith America Invents Act, Public Law
112-29, sec. 7(e), 125 Stat. 284, provides as follows:
EFFECTIVE DATE.—The amendments made by this
section shall take effect [Sept. 16, 2012] upon the
expiration of the 1-year period beginning on the date of
the enactment of this Act and shall apply to proceedings
commenced on or after that effective date, except that—
(1)  the extension of jurisdiction to the United States
Court of Appeals for the Federal Circuit to entertain
appeals of decisions of the Patent Trial and Appeal Board
in reexaminations under the amendment made bysubsection (c)(2) shall be deemed to take effect on the
date of the enactment of this Act [Sept. 16, 2011] and
shall extend to any decision of the Board of Patent
Appeals and Interferences with respect to a reexamination
that is entered before, on, or after the date of the
enactment of this Act;
(2)  the provisions of sections 6, 134, and 141 of title
35, United States Code, as in effect on the day before the
effective date of the amendments made by this section
 [i.e., Sept. 15, 2012] shall continue to apply to inter partes
reexaminations that are requested under section 311 of
such title before such effective date;
(3)  the Patent Trial and Appeal Board may be
deemed to be the Board of Patent Appeals and
Interferences for purposes of appeals of inter partes
reexaminations that are requested under section 311 of
title 35, United States Code, before the effective date of
the amendments made by this section; and
(4)  the Director’s right under the fourth sentence of
section 143 of title 35, United States Code, as amended
by subsection (c)(3) of this section, to intervene in an
appeal from a decision entered by the Patent Trial and
Appeal Board shall be deemed to extend to inter partes
reexaminations that are requested under section 311 of
such title before the effective date of the amendments
made by this section.
 [*End Editor's Note: 35 U.S.C. 311 Effective date
provision (Sept. 16, 2011)]
35 U.S.C. 312
(a)  REEXAMINATION.— Not later than 3 months
after the filing of a request for inter partes reexamination
under section 311 , the Director shall determine whether
the information presented in the request shows that there
is a reasonable likelihood that the requester would prevail
with respect to at least 1 of the claims challenged in the
request, with or without consideration of other patents or
printed publications. A showing that there is a reasonable
likelihood that the requester would prevail with respect
to at least 1 of the claims challenged in the request is not
precluded by the fact that a patent or printed publication
was previously cited by or to the Office or considered by
the Office.
(b)  RECORD.— A record of the Director’s
determination under subsection (a) shall be placed in the
official file of the patent, and a copy shall be promptly
given or mailed to the owner of record of the patent and
to the third-party requester.
(c)  FINAL DECISION.— A determination by the
Director under subsection (a) shall be final and
non-appealable. Upon a determination that the showing
required by subsection (a) has not been made, the Director
may refund a portion of the inter partes reexamination
fee required under section 311 .
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 (Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
subsections (a) and (b) amended Nov. 2, 2002, Public
Law 107-273, secs. 13105 and 13202, 116 Stat.1900-1901
; subsections (a) and (c) amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
sec. 6(c)(3), 125 Stat. 284.)
 [*Begin Editor's Note: 35 U.S.C. 312 Transition
provision (Sept. 16, 2011)]
  Pursuant to the Leahy-Smith America Invents Act,
Public Law 112-29, sec. 6(c), 125 Stat. 284, the
provisions of 35 U.S.C. 312 as set forth above shall apply
to requests for inter partes reexamination that are filed
on or after Sept. 16, 2011, but before Sept. 16, 2012.
 [*End Editor's Note: 35 U.S.C. 312 Transition provision
(Sept. 16, 2011)]
35 U.S.C. 313
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 .
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(c)(3), 125 Stat. 284.)
 [*Begin Editor's Note: 35 U.S.C. 313 Transition
provision (Sept. 16, 2011)]
  Pursuant to the Leahy-Smith America Invents Act,
Public Law 112-29, sec. 6(c), 125 Stat. 284, the
provisions of 35 U.S.C. 313 as set forth above shall apply
to requests for inter partes reexamination that are filed
on or after Sept. 16, 2011, but before Sept. 16, 2012.
 [*End Editor's Note: 35 U.S.C. 313 Transition provision
(Sept. 16, 2011)]
35 U.S.C. 314
(a)  IN GENERAL.— Except as otherwise provided
in this section, reexamination shall be conducted
according to the procedures established for initial
examination under the provisions of sections 132  and
133. In any inter partes reexamination proceeding underthis chapter, the patent owner shall be permitted to
propose any amendment to the patent and a new claim or
claims, except that no proposed amended or new claim
enlarging the scope of the claims of the patent shall be
permitted.
(b)  RESPONSE.— (1)  With the exception of the
inter partes reexamination request, any document filed
by either the patent owner or the third-party requester
shall be served on the other party. In addition, the Office
shall send to the third-party requester a copy of any
communication sent by the Office to the patent owner
concerning the patent subject to the inter partes
reexamination proceeding.
(2)  Each time that the patent owner files a
response to an action on the merits from the Patent and
Trademark Office, the third-party requester shall have
one opportunity to file written comments addressing issues
raised by the action of the Office or the patent owner’s
response thereto, if those written comments are received
by the Office within 30 days after the date of service of
the patent owner’s response.
(c)  SPECIAL DISPATCH.— Unless otherwise
provided by the Director for good cause, all inter partes
reexamination proceedings under this section, including
any appeal to the Board of Patent Appeals and
Interferences, shall be conducted with special dispatch
within the Office.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
subsection (b)(1) amended Nov. 2, 2002, Public Law
107-273, sec. 13202, 116 Stat. 1901.)
35 U.S.C. 315
(a)  PATENT OWNER.— The patent owner involved
in an inter partes reexamination proceeding under this
chapter— (1)  may appeal under the provisions of section
134 and may appeal under the provisions of sections 141
through 144, with respect to any decision adverse to the
patentability of any original or proposed amended or new
claim of the patent; and
(2)  may be a party to any appeal taken by a
third-party requester under subsection (b).
(b)  THIRD-PARTY REQUESTER.— A third-party
requester— (1)  may appeal under the provisions of
section 134 , and may appeal under the provisions of
sections 141 through 144, with respect to any final
decision favorable to the patentability of any original or
proposed amended or new claim of the patent; and
(2)  may, subject to subsection (c), be a party to
any appeal taken by the patent owner under the provisions
of section 134 or sections 141 through 144.
(c)  CIVIL ACTION.— A third-party requester
whose request for an inter partes reexamination results in
an order under section 313  is estopped from asserting at
a later time, in any civil action arising in whole or in part
under section 1338 of title 28, the invalidity of any claim
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 finally determined to be valid and patentable on any
ground which the third-party requester raised or could
have raised during the inter partes reexamination
proceedings. This subsection does not prevent the
assertion of invalidity based on newly discovered prior
art unavailable to the third-party requester and the Patent
and Trademark Office at the time of the inter partes
reexamination proceedings.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
subsection (b) amended Nov. 2, 2002, Public Law
107-273, sec. 13106, 116 Stat. 1900; subsection (c)
amended Nov. 2, 2002, Public Law 107-273, sec. 13202,
116 Stat. 1901.)
35 U.S.C. 316
(a)  IN GENERAL.— In an inter partes
reexamination proceeding under this chapter, when the
time for appeal has expired or any appeal proceeding has
terminated, the Director shall issue and publish a
certificate canceling any claim of the patent finally
determined to be unpatentable, confirming any claim of
the patent determined to be patentable, and incorporating
in the patent any proposed amended or new claim
determined to be patentable.
(b)  AMENDED OR NEW CLAIM.— Any proposed
amended or new claim determined to be patentable and
incorporated into a patent following an inter partes
reexamination proceeding shall have the same effect as
that specified in section 252  of this title for reissued
patents on the right of any person who made, purchased,
or used within the United States, or imported into the
United States, anything patented by such proposed
amended or new claim, or who made substantial
preparation therefor, prior to issuance of a certificate
under the provisions of subsection (a) of this section.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)).)
35 U.S.C. 317
(a)  ORDER FOR REEXAMINATION.—
Notwithstanding any provision of this chapter, once an
order for inter partes reexamination of a patent has been
issued under section 313 , neither the third-party requester
nor its privies may file a subsequent request for inter
partes reexamination of the patent until an inter partes
reexamination certificate is issued and published under
section 316 , unless authorized by the Director.
(b)  FINAL DECISION.— Once a final decision has
been entered against a party in a civil action arising in
whole or in part under section 1338 of title 28, that the
party has not sustained its burden of proving the invalidity
of any patent claim in suit or if a final decision in an inter
partes reexamination proceeding instituted by a third-party
requester is favorable to the patentability of any original
or proposed amended or new claim of the patent, thenneither that party nor its privies may thereafter request an
inter partes reexamination of any such patent claim on
the basis of issues which that party or its privies raised or
could have raised in such civil action or inter partes
reexamination proceeding, and an inter partes
reexamination requested by that party or its privies on the
basis of such issues may not thereafter be maintained by
the Office, notwithstanding any other provision of this
chapter. This subsection does not prevent the assertion of
invalidity based on newly discovered prior art unavailable
to the third-party requester and the Patent and Trademark
Office at the time of the inter partes reexamination
proceedings.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
subsections (a) and (b) amended Nov. 2, 2002, Public
Law 107-273, sec. 13202, 116 Stat. 1901.)
35 U.S.C. 318
Once an order for inter partes reexamination of a patent
has been issued under section 313 , the patent owner may
obtain a stay of any pending litigation which involves an
issue of patentability of any claims of the patent which
are the subject of the inter partes reexamination order,
unless the court before which such litigation is pending
determines that a stay would not serve the interests of
justice.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)).)
 [*Begin Editor's Note: Chapter 31—Inter Partes Review
(Sept. 16, 2012)]
 Effective Sept. 16, 2012, Chapter 31 of title 35, United
States Code, will read as follows:
CHAPTER — CHAPTER 31—INTER PARTES
REVIEW
Sec.
138. 311 Inter partes review.
139. 312 Petitions.
140. 313 Preliminary response to petition.
141. 314 Institution of inter partes review.
142. 315 Relation to other proceedings or actions.
143. 316 Conduct of inter partes review.
144. 317 Settlement.
145. 318 Decision of the Board.
146. 319 Appeal.
35 U.S.C. 311
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 (a)  IN GENERAL.—Subject to the provisions of
this chapter, a person who is not the owner of a patent
may file with the Office a petition to institute an inter
partes review of the patent. The Director shall establish,
by regulation, fees to be paid by the person requesting
the review, in such amounts as the Director determines
to be reasonable, considering the aggregate costs of the
review.
(b)  SCOPE.—A petitioner in an inter partes review
may request to cancel as unpatentable 1 or more claims
of a patent only on a ground that could be raised under
section 102 or 103 and only on the basis of prior art
consisting of patents or printed publications.
(c)  FILING DEADLINE.—A petition for inter partes
review shall be filed after the later of either— (1)  the
date that is 9 months after the grant of a patent or issuance
of a reissue of a patent; or
(2)  if a post-grant review is instituted under
chapter 32, the date of the termination of such post-grant
review.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
subsections (a) and (c) amended Nov. 2, 2002, Public
Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept.
16, 2011, Leahy-Smith America Invents Act, Public Law
112-29, sec. 6(a), 125 Stat. 284, effective Sept. 16, 2012.)
 [*Begin Editor's Note: 35 U.S.C. 311 Effective date
provision (Sept. 16, 2011)]
 The Leahy-Smith America Invents Act, Public Law
112-29, sec. 7(e), 125 Stat. 284, provides as follows:
EFFECTIVE DATE.—The amendments made by this
section shall take effect upon the expiration of the 1-year
period beginning on the date of the enactment of this Act
and shall apply to proceedings commenced on or after
that effective date [Sept. 16, 2012], except that—
(1)  the extension of jurisdiction to the United States
Court of Appeals for the Federal Circuit to entertain
appeals of decisions of the Patent Trial and Appeal Board
in reexaminations under the amendment made by
subsection (c)(2) shall be deemed to take effect on the
date of the enactment of this Act [Sept. 16, 2011] and
shall extend to any decision of the Board of Patent
Appeals and Interferences with respect to a reexamination
that is entered before, on, or after the date of the
enactment of this Act;
(2)  ) the provisions of sections 6, 134, and 141 of
title 35, United States Code, as in effect on the day before
the effective date of the amendments made by this section
 [i.e., Sept. 15, 2012] shall continue to apply to inter partes
reexaminations that are requested under section 311 of
such title before such effective date;(3)  the Patent Trial and Appeal Board may be
deemed to be the Board of Patent Appeals and
Interferences for purposes of appeals of inter partes
reexaminations that are requested under section 311 of
title 35, United States Code, before the effective date of
the amendments made by this section; and
(4)  the Director’s right under the fourth sentence of
section 143 of title 35, United States Code, as amended
by subsection (c)(3) of this section, to intervene in an
appeal from a decision entered by the Patent Trial and
Appeal Board shall be deemed to extend to inter partes
reexaminations that are requested under section 311 of
such title before the effective date of the amendments
made by this section.
 [*End Editor's Note: 35 U.S.C. 311 Effective date
provision (Sept. 16, 2011)]
35 U.S.C. 312
(a)  REQUIREMENTS OF PETITION.—A petition
filed under section 311 may be considered only if— (1) 
the petition is accompanied by payment of the fee
established by the Director under section 311;
(2)  the petition identifies all real parties in
interest;
(3)  the petition identifies, in writing and with
particularity, each claim challenged, the grounds on which
the challenge to each claim is based, and the evidence
that supports the grounds for the challenge to each claim,
including— (A)  copies of patents and printed publications
that the petitioner relies upon in support of the petition;
and
(B)  affidavits or declarations of supporting
evidence and opinions, if the petitioner relies on expert
opinions;
(4)  the petition provides such other information
as the Director may require by regulation; and
(5)  the petitioner provides copies of any of the
documents required under paragraphs (2), (3), and (4) to
the patent owner or, if applicable, the designated
representative of the patent owner.
(b)  PUBLIC A V AILABILITY .—As soon as
practicable after the receipt of a petition under section
311, the Director shall make the petition available to the
public.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
subsections (a) and (b) amended Nov. 2, 2002, Public
Law 107-273, secs. 13105 and 13202, 116 Stat.1900-1901
; subsections (a) and (c) amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
sec. 6(c)(3), 125 Stat. 284; amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
sec. 6(a), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 313
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 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 Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(c)(3), 125 Stat. 284 and
further amended by Public Law 112-29, sec. 6(a), 125
Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 314
(a)  THRESHOLD.—The Director may not authorize
an inter partes review to be instituted unless the Director
determines that the information presented in the petition
filed under section 311 and any response filed under
section 313 shows that there is a reasonable likelihood
that the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.
(b)  TIMING.—The Director shall determine whether
to institute an inter partes review under this chapter
pursuant to a petition filed under section 311 within 3
months after— (1)  receiving a preliminary response to
the petition under section 313; or
(2)  if no such preliminary response is filed, the
last date on which such response may be filed.
(c)  NOTICE.—The Director shall notify the
petitioner and patent owner, in writing, of the Director’s
determination under subsection (a), and shall make such
notice available to the public as soon as is practicable.
Such notice shall include the date on which the review
shall commence.
(d)  NO APPEAL.—The determination by the
Director whether to institute an inter partes review under
this section shall be final and nonappealable.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
subsection (b)(1) amended Nov. 2, 2002, Public Law
107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16,
2011, Leahy-Smith America Invents Act, Public Law
112-29, sec. 6(a), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 315
(a)  INFRINGER’S CIVIL ACTION.— (1)  INTER
PARTES REVIEW BARRED BY CIVIL ACTION.—An
inter partes review may not be instituted if, before the
date on which the petition for such a review is filed, the
petitioner or real party in interest filed a civil action
challenging the validity of a claim of the patent.
(2)  STAY OF CIVIL ACTION.—If the
petitioner or real party in interest files a civil action
challenging the validity of a claim of the patent on or after
the date on which the petitioner files a petition for interpartes review of the patent, that civil action shall be
automatically stayed until either— (A)  the patent owner
moves the court to lift the stay;
(B)  the patent owner files a civil action or
counterclaim alleging that the petitioner or real party in
interest has infringed the patent; or
(C)  the petitioner or real party in interest
moves the court to dismiss the civil action.
(3)  TREATMENT OF COUNTERCLAIM.—A
counterclaim challenging the validity of a claim of a
patent does not constitute a civil action challenging the
validity of a claim of a patent for purposes of this
subsection.
(b)  PATENT OWNER’S ACTION.—An inter partes
review may not be instituted if the petition requesting the
proceeding is filed more than 1 year after the date on
which the petitioner, real party in interest, or privy of the
petitioner is served with a complaint alleging infringement
of the patent. The time limitation set forth in the preceding
sentence shall not apply to a request for joinder under
subsection (c).
(c)  JOINDER.—If the Director institutes an inter
partes review, the Director, in his or her discretion, may
join as a party to that inter partes review any person who
properly files a petition under section 311 that the
Director, after receiving a preliminary response under
section 313 or the expiration of the time for filing such a
response, determines warrants the institution of an inter
partes review under section 314.
(d)  MULTIPLE PROCEEDINGS.—Notwithstanding
sections 135(a), 251, and 252, and chapter 30, during the
pendency of an inter partes review, if another proceeding
or matter involving the patent is before the Office, the
Director may determine the manner in which the inter
partes review or other proceeding or matter may proceed,
including providing for stay, transfer, consolidation, or
termination of any such matter or proceeding.
(e)  ESTOPPEL.— (1)  PROCEEDINGS BEFORE
THE OFFICE.—The petitioner in an inter partes review
of a claim in a patent under this chapter that results in a
final written decision under section 318(a), or the real
party in interest or privy of the petitioner, may not request
or maintain a proceeding before the Office with respect
to that claim on any ground that the petitioner raised or
reasonably could have raised during that inter partes
review.
(2)  CIVIL ACTIONS AND OTHER
PROCEEDINGS.—The petitioner in an inter partes
review of a claim in a patent under this chapter that results
in a final written decision under section 318(a), or the real
party in interest or privy of the petitioner, may not assert
either in a civil action arising in whole or in part under
section 1338 of title 28 or in a proceeding before the
International Trade Commission under section 337 of the
Tariff Act of 1930 that the claim is invalid on any ground
that the petitioner raised or reasonably could have raised
during that inter partes review.
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 (Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
subsection (b) amended Nov. 2, 2002, Public Law
107-273, sec. 13106, 116 Stat. 1900; subsection (c)
amended Nov. 2, 2002, Public Law 107-273, sec. 13202,
116 Stat. 1901; amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec. 6(a), 125
Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 316
(a)  REGULATIONS.—The Director shall prescribe
regulations— (1)  providing that the file of any proceeding
under this chapter shall be made available to the public,
except that any petition or document filed with the intent
that it be sealed shall, if accompanied by a motion to seal,
be treated as sealed pending the outcome of the ruling on
the motion;
(2)  setting forth the standards for the showing
of sufficient grounds to institute a review under section
314(a);
(3)  establishing procedures for the submission
of supplemental information after the petition is filed;
(4)  establishing and governing inter partes
review under this chapter and the relationship of such
review to other proceedings under this title;
(5)  setting forth standards and procedures for
discovery of relevant evidence, including that such
discovery shall be limited to—(A)  the deposition of
witnesses submitting affidavits or declarations; and
(B)  what is otherwise necessary in the
interest of justice;
(6)  prescribing sanctions for abuse of discovery,
abuse of process, or any other improper use of the
proceeding, such as to harass or to cause unnecessary
delay or an unnecessary increase in the cost of the
proceeding;
(7)  providing for protective orders governing
the exchange and submission of confidential information;
(8)  providing for the filing by the patent owner
of a response to the petition under section 313 after an
inter partes review has been instituted, and requiring that
the patent owner file with such response, through
affidavits or declarations, any additional factual evidence
and expert opinions on which the patent owner relies in
support of the response;
(9)  )setting forth standards and procedures for
allowing the patent owner to move to amend the patent
under subsection (d) to cancel a challenged claim or
propose a reasonable number of substitute claims, and
ensuring that any information submitted by the patent
owner in support of any amendment entered under
subsection (d) is made available to the public as part of
the prosecution history of the patent;
(10)  providing either party with the right to an
oral hearing as part of the proceeding;(11)  requiring that the final determination in an
inter partes review be issued not later than 1 year after
the date on which the Director notices the institution of
a review under this chapter, except that the Director may,
for good cause shown, extend the 1-year period by not
more than 6 months, and may adjust the time periods in
this paragraph in the case of joinder under section 315(c);
(12)  setting a time period for requesting joinder
under section 315(c); and
(13)  providing the petitioner with at least 1
opportunity to file written comments within a time period
established by the Director.
(b)  CONSIDERATIONS.—In prescribing
regulations under this section, the Director shall consider
the effect of any such regulation on the economy, the
integrity of the patent system, the efficient administration
of the Office, and the ability of the Office to timely
complete proceedings instituted under this chapter.
(c)  PATENT TRIAL AND APPEAL BOARD.—The
Patent Trial and Appeal Board shall, in accordance with
section 6, conduct each inter partes review instituted under
this chapter.
(d)  AMENDMENT OF THE PATENT.—(1)  IN
GENERAL.—During an inter partes review instituted
under this chapter, the patent owner may file 1 motion to
amend the patent in 1 or more of the following ways: (A) 
Cancel any challenged patent claim.
(B)  For each challenged claim, propose a
reasonable number of substitute claims.
(2)  ADDITIONAL MOTIONS.—Additional
motions to amend may be permitted upon the joint request
of the petitioner and the patent owner to materially
advance the settlement of a proceeding under section 317,
or as permitted by regulations prescribed by the Director.
(3)  SCOPE OF CLAIMS.—An amendment
under this sub section may not enlarge the scope of the
claims of the patent or introduce new matter.
(e)  EVIDENTIARY STANDARDS.—In an inter
partes review instituted under this chapter, the petitioner
shall have the burden of proving a proposition of
unpatentability by a preponderance of the evidence.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(a), 125 Stat. 284, effective
Sept. 16, 2012.)
35 U.S.C. 317
(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
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 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 Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
subsections (a) and (b) amended Nov. 2, 2002, Public
Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept.
16, 2011, Leahy-Smith America Invents Act, Public Law
112-29, sec. 6(a), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 318
(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 issuanceof a final written decision under subsection (a) for, each
inter partes review.
(Added Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a));
amended Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(a), 125 Stat. 284, effective
Sept. 16, 2012.)
35 U.S.C. 319
A party dissatisfied with the final written decision of the
Patent Trial and Appeal Board under section 318(a) may
appeal the decision pursuant to sections 141 through 144.
Any party to the inter partes review shall have the right
to be a party to the appeal.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(a), 125 Stat. 284, effective
Sept. 16, 2012.)
 [*End Editor's Note: Chapter 31—Inter Partes Review
(Sept. 16, 2012)]
 [*Begin Editor's Note: Chapter 31—Inter Partes Review
Regulations and Effective Date (Sept. 16, 2011)]
 Leahy-Smith America Invents Act, Public Law 112-29,
sec. 6(c), 125 Stat. 284, provides as follows:
REGULATIONS AND EFFECTIVE DATE.—
(1)  REGULATIONS.—The Director shall, not later
than [Sept. 16, 2012] the date that is 1 year after the date
of the enactment of this Act, issue regulations to carry
out chapter 31 of title 35, United States Code, as added
by subsection (a) of this section.
(2)  APPLICABILITY .— (A)  IN GENERAL.—The
amendments made by subsection (a) shall take effect upon
the expiration of the 1-year period beginning on the date
of the enactment of this Act and shall apply to any patent
issued before, on, or after that effective date.
(B)  GRADUATED
IMPLEMENTATION.—The Director may impose a limit
on the number of inter partes reviews that may be
instituted under chapter 31 of title 35, United States Code,
during each of the first 4 1-year periods in which the
amendments made by subsection (a) are in effect, if such
number in each year equals or exceeds the number of inter
partes reexaminations that are ordered under chapter 31
of title 35, United States Code, in the last fiscal year
ending before the effective date of the amendments made
by subsection (a).
 [*End Editor's Note: Chapter 31—Inter Partes Review
Regulations and Effective Date (Sept. 16, 2011)]
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  [*Begin Editor's Note: Chapter 32—Post-Grant Review
(Sept. 16, 2012)] >
 Effective September 12, 2012, Chapter 32 will be added
to title 35 of the United States Code and read as follows:
CHAPTER — CHAPTER 32—POST-GRANT
REVIEW
Sec.
147. 321 Post-grant review.
148. 322 Petitions.
149. 323 Preliminary response to petition.
150. 324 Institution of post-grant review.
151. 325 Relation to other proceedings or actions.
152. 326 Conduct of post-grant review.
153. 327 Settlement.
154. 328 Decision of the Board.
155. 329 Appeal.
35 U.S.C. 321
(a)  IN GENERAL.—Subject to the provisions of
this chapter, a person who is not the owner of a patent
may file with the Office a petition to institute a post-grant
review of the patent. The Director shall establish, by
regulation, fees to be paid by the person requesting the
review, in such amounts as the Director determines to be
reasonable, considering the aggregate costs of the
post-grant review.
(b)  SCOPE.—A petitioner in a post-grant review
may request to cancel as unpatentable 1 or more claims
of a patent on any ground that could be raised under
paragraph (2) or (3) of section 282(b) (relating to
invalidity of the patent or any claim).
(c)  FILING DEADLINE.—A petition for a
post-grant review may only be filed not later than the date
that is 9 months after the date of the grant of the patent
or of the issuance of a reissue patent (as the case may be).
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(d), 125 Stat. 284, effective
Sept. 16, 2012.)
35 U.S.C. 322
(a)  REQUIREMENTS OF PETITION.—A petition
filed under section 321 may be considered only if— (1) 
the petition is accompanied by payment of the fee
established by the Director under section 321;
(2)  the petition identifies all real parties in
interest;
(3)  the petition identifies, in writing and with
particularity, each claim challenged, the grounds on which
the challenge to each claim is based, and the evidence
that supports the grounds for the challenge to each claim,including— (A)  copies of patents and printed publications
that the petitioner relies upon in support of the petition;
and
(B)  affidavits or declarations of supporting
evidence and opinions, if the petitioner relies on other
factual evidence or on expert opinions;
(4)  the petition provides such other information
as the Director may require by regulation; and
(5)  the petitioner provides copies of any of the
documents required under paragraphs (2), (3), and (4) to
the patent owner or, if applicable, the designated
representative of the patent owner.
(b)  PUBLIC A V AILABILITY .—As soon as
practicable after the receipt of a petition under section
321, the Director shall make the petition available to the
public.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(d), 125 Stat. 284, effective
Sept. 16, 2012.)
35 U.S.C. 323
If a post-grant review petition is filed under section 321,
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 post-grant review
should be instituted based upon the failure of the petition
to meet any requirement of this chapter.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(d), 125 Stat. 284, effective
Sept. 16, 2012.)
35 U.S.C. 324
(a)  THRESHOLD.—The Director may not authorize
a post-grant review to be instituted unless the Director
determines that the information presented in the petition
filed under section 321, if such information is not rebutted,
would demonstrate that it is more likely than not that at
least 1 of the claims challenged in the petition is
unpatentable.
(b)  ADDITIONAL GROUNDS.—The determination
required under subsection (a) may also be satisfied by a
showing that the petition raises a novel or unsettled legal
question that is important to other patents or patent
applications.
(c)  TIMING.—The Director shall determine whether
to institute a post-grant review under this chapter pursuant
to a petition filed under section 321 within 3 months
after— (1)  receiving a preliminary response to the
petition under section 323; or
(2)   if no such preliminary response is filed, the
last date on which such response may be filed.
(d)  NOTICE.—The Director shall notify the
petitioner and patent owner, in writing, of the Director’s
determination under subsection (a) or (b), and shall make
such notice available to the public as soon as is
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 practicable. Such notice shall include the date on which
the review shall commence.
(e)  NO APPEAL.—The determination by the
Director whether to institute a post-grant review under
this section shall be final and nonappealable.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(d), 125 Stat. 284, effective
Sept. 16, 2012.)
35 U.S.C. 325
(a)  INFRINGER’S CIVIL ACTION.—(1) 
POST-GRANT REVIEW BARRED BY CIVIL
ACTION.—A post-grant review may not be instituted
under this chapter if, before the date on which the petition
for such a review is filed, the petitioner or real party in
interest filed a civil action challenging the validity of a
claim of the patent.
(2)  STAY OF CIVIL ACTION.—If the
petitioner or real party in interest files a civil action
challenging the validity of a claim of the patent on or after
the date on which the petitioner files a petition for
post-grant review of the patent, that civil action shall be
automatically stayed until either—(A)  the patent owner
moves the court to lift the stay;
(B)  the patent owner files a civil action or
counterclaim alleging that the petitioner or real party in
interest has infringed the patent; or
(C)  the petitioner or real party in interest
moves the court to dismiss the civil action.
(3)  TREATMENT OF COUNTERCLAIM.—A
counterclaim challenging the validity of a claim of a
patent does not constitute a civil action challenging the
validity of a claim of a patent for purposes of this
subsection.
(b)  PRELIMINARY INJUNCTIONS.—If a civil
action alleging infringement of a patent is filed within 3
months after the date on which the patent is granted, the
court may not stay its consideration of the patent owner’s
motion for a preliminary injunction against infringement
of the patent on the basis that a petition for post-grant
review has been filed under this chapter or that such a
post-grant review has been instituted under this chapter.
(c)  JOINDER.—If more than 1 petition for a
post-grant review under this chapter is properly filed
against the same patent and the Director determines that
more than 1 of these petitions warrants the institution of
a post-grant review under section 324, the Director may
consolidate such reviews into a single post-grant review.
(d)  MULTIPLE PROCEEDINGS.—Notwithstanding
sections 135(a), 251, and 252, and chapter 30, during the
pendency of any post- grant review under this chapter, if
another proceeding or matter involving the patent is before
the Office, the Director may determine the manner in
which the post-grant review or other proceeding or matter
may proceed, including providing for the stay, transfer,
consolidation, or termination of any such matter orproceeding. In determining whether to institute or order
a proceeding under this chapter, chapter 30, or chapter
31, the Director may take into account whether, and reject
the petition or request because, the same or substantially
the same prior art or arguments pre viously were presented
to the Office.
(e)  ESTOPPEL.— (1)  PROCEEDINGS BEFORE
THE OFFICE.—The petitioner in a post-grant review of
a claim in a patent under this chapter that results in a final
written decision under section 328(a), or the real party in
interest or privy of the petitioner, may not request or
maintain a proceeding before the Office with respect to
that claim on any ground that the petitioner raised or
reasonably could have raised during that post-grant
review.
(2)  CIVIL ACTIONS AND OTHER
PROCEEDINGS.—The petitioner in a post-grant review
of a claim in a patent under this chapter that results in a
final written decision under section 328(a), or the real
party in interest or privy of the petitioner, may not assert
either in a civil action arising in whole or in part under
section 1338 of title 28 or in a proceeding before the
International Trade Commission under section 337 of the
Tariff Act of 1930 that the claim is invalid on any ground
that the petitioner raised or reasonably could have raised
during that post-grant review.
(f)  REISSUE PATENTS.—A post-grant review may
not be instituted under this chapter if the petition requests
cancellation of a claim in a reissue patent that is identical
to or narrower than a claim in the original patent from
which the reissue patent was issued, and the time
limitations in section 321(c) would bar filing a petition
for a post-grant review for such original patent.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(d), 125 Stat. 284, effective
Sept. 16, 2012.)
35 U.S.C. 326
(a)  REGULATIONS.—The Director shall prescribe
regulations—(1)  providing that the file of any proceeding
under this chapter shall be made available to the public,
except that any petition or document filed with the intent
that it be sealed shall, if accompanied by a motion to seal,
be treated as sealed pending the outcome of the ruling on
the motion;
(2)  setting forth the standards for the showing
of sufficient grounds to institute a review under
subsections (a) and (b) of section 324;
(3)  establishing procedures for the submission
of supplemental information after the petition is filed;
(4)  establishing and governing a post-grant
review under this chapter and the relationship of such
review to other proceedings under this title;
(5)  setting forth standards and procedures for
discovery of relevant evidence, including that such
discovery shall be limited to evidence directly related to
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 factual assertions advanced by either party in the
proceeding;
(6)  prescribing sanctions for abuse of discovery,
abuse of process, or any other improper use of the
proceeding, such as to harass or to cause unnecessary
delay or an unnecessary increase in the cost of the
proceeding;
(7)  providing for protective orders governing
the exchange and submission of confidential information;
(8)  providing for the filing by the patent owner
of a response to the petition under section 323 after a
post-grant review has been instituted, and requiring that
the patent owner file with such response, through
affidavits or declarations, any additional factual evidence
and expert opinions on which the patent owner relies in
support of the response;
(9)  setting forth standards and procedures for
allowing the patent owner to move to amend the patent
under subsection (d) to cancel a challenged claim or
propose a reasonable number of substitute claims, and
ensuring that any information submitted by the patent
owner in support of any amendment entered under
subsection (d) is made available to the public as part of
the prosecution history of the patent;
(10)  providing either party with the right to an
oral hearing as part of the proceeding;
(11)  requiring that the final determination in any
post-grant review be issued not later than 1 year after the
date on which the Director notices the institution of a
proceeding under this chapter, except that the Director
may, for good cause shown, extend the 1-year period by
not more than 6 months, and may adjust the time periods
in this paragraph in the case of joinder under section
325(c); and
(12)  providing the petitioner with at least 1
opportunity to file written comments within a time period
established by the Director.
(b)  CONSIDERATIONS.—In prescribing
regulations under this section, the Director shall consider
the effect of any such regulation on the economy, the
integrity of the patent system, the efficient administration
of the Office, and the ability of the Office to timely
complete proceedings instituted under this chapter.
(c)  PATENT TRIAL AND APPEAL BOARD.—The
Patent Trial and Appeal Board shall, in accordance with
section 6, conduct each post-grant review instituted under
this chapter.
(d)  AMENDMENT OF THE PATENT.—(1)  IN
GENERAL.—During a post-grant review instituted under
this chapter, the patent owner may file 1 motion to amend
the patent in 1 or more of the following ways:(A)  Cancel
any challenged patent claim.
(B)  For each challenged claim, propose a
reasonable number of substitute claims.
(2)  ADDITIONAL MOTIONS.—Additional
motions to amend may be permitted upon the joint request
of the petitioner and the patent owner to materiallyadvance the settlement of a proceeding under section 327,
or upon the request of the patent owner for good cause
shown.
(3)  SCOPE OF CLAIMS.—An amendment
under this subsection may not enlarge the scope of the
claims of the patent or introduce new matter.
(e)  EVIDENTIARY STANDARDS.—In a post-grant
review instituted under this chapter, the petitioner shall
have the burden of proving a proposition of
unpatentability by a preponderance of the evidence.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(d), 125 Stat. 284, effective
Sept. 16, 2012.)
35 U.S.C. 327
(a)  IN GENERAL.—A post-grant 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 post-grant review is termi nated with respect to a
petitioner under this section, no estoppel under section
325(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 post-grant review. If no
petitioner remains in the post-grant review, the Office
may terminate the post-grant review or proceed to a final
written decision under section 328(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 a post-grant 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 post-grant 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 Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(d), 125 Stat. 284, effective
Sept. 16, 2012.)
35 U.S.C. 328
(a)  FINAL WRITTEN DECISION.—If a post-grant
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 326(d).
(b)  CERTIFICATE.—If the Patent Trial and Appeal
Board issues a final written decision under subsection (a)
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 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 a post-grant review
under this chapter shall have the same effect as that
specified in section 252 of this title for reissued patents
on the right of any person who made, purchased, or used
within the United States, or imported into the United
States, anything patented by such proposed amended or
new claim, or who made substantial preparation therefor,
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
post-grant review.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(d), 125 Stat. 284, effective
Sept. 16, 2012.)
35 U.S.C. 329
A party dissatisfied with the final written decision of the
Patent Trial and Appeal Board under section 328(a) may
appeal the decision pursuant to sections 141 through 144.
Any party to the post-grant review shall have the right to
be a party to the appeal.
(Added Sept. 16, 2011, Leahy-Smith America Invents
Act, Public Law 112-29, sec. 6(d), 125 Stat. 284, effective
Sept. 16, 2012.)
 [*End Editor's Note: Chapter 32—Post-Grant Review
(Sept. 16, 2012)]
 [*Begin Editor's Note: Chapter 32—Post-Grant Review
Regulations and Effective Date (Sept. 16, 2011)]
 Leahy-Smith America Invents Act, Public Law 112-29,
sec. 6(f), 125 Stat. 284, provides as follows:
REGULATIONS AND EFFECTIVE DATE.—
(1)  REGULATIONS.—The Director shall, not later
than [Sept. 16, 2012] the date that is 1 year after the date
of the enactment of this Act, issue regulations to carry
out chapter 32 of title 35, United States Code, as added
by subsection (d) of this section.(2)  APPLICABILITY .— (A)  IN GENERAL.—The
amendments made by subsection (d) shall take effect upon
the expiration of the 1-year period beginning on the date
of the enactment of this Act and, except as provided in
section 18 and in paragraph (3), shall apply only to patents
described in section 3(n)(1).
(B)  LIMITATION.—The Director may impose
a limit on the number of post-grant reviews that may be
instituted under chapter 32 of title 35, United States Code,
during each of the first 4 1-year periods in which the
amendments made by subsection (d) are in effect.
(3)  PENDING INTERFERENCES.— (A) 
PROCEDURES IN GENERAL.—The Director shall
determine, and include in the regulations issued under
paragraph (1), the procedures under which an interference
commenced before the effective date set forth in paragraph
(2)(A) is to proceed, including whether such
interference— (i)  is to be dismissed without prejudice to
the filing of a petition for a post-grant review under
chapter 32 of title 35, United States Code; or
(ii)  is to proceed as if this Act had not been
enacted.
(B)  PROCEEDINGS BY PATENT TRIAL
AND APPEAL BOARD.—For purposes of an
interference that is commenced before the effective date
set forth in paragraph (2)(A), the Director may deem the
Patent Trial and Appeal Board to be the Board of Patent
Appeals and Interferences, and may allow the Patent Trial
and Appeal Board to conduct any further proceedings in
that interference.
(C)  APPEALS.—The authorization to appeal
or have remedy from derivation proceedings in sections
141(d) and 146 of title 35, United States Code, as
amended by this Act, and the jurisdiction to entertain
appeals from derivation proceedings in section
1295(a)(4)(A) of title 28, United States Code, as amended
by this Act, shall be deemed to extend to any final
decision in an interference that is commenced before the
effective date set forth in paragraph (2)(A) of this
subsection and that is not dismissed pursuant to this
paragraph.
 [*End Editor's Note: Chapter 32—Post-Grant Review
Regulations and Effective Date (Sept. 16, 2011)]
 [*Begin Editor's Note: Transitional Program for
Covered Business Method Patents (Sept. 16, 2011)]
 Leahy-Smith America Invents Act, Public Law 112-29,
sec. 18, 125 Stat. 284 provides as follows:
(a)  TRANSITIONAL PROGRAM.— (1) 
ESTABLISHMENT.—Not later than [Sept. 16, 2012]
the date that is 1 year after the date of the enactment of
this Act, the Director shall issue regulations establishing
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 and implementing a transitional post-grant review
proceeding for review of the validity of covered business
method patents. The transitional proceeding implemented
pursuant to this subsection shall be regarded as, and shall
employ the standards and procedures of, a post-grant
review under chapter 32 of title 35, United States Code,
subject to the following: (A)  Section 321(c) of title 35,
United States Code, and subsections (b), (e)(2), and (f)
of section 325 of such title shall not apply to a transitional
proceeding.
(B)  A person may not file a petition for a
transitional proceeding with respect to a covered business
method patent unless the person or the person’s real party
in interest or privy has been sued for infringement of the
patent or has been charged with infringement under that
patent.
(C)  A petitioner in a transitional proceeding
who challenges the validity of 1 or more claims in a
covered business method patent on a ground raised under
section 102 or 103 of title 35, United States Code, as in
effect on the day before the effective date set forth in
section 3(n)(1), may support such ground only on the
basis of—(i)  prior art that is described by section 102(a)
of such title of such title (as in effect on the day before
such effective date); or
(ii)  prior art that— (I)  discloses the
invention more than 1 year before the date of the
application for patent in the United States; and
(II)  would be described by section
102(a) of such title (as in effect on [March 15, 2013, i.e.,]
the day before the effective date set forth in section
3(n)(1)) if the disclosure had been made by another before
the invention thereof by the applicant for patent.
(D)  The petitioner in a transitional
proceeding that results in a final written decision under
section 328(a) of title 35, United States Code, with respect
to a claim in a covered business method patent, or the
petitioner’s real party in interest, may not assert, either
in a civil action arising in whole or in part under section
1338 of title 28, United States Code, or in a proceeding
before the International Trade Commission under section
337 of the Tariff Act of 1930 (19 U.S.C. 1337), that the
claim is invalid on any ground that the petitioner raised
during that transitional proceeding.
(E)  The Director may institute a transitional
proceeding only for a patent that is a covered business
method patent.
(2)  EFFECTIVE DATE.—The regulations
issued under paragraph (1) shall take effect upon the
expiration of the 1-year period beginning on the date of
the enactment of this Act and shall apply to any covered
business method patent issued before, on, or after that
effective date, except that the regulations shall not apply
to a patent described in section 6(f)(2)(A) of this Act
during the period in which a petition for post-grant reviewof that patent would satisfy the requirements of section
321(c) of title 35, United States Code.
(3)  SUNSET.— (A)  IN GENERAL.—This
subsection, and the regulations issued under this
subsection, are repealed effective upon the expiration of
the 8-year period beginning on the date that the
regulations issued under to paragraph (1) take effect.
(B)  APPLICABILITY .—Notwithstanding
subparagraph (A), this subsection and the regulations
issued under this subsection shall continue to apply, after
the date of the repeal under subparagraph (A), to any
petition for a transitional proceeding that is filed before
the date of such repeal.
(b)  REQUEST FOR STAY .—(1)  IN
GENERAL.—If a party seeks a stay of a civil action
alleging infringement of a patent under section 281 of
title 35, United States Code, relating to a transitional
proceeding for that patent, the court shall decide whether
to enter a stay based on— (A)  whether a stay, or the
denial thereof, will simplify the issues in question and
streamline the trial;
(B)  whether discovery is complete and
whether a trial date has been set;
(C)  whether a stay, or the denial thereof,
would unduly prejudice the nonmoving party or present
a clear tactical advantage for the moving party; and
(D)  whether a stay, or the denial thereof,
will reduce the burden of litigation on the parties and on
the court.
(2)  REVIEW.—A party may take an immediate
interlocutory appeal from a district court’s decision under
paragraph (1). The United States Court of Appeals for the
Federal Circuit shall review the district court’s decision
to ensure consistent application of established precedent,
and such review may be de novo.
(c)  ATM EXEMPTION FOR VENUE
PURPOSES.—In an action for infringement under section
281 of title 35, United States Code, of a covered business
method patent, an automated teller machine shall not be
deemed to be a regular and established place of business
for purposes of section 1400(b) of title 28, United States
Code.
(d)  DEFINITION.— (1)  IN GENERAL.—For
purposes of this section, the term ‘‘covered business
method patent’’ means a patent that claims a method or
corresponding apparatus for performing data processing
or other operations used in the practice, administration,
or management of a financial product or service, except
that the term does not include patents for technological
inventions.
(2)  REGULATIONS.—To assist in
implementing the transitional proceeding authorized by
this subsection, the Director shall issue regulations for
determining whether a patent is for a technological
invention.
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 (e)  RULE OF CONSTRUCTION.—Nothing in this
section shall be construed as amending or interpreting
categories of patent-eligible subject matter set forth under
section 101 of title 35, United States Code.
 [*End Editor's Note: Transitional Program for Covered
Business Method Patents (Sept. 16, 2011)]
PART IV — PART IV—PATENT
COOPERATION TREATY
CHAPTER 35 — DEFINITIONS
Sec.
156. 351 Definitions.
35 U.S.C. 351
When used in this part unless the context otherwise
indicates—
(a)  The term “treaty” means the Patent Cooperation
Treaty done at Washington, on June 19, 1970.
(b)  The term “Regulations,” when capitalized, means
the Regulations under the treaty, done at Washington on
the same date as the treaty. The term “regulations,” when
not capitalized, means the regulations established by the
Director under this title.
(c)  The term “international application” means an
application filed under the treaty.
(d)  The term “international application originating
in the United States” means an international application
filed in the Patent and Trademark Office when it is acting
as a Receiving Office under the treaty, irrespective of
whether or not the United States has been designated in
that international application.
(e)  The term “international application designating
the United States” means an international application
specifying the United States as a country in which a patent
is sought, regardless where such international application
is filed.
(f)  The term “Receiving Office” means a national
patent office or intergovernmental organization which
receives and processes international applications as
prescribed by the treaty and the Regulations.
(g)  The terms “International Searching Authority”
and “International Preliminary Examining Authority”
mean a national patent office or intergovernmental
organization as appointed under the treaty which processes
international applications as prescribed by the treaty and
the Regulations.
(h)  The term “International Bureau” means the inter
national intergovernmental organization which is
recognized as the coordinating body under the treaty and
the Regulations.
(i)  Terms and expressions not defined in this part
are to be taken in the sense indicated by the treaty and the
Regulations.(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
685; amended Nov. 8, 1984, Public Law 98-622, sec.
403(a), 98 Stat. 3392; Nov. 6, 1986, Public Law 99-616,
sec. 2 (a)-(c), 100 Stat. 3485; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
sec. 4732(a)(10)(A)).)
CHAPTER 36 — INTERNATIONAL STAGE
Sec.
157. 361 Receiving Office.
158. 362 International Searching Authority and
International Preliminary Examining Authority.
159. 363 International application designating the United
States: Effect.
160. 364 International stage: Procedure.
161. 365 Right of priority; benefit of the filing date of a
prior application.
162. 366 Withdrawn international application.
163. 367 Actions of other authorities: Review.
164. 368 Secrecy of certain inventions; filing
international applications in foreign countries.
35 U.S.C. 361
(a)  The Patent and Trademark Office shall act as a
Receiving Office for international applications filed by
nationals or residents of the United States. In accordance
with any agreement made between the United States and
another country, the Patent and Trademark Office may
also act as a Receiving Office for international
applications filed by residents or nationals of such country
who are entitled to file international applications.
(b)  The Patent and Trademark Office shall perform
all acts connected with the discharge of duties required
of a Receiving Office, including the collection of
international fees and their transmittal to the International
Bureau.
(c)  International applications filed in the Patent and
Trademark Office shall be in the English language.
(d)  The international fee, and the transmittal and
search fees prescribed under section 376(a)  of this part,
shall either be paid on filing of an international application
or within such later time as may be fixed by the Director.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
686; amended Nov. 8, 1984, Public Law 98-622, sec.
401(a), 403(a), 98 Stat. 3391-3392; Nov. 6, 1986, Public
Law 99-616, sec. 2(d), 100 Stat. 3485; Nov. 29, 1999,
Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 362
(a)  The Patent and Trademark Office may act as an
International Searching Authority and International
Preliminary Examining Authority with respect to
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 international applications in accordance with the terms
and conditions of an agreement which may be concluded
with the International Bureau, and may discharge all
duties required of such Authorities, including the
collection of handling fees and their transmittal to the
International Bureau.
(b)  The handling fee, preliminary examination fee,
and any additional fees due for international preliminary
examination shall be paid within such time as may be
fixed by the Director.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
686; amended Nov. 8, 1984, Public Law 98-622, sec. 403
(a), 98 Stat. 3392; Nov. 6, 1986, Public Law 99-616, sec.
4, 100 Stat. 3485; Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 363
An international application designating the United States
shall have the effect, from its international filing date
under article 11  of the treaty, of a national application
for patent regularly filed in the Patent and Trademark
Office except as otherwise provided in section 102(e)  of
this title.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
686; amended Nov. 8, 1984, Public Law 98-622, sec.
403(a), 98 Stat. 3392.)
 [*Begin Editor's Note: 35 U.S.C. 363 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 363 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 363 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 363 will read as
follows:
35 U.S.C. 363
An international application designating the United States
shall have the effect, from its international filing date
under article 11  of the treaty, of a national application
for patent regularly filed in the Patent and Trademark
Office.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
686; amended Nov. 8, 1984, Public Law 98-622, sec.
403(a), 98 Stat. 3392; ; amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,secs. 20(j) (effective Sept. 16, 2012) and 3(g) (effective
March 16, 2013), 125 Stat. 284.)
 [*End Editor's Note: 35 U.S.C. 363 (March 16, 2013)]
35 U.S.C. 364
(a)  International applications shall be processed by
the Patent and Trademark Office when acting as a
Receiving Office, International Searching Authority, or
International Preliminary Examining Authority, in
accordance with the applicable provisions of the treaty,
the Regulations, and this title.
(b)  An applicant’s failure to act within prescribed
time limits in connection with requirements pertaining to
a pending international application may be excused upon
a showing satisfactory to the Director of unavoidable
delay, to the extent not precluded by the treaty and the
Regulations, and provided the conditions imposed by the
treaty and the Regulations regarding the excuse of such
failure to act are complied with.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
686; amended Nov. 8, 1984, Public Law 98-622, sec.
403(a), 98 Stat. 3392; subsection (a) amended Nov. 6,
1986, Public Law 99-616, sec. 5, 100 Stat. 3485; amended
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 365
(a)  In accordance with the conditions and
requirements of subsections (a) through (d) of section
119 of this title, a national application shall be entitled to
the right of priority based on a prior filed international
application which designated at least one country other
than the United States.
(b)  In accordance with the conditions and
requirements of section 119(a)  of this title and the treaty
and the Regulations, an international application
designating the United States shall be entitled to the right
of priority based on a prior foreign application, or a prior
international application designating at least one country
other than the United States.
(c)  In accordance with the conditions and
requirements of section 120  of this title, an international
application designating the United States shall be entitled
to the benefit of the filing date of a prior national
application or a prior international application designating
the United States, and a national application shall be
entitled to the benefit of the filing date of a prior
international application designating the United States.
If any claim for the benefit of an earlier filing date is based
on a prior international application which designated but
did not originate in the United States, the Director may
require the filing in the Patent and Trademark Office of
a certified copy of such application together with a
translation thereof into the English language, if it was
filed in another language.
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 (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
686; amended Nov. 8, 1984, Public Law 98-622, sec.
403(a), 98 Stat. 3392; Dec. 8, 1994, Public Law 103-465,
sec. 532(c)(4), 108 Stat. 4987; Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948
sec. 4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 365 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 365 (Sept. 16, 2012)]
35 U.S.C. 366
Subject to section 367 of this part, if an international
application designating the United States is withdrawn or
considered withdrawn, either generally or as to the United
States, under the conditions of the treaty and the
Regulations, before the applicant has complied with the
applicable requirements prescribed by section 371(c)  of
this part, the designation of the United States shall have
no effect after the date of withdrawal and shall be
considered as not having been made, unless a claim for
benefit of a prior filing date under section 365(c)  of this
section was made in a national application, or an
international application designating the United States,
filed before the date of such withdrawal. However, such
withdrawn international application may serve as the basis
for a claim of priority under section 365 (a)  and (b) of
this part, if it designated a country other than the United
States.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
687; amended Nov. 8, 1984, Public Law 98-622, sec.
401(b), 98 Stat. 3391.)
35 U.S.C. 367
(a)  Where a Receiving Office other than the Patent
and Trademark Office has refused to accord an
international filing date to an international application
designating the United States or where it has held such
application to be withdrawn either generally or as to the
United States, the applicant may request review of the
matter by the Director, on compliance with the
requirements of and within the time limits specified by
the treaty and the Regulations. Such review may result in
a determination that such application be considered as
pending in the national stage.
(b)  The review under subsection (a) of this section,
subject to the same requirements and conditions, may also
be requested in those instances where an international
application designating the United States is consideredwithdrawn due to a finding by the International Bureau
under article 12  (3) of the treaty.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
687; amended Nov. 8, 1984, Public Law 98-622, sec.
403(a), 98 Stat 3392; Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
35 U.S.C. 368
(a)  International applications filed in the Patent and
Trademark Office shall be subject to the provisions of
chapter 17  of this title.
(b)  In accordance with article 27  (8) of the treaty,
the filing of an international application in a country other
than the United States on the invention made in this
country shall be considered to constitute the filing of an
application in a foreign country within the meaning of
chapter 17  of this title, whether or not the United States
is designated in that international application.
(c)  If a license to file in a foreign country is refused
or if an international application is ordered to be kept
secret and a permit refused, the Patent and Trademark
Office when acting as a Receiving Office, International
Searching Authority, or International Preliminary
Examining Authority, may not disclose the contents of
such application to anyone not authorized to receive such
disclosure.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
687; amended Nov. 8, 1984, Public Law 98-622, sec.
403(a), 98 Stat. 3392; Nov. 6, 1986, Public Law 99-616,
sec. 6, 100 Stat. 3486.)
 [*Begin Editor's Note: 35 U.S.C. 368 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 368 (Sept. 16, 2012)]
CHAPTER 37 — NATIONAL STAGE
Sec.
165. 371 National stage: Commencement.
166. 372 National stage: Requirements and procedure.
167. 373 Improper applicant.
168. 374 Publication of international application: Effect.
169. 375 Patent issued on international application:
Effect.
170. 376 Fees.
35 U.S.C. 371
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 (a)  Receipt from the International Bureau of copies
of international applications with any amendments to the
claims, international search reports, and international
preliminary examination reports including any annexes
thereto may be required in the case of international
applications designating or electing the United States.
(b)  Subject to subsection (f) of this section, the
national stage shall commence with the expiration of the
applicable time limit under article 22  (1) or (2), or under
article 39  (1)(a) of the treaty.
(c)  The applicant shall file in the Patent and
Trademark Office —(1)  the national fee provided in
section 41(a)  of this title;
(2)  a copy of the international application, unless
not required under subsection (a) of this section or already
communicated by the International Bureau, and a
translation into the English language of the international
application, if it was filed in another language;
(3)  amendments, if any, to the claims in the
international application, made under article 19  of the
treaty, unless such amendments have been communicated
to the Patent and Trademark Office by the International
Bureau, and a translation into the English language if such
amendments were made in another language;
(4)  an oath or declaration of the inventor (or
other person authorized under chapter 11  of this title)
complying with the requirements of section 115  of this
title and with regulations prescribed for oaths or
declarations of applicants;
(5)  a translation into the English language of
any annexes to the international preliminary examination
report, if such annexes were made in another language.
(d)  The requirement with respect to the national fee
referred to in subsection (c)(1), the translation referred to
in subsection (c)(2), and the oath or declaration referred
to in subsection (c)(4) of this section shall be complied
with by the date of the commencement of the national
stage or by such later time as may be fixed by the
Director. The copy of the international application referred
to in subsection (c)(2) shall be submitted by the date of
the commencement of the national stage. Failure to
comply with these requirements shall be regarded as
abandonment of the application by the parties thereof,
unless it be shown to the satisfaction of the Director that
such failure to comply was unavoidable. The payment of
a surcharge may be required as a condition of accepting
the national fee referred to in subsection (c)(1) or the oath
or declaration referred to in subsection (c)(4) of this
section if these requirements are not met by the date of
the commencement of the national stage. The
requirements of subsection (c)(3) of this section shall be
complied with by the date of the commencement of the
national stage, and failure to do so shall be regarded as a
cancellation of the amendments to the claims in the
international application made under article 19  of the
treaty. The requirement of subsection (c)(5) shall be
complied with at such time as may be fixed by theDirector and failure to do so shall be regarded as
cancellation of the amendments made under article 34
(2)(b) of the treaty.
(e)  After an international application has entered the
national stage, no patent may be granted or refused
thereon before the expiration of the applicable time limit
under article 28  or article 41  of the treaty, except with
the express consent of the applicant. The applicant may
present amendments to the specification, claims, and
drawings of the application after the national stage has
commenced.
(f)  At the express request of the applicant, the
national stage of processing may be commenced at any
time at which the application is in order for such purpose
and the applicable requirements of subsection (c) of this
section have been complied with.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
688; amended Nov. 8, 1984, Public Law 98-622, sec.
402(a)-(d), 403(a), 98 Stat. 3391, 3392; subsections (a),
(b), (c), (d), and (e) amended Nov. 6, 1986, Public Law,
99-616, sec. 7, 100 Stat. 3486; subsection (c)(1) amended
Dec. 10, 1991, Public Law 102-204, sec. 5(g)(2), 105
Stat. 1641; amended Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); subsection (d) amended Nov. 2, 2002,
Public Law 107-273, sec. 13206, 116 Stat. 1905.)
 [*Begin Editor's Note: 35 U.S.C. 371 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears, and pursuant to sec.
20(i), 35 U.S.C. 371(b) is amended by striking "of the
treaty" and inserting "of the treaty."
 [*End Editor's Note: 35 U.S.C. 371 (Sept. 16, 2012)]
35 U.S.C. 372
(a)  All questions of substance and, within the scope
of the requirements of the treaty and Regulations,
procedure in an international application designating the
United States shall be determined as in the case of national
applications regularly filed in the Patent and Trademark
Office.
(b)  In case of international applications designating
but not originating in, the United States -(1)  the Director
may cause to be reexamined questions relating to form
and contents of the application in accordance with the
requirements of the treaty and the Regulations;
(2)  the Director may cause the question of unity
of invention to be reexamined under section 121  of this
title, within the scope of the requirements of the treaty
and the Regulations; and
(3)  the Director may require a verification of
the translation of the international application or any other
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 document pertaining to the application if the application
or other document was filed in a language other than
English.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
689; amended Nov. 8, 1984, Public Law 98-622, sec.
402(e), (f), 403(a), 98 Stat. 3392; Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582
(S. 1948 sec. 4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 372 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 372 (Sept. 16, 2012)]
35 U.S.C. 373
An international application designating the United States,
shall not be accepted by the Patent and Trademark Office
for the national stage if it was filed by anyone not
qualified under chapter 11  of this title to be an applicant
for the purpose of filing a national application in the
United States. Such international applications shall not
serve as the basis for the benefit of an earlier filing date
under section 120  of this title in a subsequently filed
application, but may serve as the basis for a claim of the
right of priority under subsections (a) through (d) of
section 119  of this title, if the United States was not the
sole country designated in such international application.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
689; amended Nov. 8, 1984, Public Law 98-622, sec.
403(a), 98 Stat. 3392; Dec. 8, 1994, Public Law 103-465,
sec. 532(c)(5), 108 Stat. 4987.)
 [*Begin Editor's Note: 35 U.S.C. 373 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 373 (Sept. 16, 2012)]
35 U.S.C. 374
The publication under the treaty defined in section 351(a)
of this title, of an international application designating
the United States shall be deemed a publication under
section 122(b) , except as provided in sections 102(e)  and
154(d)  of this title.(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89
Stat. 689; amended Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec.
4507(10)); amended Nov. 2, 2002, Public Law 107-273,
sec.13205, 116 Stat. 1903.)
 [*Begin Editor's Note: 35 U.S.C. 374 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears.
 [*End Editor's Note: 35 U.S.C. 374 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 374 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 374 will read as
follows:
35 U.S.C. 374
The publication under the treaty defined in section 351(a)
, of an international application designating the United
States shall be deemed a publication under section 122(b) ,
except as provided in section 154(d) .
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89
Stat. 689; amended Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec.
4507(10)); amended Nov. 2, 2002, Public Law 107-273,
sec.13205, 116 Stat. 1903; amended Sept. 16, 2011,
Leahy-Smith America Invents Act, Public Law 112-29,
sec. 20(j)(effective Sept. 16, 2012) and sec. 3(g)(effective
March 16, 2013), 125 Stat. 284.)
 [*End Editor's Note: 35 U.S.C. 374 (March 16, 2013)]
35 U.S.C. 375
(a)  A patent may be issued by the Director based on
an international application designating the United States,
in accordance with the provisions of this title. Subject to
section 102(e)  of this title, such patent shall have the force
and effect of a patent issued on a national application filed
under the provisions of chapter 11  of this title.
(b)  Where due to an incorrect translation the scope
of a patent granted on an international application
designating the United States, which was not originally
filed in the English language, exceeds the scope of the
international application in its original language, a court
of competent jurisdiction may retroactively limit the scope
of the patent, by declaring it unenforceable to the extent
that it exceeds the scope of the international application
in its original language.
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 (Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
689; amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)).)
 [*Begin Editor's Note: 35 U.S.C. 375 (Sept. 16, 2012)]
 Effective Sept. 16, 2012, pursuant to the Leahy-Smith
America Invents Act, Public Law 112-29, sec. 20(j), 125
Stat. 284, this section is amended by striking ‘‘of this
title’’ each place that term appears except for the first
occurrence in subsection (a).
 [*End Editor's Note: 35 U.S.C. 375 (Sept. 16, 2012)]
 [*Begin Editor's Note: 35 U.S.C. 375 (March 16, 2013)]
 Effective March 16, 2013, 35 U.S.C. 375 will read as
follows:
35 U.S.C. 375
(a)  A patent may be issued by the Director based on
an international application designating the United States,
in accordance with the provisions of this title. Such patent
shall have the force and effect of a patent issued on a
national application filed under the provisions of chapter
11.
(b)  Where due to an incorrect translation the scope
of a patent granted on an international application
designating the United States, which was not originally
filed in the English language, exceeds the scope of the
international application in its original language, a court
of competent jurisdiction may retroactively limit the scope
of the patent, by declaring it unenforceable to the extent
that it exceeds the scope of the international application
in its original language.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
689; amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-582 (S. 1948 sec.
4732(a)(10)(A)); amended Sept. 16, 2011, Leahy-Smith
America Invents Act, Public Law 112-29, sec.
20(j)(effective Sept. 16, 2012) and sec. 3(g)(effective
March 16, 2013), 125 Stat. 284. )
 [*End Editor's Note: 35 U.S.C. 375 (March 16, 2013)]
35 U.S.C. 376
(a)  The required payment of the international fee
and the handling fee, which amounts are specified in the
Regulations, shall be paid in United States currency. The
Patent and Trademark Office shall charge a national fee
as provided in section 41(a) , and may also charge the
following fees:(1)  A transmittal fee (see section 361(d)) .
(2)  A search fee (see section 361(d)) .(3)  A supplemental search fee (to be paid when
required).
(4)  A preliminary examination fee and any
additional fees (see section 362(b)) .
(5)  Such other fees as established by the
Director.
(b)  The amounts of fees specified in subsection (a)
of this section, except the international fee and the
handling fee, shall be prescribed by the Director. He may
refund any sum paid by mistake or in excess of the fees
so specified, or if required under the treaty and the
Regulations. The Director may also refund any part of
the search fee, the national fee, the preliminary
examination fee and any additional fees, where he
determines such refund to be warranted.
(Added Nov. 14, 1975, Public Law 94-131, sec. 1, 89 Stat.
690, amended Nov. 8, 1984, Public Law 98-622, sec.
402(g), 403(a), 98 Stat. 3392; Nov. 6, 1986, Public Law
99-616, sec. 8(a) & (b), 100 Stat. 3486; Dec. 10, 1991,
Public Law 102-204, sec. 5(g)(1), 105 Stat. 1640;
amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501-582 (S. 1948 sec.
4732(a)(10)(A)); subsections (a)(1)-(a)(3) amended Nov.
2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905.)
         
LA WS NOT IN TITLE 35, UNITED STATES CODE
18 U.S.C. 1001
(a)  Except as otherwise provided in this section,
whoever, in any matter within the jurisdiction of the
executive, legislative, or judicial branch of the
Government of the United States, knowingly and willfully
— (1)  falsifies, conceals, or covers up by any trick,
scheme, or device a material fact;
(2)  makes any materially false, fictitious, or
fraudulent statement or representation; or
(3)  makes or uses any false writing or document
knowing the same to contain any materially false,
fictitious, or fraudulent statement or entry;
shall be fined under this title, imprisoned not more than
5 years or, if the offense involves international or domestic
terrorism (as defined in section 2331), imprisoned not
more than 8 years, or both. If the matter relates to an
offense under chapter 109A, 109B, 110, or 117, or section
1591, then the term of imprisonment imposed under this
section shall be not more than 8 years.
(b)  Subsection (a) does not apply to a party to a
judicial proceeding, or that party’s counsel, for statements,
representations, writings or documents submitted by such
party or counsel to a judge or magistrate in that
proceeding.
(c)  With respect to any matter within the jurisdiction
of the legislative branch, subsection (a) shall apply only
to — (1)  administrative matters, including a claim for
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 payment, a matter related to the procurement of property
or services, personnel or employment practices, or support
services, or a document required by law, rule, or
regulation to be submitted to the Congress or any office
or officer within the legislative branch; or
(2)  any investigation or review, conducted
pursuant to the authority of any committee, subcommittee,
commission or office of the Congress, consistent with
applicable rules of the House or Senate.
(Amended Sept. 13, 1994, Public Law 103-322, sec.
330016(1)(L), 108 Stat. 2147; Oct. 11, 1996, Public Law
104-292, Sec. 2, 110 Stat. 3459.)
(Subsection (a) amended Dec. 17, 2004, Public Law
108-458, sec. 6703 (a) , 118 Stat. 3766; July 27, 2006,
Public Law 109-248, sec. 141(c), 120 Stat. 603.)
18 U.S.C. 2071
(a)  Whoever willfully and unlawfully conceals,
removes, mutilates, obliterates, or destroys, or attempts
to do so, or, with intent to do so takes and carries away
any record, proceeding, map, book, paper, document, or
other thing, filed or deposited with any clerk or officer of
any court of the United States, or in any public office, or
with any judicial or public officer of the United States,
shall be fined under this title or imprisoned not more than
three years, or both.
(b)  Whoever, having the custody of any such record,
proceeding, map, book, document, paper, or other thing,
willfully and unlawfully conceals, removes, mutilates,
obliterates, falsifies, or destroys the same, shall be fined
under this title or imprisoned not more than three years,
or both; and shall forfeit his office and be disqualified
from holding any office under the United States. As used
in this subsection, the term “office” does not include the
office held by any person as a retired officer of the Armed
Forces of the United States.
(Amended Nov. 5, 1990, Public Law 101-510, sec. 552(a),
104 Stat. 1566; Sept. 13, 1994, Public Law 103-322, sec.
330016(1)(I), 108 Stat. 2147.)
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   INDEX OF PATENT LA WS
A
Abandoned applications, fee on petition to revive.41(a)7
Abandonment of application by failure to
prosecute ............................................................ 133, 371
Abandonment of invention: .......................................  154
Bar to patent ........................................................ 102
By violation of secrecy.......................................182
Bar to patent ........................................................ 102
By violation of secrecy.......................................182
Adjustment of patent term .......................................  154
Administrative Patent Judges ........................................ 6
Administrator, executor, or guardian.........................117
Affidavits and depositions in contested cases, rules for
taking ............................................................................ 23
Agreement to terminate interference.........................135
Agriculture, Secretary of, to furnish information, and
detail employees to Director for plant patent.............164
Allowance and issue of patents..................................153
Allowance, notice of..................................................151
Amendment: ....................................................... 133, 135
Copying claim of issued patent...........................135
Copying claim of issued patent...........................135
Time for..............................................................133, 135
Annual indexes of patents............................................10
Annual report of the Director.......................................13
Apostille on assignment.............................................261
Appeals to Board of Patent Appeals and
Interferences...............................................................134
Fee.......................................................... 41(a)6, 134
Hearing of...............................................................6
Reexamination proceedings ................................ 306
Fee.......................................................... 41(a)6, 134
Hearing of...............................................................6
Reexamination proceedings ................................ 306
Appeals to Court of Appeals for the Federal Circuit..141
Certificate of decision of Court recorded in the United
States Patent and Trademark Office ................... 144
Determination of Appeal; revision of decision....144
From Board of Patent Appeals and
Interferences.......................................................141
Grounds of decision to be furnished court..........143
Notice of appeal .................................................. 142
Proceedings on appeal........................................143
Certificate of decision of Court recorded in the United
States Patent and Trademark Office ................... 144
Determination of Appeal; revision of decision....144
From Board of Patent Appeals and
Interferences.......................................................141
Grounds of decision to be furnished court..........143
Notice of appeal .................................................. 142
Proceedings on appeal........................................143Applicant for foreign patent, license required...........184
Applicant for international application ...................... 373
Applicant, notified of interference.............................135
Application: .................................................................... 3
Abandonment of, by failure to prosecute...........133
Assignment of ..................................................... 261
Confidential while pending ................................. 122
Continuing..........................................................120
Description; specification and claim..................112
Divisional............................................................121
Drawings.............................................................113
Effect of defective execution ................................ 26
Effective as of date of earliest foreign application in
certain cases ........................................................ 119
Examination of invention....................................131
Fee on filing ........................................... 41(a)1, 111
For deceased or insane inventors ........................ 117
May be made by legal representative of deceased or
incapacitated inventor.........................................117
Must be made within specified time after foreign
application for right of priority...........................119
Oath of applicant (See Oath in patent
application).........................................................267
267
Owned by Government.......................................267
Provisional..........................................................111
Publication .......................................... 102, 122, 181
Reissue................................................................251
Secrecy order......................................................181
What to contain ................................................... 111
When filed by other than inventor..............118, 121
Abandonment of, by failure to prosecute...........133
Assignment of ..................................................... 261
Confidential while pending ................................. 122
Continuing..........................................................120
Description; specification and claim..................112
Divisional............................................................121
Drawings.............................................................113
Effect of defective execution ................................ 26
Effective as of date of earliest foreign application in
certain cases ........................................................ 119
Examination of invention....................................131
Fee on filing ........................................... 41(a)1, 111
For deceased or insane inventors ........................ 117
May be made by legal representative of deceased or
incapacitated inventor.........................................117
Must be made within specified time after foreign
application for right of priority...........................119
Oath of applicant (See Oath in patent
application).........................................................267
267
Owned by Government.......................................267
Provisional..........................................................111
Publication .......................................... 102, 122, 181
Reissue................................................................251
Secrecy order......................................................181
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 What to contain ................................................... 111
When filed by other than inventor..............118, 121
Appointments, how made..............................................3
Arbitration of interferences ........................................ 135
Arbitration, voluntary................................................294
Article patented marked with number of patent........287
Assignee:....................................................................118
118
May file application in certain cases..........................118
May file divisional application...........................121
May file reissue application................................251
Patent may be issued to.......................................152
May file divisional application...........................121
May file reissue application................................251
Patent may be issued to.......................................152
Assignments, patent ................................................... 261
Establishing prima facie execution of........................261
Fees for recording ......................................... 41(a)10
Must be recorded in United States Patent and
Trademark Office to issue patent to assignee.....152
Patent may issue to assignee...............................152
Recording in Patent and Trademark Office........261
Fees for recording ......................................... 41(a)10
Must be recorded in United States Patent and
Trademark Office to issue patent to assignee.....152
Patent may issue to assignee...............................152
Recording in Patent and Trademark Office........261
Attorney fees in infringement suit.............................285
Attorneys and agents: .......................................................
May be refused recognition for misconduct.........32
Petition to District Court, DC...............................32
Suspension or exclusion from practice.................32
Unauthorized practitioners .................................... 33
May be refused recognition for misconduct.........32
Petition to District Court, DC...............................32
Suspension or exclusion from practice.................32
Unauthorized practitioners .................................... 33
B
Bars to grant of a patent.....................................102, 103
Benefit of earlier filing date in foreign country.........119
Benefit of earlier filing date in United States............120
Best mode required....................................................112
Bill in equity (See Civil action).....................................6
6
Board of Patent Appeals and Interferences, how
constituted......................................................................6
C
Certificate of correction:............................................301
Applicant’s mistake ............................................ 255
Fee for applicant’s mistake ............................. 41(a)8
Office mistake ..................................................... 254
Applicant’s mistake ............................................ 255Fee for applicant’s mistake ............................. 41(a)8
Office mistake ..................................................... 254
Certified copies: ......................................................... 301
Fee for certification......................................41(a)11
Of drawings and specifications of patents issued....9
Of records, furnished to Court of Appeals for the
Federal Circuit in appeals...................................143
Fee for certification......................................41(a)11
Of drawings and specifications of patents issued....9
Of records, furnished to Court of Appeals for the
Federal Circuit in appeals...................................143
Citation of prior art in patent ..................................... 301
Citizenship required in oath ....................................... 115
Civil action: .................................................................... 8
Election of in case of interference......................141
Infringement.......................................................291
In case of interference.........................................146
Jurisdiction, plurality of parties, foreign party....146
To obtain patent .................................................. 145
Election of in case of interference......................141
Infringement.......................................................291
In case of interference.........................................146
Jurisdiction, plurality of parties, foreign party....146
To obtain patent .................................................. 145
Claim of patent: .............................................................. 8
Independent or dependent.............................41, 112
Independent or dependent, validity ..................... 282
Invalid, effect of..................................................253
Invalid, suits on patent with................................288
Notice of rejection..............................................132
Too extensive or narrow, remedy........................251
What to cover......................................................112
Independent or dependent.............................41, 112
Independent or dependent, validity ..................... 282
Invalid, effect of..................................................253
Invalid, suits on patent with................................288
Notice of rejection..............................................132
Too extensive or narrow, remedy........................251
What to cover......................................................112
Classification of patents ................................................. 8
Clerk of United States Court may summon witness in...1
Interference cases..................................................24
Must notify Director of patent suits....................290
Interference cases..................................................24
Must notify Director of patent suits....................290
Commerce, Department of, United States Patent and
Trademark Office in ....................................................... 1
Commerce, Secretary of: ........................................... 103
Appointments by ..................................................... 3
Appointments by ..................................................... 3
Commissioner for Patents:.........................................103
How appointed and duties ....................................... 3
Member of Board....................................................6
How appointed and duties ....................................... 3
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 Member of Board....................................................6
Commonly owned invention and reference subject
matter.........................................................................103
Compensation, right to because of secrecy order......183
Composition of matter: ........................... 18 U.S.C. 2071
Patentable............................................................101
Specimens of ingredients may be required.........114
Patentable............................................................101
Specimens of ingredients may be required.........114
Concealment of records...........................18 U.S.C. 2071
Confidential status of application ...................... 122, 205
Continuing application ............................................... 120
Contributory infringement ......................................... 271
Copies of records, fees.................................................41
Correction of inventors in patent ................................ 256
Correction of letters patent.................................254, 255
D
Damages for infringement ......................................... 284
Day of taking any action or paying any fee falling on
Saturday, Sunday, or holiday ....................................... 21
Death or incapacity of inventor..................................117
Decisions in patent cases, printing of..........................10
Declaration in lieu of oath............................................25
Dedication of term.....................................................253
Defective execution of documents, effect of................26
Defenses in action for infringement...........................282
Definitions .......................................................... 100, 351
Deposit with United States Postal Service ................... 21
Depositions, Director may establish rules for..............23
Deputy Commissioner ................................................... 6
Member of Board....................................................6
Member of Board....................................................6
Description of invention ............................................. 112
Design patents: ........................... 363, 366, 367, 371, 372
Double recovery, not allowed.............................289
Fees.................................................................41(a)3
For what granted.................................................171
Liability for infringement of...............................289
Penalty for unauthorized use of patented
design..................................................................289
Prior foreign applications...................................172
Right of priority .................................................. 172
Subject to same provisions as other patents.......171
Term of................................................................173
Unauthorized use of ............................................ 289
Double recovery, not allowed.............................289
Fees.................................................................41(a)3
For what granted.................................................171
Liability for infringement of ............................... 289
Penalty for unauthorized use of patented
design..................................................................289
Prior foreign applications...................................172
Right of priority .................................................. 172
Subject to same provisions as other patents.......171Term of................................................................173
Unauthorized use of ............................................ 289
Designated office ....................... 363, 366, 367, 371, 372
Determination of patent term adjustment..................154
Director:.......................................................................32
Annual report to Congress....................................13
Consult with Patent Public Advisory Committee....3
Duties of .................................................................. 6
How appointed ........................................................ 3
Intellectual Property Policy Issues, advises President,
Federal Departments ............................................... 2
May disbar attorneys ............................................. 32
May establish charges ........................................... 41
May make rules for taking affidavits and
depositions............................................................23
Member of Board....................................................6
Reexamination order ........................................... 304
Shall cause examination to be made...................131
To establish regulations..........................................3
To furnish court with grounds of decision, on
appeal .................................................................. 143
To prescribe rules and regulations governing
recognition of attorneys and agents ........................ 2
To sign patents or have name printed thereon and
attested................................................................153
To superintend grant of patents...............................3
Annual report to Congress....................................13
Consult with Patent Public Advisory Committee....3
Duties of .................................................................. 6
How appointed ........................................................ 3
Intellectual Property Policy Issues, advises President,
Federal Departments ............................................... 2
May disbar attorneys ............................................. 32
May establish charges ........................................... 41
May make rules for taking affidavits and
depositions............................................................23
Member of Board....................................................6
Reexamination order ........................................... 304
Shall cause examination to be made...................131
To establish regulations..........................................3
To furnish court with grounds of decision, on
appeal .................................................................. 143
To prescribe rules and regulations governing
recognition of attorneys and agents ........................ 2
To sign patents or have name printed thereon and
attested................................................................153
To superintend grant of patents...............................3
Disbarment of attorneys and agents ............................. 32
Disclaimer:.................................................................121
Fee..................................................................41(a)5
How filed and by whom ...................................... 253
Must be filed before commencement of suit to
recover costs.......................................................288
Nature of.............................................................253
Fee..................................................................41(a)5
How filed and by whom ...................................... 253
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 Must be filed before commencement of suit to
recover costs.......................................................288
Nature of.............................................................253
District Court for District of Columbia: ..................... 121
Jurisdiction..........................................................146
Review of disbarment of attorneys and agents.....32
Jurisdiction..........................................................146
Review of disbarment of attorneys and agents.....32
Division of application ............................................... 121
Division of patent on reissue......................................251
Drawing:........................................................................3
Attached to patent...............................................154
Part of patent.......................................................154
Printing of ............................................................. 10
When necessary .................................................. 113
Attached to patent...............................................154
Part of patent.......................................................154
Printing of ............................................................. 10
When necessary .................................................. 113
Duties of Director..........................................................3
E
Elected office ..................................................... 371, 372
Employees of United States Patent and Trademark
Office.............................................................................3
How appointed ........................................................ 3
Restrictions on as to interest in patents ................... 4
How appointed ........................................................ 3
Restrictions on as to interest in patents ................... 4
English language ........................................................ 361
Entry into national phase in United States ................. 371
Error in naming inventors..........................................116
Establishment of date of invention by reference to
knowledge or use in foreign country .......................... 104
Establishment, United States Patent and Trademark
Office.............................................................................1
Examination:................................................................10
Applicants shall be notified of rejection on........132
To be made of application and alleged
invention.............................................................131
Applicants shall be notified of rejection on........132
To be made of application and alleged
invention.............................................................131
Exchange of United States Patent and Trademark Office
Publications for other publications..............................10
Exchange of printed copies of patents and published
application of patents with foreign countries...............11
Executors, administrators or guardians......................117
Extension of patent term............................................155
Extension of time to reply fee...............................41(a)8
F
Falsely making or labeling articles as patented.........292
Federal agency, defined .............................................. 200Federal Assistance, inventions made with: ................ 118
Confidentiality....................................................205
Definitions .......................................................... 201
Disposition of rights...........................................202
Domestic and foreign protection of federally owned
inventions............................................................207
Educational awards ............................................. 212
March-in rights...................................................203
Policy and objective of........................................200
Precedence of chapter over other Acts ................ 210
Preference for United States industry.................204
Regulations governing Federal licensing............208
Relationship to antitrust laws..............................211
Restrictions on licensing of federally owned
inventions............................................................209
Uniform clauses and regulations........................206
Confidentiality....................................................205
Definitions .......................................................... 201
Disposition of rights...........................................202
Domestic and foreign protection of federally owned
inventions............................................................207
Educational awards ............................................. 212
March-in rights...................................................203
Policy and objective of........................................200
Precedence of chapter over other Acts ................ 210
Preference for United States industry.................204
Regulations governing Federal licensing............208
Relationship to antitrust laws..............................211
Restrictions on licensing of federally owned
inventions............................................................209
Uniform clauses and regulations........................206
Fees:...........................................................................118
Amount of ............................................................. 41
For attorney awarded by court............................285
For records, publications, and services not specified
in statute ................................................................ 41
How paid and refunded.........................................42
Independent inventor, 50% reduction..............41(h)
International ................................................ 361, 376
Nonprofit organization, 50% reduction ............ 41(h)
Payable to Director...........................................42(a)
Small business, 50% reduction........................41(h)
Small entity, 50% reduction ..................... 41(h), 133
To witness interference cases................................24
Amount of ............................................................. 41
For attorney awarded by court............................285
For records, publications, and services not specified
in statute ................................................................ 41
How paid and refunded.........................................42
Independent inventor, 50% reduction..............41(h)
International ................................................ 361, 376
Nonprofit organization, 50% reduction ............ 41(h)
Payable to Director........................................... 42(a)
Small business, 50% reduction........................41(h)
Small entity, 50% reduction ..................... 41(h), 133
To witness interference cases................................24
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 Filing application by other than inventor ................... 118
Filing date requirements............................................111
Filing fee, Amount of............................................41(a)1
Foreign applications:....................................................11
License to file required.......................................184
Penalty for filing without license................185, 186
License to file required.......................................184
Penalty for filing without license................185, 186
Foreign countries, exchange of printed copies of patents
and published application of patents with....................11
Foreign country, knowledge of use in, not used to
establish date of invention..................................102, 104
Foreign patentee: ............................. 119(a)-(d), 365, 373
Jurisdiction..........................................................293
Service................................................................293
Jurisdiction..........................................................293
Service................................................................293
Foreign patents:...............................119(a)-(d), 365, 373
Copies of, exchanged for United States patents and
published application of patents...........................11
Prior, effect on United States application for
patent...................................................................102
Copies of, exchanged for United States patents and
published application of patents...........................11
Prior, effect on United States application for
patent...................................................................102
Foreign priority................................119(a)-(d), 365, 373
Fraudulent statements .............................. 18 U.S.C. 1001
Funding agreement, defined ....................................... 200
G
Government interests in patents.................................267
H
Holiday, time for action expiring on............................21
I
Importation of products made by a patented process..295
Improvements, patents may be granted for................101
Indexes of patents and patentees, printing of...............10
Infringement, patent: Action for................................281
Attorney fees ....................................................... 285
By United States, time limitation in suit for.......286
Clerk of court to notify United States Patent and
Trademark Office of suit.....................................290
Contributory........................................................271
Damages for ........................................................ 284
Defenses in suit for.....................................273, 282
Defined...............................................................271
Design patent ...................................................... 289
Injunction............................................................283
Notice of, necessary to recovery of damages.....287
Pleading defense and special matters to be proved in
suit.......................................................................282Suit for, when a claim is invalid .......................... 288
Temporary presence in United States.................272
Time limitation ................................................... 286
Attorney fees ....................................................... 285
By United States, time limitation in suit for.......286
Clerk of court to notify United States Patent and
Trademark Office of suit.....................................290
Contributory........................................................271
Damages for ........................................................ 284
Defenses in suit for.....................................273, 282
Defined...............................................................271
Design patent ...................................................... 289
Injunction............................................................283
Notice of, necessary to recovery of damages.....287
Pleading defense and special matters to be proved in
suit.......................................................................282
Suit for, when a claim is invalid .......................... 288
Temporary presence in United States.................272
Time limitation ................................................... 286
Injunctions may be granted by court having
jurisdiction.................................................................283
Insane persons, patent applications of.......................117
Interference, patent: ................... 351, 365, 366, 367, 375
Agreements, between parties, relating to termination,
to be filed in Patent and Trademark Office.........135
Appeal to court...................................................141
Arbitration...........................................................135
Determination of priority............................102, 135
Parties to be notified of.......................................135
Review of decision by civil action..............145, 146
Rules for taking testimony....................................23
Agreements, between parties, relating to termination,
to be filed in Patent and Trademark Office.........135
Appeal to court...................................................141
Arbitration...........................................................135
Determination of priority............................102, 135
Parties to be notified of.......................................135
Review of decision by civil action..............145, 146
Rules for taking testimony....................................23
International application ............ 351, 365, 366, 367, 375
Fees.....................................................................376
National phase in United States..........................371
Priority rights ...................................................... 365
Fees.....................................................................376
National phase in United States..........................371
Priority rights ...................................................... 365
Interfering patent: ............................... 351, 361, 362, 371
How set aside......................................................291
Jurisdiction, plurality of parties, foreign party...146,
291
Relief against ...................................................... 291
How set aside......................................................291
Jurisdiction, plurality of parties, foreign party...146,
291
Relief against ...................................................... 291
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 International Bureau ........................... 351, 361, 362, 371
International Preliminary Examining Authority .....362,
364, 368
International Searching Authority ......351, 362, 364, 368
International studies ...................................................... 2
Intervening rights on reissue......................................252
Invalid patent claim disclaimer .................................. 288
Invalidity of term extension ....................................... 282
Invention date as affected by activity abroad.............104
Invention, defined ...................................................... 100
Invention made abroad...............................................104
Inventions promotion, improper and deceptive..........297
Inventions in outer space............................................105
Inventions patentable ................................................. 101
Inventions previously patented abroad.......................102
Inventive step.............................................................103
Inventor:.....................................................................102
Correction of patent............................................256
Death or incapacity ............................................. 117
May obtain patent...............................................101
Oath for joint ....................................................... 116
Refuses to sign....................................................118
To make application ............................................ 111
Correction of patent............................................256
Death or incapacity ............................................. 117
May obtain patent...............................................101
Oath for joint ....................................................... 116
Refuses to sign....................................................118
To make application ............................................ 111
Inventor’s certificate as reference .............................. 102
Inventor’s certificate priority right.............................119
Issue of patent............................................................151
Issue fee.......................................................................41
If not paid within three months, patent
withheld..............................................................151
Nonpayment .................................................. 41, 151
Payment of..........................................................151
If not paid within three months, patent
withheld..............................................................151
Nonpayment .................................................. 41, 151
Payment of..........................................................151
J
Joinder of parties in patent cases...............................299
Joint inventors .................................................... 116, 256
Joint owners ............................................................... 262
Jurisdiction of District Court for the Eastern District of
Virginia........................................................................32
K
Knowledge or use in foreign country no bar to
patent..........................................................................102L
Legal representative of dead or incapacitated
inventor ...................................................................... 117
Liability of States.......................................................296
Libraries, public, copies of patents and published
applications for patents for.....................................12, 41
Library............................................................................7
License for foreign filing...........................................184
Limitation on damages...............................154, 286, 287
M
Machines patentable ................................................... 100
Maintenance fees ..................................................... 41(b)
Late payment .................................................... 41(c)
Late payment .................................................... 41(c)
Manufactures patentable ............................................ 101
Marking articles falsely as patented...........................292
Marking articles patented...........................................287
Micro entity defined...................................................123
Misjoinder of inventor ................................ 116, 202, 256
Mistake in patent, certificate thereof issued......254, 255
Model, shall be furnished if required.........................114
Money:.......................................................................112
Paid by mistake or in excess, refunded.................42
Received for fees, etc. to be paid into Treasury.....42
Paid by mistake or in excess, refunded.................42
Received for fees, etc. to be paid into Treasury.....42
Multiple dependent claim..........................................112
Fee......................................................................... 41
Fee......................................................................... 41
Mutilation of records ............................... 18 U.S.C. 2071
N
National Security ..........................................3, 122, 181
National stage of international application .....371, 372,
373
New matter inadmissible in reissue...........................251
New matter, may not be introduced by amendment...132
Nonjoinder of inventor ............................................... 256
Nonobviousness.........................................................103
Nonprofit organization, defined ................................. 200
Nonresident patentee .................................................. 293
Notice as regards patents:..........................................102
As to proof in infringement suits........................282
Of allowance of patent........................................151
Of appeal to the Court of Appeals for the Federal
Circuit ......................................................... 142, 143
Of interference .................................................... 135
Of patent suit, decision to be given United States
Patent and Trademark Office by clerk of court...290
Of rejection of an application.............................132
Of suit to be entered on file of patent.................290
To the public by Federal agency.........................209
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 To the public that invention is patented..............287
As to proof in infringement suits........................282
Of allowance of patent........................................151
Of appeal to the Court of Appeals for the Federal
Circuit ......................................................... 142, 143
Of interference .................................................... 135
Of patent suit, decision to be given United States
Patent and Trademark Office by clerk of court...290
Of rejection of an application.............................132
Of suit to be entered on file of patent.................290
To the public by Federal agency.........................209
To the public that invention is patented..............287
Novelty.......................................................................102
O
Oath in patent application..................................115, 152
Before whom taken in foreign countries ......25, 115
Before whom taken in the United States............115
Declaration in lieu of............................................25
Joint inventors ..................................................... 116
Must be made by inventor, if living....................115
Requirements of .................................................. 115
To be made by legal representative if inventor is dead
or incapacitated ................................................... 117
Before whom taken in foreign countries ......25, 115
Before whom taken in the United States............115
Declaration in lieu of............................................25
Joint inventors ..................................................... 116
Must be made by inventor, if living....................115
Requirements of .................................................. 115
To be made by legal representative if inventor is dead
or incapacitated ................................................... 117
Obviousness...............................................................103
Officer of United States Patent and Trademark Office
may attest patents ....................................................... 153
Officers and employees:............................................262
Of United States Patent and Trademark Office......3
Of United States Patent and Trademark Office,
restrictions on as to interests in patents..................4
Of United States Patent and Trademark Office......3
Of United States Patent and Trademark Office,
restrictions on as to interests in patents..................4
Official Gazette: ......................................................... 262
Exchange for publications....................................11
Printing and distribution of ................................... 11
Public Advisory Committee Report........................5
Exchange for publications....................................11
Printing and distribution of ................................... 11
Public Advisory Committee Report........................5
Owners, joint .............................................................. 262
Ownership assignment ............................................... 261
P
Paris Convention ........................................................ 119Patent and Trademark Office: See United States Patent
and Trademark Office..................................................41
Patent Cooperation Treaty:..........................................41
Definitions .......................................................... 351
Definitions .......................................................... 351
Patent fees .................................................................... 41
Disposition of ........................................................ 42
Disposition of ........................................................ 42
Patent laws, printing of................................................10
Patent pending, false marking as...............................292
Patent Public Advisory Committee............................3, 5
Appointment, timing and basis ............................... 5
Duties......................................................................5
Consultation with Director.................................3, 5
Appointment, timing and basis ............................... 5
Duties......................................................................5
Consultation with Director.................................3, 5
Patent term adjustment...............................................154
Patent term extension.................................................155
Patent term extension application..............................156
Patent term restoration............................................155A
Patentability, conditions for ............................... 102, 103
Patentable inventions ................................................. 101
Patented article, marked as such................................287
Patentee: .............................................................  200-212
Defined...............................................................100
Notified of interference ....................................... 135
Defined...............................................................100
Notified of interference ....................................... 135
Patents: ...............................................................  200-212
Application for .................................................... 111
Assignment of ..................................................... 261
Based on international application......................375
Certified copies of...................................................9
Classification of ...................................................... 8
Contents and duration of.....................................154
Copies supplied to public libraries.................12, 41
Copying claim of................................................135
Date, duration, and form.....................................154
Design (See Design patents)...............................135
135
Effect of adverse interference decision...............135
Exchange of printed copies with foreign
countries................................................................11
Fee on issuing ....................................................... 41
Filing application in foreign country .................. 184
For what granted.................................................101
Foreign knowledge or use no bar to grant of......102
How issued, attested, and recorded ..................... 153
May be granted to assignee.................................152
May be withheld in certain cases........................181
Obtainable by civil action...................................145
Personal property................................................261
Presumption of validity.......................................282
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 Price of copies ................................................ 41(a)9
Printing of ............................................................. 10
Reissuing of, when defective..............................251
Rights of invention made with federal
assistance ................................................... 200 - 212
Restrictions on officers and employees of United
States Patent and Trademark Office as to interest
in............................................................................. 4
Surrender of, to take effect on reissue................251
Term ......................................... 154, 155, 166A, 156
Term adjustment.................................................154
Term extension............................................155, 156
Term restoration ............................................... 155A
Time of issue, payment of issue fee....................151
To be authenticated by seal of United States Patent
and Trademark Office.............................................2
When to issue ...................................................... 151
Withheld for nonpayment of issue fee................151
Application for .................................................... 111
Assignment of ..................................................... 261
Based on international application......................375
Certified copies of...................................................9
Classification of ...................................................... 8
Contents and duration of.....................................154
Copies supplied to public libraries.................12, 41
Copying claim of................................................135
Date, duration, and form.....................................154
Design (See Design patents)...............................135
135
Effect of adverse interference decision...............135
Exchange of printed copies with foreign
countries................................................................11
Fee on issuing ....................................................... 41
Filing application in foreign country .................. 184
For what granted.................................................101
Foreign knowledge or use no bar to grant of......102
How issued, attested, and recorded.....................153
May be granted to assignee.................................152
May be withheld in certain cases........................181
Obtainable by civil action...................................145
Personal property................................................261
Presumption of validity.......................................282
Price of copies ................................................ 41(a)9
Printing of ............................................................. 10
Reissuing of, when defective..............................251
Rights of invention made with federal
assistance ................................................... 200 - 212
Restrictions on officers and employees of United
States Patent and Trademark Office as to interest
in............................................................................. 4
Surrender of, to take effect on reissue................251
Term ......................................... 154, 155, 166A, 156
Term adjustment.................................................154
Term extension ............................................ 155, 156
Term restoration ............................................... 155A
Time of issue, payment of issue fee....................151To be authenticated by seal of United States Patent
and Trademark Office.............................................2
When to issue ...................................................... 151
Withheld for nonpayment of issue fee................151
Patent rights in inventions made with Federal.... 200-212
200-212
assistance ...........................................................  200-212
Confidentiality....................................................205
Definitions .......................................................... 201
Disposition of rights...........................................202
Domestic and foreign protection of federally owned
inventions............................................................207
Educational awards ............................................. 212
March-in rights...................................................203
Policy and objective of........................................200
Precedence of chapter over other Acts ................ 210
Preference for United States industry.................204
Regulations governing federal licensing.............208
Relationship to antitrust laws..............................211
Restrictions on licensing of federally owned
inventions............................................................209
Uniform clauses and regulations........................206
Confidentiality....................................................205
Definitions .......................................................... 201
Disposition of rights...........................................202
Domestic and foreign protection of federally owned
inventions............................................................207
Educational awards ............................................. 212
March-in rights...................................................203
Policy and objective of........................................200
Precedence of chapter over other Acts ................ 210
Preference for United States industry.................204
Regulations governing federal licensing.............208
Relationship to antitrust laws..............................211
Restrictions on licensing of federally owned
inventions............................................................209
Uniform clauses and regulations........................206
Period for response .............................................. 21, 133
Photolithography, Headings of drawings printed.........10
Plant patents: .............................................................. 282
Claim ........................................................... 162, 164
Description .................................................. 162, 163
Fees.......................................................................41
Nature of right.....................................................163
Plants patentable ................................................. 161
Secretary of Agriculture to furnish information and
detail employees ................................................. 164
Claim ........................................................... 162, 164
Description .................................................. 162, 163
Fees.......................................................................41
Nature of right.....................................................163
Plants patentable ................................................. 161
Secretary of Agriculture to furnish information and
detail employees ................................................. 164
Pleading and proof in action for infringement...........282
Postal Service deposit..................................................21
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 Practical application, defined.....................................200
Pre-issuance opposition, when prohibited ................122
Presumption of product made by patented process.....295
Presumption of validity of patents.............................282
Printed publication bar to a patent.............................102
Printing:.......................................................................10
Decisions in patent cases......................................10
Of papers filed......................................................22
United States Patent and Trademark Office..........10
Decisions in patent cases......................................10
Of papers filed......................................................22
United States Patent and Trademark Office..........10
Printing headings of drawings by United States Patent
and Trademark Office..................................................10
Prior art, citation of .................................................... 301
Prior patenting or publication bar to patent...............102
Priority, foreign .................................................. 119, 365
Priority of invention ................................................... 102
Priority of invention, determined by Board of Patent
Appeals and Interferences..........................................135
Priority, right of, under treaty or law.........................119
For design applications.......................................172
For design applications.......................................172
Process defined..........................................................100
Process Patent Amendment Act of 1988....................287
Process patentable......................................................101
Product made by patent process.................................295
Property of United States Patent and Trademark
Office.............................................................................2
Provisional applications .................................... 111, 119
Provisional rights ...................................................... 154
Protest and pre-issuance opposition, when prohibited
.................................................................................... 122
Public use or sale.......................................................102
Of invention bar to a patent................................102
Of invention bar to a patent................................102
Publication of international application, effect..........374
Publication of patent applications......................122, 181
Publications regarding patents and trademarks............10
R
Receiving Office ........................ 351, 361, 364, 367, 368
Recording of assignments .......................................... 261
Reexamination order by Director.......................304, 313
Reexamination procedure .......................................... 132
Appeal ......................................... 134, 141, 306, 315
Certificate of patentability, unpatentability, and claim
cancellation ................................................. 307, 316
Conduct of reexamination proceedings......305, 314
Determination of issue by Director.............303, 312
Determination of new question...................303, 312
Ex Parte ....................................................... 302-307
Inter Partes ................................................... 311-318
When prohibited....................................................317
When prohibited........................................................317Request ....................................................... 302, 311
Special dispatch..........................................305, 314
Stay of litigation.................................................318
Appeal ......................................... 134, 141, 306, 315
Certificate of patentability, unpatentability, and claim
cancellation ................................................. 307, 316
Conduct of reexamination proceedings......305, 314
Determination of issue by Director.............303, 312
Determination of new question...................303, 312
Ex Parte ....................................................... 302-307
Inter Partes ................................................... 311-318
When prohibited....................................................317
When prohibited........................................................317
Request ....................................................... 302, 311
Special dispatch..........................................305, 314
Stay of litigation.................................................318
Reexamination to be made after first rejection, if
desired........................................................................132
References, to be cited on examination.....................132
Refund of money paid by mistake or in excess...........42
Reissue of patents:.....................................................132
Application fee ............................................... 41(a)4
Application may be made by assignee in certain
cases....................................................................251
By reason of defective claims.............................251
Effect of..............................................................252
For unexpired term of original patent.................251
Intervening rights ................................................ 252
Of defective patents ............................................ 251
To contain no new matter....................................251
Application fee ............................................... 41(a)4
Application may be made by assignee in certain
cases....................................................................251
By reason of defective claims.............................251
Effect of..............................................................252
For unexpired term of original patent.................251
Intervening rights ................................................ 252
Of defective patents ............................................ 251
To contain no new matter....................................251
Rejection, applicant shall be notified of reasons for...132
Remedy for infringement of patent............................281
Removal of records.................................18 U.S.C. 2071
Report to Congress, annual .......................................... 13
Request for reexamination proceeding..............302, 311
Restoration of patent...............................................155A
Restrictions on officers and employees of United States
Patent and Trademark Office as to interest in patents .....4
Retention of revenue ...................................................... 2
Revival if delay unavoidable......................................133
Right of foreign priority.............................................365
Right to compensation because of secrecy order.......183
Rules for taking testimony, Director to establish.........23
Rules of practice:.............................................................
Authority for ........................................................... 2
Printing of ............................................................. 10
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 Authority for ........................................................... 2
Printing of ............................................................. 10
S
Saturday, time for action expiring on...........................21
Seal of United States Patent and Trademark Office.......2
Secrecy of applications .............................................. 122
Secrecy of certain inventions............................181 - 188
Secrecy of international application...........................368
Secrecy order.............................................................181
Small business firm, defined......................................200
Small entity status....................................................2, 41
Specification(s):.........................................................114
Contents of .......................................................... 112
If defective, reissue to correct.............................251
Part of patent.......................................................154
Printing of ....................................................... 10, 41
Uncertified copies, price of ................................... 41
Contents of .......................................................... 112
If defective, reissue to correct.............................251
Part of patent.......................................................154
Printing of ....................................................... 10, 41
Uncertified copies, price of ................................... 41
Specimens, may be required......................................114
Statutory invention registration..................................157
Subpoenas to witnesses ................................................ 24
Suit against the United States....................................286
Suit in equity (See Civil action)...................................21
21
Sunday, time for action expiring on.............................21
Surcharge for later filing of fee or oath.....................111
T
Term extension: ............................................................ 23
For administrative delays....................................154
For delays due to interference, secrecy orders, and/or
appellate review .................................................. 154
Regulatory review ............................................... 156
For administrative delays....................................154
For delays due to interference, secrecy orders, and/or
appellate review .................................................. 154
Regulatory review ............................................... 156
Term of patent:.............................................................23
Design.................................................................173
Disclaimer of......................................................253
Extension .................................................... 155, 156
Period..................................................................154
Restoration.......................................................155A
Design.................................................................173
Disclaimer of......................................................253
Extension .................................................... 155, 156
Period..................................................................154
Restoration.......................................................155A
Testimony, rules for taking...........................................23
Time:..........................................................................154Expiring on Saturday, Sunday, or holiday............21
For payment of issue fee.....................................151
For taking action in Government cases...............267
Limitation on damages ....................................... 286
Within which action must be taken.....................133
Expiring on Saturday, Sunday, or holiday............21
For payment of issue fee.....................................151
For taking action in Government cases...............267
Limitation on damages ....................................... 286
Within which action must be taken.....................133
Title of invention........................................................154
Trademark fees ........................................................ 42(c)
Trademarks, reference to .................................. 1, 2, 3, 10
Translation error in international application.............375
U
Unauthorized disclosure ............................................. 182
Unauthorized person may not lawfully assist persons in
transaction of business before the Office.....................33
Under Secretary of Commerce for Intellectual
Property..........................................................................6
United States as designated office.............................363
United States, defined................................................100
United States Patent and Trademark Office:..............292
In Department of Commerce..................................1
Library....................................................................7
Printing.................................................................10
Rules, authority for.................................................2
Seal of ..................................................................... 2
In Department of Commerce..................................1
Library....................................................................7
Printing.................................................................10
Rules, authority for.................................................2
Seal of ..................................................................... 2
Unpatented article, penalty for deceptive marking.....292
Use in foreign countries, no bar to grant of patent.....102
V
Verified translation requirement ................................ 372
V oluntary arbitration .................................................. 294
W
Withdrawal of international application.....................366
Withholding of patent................................................181
Witness:............................................................................
Failing to attend or refusing to testify...................24
Fees of, interference cases....................................24
In interference summoned by clerk of United States
court...................................................................... 24
When in contempt, punishment............................24
Failing to attend or refusing to testify...................24
Fees of, interference cases....................................24
In interference summoned by clerk of United States
court......................................................................24
When in contempt, punishment............................24
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