35 U.S.C. § 1 (PATENTS)
§ 1. Establishment
(a) Establishment.—
The United States Patent and Trademark Office is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the United States Patent and Trademark Office shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable provisions of law. Those operations designed to grant and issue patents and those operations which are designed to facilitate the registration of trademarks shall be treated as separate operating units within the Office.
(b) Offices.—
The United States Patent and Trademark Office shall maintain its principal office in the metropolitan Washington, D.C., area, for the service of process and papers and for the purpose of carrying out its functions. The United States Patent and Trademark Office shall be deemed, for purposes of venue in civil actions, to be a resident of the district in which its principal office is located, except where jurisdiction is otherwise provided by law. The United States Patent and Trademark Office may establish satellite offices in such other places in the United States as it considers necessary and appropriate in the conduct of its business.
(c) Reference.—
For purposes of this title, the United States Patent and Trademark Office shall also be referred to as the “Office” and the “Patent and Trademark Office”.
(July 19, 1952, ch. 950, 66 Stat. 792; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4711], Nov. 29, 1999, 113 Stat. 1536, 1501A–572.)
heading: Historical and Revision Notes
text: Based on Title 35, U.S.C., 1946 ed., § 1 (R.S. 475 and Executive Order 4175, Mar. 17, 1925).
The word “all” is omitted from the corresponding section of the existing statute and “except as otherwise provided by law” added, since some old records are kept in the National Archives, see 44 U.S.C., 1946 ed., ch. 8A.
The word “models” has been omitted to remove emphasis on models since they are no longer generally required. They are included by the word “things.”
The phrase “and to trade-mark registrations” is added. There is no enactment corresponding to this section in the trade-mark law. The original chapter of the Revised Statutes containing this section deals with the Patent Office as such in its administration of trade-marks as well as patents. This is explicitly brought out in some of the corresponding sections of the present chapter. Changes in language are made.
heading: Amendments
text: 1999—Pub. L. 106–113 reenacted section catchline without change and amended text generally. Prior to amendment, text read as follows: “The Patent and Trademark Office shall continue as an office in the Department of Commerce, where records, books, drawings, specifications, and other papers and things pertaining to patents and to trademark registrations shall be kept and preserved, except as otherwise provided by law.”
1975—Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office”.
heading: Change of Name
text: Pub. L. 93–596, § 3, Jan. 2, 1975, 88 Stat. 1949, provided that: “The terms ‘Patent Office’ and ‘Commissioner of Patents’ in all laws of the United States shall mean ‘Patent and Trademark Office’ and ‘Commissioner of Patents and Trademarks’, respectively.”
heading: Effective Date of 2011 Amendment
text: Pub. L. 112–29, § 35, Sept. 16, 2011, 125 Stat. 341, provided that: “Except as otherwise provided in this Act [see Short Title of 2011 Amendment note below], the provisions of this Act shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent issued on or after that effective date.”
heading: Effective Date of 1999 Amendment
text: Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle G, § 4731], Nov. 29, 1999, 113 Stat. 1536, 1501A–581, provided that: “This subtitle [see Tables for classification] and the amendments made by this subtitle shall take effect 4 months after the date of the enactment of this Act [Nov. 29, 1999].”
heading: Effective Date of 1975 Amendment
text: Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade.
heading: Short Title of 2012 Amendment
text: Pub. L. 112–211, § 1, Dec. 18, 2012, 126 Stat. 1527, provided that: “This Act [enacting part V and sections 27 and 151 of this title, amending sections 41, 100, 102, 111, 115, 119, 120, 122, 133, 154, 171, 173, 261, 361, 364 to 366, and 371 of this title, repealing section 151 of this title, and enacting provisions set out as notes under sections 27 and 100 of this title] may be cited as the ‘Patent Law Treaties Implementation Act of 2012’.”
heading: Short Title of 2011 Amendment
text: Pub. L. 112–29, § 1(a), Sept. 16, 2011, 125 Stat. 284, provided that: “This Act [enacting chapter 32 and sections 123, 257, 298, 299, and 319 of this title and section 1454 of Title 28, Judiciary and Judicial Procedure, amending sections 2, 3, 6, 12, 32, 41, 42, 100, 102 to 104, 111, 112, 115, 116, 118 to 123, 132, 134, 135, 141, 143, 145, 146, 154, 156, 157, 162, 172, 182 to 186, 202, 207, 209, 210, 251, 253, 256, 257, 267, 273, 282, 284, 287, 288, 291 to 294, 301 to 307, 311 to 318, 328, 363, 365, 368, and 371 to 375 of this title, section 1071 of Title 15, Commerce and Trade, sections 1295 and 1338 of Title 28, section 2182 of Title 42, The Public Health and Welfare, and section 20135 of Title 51, National and Commercial Space Programs, repealing sections 155 and 155A of this title, enacting provisions set out as notes under this section, sections 2, 6, 32, 41, 42, 100 to 102, 111, 119, 122, 156, 202, 257, 273, 287, 292, 301, 303, 306, 311, 312, and 321 of this title, section 1071 of Title 15, and section 1295 of Title 28, and amending provisions set out as a note under section 41 of this title] may be cited as the ‘Leahy-Smith America Invents Act’.”
heading: Short Title of 2004 Amendment
text: Pub. L. 108–453, § 1, Dec. 10, 2004, 118 Stat. 3596, provided that: “This Act [amending section 103 of this title and enacting provisions set out as a note under section 103 of this title] may be cited as the ‘Cooperative Research and Technology Enhancement (CREATE) Act of 2004’.”
heading: Short Title of 2002 Amendment
text: Pub. L. 107–273, div. C, title III, § 13201, Nov. 2, 2002, 116 Stat. 1901, provided that: “This subtitle [subtitle B (§§ 13201–13211) of title III of div. C of Pub. L. 107–273, see Tables for classification] may be cited as the ‘Intellectual Property and High Technology Technical Amendments Act of 2002’.”
heading: Short Title of 1999 Amendment
text: Pub. L. 106–113, div. B, § 1000(a)(9) [§ 1(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–521, provided that: “This Act [S. 1948, as enacted by section 1000(a)(9) of Pub. L. 106–113, see Tables for classification] may be cited as the ‘Intellectual Property and Communications Omnibus Reform Act of 1999’.”
Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4001], Nov. 29, 1999, 113 Stat. 1536, 1501A–552, provided that: “This title [see Tables for classification] may be cited as the ‘American Inventors Protection Act of 1999’.”
Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle A, § 4101], Nov. 29, 1999, 113 Stat. 1536, 1501A–552, provided that: “This subtitle [enacting section 297 of this title and provisions set out as a note under section 297 of this title] may be cited as the ‘Inventors’ Rights Act of 1999’.”
Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle B, § 4201], Nov. 29, 1999, 113 Stat. 1536, 1501A–554, provided that: “This subtitle [amending sections 41 and 42 of this title and enacting provisions set out as notes under section 41 of this title and section 1113 of Title 15, Commerce and Trade] may be cited as the ‘Patent and Trademark Fee Fairness Act of 1999’.”
Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle C, § 4301], Nov. 29, 1999, 113 Stat. 1536, 1501A–555, provided that: “This subtitle [enacting section 273 of this title and provisions set out as a note under section 273 of this title] may be cited as the ‘First Inventor Defense Act of 1999’.”
Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle D, § 4401], Nov. 29, 1999, 113 Stat. 1536, 1501A–557, provided that: “This subtitle [amending sections 132, 154, 156, and 282 of this title and section 1295 of Title 28, Judiciary and Judicial Procedure, and enacting provisions set out as notes under sections 132 and 154 of this title] may be cited as the ‘Patent Term Guarantee Act of 1999’.”
Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle E, § 4501], Nov. 29, 1999, 113 Stat. 1536, 1501A–561, provided that: “This subtitle [amending sections 11 to 13, 102, 119, 120, 122, 135, 154, 181, 252, 284, and 374 of this title and enacting provisions set out as notes under sections 11, 41, and 122 of this title] may be cited as the ‘Domestic Publication of Foreign Filed Patent Applications Act of 1999’.”
Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle F, § 4601], Nov. 29, 1999, 113 Stat. 1536, 1501A–567, provided that: “This subtitle [enacting chapter 31 of this title, amending sections 41, 100, 134, 141, 143, and 145 of this title, and enacting provisions set out as notes under sections 41, 311, and 315 of this title] may be cited as the ‘Optional Inter Partes Reexamination Procedure Act of 1999’.”
Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle G, § 4701], Nov. 29, 1999, 113 Stat. 1536, 1501A–572, provided that: “This subtitle [see Tables for classification] may be cited as the ‘Patent and Trademark Office Efficiency Act’.”
heading: Short Title of 1998 Amendments
text: Pub. L. 105–358, § 1, Nov. 10, 1998, 112 Stat. 3272, provided that: “This Act [amending sections 41 and 42 of this title and enacting provisions set out as a note under section 41 of this title] may be cited as the ‘United States Patent and Trademark Office Reauthorization Act, Fiscal Year 1999’.”
Pub. L. 105–289, § 1, Oct. 27, 1998, 112 Stat. 2780, provided that: “This Act [amending section 163 of this title and enacting provisions set out as notes under sections 41 and 163 of this title] may be cited as the ‘Plant Patent Amendments Act of 1998’.”
heading: Short Title of 1988 Amendment
text: Pub. L. 100–418, § 9001, Aug. 23, 1988, 102 Stat. 1563, provided that: “This subtitle [subtitle A (§§ 9001–9007) of title IX of Pub. L. 100–418, enacting section 295 of this title, amending sections 154, 271, and 287 of this title, and enacting provisions set out as notes under section 271 of this title] may be cited as the ‘Process Patent Amendments Act of 1988’.”
Pub. L. 100–418, title IX, § 9101(a), Aug. 23, 1988, 102 Stat. 1567, provided that: “This section [amending sections 184 to 186 of this title and enacting provisions set out as notes under section 184 of this title] may be cited as the ‘Patent Law Foreign Filing Amendments Act of 1988’.”
heading: Short Title of 1984 Amendment
text: Pub. L. 98–622, § 1, Nov. 8, 1984, 98 Stat. 3383, provided that: “This Act [enacting section 157 of this title, amending sections 3, 7, 41, 103, 104, 116, 120, 134, 135, 141, 145, 146, 271, 305, 351, 361, 362, 365 to 368, 371 to 373, and 376 of this title, section 1295 of Title 28, Judiciary and Judicial Procedure, and sections 2182 and 2457 of Title 42, The Public Health and Welfare, and enacting provisions set out as notes under sections 7, 41, 103, 157, and 351 of this title] may be cited as the ‘Patent Law Amendments Act of 1984’.”
heading: Transfer of Functions and Assets of Patent and Trademark Office
text: Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle G, chapter 3], Nov. 29, 1999, 113 Stat. 1536, 1501A–585, provided that:
“SEC. 4741. REFERENCES.
“(a) In General.—
Any reference in any other Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to a department or office from which a function is transferred by this subtitle [see Tables for classification]—
“(1) to the head of such department or office is deemed to refer to the head of the department or office to which such function is transferred; or
“(2) to such department or office is deemed to refer to the department or office to which such function is transferred.
“(b) Specific References.—
Any reference in any other Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Patent and Trademark Office—
“(1) to the Commissioner of Patents and Trademarks is deemed to refer to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office;
“(2) to the Assistant Commissioner for Patents is deemed to refer to the Commissioner for Patents; or
“(3) to the Assistant Commissioner for Trademarks is deemed to refer to the Commissioner for Trademarks.
“SEC. 4742. EXERCISE OF AUTHORITIES.
“Except as otherwise provided by law, a Federal official to whom a function is transferred by this subtitle may, for purposes of performing the function, exercise all authorities under any other provision of law that were available with respect to the performance of that function to the official responsible for the performance of the function immediately before the effective date of the transfer of the function under this subtitle.
“SEC. 4743. SAVINGS PROVISIONS.
“(a) Legal Documents.—
All orders, determinations, rules, regulations, permits, grants, loans, contracts, agreements, certificates, licenses, and privileges—
“(1) that have been issued, made, granted, or allowed to become effective by the President, the Secretary of Commerce, any officer or employee of any office transferred by this subtitle, or any other Government official, or by a court of competent jurisdiction, in the performance of any function that is transferred by this subtitle; and
“(2) that are in effect on the effective date of such transfer (or become effective after such date pursuant to their terms as in effect on such effective date), shall continue in effect according to their terms until modified, terminated, superseded, set aside, or revoked in accordance with law by the President, any other authorized official, a court of competent jurisdiction, or operation of law.
“(b) Proceedings.—
This subtitle shall not affect any proceedings or any application for any benefits, service, license, permit, certificate, or financial assistance pending on the effective date of this subtitle [see Effective Date of 1999 Amendment note above] before an office transferred by this subtitle, but such proceedings and applications shall be continued. Orders shall be issued in such proceedings, appeals shall be taken therefrom, and payments shall be made pursuant to such orders, as if this subtitle had not been enacted, and orders issued in any such proceeding shall continue in effect until modified, terminated, superseded, or revoked by a duly authorized official, by a court of competent jurisdiction, or by operation of law. Nothing in this subsection shall be considered to prohibit the discontinuance or modification of any such proceeding under the same terms and conditions and to the same extent that such proceeding could have been discontinued or modified if this subtitle had not been enacted.
“(c) Suits.—
This subtitle shall not affect suits commenced before the effective date of this subtitle, and in all such suits, proceedings shall be had, appeals taken, and judgments rendered in the same manner and with the same effect as if this subtitle had not been enacted.
“(d) Nonabatement of Actions.—
No suit, action, or other proceeding commenced by or against the Department of Commerce or the Secretary of Commerce, or by or against any individual in the official capacity of such individual as an officer or employee of an office transferred by this subtitle, shall abate by reason of the enactment of this subtitle.
“(e) Continuance of Suits.—
If any Government officer in the official capacity of such officer is party to a suit with respect to a function of the officer, and under this subtitle such function is transferred to any other officer or office, then such suit shall be continued with the other officer or the head of such other office, as applicable, substituted or added as a party.
“(f) Administrative Procedure and Judicial Review.—
Except as otherwise provided by this subtitle, any statutory requirements relating to notice, hearings, action upon the record, or administrative or judicial review that apply to any function transferred by this subtitle shall apply to the exercise of such function by the head of the Federal agency, and other officers of the agency, to which such function is transferred by this subtitle.
“SEC. 4744. TRANSFER OF ASSETS.
“Except as otherwise provided in this subtitle, so much of the personnel, property, records, and unexpended balances of appropriations, allocations, and other funds employed, used, held, available, or to be made available in connection with a function transferred to an official or agency by this subtitle shall be available to the official or the head of that agency, respectively, at such time or times as the Director of the Office of Management and Budget directs for use in connection with the functions transferred.
“SEC. 4745. DELEGATION AND ASSIGNMENT.
“Except as otherwise expressly prohibited by law or otherwise provided in this subtitle, an official to whom functions are transferred under this subtitle (including the head of any office to which functions are transferred under this subtitle) may delegate any of the functions so transferred to such officers and employees of the office of the official as the official may designate, and may authorize successive redelegations of such functions as may be necessary or appropriate. No delegation of functions under this section or under any other provision of this subtitle shall relieve the official to whom a function is transferred under this subtitle of responsibility for the administration of the function.
“SEC. 4746. AUTHORITY OF DIRECTOR OF THE OFFICE OF MANAGEMENT AND BUDGET WITH RESPECT TO FUNCTIONS TRANSFERRED.
“(a) Determinations.—
If necessary, the Director of the Office of Management and Budget shall make any determination of the functions that are transferred under this subtitle.
“(b) Incidental Transfers.—
The Director of the Office of Management and Budget, at such time or times as the Director shall provide, may make such determinations as may be necessary with regard to the functions transferred by this subtitle, and to make such additional incidental dispositions of personnel, assets, liabilities, grants, contracts, property, records, and unexpended balances of appropriations, authorizations, allocations, and other funds held, used, arising from, available to, or to be made available in connection with such functions, as may be necessary to carry out the provisions of this subtitle. The Director shall provide for the termination of the affairs of all entities terminated by this subtitle and for such further measures and dispositions as may be necessary to effectuate the purposes of this subtitle.
“SEC. 4747. CERTAIN VESTING OF FUNCTIONS CONSIDERED TRANSFERS.
“For purposes of this subtitle, the vesting of a function in a department or office pursuant to reestablishment of an office shall be considered to be the transfer of the function.
“SEC. 4748. AVAILABILITY OF EXISTING FUNDS.
“Existing appropriations and funds available for the performance of functions, programs, and activities terminated pursuant to this subtitle shall remain available, for the duration of their period of availability, for necessary expenses in connection with the termination and resolution of such functions, programs, and activities, subject to the submission of a plan to the Committees on Appropriations of the House and Senate in accordance with the procedures set forth in section 605 of the Departments of Commerce, Justice, and State, the Judiciary, and Related Agencies Appropriations Act, 1999, as contained in Public Law 105–277 [112 Stat. 2681–111].
“SEC. 4749. DEFINITIONS.
“For purposes of this subtitle—
“(1) the term ‘function’ includes any duty, obligation, power, authority, responsibility, right, privilege, activity, or program; and
“(2) the term ‘office’ includes any office, administration, agency, bureau, institute, council, unit, organizational entity, or component thereof.”
heading: Satellite Offices
text: Pub. L. 112–29, § 23, Sept. 16, 2011, 125 Stat. 336, provided that:
“(a) Establishment.—
Subject to available resources, the Director [Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office] shall, by not later than the date that is 3 years after the date of the enactment of this Act [Sept. 16, 2011], establish 3 or more satellite offices in the United States to carry out the responsibilities of the [United States Patent and Trademark] Office.
“(b) Purposes.—
The purposes of the satellite offices established under subsection (a) are to—
“(1) increase outreach activities to better connect patent filers and innovators with the Office;
“(2) enhance patent examiner retention;
“(3) improve recruitment of patent examiners;
“(4) decrease the number of patent applications waiting for examination; and
“(5) improve the quality of patent examination.
“(c) Required Considerations.—
“(1) In general.—
In selecting the location of each satellite office to be established under subsection (a), the Director—
“(A) shall ensure geographic diversity among the offices, including by ensuring that such offices are established in different States and regions throughout the Nation;
“(B) may rely upon any previous evaluations by the Office of potential locales for satellite offices, including any evaluations prepared as part of the Office’s Nationwide Workforce Program that resulted in the 2010 selection of Detroit, Michigan, as the first satellite office of the Office;
“(C) shall evaluate and consider the extent to which the purposes of satellite offices listed under subsection (b) will be achieved;
“(D) shall consider the availability of scientific and technically knowledgeable personnel in the region from which to draw new patent examiners at minimal recruitment cost; and
“(E) shall consider the economic impact to the region.
“(2) Open selection process.—
Nothing in paragraph (1) shall constrain the Office to only consider its evaluations in selecting the Detroit, Michigan, satellite office.
“(d) Report to Congress.—
Not later than the end of the third fiscal year that begins after the date of the enactment of this Act [Sept. 16, 2011], the Director shall submit a report to Congress on—
“(1) the rationale of the Director in selecting the location of any satellite office required under subsection (a), including an explanation of how the selected location will achieve the purposes of satellite offices listed under subsection (b) and how the required considerations listed under subsection (c) were met;
“(2) the progress of the Director in establishing all such satellite offices; and
“(3) whether the operation of existing satellite offices is achieving the purposes under subsection (b).”
heading: Designation of Detroit Satellite Office
text: Pub. L. 112–29, § 24, Sept. 16, 2011, 125 Stat. 337, provided that:
“(a) Designation.—
The satellite office of the United States Patent and Trademark Office to be located in Detroit, Michigan, shall be known and designated as the ‘Elijah J. McCoy United States Patent and Trademark Office’.
“(b) References.—
Any reference in a law, map, regulation, document, paper, or other record of the United States to the satellite office of the United States Patent and Trademark Office to be located in Detroit, Michigan, referred to in subsection (a) shall be deemed to be a reference to the ‘Elijah J. McCoy United States Patent and Trademark Office’.”
heading: Federal Agency Status for Patent and Trademark Office
text: Pub. L. 101–508, title X, § 10102, Nov. 5, 1990, 104 Stat. 1388–392, provided that: “For the purposes of Federal law, the Patent and Trademark Office shall be considered a Federal agency. In particular, the Patent and Trademark Office shall be subject to all Federal laws pertaining to the procurement of goods and services that would apply to a Federal agency using appropriated funds, including the Federal Property and Administrative Services Act of 1949 [now chapters 1 to 11 of Title 40, Public Buildings, Property, and Works, and division C (except sections 3302, 3307(e), 3501(b), 3509, 3906, 4710, and 4711) of subtitle I of Title 41, Public Contracts] and the Office of Federal Procurement Policy Act [now division B (except sections 1123, 2303, 2304, and 2313) of subtitle I of Title 41].”
heading: Definitions
text: Pub. L. 112–29, § 2, Sept. 16, 2011, 125 Stat. 284, provided that:
“In this Act [see Short Title of 2011 Amendment note above]:
“(1) Director.—
The term ‘Director’ means the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.
“(2) Office.—
The term ‘Office’ means the United States Patent and Trademark Office.
“(3) Patent public advisory committee.—
The term ‘Patent Public Advisory Committee’ means the Patent Public Advisory Committee established under section 5(a) of title 35, United States Code.
“(4) Trademark act of 1946.—
The term ‘Trademark Act of 1946’ means the Act entitled ‘An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes’, approved July 5, 1946 (15 U.S.C. 1051 et seq.) (commonly referred to as the ‘Trademark Act of 1946’ or the ‘Lanham Act’).
“(5) Trademark public advisory committee.—
The term ‘Trademark Public Advisory Committee’ means the Trademark Public Advisory Committee established under section 5(a) of title 35, United States Code.”