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Legislative Watch |
| America Invents Act of 2011 - Law of the Land |
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2011 PATENT STATUTE REVISIONS PASSED BY HOUSE AND
SENATE For searchable PDF, link here A combined markup of Title 35 (Parts I – III in full)
showing House and Senate changes headed for conference committee. Source: HR 1249 as passed the House of Representatives
on June 23 2011; S 23 as passed the Senate on March 8, 2011.
This document can be used to
independently judge the effect of the changes on your practice. Included are, for example a 15% surcharge on
all PTO fees, and a surcharge of $400 for paper filings, special fees for prioritized
examination, special micro-entity fees for universities, patent invalidity
review on preponderance of evidence standard, repeal of 103(c),
first-to-invent, non-patentability of human organisms and tax schemes,
post-issue ex-parte supplemental prosecution/amendment without surrender of
enforceability of patent, end of most false marking litigation, PTO
self-funding, prior use defense, post-grant review, and much more. It’s all here, including effective dates
following enactment. As marked herein by red typeface, shown are amendments by the House under “Leahy-Smith
America Invents Act”: insertions
by underlining; Bills are awaiting reconciliation
before President’s signature. This post
will be updated when the final version emerges.
Areas not yet resolved are not numerous, and enactment is expected this
year. A summary of changes made to Part
IV and linked Titles is attached as Appendix I – Kal K Lambert, 12 July 2011 Title
35—PATENTS Part I. United States Patent and Trademark Office II. Patentability of Inventions and Grant of Patents III. Patents and Protection of Patent Rights PART I—UNITED STATES PATENT AND TRADEMARK OFFICE Chap. 1. Establishment, Officers and Employees, Functions 2. Proceedings in the Patent and Trademark Office 3. Practice Before Patent and Trademark Office 4.
Patent Fees; Funding; Search Systems
CHAPTER 1—ESTABLISHMENT, OFFICERS AND EMPLOYEES,
FUNCTIONS §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”. [Federal Agency Status for
Patent and Trademark Office As related to funding status of USPTO, 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 title
III of the Act of June 30, 1949 (41 U.S.C. 251 et seq.)] and the Office of
Federal Procurement Policy Act [41 U.S.C. 401 et seq.].” Current bill, at least temporaily, places
USPTO receipts in a Revolving Account for use of the agency.]
§2. Powers and duties (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) (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; [PRIORITY EXAMINATION FOR IMPORTANT
TECHNOLOGIES: EFFECTIVE DATE.—This section shall take effect
on the date of the enactment of this Act.] (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, maintenance, or management and operation of facilities, and contracts for supplies or services, without regard to the provisions of subtitle I and chapter 33 of title 40, title III of the Federal Property and Administrative Services Act of 1949 (41 U.S.C. 251 et seq.), and the McKinney-Vento Homeless Assistance Act (42 U.S.C. 11301 et seq.); and (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, 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; (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 (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. §3. Officers and employees (a) Under Secretary and Director.— (1) In general.—The powers and duties of the United States Patent and Trademark Office shall be vested in an Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (in this title referred to as the “Director”), who shall be a citizen of the United States and who shall be appointed by the President, by and with the advice and consent of the Senate. The Director shall be a person who has a professional background and experience in patent or trademark law. (2) Duties.— (A) In general.—The Director shall be responsible for providing policy direction and management supervision for the Office and for the issuance of patents and the registration of trademarks. The Director shall perform these duties in a fair, impartial, and equitable manner. (B) Consulting with the public advisory committees.—The Director shall consult with the Patent Public Advisory Committee established in section 5 on a regular basis on matters relating to the patent operations of the Office, shall consult with the Trademark Public Advisory Committee established in section 5 on a regular basis on matters relating to the trademark operations of the Office, and shall consult with the respective Public Advisory Committee before submitting budgetary proposals to the Office of Management and Budget or changing or proposing to change patent or trademark user fees or patent or trademark regulations which are subject to the requirement to provide notice and opportunity for public comment under section 553 of title 5, as the case may be. (3) Oath.—The Director shall, before taking office, take an oath to discharge faithfully the duties of the Office. (4) Removal.—The Director may be removed from office by the President. The President shall provide notification of any such removal to both Houses of Congress. (b) Officers and Employees of the Office.— (1) Deputy under secretary and deputy director.—The Secretary of Commerce, upon nomination by the Director, shall appoint a Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office who shall be vested with the authority to act in the capacity of the Director in the event of the absence or incapacity of the Director. The Deputy Director shall be a citizen of the United States who has a professional background and experience in patent or trademark law. (2) Commissioners.— (A) Appointment and duties.—The Secretary of Commerce shall appoint a Commissioner for Patents and a Commissioner for Trademarks, without regard to chapter 33, 51, or 53 of title 5. The Commissioner for Patents shall be a citizen of the United States with demonstrated management ability and professional background and experience in patent law and serve for a term of 5 years. The Commissioner for Trademarks shall be a citizen of the United States with demonstrated management ability and professional background and experience in trademark law and serve for a term of 5 years. The Commissioner for Patents and the Commissioner for Trademarks shall serve as the chief operating officers for the operations of the Office relating to patents and trademarks, respectively, and shall be responsible for the management and direction of all aspects of the activities of the Office that affect the administration of patent and trademark operations, respectively. The Secretary may reappoint a Commissioner to subsequent terms of 5 years as long as the performance of the Commissioner as set forth in the performance agreement in subparagraph (B) is satisfactory. (B) Salary and performance agreement.—The Commissioners shall be paid an annual rate of basic pay not to exceed the maximum rate of basic pay for the Senior Executive Service established under section 5382 of title 5, including any applicable locality-based comparability payment that may be authorized under section 5304(h)(2)(C) of title 5. The compensation of the Commissioners shall be considered, for purposes of section 207(c)(2)(A) of title 18, to be the equivalent of that described under clause (ii) of section 207(c)(2)(A) of title 18. In addition, the Commissioners may receive a bonus in an amount of up to, but not in excess of, 50 percent of the Commissioners’ annual rate of basic pay, based upon an evaluation by the Secretary of Commerce, acting through the Director, of the Commissioners’ performance as defined in an annual performance agreement between the Commissioners and the Secretary. The annual performance agreements shall incorporate measurable organization and individual goals in key operational areas as delineated in an annual performance plan agreed to by the Commissioners and the Secretary. Payment of a bonus under this subparagraph may be made to the Commissioners only to the extent that such payment does not cause the Commissioners’ total aggregate compensation in a calendar year to equal or exceed the amount of the salary of the Vice President under section 104 of title 3. (C) Removal.—The Commissioners may be removed from office by the Secretary for misconduct or nonsatisfactory performance under the performance agreement described in subparagraph (B), without regard to the provisions of title 5. The Secretary shall provide notification of any such removal to both Houses of Congress. (3) Other officers and employees.—The Director shall— (A) appoint such officers, employees (including attorneys), and agents of the Office as the Director considers necessary to carry out the functions of the Office; and (B) define the title, authority, and duties of such officers and employees and delegate to them such of the powers vested in the Office as the Director may determine. The Office shall not be subject to any administratively or statutorily imposed limitation on positions or personnel, and no positions or personnel of the Office shall be taken into account for purposes of applying any such limitation. (4) Training of examiners.—The Office shall submit to the Congress a proposal to provide an incentive program to retain as employees patent and trademark examiners of the primary examiner grade or higher who are eligible for retirement, for the sole purpose of training patent and trademark examiners. (5) National security positions.—The Director, in consultation with the Director of the Office of Personnel Management, shall maintain a program for identifying national security positions and providing for appropriate security clearances, in order to maintain the secrecy of certain inventions, as described in section 181, and to prevent disclosure of sensitive and strategic information in the interest of national security. (6) ADMINISTRATIVE PATENT JUDGES AND ADMINISTRATIVE
TRADEMARK JUDGES- The Director may fix the rate of basic pay for the
administrative patent judges appointed pursuant to section 6 and the
administrative trademark judges appointed pursuant to section 17 of the
Trademark Act of 1946 (15 U.S.C. 1067) at not greater than the rate of basic
pay payable for level III of the Executive Schedule under section 5314 of title
5. The payment of a rate of basic pay under this paragraph shall not be subject
to the pay limitation under section 5306(e) or 5373 of title 5. (c) Continued Applicability of Title 5.—Officers and employees of the Office shall be subject to the provisions of title 5, relating to Federal employees. (d) Adoption of Existing Labor Agreements.—The Office shall adopt all labor agreements which are in effect, as of the day before the effective date of the Patent and Trademark Office Efficiency Act, with respect to such Office (as then in effect). (e) Carryover of Personnel.— (1) From PTO.—Effective as of the effective date of the Patent and Trademark Office Efficiency Act, all officers and employees of the Patent and Trademark Office on the day before such effective date shall become officers and employees of the Office, without a break in service. (2)
Other personnel.—Any individual who, on the day before the effective date of
the Patent and Trademark Office Efficiency Act, is an officer or employee of
the Department of Commerce (other than an officer or employee under paragraph
(1)) shall be transferred to the Office, as necessary to carry out the purposes
of (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). §4. Restrictions on officers and employees as to interest in patents Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment. §5. Patent and Trademark Office Public Advisory Committees (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. (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.
§6. Patent Trial and Appeal Board (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 (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. [PATENT TRIAL AND APPEAL BOARD: 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, 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 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 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.] §7. Library 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. §8. Classification of patents 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. §9. Certified copies of records 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. §10. Publications (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 trade-mark 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 trade-marks and registrants. 5. Annual volumes of decisions in patent and trade-mark cases. 6. Pamphlet copies of the patent laws and rules of practice, laws and rules relating to trade-marks, 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. §11. Exchange of copies of patents and applications with foreign
countries 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 of Commerce. For purposes of this section, the terms “NAFTA country” and “WTO member country” have the meanings given those terms in section 104(b). §12. Copies of patents and applications for public libraries 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) §13. Annual report to Congress 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 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. CHAPTER 2—PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE §21. Filing date and day for taking action (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 the fee paid, on the next succeeding secular or business day. §22. Printing of papers filed The Director may require papers filed in the Patent and Trademark Office to be printed, typewritten, or on an electronic medium. §23. Testimony in Patent and Trademark Office cases 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. §24. Subpoenas, witnesses The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent and Trademark Office. Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses allowed to witnesses attending the United States district courts. A judge of a court whose clerk issued a subpoena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a witness, served with such subpoena, neglected or refused to appear or to testify. No witness shall be deemed guilty of contempt for disobeying such subpoena unless his fees and traveling expenses in going to, and returning from, and one day's attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena. §25. Declaration in lieu of oath (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 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). §26. Effect of defective execution Any document to be filed in the Patent and Trademark Office and which is required by any law, rule, or other regulation to be executed in a specified manner may be provisionally accepted by the Director despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed. CHAPTER 3—PRACTICE BEFORE PATENT AND TRADEMARK OFFICE §32. Suspension or exclusion from practice 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) [Effective
Date.—The amendment made 2 by paragraph (1) shall apply in any case in which
the time period for instituting a proceeding under section 32 of title 35,
United States Code, had not lapsed before the date of the enactment of this Act.] §33. Unauthorized representation as practitioner Whoever, not being recognized to practice before the Patent and Trademark Office, holds himself out or permits himself to be held out as so recognized, or as being qualified to prepare or prosecute applications for patent, shall be fined not more than $1,000 for each offense. CHAPTER 4—PATENT FEES; FUNDING; SEARCH SYSTEMS [Pub. L. 108–447, div. B, title VIII, Dec. 8,
2004, 118 Stat. 2924, as amended by Pub. L. 109–289, div. B, title II, §20933,
as added by Pub. L. 110–5, §2, Feb. 15, 2007, 121 Stat. 45, provided that sec
41 effectively reads: SEC. 801. FEES FOR PATENT SERVICES. (a) General Patent Fees.—During fiscal years 2005, 2006, and 2007,
subsection (a) of section 41 of title 35, United States Code, shall be
administered as though that subsection reads as follows]: [For
the purpose of computing fees under this paragraph, a multiple dependent claim
referred to in section 112 of this title or any claim depending therefrom shall
be considered as separate dependent claims in accordance with the number of
claims to which reference is made. The Director may by regulation provide for a
refund of any part of the fee specified in this paragraph for any claim that is
canceled before an examination on the merits, as prescribed by the Director,
has been made of the application under section 131 of this title. Errors in
payment of the additional fees under this paragraph may be rectified in
accordance with regulations prescribed by the Director.] [The
provisions of section 111(a) of this title relating to the payment of the fee
for filing the application shall apply to the payment of the fee specified in
this paragraph with respect to an application filed under section 111(a) of
this title. The provisions of section 371(d) of this title relating to the
payment of the national fee shall apply to the payment of the fee specified in
this paragraph with respect to an international application.] [Unless
payment of the applicable maintenance fee is received in the United States
Patent and Trademark Office on or before the date the fee is due or within a
grace period of 6 months thereafter, the patent will expire as of the end of
such grace period. The Director may require the payment of a surcharge as a
condition of accepting within such 6-month grace period the payment of an
applicable maintenance fee. No fee may be established for maintaining a design
or plant patent in force.] [Note:
Senate does not delete section 41 as amended by Pub. L. 110–5, §2, Feb. 15,
2007, just the above phrase.] [The
yearly fee for providing a library specified in section 12 of this title with
uncertified printed copies of the specifications and drawings for all patents
in that year shall be $50.]
[Clauses
having the effect of law per HR 1249 under SEC 10 and generally per S 23 under
SEC 9: FEE SETTING AUTHORITY. (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 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). … (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. [FEE SETTING AUTHORITY: EFFECTIVE
DATE.— (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. (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.] (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. [ELECTRONIC
FILING INCENTIVE: EFFECTIVE DATE.—This subsection shall take effect upon the
expiration of the 60-day period
beginning on the date of the enactment of this Act.] (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. [PRIORITIZED
EXAMINATION FEE: EFFECTIVE DATE.—This
subsection shall take effect on the date that is 10 days after the date of the
enactment of this Act.] (2) REDUCTION IN FEES
FOR SMALL ENTITIES.—The Director shall reduce fees for providing prioritized
examination of nonprovisional applications for original utility and plant
patents by 50 percent for small entities that qualify for reduced fees under
section 41(h)(1) of title 35, United States Code. (3) DEPOSIT OF FEES.—All
fees paid under this subsection shall be credited to the United States Patent
and Trademark Office Appropriation Account, shall remain available until
expended, and may be used only for the purposes specified in section
42(c)(3)(A) of title 35, United States Code, so long as the fees of the prioritized examination program
are set to recover the estimated cost of the program. (i) APPROPRIATION ACCOUNT TRANSITION
FEES (per HR 1249).— (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 col1lected 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. [EFFECTIVE DATE AND TERMINATION OF
SURCHARGE.— The surcharge provided for
in paragraph (1)— (A) shall take effect on
the date that is 10 days after the date of the enactment of this Act; and (B) shall terminate,
with respect to a fee 2 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.] (a) GENERAL FEES.—The Director shall charge the following
fees: (1) FILING AND BASIC NATIONAL FEES.— (A) On filing each application for an original
patent, except for design, plant, or provisional applications, $330. (B) On filing each application for an original
design patent, $220. (C) On filing each application for an original
plant patent, $220. (D) On filing each provisional
application for an original patent, $220. (E) On filing each application for the
reissue of a patent, $330. (F) The basic national fee for each
international application filed under the treaty defined in section 351(a)
entering the national stage under section 371, $330. (G) In addition, excluding any sequence
listing or computer program listing filed in an electronic medium as prescribed
by the Director, for any application the specification and drawings of which
exceed 100 sheets of paper (or equivalent as prescribed by the Director if filed
in an electronic medium), $270 for each additional 50 sheets of paper (or
equivalent as prescribed by the Director if filed in an electronic medium) or
fraction thereof. (2) EXCESS CLAIMS FEES.— (A) IN GENERAL.—In addition to the fee specified
in paragraph (1)— (i) on filing or on presentation at any
other time, $220 for each claim in independent form in excess of 3; (ii) on filing or on presentation at any
other time, $52 for each claim (whether dependent or independent) in excess of
20; and (iii) for each application containing a
multiple dependent claim, $390. (B) MULTIPLE DEPENDENT CLAIMS.— For the
purpose of computing fees under subparagraph (A), a multiple dependent claim referred
to in section 112 or any claim depending therefrom shall be considered as
separate dependent claims in accordance with the number of claims to which
reference is made. (C) REFUNDS; ERRORS IN PAYMENT.— The
Director may by regulation provide for a refund of any part of the fee
specified in subparagraph (A) for any claim that is canceled before an examination
on the merits, as prescribed by the Director, has been made of the application
under section 131. Errors in payment of the additional fees under this paragraph
may be rectified in accordance with regulations prescribed by the Director. (3) EXAMINATION FEES.— (A) IN GENERAL.— (i) For examination of each application
for an original patent, except for design, plant, provisional, or international
applications, $220. (ii) For examination of each application
for an original design patent, $140. (iii) For examination of each application
for an original plant patent, $170. (iv) For examination of the national stage
of each international application, $220. (v) For examination of each application
for the reissue of a patent, $650. (B) APPLICABILITY OF OTHER FEE PROVISIONS.—The
provisions of paragraphs (3) and 25 (4) of section 111(a) relating to the
payment of the fee for filing the application shall apply to the payment of the
fee specified in subparagraph (A) with respect to an application filed under
section 111(a). The provisions of section 371(d) relating to the payment of the
national fee shall apply to the payment of the fee specified in subparagraph
(A) with respect to an international application. (4) ISSUE FEES.— (A) For issuing each original patent,
except for design or plant patents, $1,510. (B) For issuing each original design
patent, $860. (C) For issuing each original plant patent,
$1,190. (D) For issuing each reissue patent, $1,510. (5) DISCLAIMER FEE.—On filing each disclaimer,
$140. (6) APPEAL FEES.— (A) On filing an appeal from the examiner
to the Patent Trial and Appeal Board, $540. (B) In addition, on filing a brief in
support of the appeal, $540, and on requesting an oral hearing in the appeal
before the Patent Trial and Appeal Board, $1,080. (7) REVIVAL FEES.—On filing each petition for
the revival of an 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 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 either by acquiring a search report from a
qualified search authority, or by causing a search by Office personnel to be
made, of each application for patent. (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. (E) APPLICATIONS SUBJECT TO SECRECY
ORDER- A search of an application that is the subject of a secrecy order under
section 181 or otherwise involves classified information may be conducted only
by Office personnel. (F) CONFLICTS OF INTEREST- A qualified
search authority that is a commercial entity may not conduct a search of a
patent application if the entity has any direct or indirect financial interest
in any patent or in any pending or imminent application for patent filed or to
be filed in the Office. (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) (f) (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)(1)(A) shall be reduced by 75 percent with respect
to its application to any entity to which paragraph (1) applies, if the
application is filed by electronic means as prescribed by the Director. (i) ELECTRONIC PATENT AND TRADEMARK DATA (1) MAINTENANCE OF COLLECTIONS – The Director shall maintain, for use by the public, paper, microform, or electronic collections of United States patents, foreign patent documents, and United States trademark registrations arranged to permit search for and retrieval of information. The Director may not impose fees directly for the use of such collections, or for the use of the public patent or trademark search rooms or libraries. (2) AVAILABILITY OF AUTOMATED SEARCH SYSTEMS - The Director shall provide for the full deployment of the automated search systems of the Patent and Trademark Office so that such systems are available for use by the public, and shall assure full access by the public to, and dissemination of, patent and trademark information, using a variety of automated methods, including electronic bulletin boards and remote access by users to mass storage and retrieval systems. (3) ACCESS FEES - The Director may establish reasonable fees for access by the public to the automated search systems of the Patent and Trademark Office. If such fees are established, a limited amount of free access shall be made available to users of the systems for purposes of education and training. The Director may waive the payment by an individual of fees authorized by this subsection upon a showing of need or hardship, and if such a waiver is in the public interest. (4) ANNUAL REPORT TO CONGRESS - The Director shall submit to the Congress an annual report on the automated search systems of the Patent and Trademark Office and the access by the public to such systems. The Director shall also publish such report in the Federal Register. The Director shall provide an opportunity for the submission of comments by interested persons on each such report. [SEC. 11.
FEES FOR PATENT SERVICES. EFFECTIVE
DATE.— Except as otherwise provided in this section, this section and the
amendments made by this section shall take effect on the date of the enactment
of this Act.] §42. Patent and Trademark Office funding [Note: The term ‘‘Fund’’ means the public enterprise
revolving fund established under HR 1249 and S 23. House and Senate language authorizing the
Director to collect and expend fees from the fund varies slightly. This amendment takes effect Oct 1, 2011 or
the first day of the fiscal year following enactment. From
S 23 (compare with language of House below): (c) USPTO REVOLVING FUND.— (1) ESTABLISHMENT.—There
is established in the Treasury of the United States a revolving fund to be
known as the ‘‘United States Patent and Trademark Office Public Enterprise
Fund’’. Any amounts in the Fund shall be available for use by the Director
without fiscal year limitation. (3) EXPENSES.—Amounts
deposited into the Fund under paragraph (2) shall be available, without fiscal
year limitation, to cover— (A) all
expenses to the extent consistent with the limitation on the use of fees set
forth in section 42(c) of title 35, United States Code, including all
administrative and operating expenses … (g) BUDGET.—The Fund shall prepare
and submit each year to the President a business-type budget in a manner, and before a date, as the President
prescribes by regulation for the budget program.] (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 (c) (1)
(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 appropriated 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 which were 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. PART II—PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS Chap. 10. Patentability of Inventions 11. Application for Patent 12. Examination of Application 13. Review of Patent and Trademark Office Decisions 14. Issue of Patent 15. Plant Patents 16. Designs 17. Secrecy of Certain Inventions and Filing Applications Abroad 18. Patent Rights in Inventions Made with Federal Assistance CHAPTER 10—PATENTABILITY OF INVENTIONS §100. Definitions 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. (e) The term
“third-party requester” means a person requesting ex parte reexamination under
section 302 (f) The term ‘inventor’ mean 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. [FIRST INVENTOR TO FILE: EFFECTIVE DATE — (1)
IN GENERAL.—Except as otherwise provided in this section, the amendments made
by this section shall take effect upon the expiration of the 18-month period
beginning on the date of the enactment of this Act, 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 the
effective date described in this paragraph; 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. (2) INTERFERING
PATENTS.—The provisions of sections
102(g), 135, and 291 of title 35, United States Code, as in effect on the day
before the effective date set forth in paragraph (1) of this subsection, shall
apply to each claim of an application for patent, and any patent issued
thereon, for which the amendments made by this section 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 the effective date set forth
in paragraph (1) of this subsection; 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.] §101. Inventions patentable Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. §102. Conditions for
patentability; novelty (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. [Note: Statement of Legislative Intent: CONTINUITY OF INTENT UNDER THE
CREATE ACT.—The enactment of section 102(c) of title 35, United States Code,
under paragraph (1) of this subsection is done with the same intent to promote
joint research activities that was expressed, including in the legislative
history, through the enactment of the Cooperative Research and Technology Enhancement Act of 2004 (Public Law 108–453;
the ‘‘CREATE Act’’), the amendments of
which are stricken by subsection (c) of this section. The United States Patent
and Trademark Office shall administer section 102(c) of title 35, United States
Code, in a manner consistent with the legislative history of the CREATE Act
that was relevant to its administration by the United States Patent and
Trademark Office.] §103. Conditions for
patentability; non-obvious subject matter 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. [Historical
and Revision Notes This paragraph was originally added in 1984 with the view that an
explicit statement in the statute may have some stabilizing effect on patent
“obviousness” practice since at least 1850, and also to serve as a basis for
the addition at a later time of some criteria which were to be worked out.] [TWO CLASSES OF NON-PATENTABLE SUBJECT MATTER per HR 1249 and S 23: SEC.
14. TAX STRATEGIES DEEMED WITHIN THE PRIOR ART. (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.
… (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.] SEC.
33. LIMITATION ON ISSUANCE OF PATENTS. (a) LIMITATION.—Notwithstanding any
other provision of law, no patent may issue on a claim directed to or
encompassing a human organism. (b) EFFECTIVE DATE.— (1) IN GENERAL.—Subsection
(a) shall apply to any application for patent that is pending on, or filed on
or after, the date of the enactment of this Act. (2) PRIOR
APPLICATIONS.—Subsection (a) shall not affect the validity of any patent issued
on an application to which paragraph (1) does not apply.
§105. Inventions in outer space (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. CHAPTER 11—APPLICATION FOR PATENT §111. Application (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 (B) a drawing as
prescribed by section 113 (C) an oath (3) FEE AND OATH OR DECLARATION.—The application must be accompanied by the fee required by law. The fee and oath or declaration 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 or declaration 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 or declaration 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 (B) a drawing as
prescribed by section 113 (2) CLAIM—A claim, as required
by (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) (6) OTHER BASIS FOR
PROVISIONAL APPLICATION—Subject to all the conditions in this subsection and section
119(e) (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) (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 §112. Specification (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 his invention. (b) CONCLUSION
- The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject matter which the (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 - (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. [Historical and Revision
Notes Based on Title 35, U.S.C., 1946 ed., §33
(R.S. 4888, amended (1) Mar. 3, 1915, ch. 94, §1, 38 Stat. 958; (2) May 23,
1930, ch. 312, §2, 46 Stat. 376). The clause relating to machines is
omitted as unnecessary and the requirement for disclosing the best mode of
carrying out the invention is stated as generally applicable to all types of
invention (derived from Title 35, U.S.C., 1946 ed., §69, first defense)]. §113. Drawings The applicant shall furnish a drawing where necessary for the understanding of the subject matter sought to be patented. When the nature of such subject matter admits of illustration by a drawing and the applicant has not furnished such a drawing, the 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. §114. Models, specimens 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. §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. (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)
SAVINGS 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. [INVENTOR’S OATH OR DECLARATION: 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 any patent application that is filed
on or after that effective date.] §116. Inventors (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 error an
inventor is not named in an application §117. Death or incapacity of inventor Legal representatives of deceased inventors and of those under legal incapacity may make application for patent upon compliance with the requirements and on the same terms and conditions applicable to the inventor. §118. Filing by other than inventor
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. [Historical and Revision
Notes This section initially provided for the
filing of an application by another on behalf of the inventor in certain
special hardship situation. Current
amendment provides for corporate owner as applicant, and may be transitional
amendment to European-style inventorship.] §119. Benefit of earlier filing date; right of priority (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 (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 (2) A provisional application
filed under section 111(b) (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) (2) the term “UPOV Contracting Party” means a member of the International Convention for the Protection of New Varieties of Plants. §120. Benefit of earlier filing date in the United States An
application for patent for an invention disclosed in the manner provided by §121. Divisional applications 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 §122. Confidential status of applications; publication of patent
applications (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 for which 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 (iii) a provisional
application filed under section 111(b) (iv) an application
for a design patent filed under chapter 16 (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 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 (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. [PREISSUANCE SUBMISSIONS BY THIRD
PARTIES: 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 any patent application filed before, on, or after that effective
date.] §123. Micro entity defined (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 5
or more 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 examination fee for the
application 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 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 examination fee for the application 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 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 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) STATE INSTITUTIONS OF HIGHER EDUCATION- (1) IN GENERAL- For purposes of
this section, a micro entity shall include an applicant who certifies that-- (A) 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 of the Higher Education Act of 1965 (20 U.S.C. 1001), that is a
public institution; or (B) 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 application to such public institution. (2) DIRECTOR'S AUTHORITY-
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 subsection 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 paragraph 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. CHAPTER 12—EXAMINATION OF APPLICATION §131. Examination of application 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 entitled to a patent under the law, the Director shall issue a patent therefor. §132. Notice of rejection; reexamination (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) §133. Time for prosecuting application Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the 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. §134. Appeal to (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 (b) Patent Owner.—A patent owner in §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 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. The Director shall prescribe
regulations setting forth standards for the conduct of derivation proceedings. (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. CHAPTER 13—REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS §141. Appeal to Court of Appeals for the Federal
Circuit
(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) DERIVATION
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 action under section 146, the Board's
decision shall govern the further proceedings in the case. §142. Notice of appeal When an appeal is taken to the United States Court of Appeals for the Federal Circuit, the appellant shall file in the Patent and Trademark Office a written notice of appeal directed to the 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. §143. Proceedings on appeal With respect to an appeal described in section 142 §144. Decision on appeal The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue 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. §145. Civil action to obtain patent An
applicant dissatisfied with the decision of the §146. Civil action in case of Any party
to 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 CHAPTER 14—ISSUE OF PATENT §151. Issue of patent If it appears that applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee or a portion thereof, which shall be paid within three months thereafter. Upon payment of this sum the patent shall issue, but if payment is not timely made, the application shall be regarded as abandoned. Any remaining balance of the issue fee shall be paid within three months from the sending of a notice thereof and, if not paid, the patent shall lapse at the termination of this three-month period. In calculating the amount of a remaining balance, charges for a page or less may be disregarded. If any payment required by this section is not timely made, but is submitted with the fee for delayed payment and the delay in payment is shown to have been unavoidable, it may be accepted by the Director as though no abandonment or lapse had ever occurred. §152. Issue of patent to assignee Patents may be granted to the assignee of the inventor of record in the Patent and Trademark Office, upon the application made and the specification sworn to by the inventor, except as otherwise provided in this title. (July 19, 1952, ch. 950, 66 Stat. 804; Pub. L. 93–596, §1, Jan. 2, 1975, 88 Stat. 1949.) §153. How issued Patents shall be issued in the name of the United States of America, under the seal of the Patent and Trademark Office, and shall be signed by the Director or have his signature placed thereon and shall be recorded in the Patent and Trademark Office. §154. Contents and term of patent; provisional rights (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) (3)
Priority.—Priority under section 119, 365(a), or 365(b) (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 (I)
the date on which an application was filed under section 111(a) (II)
the date on which an international application fulfilled the requirements of
section 371 (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 (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 (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 (i) a proceeding under section 135(a); (ii) the imposition of an order under section 181; or (iii)
appellate review by the (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 (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 (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 (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)) (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 application for 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. (July 19, 1952, ch. 950, 66 Stat. 804; Pub. L. 89–83, §5, July 24, 1965, 79 Stat. 261; Pub. L. 96–517, §4, Dec. 12, 1980, 94 Stat. 3018; Pub. L. 100–418, title IX, §9002, Aug. 23, 1988, 102 Stat. 1563; Pub. L. 103–465, title V, §532(a)(1), Dec. 8, 1994, 108 Stat. 4983; Pub. L. 104–295, §20(e)(1), Oct. 11, 1996, 110 Stat. 3529; Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §§4402(a), 4504], Nov. 29, 1999, 113 Stat. 1536, 1501A–557, 1501A–564; Pub. L. 107–273, div. C, title III, §§13204, 13206(a)(8), Nov. 2, 2002, 116 Stat. 1902, 1904.)
§156. Extension of patent term (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 review 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 drug or a veterinary biological product which (I) is not covered by the claims in any other patent which has been extended, and (II) has received permission for the commercial marketing or use in non-food-producing animals and in food-producing animals, and (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 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)(1) 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. 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 5 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. (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, a medical device, or a food additive or color additive or a method of using or manufacturing such a product, device, or additive and if the product, device, and additive are subject to the Federal Food, Drug, and Cosmetic Act, of the extension application and shall submit to the Secretary who is so notified a copy of the application. Not later than 30 days after the receipt of an application from the Director, the Secretary receiving 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 such 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 Director 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 shall notify the Director of any revision of 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 paragraph (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 regulatory 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 date 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 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 a 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 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 environmental 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 the enactment of this section with respect to the approved product and the commercial marketing or use of the product has not been approved before such date, the period of extension determined on the basis of the regulatory review period determined under such paragraph may not exceed two years or in the case of an approved product which is a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act or the Virus-Serum-Toxin Act), three years. (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.
[Statutory Invention Registration:
EFFECTIVE DATE.—The amendments made by this subsection shall take effect upon
the expiration of the 18-month period beginning on the date of the enactment of
this Act, and shall apply to any request for a statutory invention registration
filed on or after that effective date.] CHAPTER 15—PLANT PATENTS §161. Patents for plants Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided. §162. Description, claim No plant
patent shall be declared invalid for noncompliance with section 112 The claim in the specification shall be in formal terms to the plant shown and described. §163. Grant 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. §164. Assistance of Department of Agriculture 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. CHAPTER 16—DESIGNS §171. Patents for designs Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title. The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided. §172. Right of priority The right
of priority provided for by subsections (a) through (d) of section 119 §173. Term of design patent Patents for designs shall be granted for the term of fourteen years from the date of grant. CHAPTER 17—SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN FOREIGN
COUNTRY §181. Secrecy of certain inventions and withholding of patent 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 the 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. 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 the 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 so to 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. §182. Abandonment of invention for unauthorized disclosure The
invention disclosed in an application for patent subject to an order made
pursuant to section 181 §183. Right to compensation An
applicant, his successors, assigns, or legal representatives, whose patent is
withheld as herein provided, shall have the right, beginning at the date the
applicant is notified that, except for such order, his application is otherwise
in condition for allowance, or February 1, 1952, whichever is later, and ending
six years after a patent is issued thereon, to apply to the head of any
department or agency who caused the order to be issued for compensation for the
damage caused by the order of secrecy and/or for the use of the invention by
the Government, resulting from his disclosure. The right to compensation for
use shall begin on the date of the first use of the invention by the
Government. The head of the department or agency is authorized, upon the
presentation of a claim, to enter into an agreement with the applicant, his
successors, assigns, or legal representatives, in full settlement for the
damage and/or use. This settlement agreement shall be conclusive for all
purposes notwithstanding any other provision of law to the contrary. If full
settlement of the claim cannot be effected, the head of the department or
agency may award and pay to such applicant, his successors, assigns, or legal
representatives, a sum not exceeding 75 per centum of the sum which the head of
the department or agency considers just compensation for the damage and/or use.
A claimant may bring suit against the United States in the United States Court
of Federal Claims or in the District Court of the United States for the
district in which such claimant is a resident for an amount which when added to
the award shall constitute just compensation for the damage and/or use of the
invention by the Government. The owner of any patent issued upon an application
that was subject to a secrecy order issued pursuant to section 181 §184. Filing of application in foreign country (a) FILING
IN A 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 (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 §185. Patent barred for filing without license Notwithstanding
any other provisions of law any person, and his successors, assigns, or legal
representatives, shall not receive a United States patent for an invention if
that person, or his successors, assigns, or legal representatives shall,
without procuring the license prescribed in section 184 §186. Penalty Whoever,
during the period or periods of time an invention has been ordered to be kept
secret and the grant of a patent thereon withheld pursuant to section 181 §187. Nonapplicability to certain persons The prohibitions and penalties of this chapter shall not apply to any officer or agent of the United States acting within the scope of his authority, nor to any person acting upon his written instructions or permission. §188. Rules and regulations, delegation of power The Atomic Energy Commission, the Secretary of a defense department, the chief officer of any other department or agency of the Government designated by the President as a defense agency of the United States, and the Secretary of Commerce, may separately issue rules and regulations to enable the respective department or agency to carry out the provisions of this chapter, and may delegate any power conferred by this chapter. CHAPTER 18—PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE §200. Policy and objective It is the policy and objective of the Congress to use the patent system to promote the utilization of inventions arising from federally supported research or development; to encourage maximum participation of small business firms in federally supported research and development efforts; to promote collaboration between commercial concerns and nonprofit organizations, including universities; to ensure that inventions made by nonprofit organizations and small business firms are used in a manner to promote free competition and enterprise 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. §201. Definitions 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, 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. §202. Disposition of rights (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 counter-intelligence activities that the restriction or elimination of the right to retain title to any subject invention is necessary to protect the security of such activities or, (iv) when the funding agreement includes the operation of a Government-owned, contractor-operated facility of the Department of Energy primarily dedicated to that Department's naval nuclear propulsion or weapons related programs and all funding agreement limitations under this subparagraph on the contractor's right to elect title to a subject invention are limited to inventions occurring under the above two programs of the Department of Energy. The rights of the nonprofit organization or small business firm shall be subject to the provisions of paragraph (c) of this section and the other provisions of this chapter. (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 (iv) 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 (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: That in any case where (3)
That a contractor electing rights in a subject invention agrees to file a
patent application prior to (4) With respect to any invention in which the contractor elects rights, the Federal agency shall have a nonexclusive, nontransferrable, 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 agreement 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, (E)
with respect to a funding agreement for the operation of a
Government-owned-contractor-operated 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 (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 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. §203. March-in rights (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 the Contract Disputes Act (41 U.S.C. §601 et seq.). An administrative appeals procedure shall be established by regulations promulgated in accordance with section 206. Additionally, any contractor, inventor, assignee, or exclusive licensee adversely affected by a determination under this section may, at any time within sixty days after the determination is issued, file a petition in the United States Court of Federal Claims, which shall have jurisdiction to determine the appeal on the record and to affirm, reverse, remand or modify, as appropriate, the determination of the Federal agency. In cases described in paragraphs (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. §204. Preference for United States industry Notwithstanding any other provision of this chapter, no small business firm or nonprofit organization which receives title to any subject invention and no assignee of any such small business firm or nonprofit organization shall grant to any person the exclusive right to use or sell any subject invention in the United States unless such person agrees that any products embodying the subject invention or produced through the use of the subject invention will be manufactured substantially in the United States. However, in individual cases, the requirement for such an agreement may be waived by the Federal agency under whose funding agreement the invention was made upon a showing by the small business firm, nonprofit organization, or assignee that reasonable but unsuccessful efforts have been made to grant licenses on similar terms to potential licensees that would be likely to manufacture substantially in the United States or that under the circumstances domestic manufacture is not commercially feasible. §205. Confidentiality Federal agencies are authorized to withhold from disclosure to the public information disclosing any invention in which the Federal Government owns or may own a right, title, or interest (including a nonexclusive license) for a reasonable time in order for a patent application to be filed. Furthermore, Federal agencies shall not be required to release copies of any document which is part of an application for patent filed with the United States Patent and Trademark Office or with any foreign patent office. §206. Uniform clauses and regulations The Secretary of Commerce may issue regulations which may be made applicable to Federal agencies implementing the provisions of sections 202 through 204 of this chapter and shall establish standard funding agreement provisions required under this chapter. The regulations and the standard funding agreement shall be subject to public comment before their issuance. §207. Domestic and foreign protection of federally
owned inventions (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 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 (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 is 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. Ex. Ord. No. 9424. Establishment of a Register of Government Interests in Patents Ex. Ord. No. 9424, Feb. 18, 1944, 9 F.R. 1959, provided: 1. The Secretary of Commerce shall cause to be established in the United States Patent Office [now Patent and Trademark Office] a separate register for the recording of all rights and interests of the Government in or under patents and applications for patents. 2. The several departments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, shall forward promptly to the Commissioner of Patents [now Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office] for recording in the separate register provided for in paragraph 1 hereof all licenses, assignments, or other interests of the Government in or under patents or applications for patents, in accordance with such rules and regulations as may be prescribed pursuant to paragraph 4 hereof; but the lack of recordation in such register of any right or interest of the Government in or under any patent or application therefor shall not prejudice in any way the assertion of such right or interest by the Government. 3. The register shall be open to inspection except as to such entries or documents which, in the opinion of the department or agency submitting them for recording, should be maintained in secrecy: Provided, however, That the right of inspection may be restricted to authorized representatives of the Government pending the final report to the President by the National Patent Planning Commission under Executive Order No. 8977 of December 12, 1941, and action thereon by the President. 4. The Commissioner of Patents [now Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office], with the approval of the Secretary of Commerce, shall prescribe such rules and regulations as he may deem necessary to effectuate the purposes of this order. Ex. Ord. No. 9865. Patent Protection Abroad of Inventions Resulting From Research Financed by the Government Ex. Ord. No. 9865, June 14, 1947, 12 F.R. 3907, as amended by Ex. Ord. No. 10096, Jan. 23, 1950, 15 F.R. 389, provided: 1. All Government departments and agencies shall, whenever practicable, acquire the right to file foreign patent applications on inventions resulting from research conducted or financed by the Government. 2. All Government departments and agencies which have or may hereafter acquire title to inventions or the right to file patent applications abroad thereon, shall fully and continuously inform the Chairman of Government Patents Board [now Secretary of Commerce. See Ex. Ord. No. 10930 set out as a note below] concerning such inventions, except as provided in section 6 hereof, and shall make recommendations to the Chairman of Government Patents Board as to which of such inventions should receive patent protection by the United States abroad and the foreign jurisdictions in which such patent protection should be sought. The recommendations of such departments and agencies shall indicate the immediate or future industrial, commercial or other value of the invention concerned, including its value to public health. 3. The Chairman of Government Patents Board shall determine whether, and in what foreign jurisdictions, the United States should seek patents for such inventions, and, to the extent of appropriations available therefor, shall procure patent protection for such inventions, taking all action, consistent with existing law, necessary to acquire and maintain patent rights abroad. Such determinations of the said Department shall be made after full consultation with United States industry and commerce, with the Department of State, and with other Government agencies familiar with the technical, scientific, industrial, commercial or other economic or social factors affecting the invention involved, and after consideration of the availability of valid patent protection in the countries determined to be immediate or potential markets for, or producers of, products, processes, or services covered by or relating to the invention. 4. The Chairman of Government Patents Board shall administer foreign patents acquired by the United States under the terms of this order and shall issue licenses thereunder in accordance with law under such rules and regulations as he shall prescribe. Nationals of the United States shall be granted licenses on a nonexclusive royalty free basis except in such cases as he shall determine and proclaim it to be inconsistent with the public interest to issue such licenses on a nonexclusive royalty free basis. 5. The Department of State, in consultation with the Chairman of Government Patents Board, shall negotiate arrangements among governments under which each government and its nationals shall have access to the foreign patents of the other participating governments. Patents relating to matters of public health may be licensed by the Chairman of Government Patents Board, with the approval of the Secretary of State, to any country or its nationals upon such terms and conditions as are in accordance with law and as the Chairman of Government Patents Board determines to be appropriate, regardless of whether such country is a party to the arrangements provided for in this section. 6. There shall be exempted from the provisions of this order (a) all inventions within the jurisdiction of the Atomic Energy Commission except in such cases as the said Commission specifically authorizes the inclusion of an invention under the terms of this order; and (b) all other inventions officially classified as secret or confidential for reasons of the national security. Nothing in this order shall supersede the declassification policies and procedures established by Executive Orders Nos. 9568 of June 8, 1945, 9604 of August 25, 1945, and 9809 of December 12, 1946. [Atomic Energy Commission abolished and all functions transferred to Administrator of Energy Research and Development Administration (unless otherwise specifically provided) by section 5814 of Title 42, The Public Health and Welfare. Energy Research and Development Administration terminated and functions vested by law in Administrator thereof transferred to Secretary of Energy (unless otherwise specifically provided) by sections 7151(a) and 7293 of Title 42.] Ex. Ord. No. 10096. Uniform Government Patent Policy for Inventions by Government Employees Ex. Ord. No. 10096, Jan. 23, 1950, 15 F.R. 389, as amended by Ex. Ord. No. 10695, Jan. 16, 1957, 22 F.R. 365; Ex. Ord. No. 10930, Mar. 24, 1961, 26 F.R. 2583, provided: NOW, THEREFORE, by virtue of the authority vested in me by the Constitution and statutes, and as President of the United States and Commander in Chief of the armed forces of the United States, in the interest of the establishment and operation of a uniform patent policy for the Government with respect to inventions made by Government employees, it is hereby ordered as follows: 1. The following basic policy is established for all Government agencies with respect to inventions hereafter made by any Government employee: (a) The Government shall obtain the entire right, title, and interest in and to all inventions made by any Government employee (1) during working hours, or (2) with a contribution by the Government of facilities, equipment, materials, funds, or information, or of time or services of other Government employees on official duty, or (3) which bear a direct relation to or are made in consequence of the official duties of the inventor. (b) In any case where the contribution of the Government, as measured by any one or more of the criteria set forth in paragraph (a) last above, to the invention, is insufficient equitably to justify a requirement of assignment to the Government of the entire right, title and interest to such invention, or in any case where the Government has insufficient interest in an invention to obtain entire right, title and interest therein (although the Government could obtain some under paragraph (a), above), the Government agency concerned, subject to the approval of the Chairman of the Government Patents Board [now Secretary of Commerce. See Ex. Ord. No. 10930 set out as a note below] (provided for in paragraph 3 of this order and hereinafter referred to as the Chairman), shall leave title to such invention in the employee, subject, however, to the reservation to the Government of a non-exclusive, irrevocable, royalty-free license in the invention with power to grant licenses for all governmental purposes, such reservation, in the terms thereof, to appear, where practicable, in any patent, domestic or foreign, which may issue on such invention. (c) In applying the provisions of paragraphs (a) and (b), above, to the facts and circumstances relating to the making of any particular invention, it shall be presumed that an invention made by an employee who is employed or assigned (i) to invent or improve or perfect any art, machine, manufacture, or composition of matter, (ii) to conduct or perform research, development work, or both, (iii) to supervise, direct, coordinate, or review Government financed or conducted research, development work, or both, or (iv) to act in a liaison capacity among governmental or nongovernmental agencies or individuals engaged in such work, or made by an employee included within any other category of employees specified by regulations issued pursuant to section 4(b) hereof, falls within the provisions of paragraph (a), above, and it shall be presumed that any invention made by any other employee falls within the provisions of paragraph (b), above. Either presumption may be rebutted by the facts or circumstances attendant upon the conditions under which any particular invention is made and, notwithstanding the foregoing, shall not preclude a determination that the invention falls within the provisions of paragraph (d) next below. (d) In any case wherein the Government neither (1) pursuant to the provisions of paragraph (a) above, obtains entire right, title and interest in and to an invention nor (2) pursuant to the provisions of paragraph (b) above, reserves a non-exclusive, irrevocable, royalty-free license in the invention with power to grant licenses for all governmental purposes, the Government shall leave the entire right, title and interest in and to the invention in the Government employee, subject to law. (e) Actions taken, and rights acquired, under the foregoing provisions of this section, shall be reported to the Chairman in accordance with procedures established by him. 2. Subject to considerations of national security, or public health, safety, or welfare, the following basic policy is established for the collection, and dissemination to the public, of information concerning inventions resulting from Government research and development activities: (a) When an invention is made under circumstances defined in paragraph 1(a) of this order giving the United States the right to title thereto, the Government agency concerned shall either prepare and file an application for patent therefor in the United States Patent Office [now Patent and Trademark Office] or make a full disclosure of the invention promptly to the Chairman, who may, if he determines the Government interest so requires, cause application for patent to be filed or cause the invention to be fully disclosed by publication thereof: Provided, however, That, consistent with present practice of the Department of Agriculture, no application for patent shall, without the approval of the Secretary of Agriculture, be filed in respect of any variety of plant invented by any employee of that Department. (b) [Revoked. Ex. Ord. No. 10695, Jan. 16, 1957, 22 F.R. 365] 3. (a) [Revoked. Ex. Ord. No. 10930, Mar. 24, 1961, 26 F.R. 2583] (b) The Government Patents Board shall advise and confer with the Chairman concerning the operation of those aspects of the Government's patent policy which are affected by the provisions of this order or of Executive Order No. 9865 [set out above], and suggest modifications or improvements where necessary. (c) [Revoked. Ex. Ord. No. 10930, Mar. 24, 1961, 26 F.R. 2583] (d) The Chairman shall establish such committees and other working groups as may be required to advise or assist him in the performance of any of his functions. (e) The Chairman of the Government Patents Board and the Chairman of the Interdepartmental Committee on Scientific Research and Development (provided for by Executive Order No. 9912 of December 24, 1947), shall establish and maintain such mutual consultation as will effect the proper coordination of affairs of common concern. 4. With a view to obtaining uniform application of the policies set out in this order and uniform operations thereunder, the Chairman is authorized and directed: (a) To consult and advise with Government agencies concerning the application and operation of the policies outlined herein; (b) After consultation with the Government Patents Board, to formulate and submit to the President for approval such proposed rules and regulations as may be necessary or desirable to implement and effectuate the aforesaid policies, together with the recommendations of the Government Patents Board thereon; (c) To submit annually a report to the President concerning the operation of such policies, and from time to time such recommendations for modification thereof as may be deemed desirable; (d) To determine with finality any controversies or disputes between any Government agency and its employees, to the extent submitted by any party to the dispute, concerning the ownership of inventions made by such employees or rights therein; and (e) To perform such other or further functions or duties as may from time to time be prescribed by the President or by statute. 5. The functions and duties of the Secretary of Commerce and the Department of Commerce under the provisions of Executive Order No. 9865 of June 14, 1947 [set out above] are hereby transferred to the Chairman and the whole or any part of such functions and duties may be delegated by him to any Government agency or officer: Provided, That said Executive Order No. 9865 shall not be deemed to be amended or affected by any provision of this Executive order other than this paragraph 5. 6. Each Government agency shall take all steps appropriate to effectuate this order, including the promulgation of necessary regulations which shall not be inconsistent with this order or with regulations issued pursuant to paragraph 4(b) hereof. 7. As used in this Executive order, the next stated terms, in singular and plural, are defined as follows for the purposes hereof: (a) “Government agency” includes any executive department and any independent commission, board, office, agency, authority, or other establishment of the Executive Branch of the Government of the United States (including any such independent regulatory commission or board, any such wholly-owned corporation, and the Smithsonian Institution), but excludes the Atomic Energy Commission. (b) “Government employee” includes any officer or employee, civilian or military, of any Government agency, except such part-time consultants or employees as may be excluded by regulations promulgated pursuant to paragraph 4(b) hereof. (c) “Invention” includes any art, machine, manufacture, design, or composition of matter, or any new and useful improvement thereof, or any variety of plant, which is or may be patentable under the patent laws of the United States. Ex. Ord. No. 10695. Transfer of Records to Department of Commerce Section 2 of Ex. Ord. 10695, Jan. 16, 1957, 22 F.R. 365, provided that: “The Chairman of the Government Patents Board is hereby authorized to transfer to the Department of Commerce any or all of the records heretofore prepared by the Board pursuant to paragraph 2(b) of Executive Order No. 10096 [set out above].” Ex. Ord. No. 10930. Abolition of Government Patents Board Ex. Ord. No. 10930, Mar. 24, 1961, 26 F.R. 2583, provided: By virtue of the authority vested in me as President of the United States, it is ordered as follows: Section 1. The Government Patents Board, established by section 3(a) of Executive Order No. 10096 of January 23, 1950 [set out above], and all positions established thereunder or pursuant thereto are hereby abolished. Sec. 2. All functions of the Government Patents Board and of the Chairman thereof under the said Executive Order No. 10096, except the functions of conference and consultation between the Board and the Chairman, are hereby transferred to the Secretary of Commerce, who may provide for the performance of such transferred functions by such officer, employee, or agency of the Department of Commerce as he may designate. Sec. 3. The Secretary of Commerce shall make such provision as may be necessary and consonant with law for the disposition or transfer of property, personnel, records, and funds of the Government Patents Board. Sec. 4. Except to the extent that they may be inconsistent with this order, all determinations, regulations, rules, rulings, orders, and other actions made or issued by the Government Patents Board, or by any Government agency with respect to any function transferred by this order, shall continue in full force and effect until amended, modified, or revoked by appropriate authority. Sec. 5. Subsections (a) and (c) of section 3 of Executive Order No. 10096 are hereby revoked, and all other provisions of that order are hereby amended to the extent that they are inconsistent with the provisions of this order. John F. Kennedy. §208. Regulations governing Federal licensing The Secretary of Commerce is authorized to promulgate regulations specifying the terms and conditions upon which any federally owned invention, other than inventions owned by the Tennessee Valley Authority, may be licensed on a nonexclusive, partially exclusive, or exclusive basis. |