consolidated_laws.pdf - Appendix L Patent Laws United...

This preview shows page 1 out of 88 pages.

Unformatted text preview: Appendix L Patent Laws United States Code Title 35 - Patents PART II — PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS PART I — UNITED STATES PATENT AND TRADEMARK OFFICE CHAPTER 10 — PATENTABILITY OF INVENTIONS CHAPTER 1 — ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS 100 Definitions. 101 Inventions patentable. 102 Conditions for patentability; novelty and loss of right to patent. 103 Conditions for patentability; non-obvious subject matter. 104 Invention made abroad. 105 Inventions in outer space. Sec. 1 2 3 4 5 6 7 8 9 10 11 12 13 Establishment. Powers and Duties. Officers and employees. Restrictions on officers and employees as to interest in patents. Patent and Trademark Office Public Advisory Committees. Board of Patent Appeals and Interferences. Library. Classification of patents. Certified copies of records. Publications. Exchange of copies of patents and applications with foreign countries. Copies of patents and applications for public libraries. Annual report to Congress. CHAPTER 11 — APPLICATION FOR PATENT 111 112 113 114 115 116 117 118 119 120 121 122 CHAPTER 2 — PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE 21 22 23 24 25 26 Filing date and day for taking action. Printing of papers filed. Testimony in Patent and Trademark Office cases. Subpoenas, witnesses. Declaration in lieu of oath. Effect of defective execution. CHAPTER 12 — EXAMINATION OF APPLICATION 131 132 133 134 Examination of application. Notice of rejection; reexamination. Time for prosecuting application. Appeal to the Board of Patent Appeals and Interferences. 135 Interferences. CHAPTER 3 — PRACTICE BEFORE PATENT AND TRADEMARK OFFICE 31 32 33 [Repealed]. Suspension or exclusion from practice. Unauthorized representation as practitioner. CHAPTER 13 — REVIEW OF PATENT AND TRADEMARK OFFICE DECISION 141 142 143 144 145 146 CHAPTER 4 — PATENT FEES; FUNDING; SEARCH SYSTEMS 41 42 Application. Specification. Drawings. Models, specimens. Oath of applicant. Inventors. Death or incapacity of inventor. Filing by other than inventor. Benefit of earlier filing date; right of priority. Benefit of earlier filing date in the United States. Divisional applications. Confidential status of applications; publication of patent applications. Patent fees; patent and trademark search systems. Patent and Trademark Office funding. L-1 Appeal to Court of Appeals for the Federal Circuit. Notice of appeal. Proceedings on appeal. Decision on appeal. Civil action to obtain patent. Civil action in case of interference. Rev. 6, Sept. 2007 MANUAL OF PATENT EXAMINING PROCEDURE CHAPTER 14 — ISSUE OF PATENT 206 Uniform clauses and regulations. 207 Domestic and foreign protection of federally owned inventions. 208 Regulations governing Federal licensing. 209 Licensing federally owned inventions. 210 Precedence of chapter. 211 Relationship to antitrust laws. 212 Disposition of rights in educational awards. 151 Issue of patent. 152 Issue of patent to assignee. 153 How issued. 154 Contents and term of patent; provisional rights. 155 Patent term extension. 155A Patent term restoration. 156 Extension of patent term. 157 Statutory invention registration. PART III — PATENTS AND PROTECTION OF PATENT RIGHTS CHAPTER 15 — PLANT PATENTS 161 162 163 164 CHAPTER 25 — AMENDMENT AND CORRECTION OF PATENTS Patents for plants. Description, claim. Grant. Assistance of the Department of Agriculture. 251 252 253 254 Reissue of defective patents. Effect of reissue. Disclaimer. Certificate of correction of Patent and Trademark Office mistake. 255 Certificate of correction of applicant’s mistake. 256 Correction of named inventor. CHAPTER 16 — DESIGNS 171 Patents for designs. 172 Right of priority. 173 Term of design patent. CHAPTER 26 — OWNERSHIP AND ASSIGNMENT CHAPTER 17 — SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN FOREIGN COUNTRIES 261 Ownership; assignment. 262 Joint owners. 181 Secrecy of certain inventions and withholding of patent. 182 Abandonment of invention for unauthorized disclosure. 183 Right to compensation. 184 Filing of application in foreign country. 185 Patent barred for filing without license. 186 Penalty. 187 Nonapplicability to certain persons. 188 Rules and regulations, delegation of power. CHAPTER 27 — GOVERNMENT INTERESTS IN PATENTS 266 [Repealed.] 267 Time for taking action in Government applications. CHAPTER 28 — INFRINGEMENT OF PATENTS 271 Infringement of patent. 272 Temporary presence in the United States. 273 Defense to infringement based on earlier inventor. CHAPTER 18 — PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE 200 201 202 203 204 205 CHAPTER 29 — REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS Policy and objective. Definitions. Disposition of rights. March-in rights. Preference for United States industry. Confidentiality. Rev. 6, Sept. 2007 281 282 283 284 285 L-2 Remedy for infringement of patent. Presumption of validity; defenses. Injunction. Damages. Attorney fees. PATENT LAWS CHAPTER 36 — INTERNATIONAL STAGE 286 Time limitation on damages. 287 Limitation on damages and other remedies; marking and notice. 288 Action for infringement of a patent containing an invalid claim. 289 Additional remedy for infringement of design patent. 290 Notice of patent suits. 291 Interfering patents. 292 False marking. 293 Nonresident patentee; service and notice. 294 Voluntary arbitration. 295 Presumptions: Product made by patented process. 296 Liability of States, instrumentalities of States, and State officials for infringement of patents. 297 Improper and deceptive invention promotion. 361 Receiving Office. 362 International Searching Authority and International Preliminary Examining Authority. 363 International application designating the United States: Effect. 364 International stage: Procedure. 365 Right of priority; benefit of the filing date of a prior application. 366 Withdrawn international application. 367 Actions of other authorities: Review. 368 Secrecy of certain inventions; filing international applications in foreign countries. CHAPTER 37 — NATIONAL STAGE CHAPTER 30 — PRIOR ART CITATIONS TO OFFICE AND EX PARTE REEXAMINATION OF PATENTS 301 302 303 304 305 306 307 371 372 373 374 375 376 Citation of prior art. Request for reexamination. Determination of issue by Director. Reexamination order by Director. Conduct of reexamination proceedings. Appeal. Certificate of patentability, unpatentability, and claim cancellation. National stage: Commencement. National stage: Requirements and procedure. Improper applicant. Publication of international application. Patent issued on international application: Effect. Fees. PART I — UNITED STATES PATENT AND TRADEMARK OFFICE CHAPTER 1 — ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS CHAPTER 31 — OPTIONAL INTER PARTES REEXAMINATION PROCEDURES Sec. 1 2 3 4 311 312 313 314 315 316 Request for inter partes reexamination. Determination of issue by Director. Inter partes reexamination order by Director. Conduct of inter partes reexamination proceedings. Appeal. Certificate of patentability, unpatentability, and claim cancellation. 317 Inter partes reexamination prohibited. 318 Stay of litigation. 5 6 7 8 9 10 11 PART IV — PATENT COOPERATION TREATY 12 CHAPTER 35 — DEFINITIONS 13 351 Definitions. L-3 Establishment. Powers and duties. Officers and employees. Restrictions on officers and employees as to interest in patents. Patent and Trademark Office Public Advisory Committees. Board of Patent and Appeals and Interferences. Library. Classification of patents. Certified copies of records. Publications. Exchange of copies of patents and applications with foreign countries. Copies of patents and applications for public libraries. Annual report to Congress. Rev. 6, Sept. 2007 1 MANUAL OF PATENT EXAMINING PROCEDURE 35 U.S.C. 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”. (b) SPECIFIC POWERS.— The Office— (1) shall adopt and use a seal of the Office, which shall be judicially noticed and with which letters patent, certificates of trademark registrations, and papers issued by the Office shall be authenticated; (2) may establish regulations, not inconsistent with law, which— (A) shall govern the conduct of proceedings in the Office; (B) shall be made in accordance with section 553 of title 5; (C) shall facilitate and expedite the processing of patent applications, particularly those which can be filed, stored, processed, searched, and retrieved electronically, subject to the provisions of section 122 relating to the confidential status of applications; (D) may govern the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office; (E) shall recognize the public interest in continuing to safeguard broad access to the United States patent system through the reduced fee structure for small entities under section 41(h)(1) of this title; and (F) provide for the development of a performance-based process that includes quantitative and qualitative measures and standards for evaluating cost-effectiveness and is consistent with the principles of impartiality and competitiveness; (3) may acquire, construct, purchase, lease, hold, manage, operate, improve, alter, and renovate any real, personal, or mixed property, or any interest therein, as it considers necessary to carry out its functions; (4)(A) may make such purchases, contracts for the construction, or management and operation 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 (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4711).) 35 U.S.C. 2 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. Rev. 6, Sept. 2007 L-4 PATENT LAWS 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.); (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; 2 (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 con- L-5 Rev. 6, Sept. 2007 3 MANUAL OF PATENT EXAMINING PROCEDURE tract issued by the General Services Administration for the specific purpose of relocating or leasing space to the United States Patent and Trademark Office. (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 Ser- (Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4712); subsection (b)(4)(A) amended Oct. 30, 2000, Public Law 106-400, sec. 2, 114 Stat. 1675; subsections (b)(2)(B) and (b)(4)(B) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904; subsection (b)(4)(A) amended Dec. 15, 2003, Public Law 108-178, sec. 4(g), 117 Stat. 2641.) 35 U.S.C. 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...
View Full Document

  • Left Quote Icon

    Student Picture

  • Left Quote Icon

    Student Picture

  • Left Quote Icon

    Student Picture