Appendix L Consolidated Patent Laws — March 2021 update
United States Code Title 35 - Patents
[Editor Note: Current as of July 1, 2020. The Public Laws are the authoritative
source and should be consulted if a need arises to verify the authenticity of the
language reproduced below.]
United States Code Title 35 - Patents
PART I — UNITED STATES PATENT AND
TRADEMARK OFFICE
CHAPTER 1 —ESTABLISHMENT, OFFICERS
AND EMPLOYEES, FUNCTIONS
Sec.
1 Establishment.
2 Powers and duties.
3 Officers and employees.
4 Restrictions on officers and employees as to
interest in patents.
5 Patent and Trademark Office Public Advisory
Committees.
6 Patent Trial and Appeal Board.
6 (pre-AIA) Board of Patent Appeals and
Interferences.
7 Library.
8 Classification of patents.
9 Certified copies of records.
10 Publications.
11 Exchange of copies of patents and applications
with foreign countries.
12 Copies of patents and applications for public
libraries.
13 Annual report to Congress.
CHAPTER 2 —PROCEEDINGS IN THE PATENT
AND TRADEMARK OFFICE
21 Filing date and day for taking action.
22 Printing of papers filed.
23 Testimony in Patent and Trademark Office
cases.
24 Subpoenas, witnesses.
25 Declaration in lieu of oath.
26 Effect of defective execution.
27 Revival of applications; reinstatement of
reexamination proceedings.
CHAPTER 3 —PRACTICE BEFORE PATENT
AND TRADEMARK OFFICE
31 [Repealed]
32 Suspension or exclusion from practice.
33 Unauthorized representation as practitioner.
CHAPTER 4 —PATENT FEES; FUNDING;
SEARCH SYSTEMS
41 Patent fees; patent and trademark search
systems.
42 Patent and Trademark Office funding.
United States Code Title 35 - Patents
PART II — PATENTABILITY OF INVENTIONS
AND GRANT OF PATENTS
CHAPTER 10 —PATENTABILITY OF
INVENTIONS
100 (note) AIA First inventor to file provisions.
100 Definitions
100 (pre-AIA) Definitions.
101 Inventions patentable.
102 Conditions for patentability; novelty.
102 (pre-AIA) Conditions for patentability; novelty
and loss of right to patent.
103 Conditions for patentability; non-obvious
subject matter.
103 (pre-AIA) Conditions for patentability;
non-obvious subject matter.
104 [Repealed]
104 (pre-AIA) Invention made abroad.
105 Inventions in outer space.
CHAPTER 11 —APPLICATION FOR PATENT
111 Application.
March 2021L-1
111 (pre-PLT (AIA)) Application.
111 (pre-AIA) Application.
112 Specification.
112 (pre-AIA) Specification.
113 Drawings.
114 Models, specimens.
115 Inventor's oath or declaration.
115 (pre-AIA) Oath of applicant.
116 Inventors.
116 (pre-AIA) Inventors.
117 Death or incapacity of inventor.
118 Filing by other than inventor.
118 (pre-AIA) Filing by other than inventor.
119 Benefit of earlier filing date; right of priority.
119 (pre-AIA) Benefit of earlier filing date; right
of priority.
120 Benefit of earlier filing date in the United
States.
120 (pre-AIA) Benefit of earlier filing date in the
United States.
121 Divisional applications.
121 (pre-AIA) Divisional applications.
122 Confidential status of applications; publication
of patent applications.
123 Micro entity defined.
CHAPTER 12 —EXAMINATION OF
APPLICATION
131 Examination of application.
132 Notice of rejection; reexamination.
133 Time for prosecuting application.
134 Appeal to the Patent Trial and Appeal Board.
134 (transitional) Appeal to the Board of Patent
Appeals and Interferences.
134 (pre-AIA) Appeal to the Board of Patent
Appeals and Interferences.
135 Derivation proceedings.
135 (pre-AIA) Interferences.
CHAPTER 13 —REVIEW OF PATENT AND
TRADEMARK OFFICE DECISION
141 Appeal to Court of Appeals for the Federal
Circuit.
141 (pre-AIA) Appeal to Court of Appeals for the
Federal Circuit.
142 Notice of appeal.
143 Proceedings on appeal.
143 (pre-AIA) Proceedings on appeal.
144 Decision on appeal.
145 Civil action to obtain patent.
145 (pre-AIA) Civil action to obtain patent.
146 Civil action in case of derivation proceeding.
146 (pre-AIA) Civil action in case of interference.
CHAPTER 14 —ISSUE OF PATENT
151 Issue of patent.
152 Issue of patent to assignee.
153 How issued.
154 Contents and term of patent; provisional rights.
154 (pre-AIA) Contents and term of patent;
provisional rights.
155 [Repealed.]
155A [Repealed.]
156 Extension of patent term.
157 [Repealed.]
157 (pre-AIA) Statutory invention registration.
CHAPTER 15 —PLANT PATENTS
161 Patents for plants.
162 Description, claim.
163 Grant.
164 Assistance of the Department of Agriculture.
CHAPTER 16 —DESIGNS
171 Patents for designs.
172 Right of priority.
172 (pre-AIA) Right of priority.
173 Term of design patent.
CHAPTER 17 —SECRECY OF CERTAIN
INVENTIONS AND FILING APPLICATIONS IN
FOREIGN COUNTRIES
L-2March 2021
MANUAL OF PATENT EXAMINING PROCEDURE
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.
184 (pre-AIA) Filing of application in foreign
country.
185 Patent barred for filing without license.
185 (pre-AIA) Patent barred for filing without
license.
186 Penalty.
187 Nonapplicability to certain persons.
188 Rules and regulations, delegation of power.
CHAPTER 18 —PATENT RIGHTS IN
INVENTIONS MADE WITH FEDERAL
ASSISTANCE
200 Policy and objective.
201 Definitions.
202 Disposition of rights.
202 (pre-AIA) Disposition of rights.
203 March-in rights.
204 Preference for United States industry.
205 Confidentiality.
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.
United States Code Title 35 - Patents
PART III — PATENTS AND PROTECTION OF
PATENT RIGHTS
CHAPTER 25 —AMENDMENT AND
CORRECTION OF PATENTS
251 Reissue of defective patents.
251 (pre-AIA) Reissue of defective patents.
252 Effect of reissue.
253 Disclaimer.
253 (pre-AIA) Disclaimer.
254 Certificate of correction of Patent and
Trademark Office mistake.
255 Certificate of correction of applicant’s mistake.
256 Correction of named inventor.
256 (pre-AIA) Correction of named inventor.
257 Supplemental examinations to consider,
reconsider, or correct information.
CHAPTER 26 —OWNERSHIP AND
ASSIGNMENT
261 Ownership; assignment.
262 Joint owners.
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 prior
commercial use.
CHAPTER 29 —REMEDIES FOR
INFRINGEMENT OF PATENT, AND OTHER
ACTIONS
281 Remedy for infringement of patent.
282 Presumption of validity; defenses.
283 Injunction.
284 Damages.
285 Attorney fees.
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.
March 2021L-3
PATENT LAWS
288 (pre-AIA) Action for infringement of a patent
containing an invalid claim.
289 Additional remedy for infringement of design
patent.
290 Notice of patent suits.
291 Derived patents.
291 (pre-AIA) 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.
298 Advice of counsel.
299 Joinder of parties.
CHAPTER 30 —PRIOR ART CITATIONS TO
OFFICE AND EX PARTE REEXAMINATION OF
PATENTS
301 Citation of prior art and written statements.
302 Request for reexamination.
303 Determination of issue by Director.
304 Reexamination order by Director.
305 Conduct of reexamination proceedings.
305 (pre-AIA) Conduct of reexamination
proceedings.
306 Appeal.
307 Certificate of patentability, unpatentability,
and claim cancellation.
CHAPTER 31 —INTER PARTES REVIEW
311 (note) Inter partes review applicability
provisions.
311 Inter partes review.
312 Petitions.
313 Preliminary response to petition.
314 Institution of inter partes review.
315 Relation to other proceedings or actions.
316 Conduct of inter partes review.
317 Settlement.
318 Decision of the Board.
319 Appeal.
CHAPTER 31 (pre-AIA) — OPTIONAL INTER
PARTES REEXAMINATION PROCEDURES
311 (pre-AIA) Request for inter partes
reexamination.
312 (transitional) Determination of issue by
Director.
313 (transitional) Inter partes reexamination order
by Director.
314 (pre-AIA) Conduct of inter partes
reexamination proceedings.
315 (pre-AIA) Appeal.
316 (pre-AIA) Certificate of patentability,
unpatentability, and claim cancellation.
317 (pre-AIA) Inter partes reexamination
prohibited.
318 (pre-AIA) Stay of litigation.
CHAPTER 32 —POST-GRANT REVIEW
321 (note) Post-grant review applicability.
321 Post-grant review.
322 Petitions.
323 Preliminary response to petition.
324 Institution of post-grant review.
325 Relation to other proceedings or actions.
326 Conduct of post-grant review.
327 Settlement.
328 Decision of the Board.
329 Appeal.
United States Code Title 35 - Patents
PART IV — PATENT COOPERATION TREATY
CHAPTER 35 —DEFINITIONS
351 Definitions.
CHAPTER 36 —INTERNATIONAL STAGE
361 Receiving Office.
362 International Searching Authority and
International Preliminary Examining Authority.
L-4March 2021
MANUAL OF PATENT EXAMINING PROCEDURE
363 International application designating the United
States: Effect.
363 (pre-AIA) 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
371 National stage: Commencement.
372 National stage: Requirements and procedure.
373 [Repealed]
374 Publication of international application: Effect.
374 (pre-AIA) Publication of international
application: Effect.
375 Patent issued on international application:
Effect.
375 (pre-AIA) Patent issued on international
application: Effect.
376 Fees.
United States Code Title 35 - Patents
PART V — THE HAGUE AGREEMENT
CONCERNING INTERNATIONAL
REGISTRATION OF INDUSTRIAL DESIGNS
CHAPTER 38 —INTERNATIONAL DESIGN
APPLICATIONS
381 Definitions.
382 Filing international design applications.
383 International design application.
384 Filing date.
385 Effect of international design application.
386 Right of priority.
387 Relief from prescribed time limits.
388 Withdrawn or abandoned international design
application.
389 Examination of international design
application.
390 Publication of international design application.
SELECTED PROVISIONS OF OTHER TITLES
OF THE UNITED STATES CODE
SELECT PROVISIONS OF TITLE 18, UNITED
STATES CODE
18 U.S.C. 1001 Statements or entries generally.
18 U.S.C. 2071 Concealment, removal, or
mutilation generally.
UNCODIFIED LAW
SELECT UNCODIFIED AIA PROVISIONS
AIA § 14 Tax strategies deemed within the prior
art.
AIA § 18 Transitional program for covered business
method patents.
AIA § 33 Limitation on issuance of patents.
United States Code Title 35 - Patents
PART I — UNITED STATES PATENT AND
TRADEMARK OFFICE
CHAPTER 1 — ESTABLISHMENT,
OFFICERS AND EMPLOYEES,
FUNCTIONS
Sec.
1 Establishment.
2 Powers and duties.
3 Officers and employees.
4 Restrictions on officers and employees as
to interest in patents.
5 Patent and Trademark Office Public
Advisory Committees.
6 Patent Trial and Appeal Board.
6 (pre-AIA) Board of Patent Appeals and
Interferences.
7 Library.
8 Classification of patents.
9 Certified copies of records.
10 Publications.
11 Exchange of copies of patents and
applications with foreign countries.
12 Copies of patents and applications for
public libraries.
13 Annual report to Congress.
March 2021L-5
PATENT LAWS
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”.
(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.
(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;
(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, division C
(except sections 3302, 3501(b), 3509, 3906, 4710, and 4711)
of subtitle I of title 41, and the McKinney-Vento Homeless
Assistance Act (42 U.S.C. 11301 et seq.);
(B) may enter into and perform such purchases
and contracts for printing services, including the process of
composition, platemaking, presswork, silk screen processes,
binding, microform, and the products of such processes, as it
considers necessary to carry out the functions of the Office,
without regard to sections 501 through 517 and 1101 through
1123 of title 44;
(5) may use, with their consent, services, equipment,
personnel, and facilities of other departments, agencies, and
instrumentalities of the Federal Government, on a reimbursable
basis, and cooperate with such other departments, agencies, and
instrumentalities in the establishment and use of services,
equipment, and facilities of the Office;
(6) may, when the Director determines that it is
practicable, efficient, and cost-effective to do so, use, with the
consent of the United States and the agency, instrumentality,
Patent and Trademark Office, or international organization
concerned, the services, records, facilities, or personnel of any
State or local government agency or instrumentality or foreign
L-6March 2021
MANUAL OF PATENT EXAMINING PROCEDURE§ 1
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.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-572 (S. 1948 sec. 4712); subsection
(b)(4)(A) amended Oct. 30, 2000, Public Law 106-400, sec. 2,
114 Stat. 1675; subsections (b)(2)(B) and (b)(4)(B) amended
Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904;
subsection (b)(4)(A) amended Dec. 15, 2003, Public Law
108-178, sec. 4(g), 117 Stat. 2641; subsection (b)(4)(A) amended
January 4, 2011, Public Law 111-350, sec. 5(i)(1), 124 Stat.
3849; subsection (b)(2)(G) added and subsections (b)(2)(E) and
(b)(11) amended Sept. 16, 2011, Public Law 112-29, secs. 20(j),
21(a), and 25 (effective Sept. 16, 2012), 125 Stat. 284.)
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 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
March 2021L-7
§ 3PATENT LAWS
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.—
L-8March 2021
MANUAL OF PATENT EXAMINING PROCEDURE§ 3
(1) FROM PTO.— Effective as of the effective date
of the Patent and Trademark Office Efficiency Act, all officers
and employees of the Patent and Trademark Office on the day
before such effective date shall become officers and employees
of the Office, without a break in service.
(2) OTHER PERSONNEL.— Any individual who, on
the day before the effective date of the Patent and Trademark
Office Efficiency Act, is an officer or employee of the
Department of Commerce (other than an officer or employee
under paragraph (1)) shall be transferred to the Office, as
necessary to carry out the purposes of that Act, if—
(A) such individual serves in a position for which
a major function is the performance of work reimbursed by the
Patent and Trademark Office, as determined by the Secretary
of Commerce;
(B) such individual serves in a position that
performed work in support of the Patent and Trademark Office
during at least half of the incumbent’s work time, as determined
by the Secretary of Commerce; or
(C) such transfer would be in the interest of the
Office, as determined by the Secretary of Commerce in
consultation with the Director.
Any transfer under this paragraph shall be effective as of the
same effective date as referred to in paragraph (1), and shall be
made without a break in service.
(f) TRANSITION PROVISIONS.—
(1) INTERIM APPOINTMENT OF DIRECTOR.—
On or after the effective date of the Patent and Trademark Office
Efficiency Act, the President shall appoint an individual to serve
as the Director until the date on which a Director qualifies under
subsection (a). The President shall not make more than one such
appointment under this subsection.
(2) CONTINUATION IN OFFICE OF CERTAIN
OFFICERS.—
(A) The individual serving as the Assistant
Commissioner for Patents on the day before the effective date
of the Patent and Trademark Office Efficiency Act may serve
as the Commissioner for Patents until the date on which a
Commissioner for Patents is appointed under subsection (b).
(B) The individual serving as the Assistant
Commissioner for Trademarks on the day before the effective
date of the Patent and Trademark Office Efficiency Act may
serve as the Commissioner for Trademarks until the date on
which a Commissioner for Trademarks is appointed under
subsection (b).
(Amended Sept. 6, 1958, Public Law 85-933, sec. 1, 72 Stat.
1793; Sept. 23, 1959, Public Law 86-370, sec. 1(a), 73 Stat.
650; Aug. 14, 1964, Public Law 88-426, sec. 305(26), 78 Stat.
425; Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Jan.
2, 1975, Public Law 93-601, sec. 1, 88 Stat. 1956; Aug. 27,
1982, Public Law 97-247, sec. 4, 96 Stat. 319; Oct. 25, 1982,
Public Law 97-366, sec. 4, 96 Stat. 1760; Nov. 8, 1984, Public
Law 98-622, sec. 405, 98 Stat. 3392; Oct. 28, 1998, Public Law
105-304, sec. 401(a)(1), 112 Stat. 2887; Nov. 29, 1999, Public
Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-575 (S. 1948
sec. 4713); subsections (a)(2)(B), (b)(2), and (c) amended Nov.
2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1904;
subsection (b)(6) added and (e)(2) amended Sept. 16, 2011,
Public Law 112-29, secs. 20(i) and 21(b) (effective Sept. 16,
2012), 125 Stat. 284.)
35 U.S.C. 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.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949.)
35 U.S.C. 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. In each year, 3 members shall be
appointed to each Advisory Committee for 3-year terms that
shall begin on December 1 of that year. Any vacancy on an
Advisory Committee shall be filled within 90 days after it occurs.
A new member who is appointed to fill a vacancy shall be
appointed to serve for the remainder of the predecessor’s term.
(2) CHAIR.— The Secretary of Commerce, in
consultation with the Director, shall designate a Chair and Vice
Chair of each Advisory Committee from among the members
appointed under paragraph (1). If the Chair resigns before the
completion of his or her term, or is otherwise unable to exercise
the functions of the Chair, the Vice Chair shall exercise the
functions of the Chair.
(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
March 2021L-9
§ 5PATENT LAWS
(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.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-578 (S. 1948 sec. 4714); subsections (e) and
(g) amended Nov. 2, 2002, Public Law 107-273, sec. 13206,
116 Stat. 1904; subsection (i) amended and subsection (j) added
Nov. 2, 2002, Public Law 107-273, sec. 13203, 116 Stat. 1902;
subsection (a) amended Jan. 14, 2013, Public Law 112-274, sec.
1(l), 126 Stat. 2456.)
35 U.S.C. 6 Patent Trial and Appeal Board.
[Editor Note: Applicable to proceedings commenced on or after
September 16, 2012.* See 35 U.S.C. 6 (pre-AIA) for the law
otherwise applicable.]
(a) IN GENERAL.—There shall be in the Office a Patent
Trial and Appeal Board. The Director, the Deputy Director, the
Commissioner for Patents, the Commissioner for Trademarks,
and the administrative patent judges shall constitute the Patent
Trial and Appeal Board. The administrative patent judges shall
be persons of competent legal knowledge and scientific ability
who are appointed by the Secretary, in consultation with the
Director. Any reference in any Federal law, Executive order,
rule, regulation, or delegation of authority, or any document of
or pertaining to the Board of Patent Appeals and Interferences
is deemed to refer to the Patent Trial and Appeal Board.
(b) DUTIES.—The Patent Trial and Appeal Board shall—
(1) on written appeal of an applicant, review adverse
decisions of examiners upon applications for patents pursuant
to section 134(a);
(2) review appeals of reexaminations pursuant to
section 134(b);
(3) conduct derivation proceedings pursuant to section
135; and
(4) conduct inter partes reviews and post-grant reviews
pursuant to chapters 31 and 32.
(c) 3-MEMBER PANELS.—Each appeal, derivation
proceeding, post-grant review, and inter partes review shall be
heard by at least 3 members of the Patent Trial and Appeal
Board, who shall be designated by the Director. Only the Patent
Trial and Appeal Board may grant rehearings.
(d) TREATMENT OF PRIOR APPOINTMENTS.—The
Secretary of Commerce may, in the Secretary’s discretion, deem
the appointment of an administrative patent judge who, before
the date of the enactment of this subsection, held office pursuant
to an appointment by the Director to take effect on the date on
which the Director initially appointed the administrative patent
judge. It shall be a defense to a challenge to the appointment of
an administrative patent judge on the basis of the judge’s having
been originally appointed by the Director that the administrative
patent judge so appointed was acting as a de facto officer.
(Repealed by Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-580 (S. 1948 sec. 4715(a).)
L-10March 2021
MANUAL OF PATENT EXAMINING PROCEDURE§ 6
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-580 (S. 1948 sec. 4717(2)); subsection (a)
amended Nov. 2, 2002, Public Law 107-273, sec. 13203, 116
Stat. 1902; subsection(a) amended and subsections (c) and (d)
added Aug. 12, 2008, Public Law 110-313, sec. 1(a)(1), 122
Stat. 3014; amended Sept. 16, 2011, Public Law 112-29, sec.
7(a) (effective Sept. 16, 2012), 125 Stat. 284.*)
*NOTE: The provisions of this section as in effect on Sept. 15,
2012 (35 U.S.C. 6 (pre-AIA)) apply to interference proceedings
that are declared after September 15, 2012 under 35 U.S.C. 135
(pre-AIA). See Public Law 112-274, sec. 1(k)(3), 126 Stat. 2456
(Jan. 14, 2013).
35 U.S.C. 6 (pre-AIA) Board of Patent Appeals and
Interferences.
[Editor Note: Not applicable to proceedings commenced on or
after September 16, 2012.* See 35 U.S.C. 6 for the law otherwise
applicable.]
(a) ESTABLISHMENT AND COMPOSITION.— There
shall be in the United States Patent and Trademark Office a
Board of Patent Appeals and Interferences. The Director, the
Deputy Director, the Commissioner for Patents, the
Commissioner for Trademarks, and the administrative patent
judges shall constitute the Board. The administrative patent
judges shall be persons of competent legal knowledge and
scientific ability who are appointed by the Secretary of
Commerce, in consultation with the Director.
(b) DUTIES.— The Board of Patent Appeals and
Interferences shall, on written appeal of an applicant, review
adverse decisions of examiners upon applications for patents
and shall determine priority and patentability of invention in
interferences declared under section 135(a). Each appeal and
interference shall be heard by at least three members of the
Board, who shall be designated by the Director. Only the Board
of Patent Appeals and Interferences may grant rehearings.
(c) AUTHORITY OF THE SECRETARY.— The Secretary
of Commerce may, in his or her discretion, deem the
appointment of an administrative patent judge who, before the
date of the enactment of this subsection, held office pursuant to
an appointment by the Director to take effect on the date on
which the Director initially appointed the administrative patent
judge.
(d) DEFENSE TO CHALLENGE OF APPOINTMENT.—
It shall be a defense to a challenge to the appointment of an
administrative patent judge on the basis of the judge's having
been originally appointed by the Director that the administrative
patent judge so appointed was acting as a de facto officer.
(Repealed by Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-580 (S. 1948 sec. 4715(a).)
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-580 (S. 1948 sec. 4717(2)); subsection (a)
amended Nov. 2, 2002, Public Law 107-273, sec. 13203, 116
Stat. 1902; subsection(a) amended and subsections (c) and (d)
added Aug. 12, 2008, Public Law 110-313, sec. 1(a)(1), 122
Stat. 3014.)
*NOTE: The provisions of this section as in effect on Sept. 15,
2012 apply to interference proceedings that are declared after
September 15, 2012 under 35 U.S.C. 135 (pre-AIA). See Public
Law 112-274, sec. 1(k)(3), 126 Stat. 2456 (Jan. 14, 2013).
35 U.S.C. 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.
(Repealed Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 8 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec.
4717(1)); amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949.)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 8 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.
(Transferred to 35 U.S.C. 7 Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 9 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec.
4717(1)).)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 9 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.
(Transferred to 35 U.S.C. 8 Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 10 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec.
4717(1)); amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949.)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
March 2021L-11
§ 9PATENT LAWS
35 U.S.C. 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 trademark registrations, including
statements and drawings, together with copies of the same.
(3) The Official Gazette of the United States Patent
and Trademark Office.
(4) Annual indexes of patents and patentees, and of
trademarks and registrants.
(5) Annual volumes of decisions in patent and
trademark cases.
(6) Pamphlet copies of the patent laws and rules of
practice, laws and rules relating to trademarks, and circulars or
other publications relating to the business of the Office.
(b) The Director may exchange any of the publications
specified in items 3, 4, 5, and 6 of subsection (a) of this section
for publications desirable for the use of the Patent and
Trademark Office.
(Transferred to 35 U.S.C. 9 Nov. 29, 1999, Public Law 106-113,
sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec. 4717(1)).)
(Transferred from 35 U.S.C. 11 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec.
4717(1)); amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88
Stat. 1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-589 (S. 1948 sec. 4804(b)).)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-565, 582 (S. 1948 secs. 4507(1) and
4732(a)(10)(A)).)
35 U.S.C. 11 Exchange of copies of patents and applications
with foreign countries.
(a) IN GENERAL.—The Director may exchange copies
of specifications and drawings of United States patents and
published applications for patents for those of foreign countries.
The Director shall not enter into an agreement to provide such
copies of specifications and drawings of United States patents
and applications to a foreign country, other than a USMCA
country or a WTO member country, without the express
authorization of the Secretary of Commerce.
(b) DEFINITIONS.—In this section—
(1) the term "USMCA country" has the meaning given
that term in section 3 of the United States-Mexico-Canada
Agreement Implementation Act (19 U.S.C. 4502); and
(2) the term "WTO member country" has the meaning
given that term in section 2(10) of the Uruguay Round
Agreements Act (19 U.S.C. 3501(10)).
(Transferred to 35 U.S.C. 10 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec.
4717(1)).)
(Transferred from 35 U.S.C. 12 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec.
4717(1)); amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-591 (S. 1948 sec. 4808).)
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-565, 582 (S. 1948 secs. 4507(2)(A), 4507(2)(B),
and 4732(a)(10)(A)).)
(Amended Dec. 27, 2020, Public Law 116-260, division O, title
VI, sec. 602(d), 134 Stat. 2153.)
35 U.S.C. 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).
(Transferred to 35 U.S.C. 11 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S. 1948 sec.
4717(1)).)
(Transferred from 35 U.S.C. 13 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec.
4717(1)); amended Aug. 27, 1982, Public Law 97-247, sec. 15,
96 Stat. 321; amended Nov. 29, 1999, Public Law 106-113, sec.
1000(a)(9), 113 Stat. 1501A-565, 566, 580, 582, and 589 (S.
1948 secs. 4507(3)(A), 4507(3)(B), 4507(4), 4717(1),
4732(a)(10)(A), and 4804(c)); amended Sept. 16, 2011, Public
Law 112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat 284.)
35 U.S.C. 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.
(Transferred to 35 U.S.C. 12 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec.
4717(1)).)
(Transferred from 35 U.S.C. 14 Nov. 29, 1999, Public Law
106-113, sec. 1000(a)(9), 113 Stat. 1501A-580 (S 1948 sec.
4717(1)).)
L-12March 2021
MANUAL OF PATENT EXAMINING PROCEDURE§ 10
(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-565, 581 (S. 1948 secs. 4507(2), 4718).)
CHAPTER 2 — PROCEEDINGS IN THE
PATENT AND TRADEMARK OFFICE
Sec.
21 Filing date and day for taking action.
22 Printing of papers filed.
23 Testimony in Patent and Trademark Office
cases.
24 Subpoenas, witnesses.
25 Declaration in lieu of oath.
26 Effect of defective execution.
27 Revival of applications; reinstatement of
reexamination proceedings.
35 U.S.C. 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 fee paid, on
the next succeeding secular or business day.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Aug. 27, 1982, Public Law 97-247, sec. 12, 96 Stat. 321;
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 22 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.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-582, 589 (S. 1948 secs. 4732(a)(10)(A), 4804(a)).)
35 U.S.C. 23 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.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113
Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 24 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.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949.)
35 U.S.C. 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).
(Added Mar. 26, 1964, Public Law 88-292, sec. 1, 78 Stat. 171;
amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949;
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 26 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.
(Added Mar. 26, 1964, Public Law 88-292, sec. 1, 78 Stat. 171;
amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949;
March 2021L-13
§ 26PATENT LAWS
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)
35 U.S.C. 27 Revival of applications; reinstatement of
reexamination proceedings.
The Director may establish procedures, including the
requirement for payment of the fee specified in section 41(a)(7),
to revive an unintentionally abandoned application for patent,
accept an unintentionally delayed payment of the fee for issuing
each patent, or accept an unintentionally delayed response by
the patent owner in a reexamination proceeding, upon petition
by the applicant for patent or patent owner.
(Added Dec. 18, 2012, Public Law 112-211, sec. 201(b)(1), 126
Stat. 1534).
CHAPTER 3 — PRACTICE BEFORE
PATENT AND TRADEMARK OFFICE
Sec.
31 [Repealed.]
32 Suspension or exclusion from practice.
33 Unauthorized representation as practitioner.
35 U.S.C. 31 [Repealed.]
(Repealed Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),
113 Stat. 1501A-580 (S. 1948 sec. 4715(b)).)
35 U.S.C. 32 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),
or who shall, by word, circular, letter, or advertising, with intent
to defraud in any manner, deceive, mislead, or threaten any
applicant or prospective applicant, or other person having
immediate or prospective business before the Office. The reasons
for any such suspension or exclusion shall be duly recorded.
The Director shall have the discretion to designate any attorney
who is an officer or employee of the United States Patent and
Trademark Office to conduct the hearing required by this section.
A proceeding under this section shall be commenced not later
than the earlier of either the date that is 10 years after the date
on which the misconduct forming the basis for the proceeding
occurred, or 1 year after the date on which the misconduct
forming the basis for the proceeding is made known to an officer
or employee of the Office as prescribed in the regulations
established under section 2(b)(2)(D). The United States District
Court for the Eastern District of Virginia, under such conditions
and upon such proceedings as it by its rules determines, may
review the action of the Director upon the petition of the person
so refused recognition or so suspended or excluded.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.1949;
Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.
1501A-580, 581, 582 (S. 1948 secs. 4715(c), 4719,
4732(a)(10)(A)); amended Sept. 16, 2011, Public Law 112-29,
secs. 3(k) and 9 (effective Sept. 16, 2011) and 20(j) (effective
Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 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.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.
1949.)
CHAPTER 4 — PATENT FEES;
FUNDING; SEARCH SYSTEMS
Sec.
41 Patent fees; patent and trademark search
systems.
42 Patent and Trademark Office funding.
35 U.S.C. 41 Patent fees; patent and trademark search
systems.
(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 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) —
L-14March 2021
MANUAL OF PATENT EXAMINING PROCEDURE§ 27
(i) on filing or on presentation at any other
time, $220 for each claim in independent form in excess of 3;
(ii) on filing or on presentation at any other
time, $52 for each claim (whether dependent or independent)
in excess of 20; and
(iii) for each application containing a multiple
dependent claim, $390.
(B) MULTIPLE DEPENDENT CLAIMS.— For
the purpose of computing fees under subparagraph (A), a
multiple dependent claim referred to in section 112 or any claim
depending therefrom shall be considered as separate dependent
claims in accordance with the number of claims to which
reference is made.
(C) REFUNDS; ERRORS IN PAYMENT.— The
Director may by regulation provide for a refund of any part of
the fee specified in subparagraph (A) for any claim that is
canceled before an examination on the merits, as prescribed by
the Director, has been made of the application under section
131. Errors in payment of the additional fees under this
paragraph may be rectified in accordance with regulations
prescribed by the Director.
(3) EXAMINATION FEES. —
(A) IN GENERAL.—
(i) For examination of each application for an
original patent, except for design, plant, provisional, or
international applications, $220.
(ii) For examination of each application for an
original design patent, $140.
(iii) For examination of each application for
an original plant patent, $170.
(iv) For examination of the national stage of
each international application, $220.
(v) For examination of each application for
the reissue of a patent, $650.
(B) APPLICABILITY OF OTHER FEE
PROVISIONS.— The provisions of paragraphs (3) and (4) of
section 111(a) relating to the payment of the fee for filing the
application shall apply to the payment of the fee specified in
subparagraph (A) with respect to an application filed under
section 111(a). The provisions of section 371(d) relating to the
payment of the national fee shall apply to the payment of the
fee specified subparagraph (A) with respect to an international
application.
(4) ISSUE FEES. —
(A) For issuing each original patent, except for
design or plant patents, $1,510.
(B) For issuing each original design patent, $860.
(C) For issuing each original plant patent, $1,190.
(D) For issuing each reissue patent, $1,510.
(5) DISCLAIMER FEE. — On filing each disclaimer,
$140.
(6) APPEAL FEES. —
(A) On filing an appeal from the examiner to the
Patent Trial and Appeal Board, $540.
(B) In addition, on filing a brief in support of the
appeal, $540, and on requesting an oral hearing in the appeal
before the Patent Trial and Appeal Board, $1,080.
(7) REVIVAL FEES. — On filing each petition for
the revival of an abandoned application for a patent, for the
delayed payment of the fee f