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31 [Repealed]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104 [Repealed]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.

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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

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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.

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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.

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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.

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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.

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;

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

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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.

(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

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§ 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.

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.

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.—

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(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

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

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§ 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.

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

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.

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).)

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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.

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)).)

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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;

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§ 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.

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) —

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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.

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.

(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 for issuing each patent, for the

delayed response by the patent owner in any reexamination

proceeding, for the delayed payment of the fee for maintaining

a patent in force, for the delayed submission of a priority or

benefit claim, or for the extension of the 12-month period for

filing a subsequent application, $1,700.00. The Director may

refund any part of the fee specified in this paragraph, in

exceptional circumstances as determined by the Director.

(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

(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.

(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.

FEES.—

(1) ACCEPTANCE.—The Director may accept the

payment of any maintenance fee required by subsection (b) after

the 6-month grace period if the delay is shown to the satisfaction

of the Director to have been unintentional. The Director may

require the payment of the fee specified in subsection (a)(7) as

a condition of accepting payment of any maintenance fee after

the 6-month grace period. If the Director accepts payment of a

maintenance fee after the 6-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

March 2021L-15

§ 41PATENT LAWS

subsection, shall not abridge or affect the right of any person or

that person’s successors in business who made, purchased,

offered to sell, or used anything protected by the patent within

the United States, or imported anything protected by the patent

into the United States after the 6-month grace period but prior

to the acceptance of a maintenance fee under this subsection,

to continue the use of, to offer for sale, or to sell to others to be

used, offered for sale, or sold, the specific thing so made,

purchased, offered for sale, used, or imported. The court before

which such matter is in question may provide for the continued

manufacture, use, offer for sale, or sale of the thing made,

purchased, offered for sale, or used within the United States, or

imported into the United States, as specified, or for the

manufacture, use, offer for sale, or sale in the United States of

which substantial preparation was made after the 6-month grace

period but before the acceptance of a maintenance fee under

this subsection, and the court may also provide for the continued

practice of any process that is practiced, or for the practice of

which substantial preparation was made, after the 6-month grace

period but before the acceptance of a maintenance fee under

this subsection, to the extent and under such terms as the court

deems equitable for the protection of investments made or

business commenced after the 6-month grace period but before

the acceptance of a maintenance fee under this subsection.

(d) PATENT SEARCH AND OTHER FEES. —

(1) PATENT SEARCH FEES. —

(A) IN GENERAL.— The Director shall charge

the fees specified under subparagraph (B) for the search of each

application for a patent, except for provisional applications. The

Director shall adjust the fees charged under this paragraph to

ensure that the fees recover an amount not to exceed the

estimated average cost to the Office of searching applications

for patent by Office personnel.

(B) SPECIFIC FEES.—The fees referred to in

subparagraph (A) are—

(i) $540 for each application for an original

patent, except for design, plant, provisional, or international

applications;

(ii) $100 for each application for an original

design patent;

(iii) $330 for each application for an original

plant patent;

(iv) $540 for the national stage of each

international application; and

(v) $540 for each application for the reissue

of a patent.

PROVISIONS.— The provisions of paragraphs (3) and (4) of

section 111(a) relating to the payment of the fee for filing the

application shall apply to the payment of the fee specified in

this paragraph with respect to an application filed under section

111(a). The provisions of section 371(d) relating to the payment

of the national fee shall apply to the payment of the fee specified

in this paragraph with respect to an international application.

(D) REFUNDS.— The Director may by regulation

provide for a refund of any part of the fee specified in this

paragraph for any applicant who files a written declaration of

express abandonment as prescribed by the Director before an

examination has been made of the application under section

131.

(2) OTHER FEES.—

(A) IN GENERAL.— The Director shall establish

fees for all other processing, services, or materials relating to

patents not specified in this section to recover the estimated

average cost to the Office of such processing, services, or

materials, except that the Director shall charge the following

fees for the following services:

(i) For recording a document affecting title,

$40 per property.

(ii) For each photocopy, $.25 per page.

(iii) For each black and white copy of a patent,

$3.

(B) COPIES FOR LIBRARIES.—The yearly fee

for providing a library specified in section 12 with uncertified

printed copies of the specifications and drawings for all patents

in that year shall be $50.

(e) WAIVER OF FEES; COPIES REGARDING

NOTICE.— The Director may waive the payment of any fee

for any service or material related to patents in connection with

an occasional or incidental request made by a department or

agency of the Government, or any officer thereof. The Director

may provide any applicant issued a notice under section 132

with a copy of the specifications and drawings for all patents

referred to in that notice without charge.

(f) ADJUSTMENT OF FEES.— The fees established in

subsections (a) and (b) of this section may be adjusted by the

Director on October 1, 1992, and every year thereafter, to reflect

any fluctuations occurring during the previous 12 months in the

Consumer Price Index, as determined by the Secretary of Labor.

Changes of less than 1 per centum may be ignored.

(g) [Repealed.]

(h) FEES FOR SMALL ENTITIES.—

(1) REDUCTIONS IN FEES.— Subject to paragraph

(3), fees charged under subsections (a), (b) and (d)(1) shall be

reduced by 50 percent with respect to their application to any

small business concern as defined under section 3 of the Small

Business Act, and to any independent inventor or nonprofit

organization as defined in regulations issued by the Director.

(2) SURCHARGES AND OTHER FEES.— With

respect to its application to any entity described in paragraph

(1), any surcharge or fee charged under subsection (c) or (d)

shall not be higher than the surcharge or fee required of any

other entity under the same or substantially similar

circumstances.

(3) REDUCTION FOR ELECTRONIC FILING.—

The fee charged under subsection (a)(l)(A) shall be reduced by

75 percent with respect to its application to any entity to which

paragraph (1) applies, if the application is filed by electronic

means as prescribed by the Director.

(i) ELECTRONIC PATENT AND TRADEMARK

DATA.—

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MANUAL OF PATENT EXAMINING PROCEDURE§ 41

(1) MAINTENANCE OF COLLECTIONS.— The

Director shall maintain, for use by the public, paper, microform

or electronic collections of United States patents, foreign patent

documents, and United States trademark registrations arranged

to permit search for and retrieval of information. The Director

may not impose fees directly for the use of such collections, or

for the use of the public patent and trademark search rooms or

libraries.

(2) 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 waiver is in the public interest.

(4) ANNUAL REPORT TO CONGRESS.— The

Director shall submit to the Congress an annual report on the

automated search systems of the Patent and Trademark Office

and the access by the public to such systems. The Director shall

also publish such report in the Federal Register. The Director

shall provide an opportunity for the submission of comments

by interested persons on each such report.

(Amended July 24, 1965, Public Law 89-83, sec. 1, 2, 79 Stat.

259; Jan. 2, 1975, Public Law 93-596, sec. 1, Jan. 2, 1975, 88

Stat. 1949; Nov. 14, 1975, Public Law 94-131, sec. 3, 89 Stat.

690; subsection (g) amended Dec. 12, 1980, Public Law 96-517,

sec. 2, 94 Stat. 3017; Aug. 27, 1982, Public Law 97-247, sec.

3(a)-(e), 96 Stat. 317; subsections (a)-(d) amended Sept. 8, 1982,

Public Law 97-256, sec. 101, 96 Stat. 816; subsection (a)(6)

amended Nov. 8, 1984, Public Law 98-622, sec. 204(a), 98 Stat.

3388; subsection (h) added Nov. 6, 1986, Public Law 99-607,

sec. 1(b)(2), 100 Stat. 3470; subsections (a), (b), (d), (f), and

(g) amended Dec. 10, 1991, Public Law 102-204, sec. 5, 105

Stat. 1637; subsections (a)(9) - (15) and (i) added Dec. 10, 1991,

Public Law 102-204, sec. 5, 105 Stat. 1637; subsection (c)(1)

amended Oct. 23, 1992, Public Law 102-444, sec. 1, 106 Stat.

2245; subsection (a)(1)(C) added Dec. 8, 1994, Public Law

103-465, sec. 532(b)(2), 108 Stat. 4986; subsection (c)(2)

amended, Dec. 8, 1994, Public Law 103-465, sec. 533(b)(1),

108 Stat. 4988; subsections (a)-(b) revised Nov. 10, 1998, Public

Law 105-358, sec. 3, 112 Stat. 3272.; amended Nov. 29, 1999,

Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-554, 570,

582, 589 (S. 1948 secs. 4202, 4605(a), 4732(a)(5),

4732(a)(10)(A)) and 4804(d)); amended Sept. 16, 2011, Public

Law 112-29, secs. 11 (effective Sept. 16, 2011) and 20(j)

(effective Sept. 16, 2012), 125 Stat. 284; subsections (a)(7) and

(c)(1) amended Dec. 18, 2012, Public Law 112-211, sec.

202(b)(1), 126 Stat. 1535.)

35 U.S.C. 42 Patent and Trademark Office funding.

(a) All fees for services performed by or materials furnished

by the Patent and Trademark Office will be payable to the

Director.

(b) All fees paid to the Director and all appropriations for

defraying the costs of the activities of the Patent and Trademark

Office will be credited to the Patent and Trademark Office

Appropriation Account in the Treasury of the United States.

(c)(1) To the extent and in the amounts provided in

advance in appropriations Acts, fees authorized in this title or

any other Act to be charged or established by the Director shall

be collected by and shall, subject to paragraph (3), be available

to the Director to carry out the activities of the Patent and

Trademark Office.

(2) There is established in the Treasury a Patent and

Trademark Fee Reserve Fund. If fee collections by the Patent

and Trademark Office for a fiscal year exceed the amount

appropriated to the Office for that fiscal year, fees collected in

excess of the 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 this title,

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 proportionate share of the administrative costs

of the Office.

(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

proportionate share of the administrative costs of the Office.

(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.

(Amended Nov. 14, 1975, Public Law 94-131, sec. 4, 89 Stat.

690; Dec. 12, 1980, Public Law 96-517, sec. 3, 94 Stat. 3018;

March 2021L-17

§ 42PATENT LAWS

Aug. 27, 1982, Public Law 97-247, sec. 3(g), 96 Stat. 319; Sept.

13, 1982, Public Law 97-258, sec. 3(i), 96 Stat. 1065; subsection

Stat. 1640; subsection (e) added Dec. 10, 1991, Public Law

102-204, sec. 4, 105 Stat. 1637; subsection (c) revised Nov. 10,

1998, Public Law 105-358, sec. 4, 112 Stat. 3274; amended

Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.

1501A-555, 582 (S. 1948 secs. 4205 and 4732(a)(10)(A));

subsection (c) amended Sept. 16, 2011, Public Law 112-29, sec.

22, 125 Stat. 284, effective Oct. 1, 2011; subsection (c)(3)

amended Jan. 14, 2013, Public Law 112-274, sec. 1(j), 126 Stat.

2456.)

PART II — PATENTABILITY OF INVENTIONS

AND GRANT OF PATENTS

CHAPTER 10 — PATENTABILITY OF

INVENTIONS

Sec.

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.

35 U.S.C. 100 (note) AIA First inventor to file provisions.

The first inventor to file provisions of the Leahy-Smith America

Invents Act (AIA) 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 on or after March 16, 2013 wherein the effective

filing date is:

(i) if subparagraph (ii) does not apply, the actual filing

date of the patent or the application for the patent containing a

claim to the invention; or

(ii) 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), 365(b), 386(a), or

386(b) or to the benefit of an earlier filing date under section

120 , 121, 365(c), or 386(c); or

(B) a specific reference under section 120 , 121, 365(c),

or 386(c) of title 35, United States Code, to any patent or

application that contains or contained at any time such a claim.

(Sept. 16, 2011, Public Law 112-29, sec. 3(n)(1) (effective

March 16, 2013), 125 Stat. 284; references to 35 U.S.C. 386

added Dec. 18, 2012, Public Law 112-211, sec. 102(1) (effective

May 13, 2015), 126 Stat. 1531.)

35 U.S.C. 100 Definitions.

[Editor Note: 35 U.S.C. 100(e)-(j) as set forth below are only

applicable to patent applications and patents subject to the first

inventor to file provisions of the AIA (35 U.S.C. 100 (note)). See

35 U.S.C. 100(e) (pre-AIA) for subsection (e) as otherwise

applicable.]

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.

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 who is not

the patent owner.

(f) The term "inventor" means the individual or, if a joint

invention, the individuals collectively who invented or

discovered the subject matter of the invention.

(g) The terms "joint inventor" and "coinventor" mean any

1 of the individuals who invented or discovered the subject

matter of a joint invention.

(h) The term "joint research agreement" means a written

contract, grant, or cooperative agreement entered into by 2 or

more persons or entities for the performance of experimental,

developmental, or research work in the field of the claimed

invention.

(i)(1) The term "effective filing date" for a claimed

invention in a patent or application for patent means—

(A) if subparagraph (B) does not apply, the actual

filing date of the patent or the application for the patent

containing a claim to the invention; or

(B) the filing date of the earliest application for

which the patent or application is entitled, as to such invention,

to a right of priority under section 119, 365(a), 365(b), 386(a),

or 386(b) or to the benefit of an earlier filing date under section

120, 121, 365(c), or 386(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.

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MANUAL OF PATENT EXAMINING PROCEDURE§ 100 (note)

(Subsection (e) added Nov. 29, 1999, Public Law 106-113, sec.

1000(a)(9), 113 Stat. 1501A-567 (S. 1948 sec. 4603); subsection

(e) amended and subsections (f) - (j) added Sept. 16, 2011,

Public Law 112-29, sec. 3(a) (effective March 16, 2013), 125

Stat. 284.); subsection (i)(1)(B) amended Dec. 18, 2012, Public

Law 112-211, sec. 102(1) (effective May 13, 2015), 126 Stat.

1531.)

35 U.S.C. 100 (pre-AIA) Definitions.

[Editor Note: pre-AIA 35 U.S.C. 100(e) as set forth below is

not applicable to any patent application subject to the first

inventor to file provisions of the AIA (see 35 U.S.C. 100 (note)).

See 35 U.S.C. 100(e)-(j) for the law otherwise applicable.]

When used in this title unless the context otherwise indicates -

*****

(e) The term “third-party requester” means a person

requesting ex parte reexamination under section 302 or inter

partes reexamination under section 311 who is not the patent

owner.

(Subsection (e) added Nov. 29, 1999, Public Law 106-113, sec.

1000(a)(9), 113 Stat. 1501A-567 (S. 1948 sec. 4603).)

35 U.S.C. 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.

(Public Law 112-29, sec. 33, 125 Stat. 284 (Sept. 16, 2011)

provided a limitation on the issuance of patents (see AIA § 33).)

35 U.S.C. 102 Conditions for patentability; novelty.

[Editor Note: Applicable to any patent application subject to

the first inventor to file provisions of the AIA (see 35 U.S.C. 100

(note)). See 35 U.S.C. 102 (pre-AIA) for the law otherwise

applicable.]

(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

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.

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), 365(b),

386(a), or 386(b), or to claim the benefit of an earlier filing date

under section 120, 121, 365(c), or 386(c) based upon 1 or more

prior filed applications for patent, as of the filing date of the

earliest such application that describes the subject matter.

(Amended July 28, 1972, Public Law 92-358, sec. 2, 86 Stat.

501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89 Stat. 691;

March 2021L-19

§ 102PATENT LAWS

subsection (e) amended Nov. 29, 1999, Public Law 106-113,

sec. 1000(a)(9), 113 Stat. 1501A-565 (S. 1948 sec. 4505);

subsection (g) amended Nov. 29, 1999, Public Law 106-113,

sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948 sec. 4806);

subsection (e) amended Nov. 2, 2002, Public Law 107-273, sec.

13205, 116 Stat. 1903; amended Sept. 16, 2011, Public Law

112-29, sec. 3(b), 125 Stat. 284, effective March 16, 2013.*;

subsection (d)(2) amended Dec. 18, 2012, Public Law 112-211,

sec. 102(2) (effective May 13, 2015), 126 Stat. 1531.))

(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011)

provided that tax strategies are deemed to be within the prior

art (see AIA § 14).)

*NOTE: The provisions of 35 U.S.C. 102(g), as in effect on

March 15, 2013, shall also apply to each claim of an application

for patent, and any patent issued thereon, for which the first

inventor to file provisions of the AIA apply (see 35 U.S.C. 100

(note)), if such application or patent contains or contained at

any time a claim to a claimed invention to which is not subject

to the first inventor to file provisions of the AIA.]

35 U.S.C. 102 (pre-AIA) Conditions for patentability;

novelty and loss of right to patent.

[Editor Note: With the exception of subsection (g)*), not

applicable to any patent application subject to the first inventor

to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35

U.S.C. 102 for the law otherwise applicable.]

A person shall be entitled to a patent unless —

(a) the invention was known or used by others in this

country, or patented or described in a printed publication in this

or a foreign country, before the invention thereof by the applicant

for patent, or

(b) the invention was patented or described in a printed

publication in this or a foreign country or in public use or on

sale in this country, more than one year prior to the date of the

application for patent in the United States, or

(d) the invention was first patented or caused to be patented,

or was the subject of an inventor’s certificate, by the applicant

or his legal representatives or assigns in a foreign country prior

to the date of the application for patent in this country on an

application for patent or inventor’s certificate filed more than

twelve months before the filing of the application in the United

States, or

(e) the invention was described in — (1) an application for

patent, published under section 122(b), by another filed in the

United States before the invention by the applicant for patent

or (2) a patent granted on an application for patent by another

filed in the United States before the invention by the applicant

for patent, except that an international application filed under

the treaty defined in section 351(a) shall have the effects for the

purposes of this subsection of an application filed in the United

States only if the international application designated the United

States and was published under Article 21(2) of such treaty in

the English language; or

(f) he did not himself invent the subject matter sought to

be patented, or

(g) (1) during the course of an interference conducted under

section 135 or section 291, another inventor involved therein

establishes, to the extent permitted in section 104, that before

such person’s invention thereof the invention was made by such

other inventor and not abandoned, suppressed, or concealed, or

(2) before such person’s invention thereof, the invention was

made in this country by another inventor who had not

abandoned, suppressed, or concealed it. In determining priority

of invention under this subsection, there shall be considered not

only the respective dates of conception and reduction to practice

of the invention, but also the reasonable diligence of one who

was first to conceive and last to reduce to practice, from a time

prior to conception by the other.

(Amended July 28, 1972, Public Law 92-358, sec. 2, 86 Stat.

501; Nov. 14, 1975, Public Law 94-131, sec. 5, 89 Stat. 691;

subsection (e) amended Nov. 29, 1999, Public Law 106-113,

sec. 1000(a)(9), 113 Stat. 1501A-565 (S. 1948 sec. 4505);

subsection (g) amended Nov. 29, 1999, Public Law 106-113,

sec. 1000(a)(9), 113 Stat. 1501A-590 (S. 1948 sec. 4806);

subsection (e) amended Nov. 2, 2002, Public Law 107-273, sec.

13205, 116 Stat. 1903.)

(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011)

provided that tax strategies are deemed to be within the prior

art (see AIA § 14).)

*NOTE: The provisions of 35 U.S.C. 102(g), as in effect on

March 15, 2013, shall apply to each claim of an application

for patent, and any patent issued thereon, for which the first

inventor to file provisions of the AIA apply (see 35 U.S.C. 100

(note), if such application or patent contains or contained at any

time—

(A) a claim to an invention having an effective filing date as

defined in section 100(i) of title 35, United States Code, that

occurs before March 16, 2013; or

(B) a specific reference under section 120, 121, or 365(c) of

title 35, United States Code, to any patent or application that

contains or contained at any time such a claim.

35 U.S.C. 103 Conditions for patentability; non-obvious

subject matter.

[Editor Note: Applicable to any patent application subject to

the first inventor to file provisions of the AIA (see 35 U.S.C. 100

(note)). See 35 U.S.C. 103 (pre-AIA) for the law otherwise

applicable.]

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.

L-20March 2021

MANUAL OF PATENT EXAMINING PROCEDURE§ 102 (pre-AIA)

Patentability shall not be negated by the manner in which the

invention was made.

(Amended Nov. 8, 1984, Public Law 98-622, sec. 103, 98 Stat.

3384; Nov. 1, 1995, Public Law 104-41, sec.1, 109 Stat. 3511;

subsection (c) amended Nov. 29, 1999, Public Law 106-113,

sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948 sec. 4807);

subsection (c) amended Dec. 10, 2004, Public Law 108-453,

sec. 2, 118 Stat. 3596; amended Sept. 16, 2011, Public Law

112-29, secs. 20(j) (effective Sept. 16, 2012) and 3(c) (effective

March 16, 2013), 125 Stat. 284.)

(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011)

provided that tax strategies are deemed to be within the prior

art (see AIA § 14).)

35 U.S.C. 103 (pre-AIA) Conditions for patentability;

non-obvious subject matter.

[Editor Note: Not applicable to any patent application subject

to the first inventor to file provisions of the AIA (see 35 U.S.C.

100 (note)). See 35 U.S.C. 103 for the law otherwise applicable.]

(a) A patent may not be obtained though the invention is

not identically disclosed or described as set forth in section 102

, if the differences between the subject matter sought to be

patented and the prior art are such that the subject matter as a

whole would have been obvious at the time the invention was

made to a person having ordinary skill in the art to which said

subject matter pertains. Patentability shall not be negatived by

the manner in which the invention was made.

(b)(1) Notwithstanding subsection (a), and upon timely

election by the applicant for patent to proceed under this

subsection, a biotechnological process using or resulting in a

composition of matter that is novel under section 102 and

nonobvious under subsection (a) of this section shall be

considered nonobvious if-

(A) claims to the process and the composition of

matter are contained in either the same application for patent or

in separate applications having the same effective filing date;

and

(B) the composition of matter, and the process at

the time it was invented, were owned by the same person or

subject to an obligation of assignment to the same person.

(2) A patent issued on a process under paragraph (1)-

(A) shall also contain the claims to the composition

of matter used in or made by that process, or

(B) shall, if such composition of matter is claimed

in another patent, be set to expire on the same date as such other

patent, notwithstanding section 154.

(3) For purposes of paragraph (1), the term

“biotechnological process” means-

(A) a process of genetically altering or otherwise

inducing a single- or multi-celled organism to-

(i) express an exogenous nucleotide sequence,

(ii) inhibit, eliminate, augment, or alter

expression of an endogenous nucleotide sequence, or

(iii) express a specific physiological

characteristic not naturally associated with said organism;

(B) cell fusion procedures yielding a cell line that

expresses a specific protein, such as a monoclonal antibody;

and

process defined by subparagraph (A) or (B), or a combination

of subparagraphs (A) and (B).

(c)(1) Subject matter developed by another person,

which qualifies as prior art only under one or more of

subsections (e), (f), and (g) of section 102, shall not preclude

patentability under this section where the subject matter and the

claimed invention were, at the time the claimed invention was

made, owned by the same person or subject to an obligation of

assignment to the same person.

(2) For purposes of this subsection, subject matter

developed by another person and a claimed invention shall be

deemed to have been owned by the same person or subject to

an obligation of assignment to the same person if —

(A) the claimed invention was made by or on

behalf of parties to a joint research agreement that was in effect

on or before the date the claimed invention was made;

(B) the claimed invention was made as a result of

activities undertaken within the scope of the joint research

agreement; and

invention discloses or is amended to disclose the names of the

parties to the joint research agreement.

(3) For purposes of paragraph (2), the term “joint

research agreement” means a written contract, grant, or

cooperative agreement entered into by two or more persons or

entities for the performance of experimental, developmental, or

research work in the field of the claimed invention.

(Amended Nov. 8, 1984, Public Law 98-622, sec. 103, 98 Stat.

3384; Nov. 1, 1995, Public Law 104-41, sec.1, 109 Stat. 3511;

subsection (c) amended Nov. 29, 1999, Public Law 106-113,

sec. 1000(a)(9), 113 Stat. 1501A-591 (S. 1948 sec. 4807);

subsection (c) amended Dec. 10, 2004, Public Law 108-453,

sec. 2, 118 Stat. 3596; amended Sept. 16, 2011, Public Law

112-29, sec. 20(j) (effective Sept. 16, 2012), 125 Stat. 284.)

(Public Law 112-29, sec. 14, 125 Stat. 284 (Sept. 16, 2011)

provided that tax strategies are deemed to be within the prior

art (see AIA § 14).)

35 U.S.C. 104 [Repealed.]

(Repealed Sept. 16, 2011, Public Law 112-29, sec. 3(d)

(effective March 16, 2013), 125 Stat. 284.)

35 U.S.C. 104 (pre-AIA) Invention made abroad.

[Editor Note: Not applicable to any patent application subject

to the first inventor to file provisions of the AIA (see 35 U.S.C.

100 (note)). 35 U.S.C. 104 repealed with regard to such

applications).]

March 2021L-21

§ 104 (pre-AIA)PATENT LAWS

(a) IN GENERAL.—

(1) PROCEEDINGS.—In proceedings in the Patent

and Trademark Office, in the courts, and before any other

competent authority, an applicant for a patent, or a patentee,

may not establish a date of invention by reference to knowledge

or use thereof, or other activity with respect thereto, in a foreign

country other than a NAFTA country or a WTO member

country, except as provided in sections 119 and 365.

(2) RIGHTS.—If an invention was made by a person,

civil or military—

(A) while domiciled in the United States, and

serving in any other country in connection with operations by

or on behalf of the United States,

(B) while domiciled in a NAFTA country and

serving in another country in connection with operations by or

on behalf of that NAFTA country, or

and serving in another country in connection with operations

by or on behalf of that WTO member country, that person shall

be entitled to the same rights of priority in the United States

with respect to such invention as if such invention had been

made in the United States, that NAFTA country, or that WTO

member country, as the case may be.

(3) USE OF INFORMATION.—To the extent that any

information in a NAFTA country or a WTO member country

concerning knowledge, use, or other activity relevant to proving

or disproving a date of invention has not been made available

for use in a proceeding in the Patent and Trademark Office, a

court, or any other competent authority to the same extent as

such information could be made available in the United States,

the Director, court, or such other authority shall draw appropriate

inferences, or take other action permitted by statute, rule, or

regulation, in favor of the party that requested the information

in the proceeding.

(b) DEFINITIONS.—As used in this section—

(1) The term “NAFTA country” has the meaning given

that term in section 2(4) of the North American Free Trade

Agreement Implementation Act; and

(2) The term “WTO member country” has the meaning

given that term in section 2(10) of the Uruguay Round

Agreements Act.

(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat.

1949; Nov. 14, 1975, Public Law 94-131, sec. 6, 89 Stat. 691;

Nov. 8, 1984, Public Law 98-622, sec. 403(a), 98 Stat. 3392;

Dec. 8, 1993, Public Law 103-182, sec. 331, 107 Stat. 2113;

Dec. 8, 1994, Public Law 103-465, sec. 531(a), 108 Stat. 4982;

Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.

1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept. 16,

2011, Public Law 112-29, sec. 20(j) (effective Sept. 16, 2012),

125 Stat. 284.

35 U.S.C. 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.

(Added Nov. 15, 1990, Public Law 101-580, sec. 1(a), 104 Stat.

2863.)

CHAPTER 11 — APPLICATION FOR

PATENT

Sec.

111 Application.

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.

35 U.S.C. 111 Application.

[Editor Note: Applicable to any patent application filed on or

after December 18, 2013. See 35 U.S.C. 111 (pre-PLT (AIA))

or 35 U.S.C. 111 (pre-AIA) for the law otherwise applicable.]

L-22March 2021

MANUAL OF PATENT EXAMINING PROCEDURE§ 105

(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; and

115.

(3) FEE, OATH OR DECLARATION, AND

CLAIMS.—The application shall be accompanied by the fee

required by law. The fee, oath or declaration, and 1 or more

claims may be submitted after the filing date of the application,

within such period and under such conditions, including the

payment of a surcharge, as may be prescribed by the Director.

Upon failure to submit the fee, oath or declaration, and 1 or

more claims within such prescribed period, the application shall

be regarded as abandoned.

(4) FILING DATE.—The filing date of an application

shall be the date on which a specification, with or without claims,

is received in the United States Patent and Trademark Office.

(b) PROVISIONAL APPLICATION.—

(1) AUTHORIZATION.—A provisional application

for patent shall be made or authorized to be made by the

inventor, except as otherwise provided in this title, in writing

to the Director. Such application shall include—

(A) a specification as prescribed by section 112(a);

and

(B) a drawing as prescribed by section 113.

(2) CLAIM.—A claim, as required by subsections (b)

through (e) of section 112, shall not be required in a provisional

application.

(3) FEE.—The application shall be accompanied by

the fee required by law. The fee may be submitted after the filing

date of the application, within such period and under such

conditions, including the payment of a surcharge, as may be

prescribed by the Director. Upon failure to submit the fee within

such prescribed period, the application shall be regarded as

abandoned.

(4) FILING DATE.—The filing date of a provisional

application shall be the date on which a specification, with or

without claims, is received in the United States 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), if no such

request is made, the provisional application shall be regarded

as abandoned 12 months after the filing date of such application

and shall not be subject to revival after such 12-month period.

(6) OTHER BASIS FOR PROVISIONAL

APPLICATION.—Subject to all the conditions in this subsection

and section 119(e), and as prescribed by the Director, an

application for patent filed under subsection (a) may be treated

as a provisional application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF

EARLIEST FILING DATE.—A provisional application shall

not be entitled to the right of priority of any other application

under section 119, 365(a), or 386(a) or to the benefit of an earlier

filing date in the United States under section 120, 121, 365(c),

or 386(c).

(8) APPLICABLE PROVISIONS.—The provisions

of this title relating to applications for patent shall apply to

provisional applications for patent, except as otherwise provided,

and except that provisional applications for patent shall not be

subject to sections 131 and 135.

provisions of subsection (a), the Director may prescribe the

conditions, including the payment of a surcharge, under which

a reference made upon the filing of an application under

subsection (a) to a previously filed application, specifying the

previously filed application by application number and the

intellectual property authority or country in which the application

was filed, shall constitute the specification and any drawings of

the subsequent application for purposes of a filing date. A copy

of the specification and any drawings of the previously filed

application shall be submitted within such period and under

such conditions as may be prescribed by the Director. A failure

to submit the copy of the specification and any drawings of the

previously filed application within the prescribed period shall

result in the application being regarded as abandoned. Such

application shall be treated as having never been filed, unless—

(1) the application is revived under section 27; and

(2) a copy of the specification and any drawings of the

previously filed application are submitted to the Director.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat.

319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108

Stat. 4986; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),

113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A),

4801(a); Sept. 16, 2011, Public Law 112-29, secs. 4 and 20(j)

(effective Sept. 16, 2012) and sec. 3(e) (effective March 16,

2013), 125 Stat. 284; Dec. 18, 2012, Public Law 112-211, sec.

201(a)(1), 126 Stat. 1531; subsection (b)(7) amended Dec. 18,

2012, Public Law 112-211, sec. 102(3) (effective May 13, 2015),

126 Stat 1531.)

35 U.S.C. 111 (pre-PLT (AIA)) Application.

[Editor Note: Applicable to any patent application filed on or

after September 16, 2012, and before December 18, 2013. See

35 U.S.C. 111 or 35 U.S.C. 111 (pre-AIA) for the law otherwise

applicable.]

(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;

March 2021L-23

§ 111 (pre-PLT

(AIA))

PATENT LAWS

(B) a drawing as prescribed by section 113; and

115.

(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 by section 112(a);

and

(B) a drawing as prescribed by section 113.

(2) CLAIM.—A claim, as required by subsections (b)

through (e) of section 112, shall not be required in a provisional

application.

(3) FEE.—

(A) The application must be accompanied by the

fee required by law.

(B) The fee may be submitted after the

specification and any required drawing are submitted, within

such period and under such conditions, including the payment

of a surcharge, as may be prescribed by the Director.

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), if no such

request is made, the provisional application shall be regarded

as abandoned 12 months after the filing date of such application

and shall not be subject to revival after such 12-month period.

(6) OTHER BASIS FOR PROVISIONAL

APPLICATION.—Subject to all the conditions in this subsection

and section 119(e), and as prescribed by the Director, an

application for patent filed under subsection (a) may be treated

as a provisional application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF

EARLIEST FILING DATE.—A provisional application shall

not be entitled to the right of priority of any other application

under section 119 or 365(a) or to the benefit of an earlier filing

date in the United States under section 120, 121, or 365(c).

(8) APPLICABLE PROVISIONS.—The provisions

of this title relating to applications for patent shall apply to

provisional applications for patent, except as otherwise provided,

and except that provisional applications for patent shall not be

subject to sections 131 and 135.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat.

319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108

Stat. 4986; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),

113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A),

4801(a); Sept. 16, 2011, Public Law 112-29, secs. 4 and 20(j)

(effective Sept. 16, 2012) and sec. 3(e) (effective March 16,

2013), 125 Stat. 284.)

35 U.S.C. 111 (pre-AIA) Application.

[Editor Note: Not applicable to any patent application filed on

or after September 16, 2012. See 35 U.S.C. 111 or 35 U.S.C.

111 (pre-PLT (AIA)) for the law otherwise applicable.]

(a) IN GENERAL.—

(1) WRITTEN APPLICATION.—An application for

patent shall be made, or authorized to be made, by the inventor,

except as otherwise provided in this title, in writing to the

Director.

(2) CONTENTS.—Such application shall include—

(A) a specification as prescribed by section 112 of

this title;

(B) a drawing as prescribed by section 113 of this

title; and

section 115 of this title.

(3) FEE AND OATH.—The application must be

accompanied by the fee required by law. The fee and oath may

be submitted after the specification and any required drawing

are submitted, within such period and under such conditions,

including the payment of a surcharge, as may be prescribed by

the Director.

(4) FAILURE TO SUBMIT.—Upon failure to submit

the fee and oath within such prescribed period, the application

shall be regarded as abandoned, unless it is shown to the

satisfaction of the Director that the delay in submitting the fee

and oath was unavoidable or unintentional. The filing date of

an application shall be the date on which the specification and

any required drawing are received in the Patent and Trademark

Office.

(b) PROVISIONAL APPLICATION.—

(1) AUTHORIZATION.—A provisional application

for patent shall be made or authorized to be made by the

L-24March 2021

MANUAL OF PATENT EXAMINING PROCEDURE§ 111 (pre-AIA)

inventor, except as otherwise provided in this title, in writing

to the Director. Such application shall include—

(A) a specification as prescribed by the first

paragraph of section 112 of this title; and

(B) a drawing as prescribed by section 113 of this

title.

(2) CLAIM.—A claim, as required by the second

through fifth paragraphs of section 112, shall not be required in

a provisional application.

(3) FEE.—

(A) The application must be accompanied by the

fee required by law.

(B) The fee may be submitted after the

specification and any required drawing are submitted, within

such period and under such conditions, including the payment

of a surcharge, as may be prescribed by the Director.

prescribed period, the application shall be regarded as

abandoned, unless it is shown to the satisfaction of the Director

that the delay in submitting the fee was unavoidable or

unintentional.

(4) FILING DATE.—The filing date of a provisional

application shall be the date on which the specification and any

required drawing are received in the Patent and Trademark

Office.

(5) ABANDONMENT.—Notwithstanding the absence

of a claim, upon timely request and as prescribed by the Director,

a provisional application may be treated as an application filed

under subsection (a). Subject to section 119(e)(3) of this title,

if no such request is made, the provisional application shall be

regarded as abandoned 12 months after the filing date of such

application and shall not be subject to revival after such

12-month period.

(6) OTHER BASIS FOR PROVISIONAL

APPLICATION.—Subject to all the conditions in this subsection

and section 119(e) of this title, and as prescribed by the Director,

an application for patent filed under subsection (a) may be

treated as a provisional application for patent.

(7) NO RIGHT OF PRIORITY OR BENEFIT OF

EARLIEST FILING DATE.—A provisional application shall

not be entitled to the right of priority of any other application

under section 119 or 365(a) of this title or to the benefit of an

earlier filing date in the United States under section 120, 121,

or 365(c) of this title.

(8) APPLICABLE PROVISIONS.—The provisions

of this title relating to applications for patent shall apply to

provisional applications for patent, except as otherwise provided,

and except that provisional applications for patent shall not be

subject to sections 115, 131, 135, and 157 of this title.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat.

319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108

Stat. 4986; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),

113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A),

4801(a)).)

35 U.S.C. 112 Specification.

[Editor Note: Applicable to any patent application filed on or

after September 16, 2012. See 35 U.S.C. 112 (pre-AIA) for the

law otherwise applicable.]

(a) IN GENERAL.—The specification shall contain a

written description of the invention, and of the manner and

process of making and using it, in such full, clear, concise, and

exact terms as to enable any person skilled in the art to which

it pertains, or with which it is most nearly connected, to make

and use the same, and shall set forth the best mode contemplated

by the inventor or joint inventor of carrying out the invention.

(b) CONCLUSION.—The specification shall conclude

with one or more claims particularly pointing out and distinctly

claiming the subject matter which the inventor or a joint inventor

regards as the invention.

the nature of the case admits, in dependent or multiple dependent

form.

(d) REFERENCE IN DEPENDENT FORMS.—Subject

to subsection (e), a claim in dependent form shall contain a

reference to a claim previously set forth and then specify a

further limitation of the subject matter claimed. A claim in

dependent form shall be construed to incorporate by reference

all the limitations of the claim to which it refers.

(e) REFERENCE IN MULTIPLE DEPENDENT

FORM.—A claim in multiple dependent form shall contain a

reference, in the alternative only, to more than one claim

previously set forth and then specify a further limitation of the

subject matter claimed. A multiple dependent claim shall not

serve as a basis for any other multiple dependent claim. A

multiple dependent claim shall be construed to incorporate by

reference all the limitations of the particular claim in relation

to which it is being considered.

(f) ELEMENT IN CLAIM FOR A COMBINATION.—An

element in a claim for a combination may be expressed as a

means or step for performing a specified function without the

recital of structure, material, or acts in support thereof, and such

claim shall be construed to cover the corresponding structure,

material, or acts described in the specification and equivalents

thereof.

(Amended July 24, 1965, Public Law 89-83, sec. 9, 79 Stat.

261; Nov. 14, 1975, Public Law 94-131, sec. 7, 89 Stat. 691;

amended Sept. 16, 2011, Public Law 112-29, sec. 4(c), 125 Stat.

284, effective Sept. 16, 2012.)

35 U.S.C. 112 (pre-AIA) Specification.

[Editor Note: Not applicable to any patent application filed on

or after September 16, 2012. See 35 U.S.C. 112 for the law

otherwise applicable.]

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

March 2021L-25

§ 112 (pre-AIA)PATENT LAWS

forth the best mode contemplated by the inventor of carrying

out his invention.

The specification shall conclude with one or more claims

particularly pointing out and distinctly claiming the subject

matter which the applicant regards as his invention.

A claim may be written in independent or, if the nature of the

case admits, in dependent or multiple dependent form.

Subject to the following paragraph, a claim in dependent form

shall contain a reference to a claim previously set forth and then

specify a further limitation of the subject matter claimed. A

claim in dependent form shall be construed to incorporate by

reference all the limitations of the claim to which it refers.

A claim in multiple dependent form shall contain a reference,

in the alternative only, to more than one claim previously set

forth and then specify a further limitation of the subject matter

claimed. A multiple dependent claim shall not serve as a basis

for any other multiple dependent claim. A multiple dependent

claim shall be construed to incorporate by reference all the

limitations of the particular claim in relation to which it is being

considered.

An element in a claim for a combination may be expressed as

a means or step for performing a specified function without the

recital of structure, material, or acts in support thereof, and such

claim shall be construed to cover the corresponding structure,

material, or acts described in the specification and equivalents

thereof.

(Amended July 24, 1965, Public Law 89-83, sec. 9, 79 Stat.

261; Nov. 14, 1975, Public Law 94-131, sec. 7, 89 Stat. 691.)

35 U.S.C. 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.

(Amended Nov. 14, 1975, Public Law 94-131, sec. 8, 89 Stat.

691; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113

Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)

35 U.S.C. 114 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.

(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),

113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)

35 U.S.C. 115 Inventor’s oath or declaration.

[Editor Note: Applicable to any patent application filed on or

after September 16, 2012. See 35 U.S.C. 115 (pre-AIA) for the

law otherwise applicable.]

(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.

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;

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MANUAL OF PATENT EXAMINING PROCEDURE§ 113

(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

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.—The applicant for patent shall

provide each required oath or declaration under subsection (a),

substitute statement under subsection (d), or recorded assignment

meeting the requirements of subsection (e) no later than the date

on which the issue fee for the patent is paid.

(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 that claims the benefit under

section 120 , 121, 365(c), or 386(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

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.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 14(a),

96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec. 2222(d), 112

Stat. 2681-818; amended Sept. 16, 2011, Public Law 112-29,

sec. 4(a) (effective Sept. 16, 2012), 125 Stat. 284; subsections

(f) and (g)(1) amended Jan. 14, 2013, Public Law 112-274, sec.

1(f), 126 Stat. 2456; subsection (g)(1) amended Dec. 18, 2012,

Public Law 112-211, sec. 102(4) (effective May 13, 2015), 126

Stat. 1531.)

35 U.S.C. 115 (pre-AIA) Oath of applicant.

[Editor Note: Not applicable to any patent application filed on

or after September 16, 2012. See 35 U.S.C. 115 for the law

otherwise applicable.]

The applicant shall make oath that he believes himself to be the

original and first inventor of the process, machine, manufacture,

or composition of matter, or improvement thereof, for which he

solicits a patent; and shall state of what country he is a citizen.

Such oath may be made before any person within the United

States authorized by law to administer oaths, or, when made in

a foreign country, before any diplomatic or consular officer of

the United States authorized to administer oaths, or before any

officer having an official seal and authorized to administer oaths

in the foreign country in which the applicant may be, whose

authority is proved by certificate of a diplomatic or consular

officer of the United States, or apostille of an official designated

by a foreign country which, by treaty or convention, accords

like effect to apostilles of designated officials in the United

States. Such oath is valid if it complies with the laws of the state

or country where made. When the application is made as

provided in this title by a person other than the inventor, the

oath may be so varied in form that it can be made by him. For

purposes of this section, a consular officer shall include any

United States citizen serving overseas, authorized to perform

notarial functions pursuant to section 1750 of the Revised

Statutes, as amended (22 U.S.C. 4221).

(Amended Aug. 27, 1982, Public Law 97-247, sec. 14(a),

96 Stat. 321; Oct. 21, 1998, Pub. L. 105-277, sec. 2222(d), 112

Stat. 2681-818.)

35 U.S.C. 116 Inventors.

[Editor Note: Applicable to proceedings commenced on or after

Sept. 16, 2012. See 35 U.S.C. 116 (pre-AIA) for the law

otherwise applicable.]

March 2021L-27

§ 116PATENT LAWS

(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.

APPLICATION.—Whenever through error a person is named

in an application for patent as the inventor, or through an error

an inventor is not named in an application, the Director may

permit the application to be amended accordingly, under such

terms as he prescribes.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(a), 96 Stat.

320; Nov. 8, 1984, Public Law 98-622, sec. 104(a), 98 Stat.

3384; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113

Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended Sept.

16, 2011, Public Law 112-29, sec. 20(a), 125 Stat. 284, effective

Sept. 16, 2012.)

35 U.S.C. 116 (pre-AIA) Inventors.

[Editor Note: Not applicable to proceedings commenced on or

after September 16, 2012. See 35 U.S.C. 116 for the law

otherwise applicable.]

When an invention is made by two or more persons jointly, they

shall apply for patent jointly and each make the required oath,

except as otherwise provided in this title. Inventors may apply

for a patent jointly even though (1) they did not physically work

together or at the same time, (2) each did not make the same

type or amount of contribution, or (3) each did not make a

contribution to the subject matter of every claim of the patent.

If a joint inventor refuses to join in an application for patent or

cannot be found or reached after diligent effort, the application

may be made by the other inventor on behalf of himself and the

omitted inventor. The Director, on proof of the pertinent facts

and after such notice to the omitted inventor as he prescribes,

may grant a patent to the inventor making the application, subject

to the same rights which the omitted inventor would have had

if he had been joined. The omitted inventor may subsequently

join in the application.

Whenever through error a person is named in an application for

patent as the inventor, or through an error an inventor is not

named in an application, and such error arose without any

deceptive intention on his part, the Director may permit the

application to be amended accordingly, under such terms as he

prescribes.

(Amended Aug. 27, 1982, Public Law 97-247, sec. 6(a), 96 Stat.

320; Nov. 8, 1984, Public Law 98-622, sec. 104(a), 98 Stat.

3384; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113

Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)

35 U.S.C. 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.

35 U.S.C. 118 Filing by other than inventor.

[Editor Note: Applicable to any patent application filed on or

after September 16, 2012. See 35 U.S.C. 118 (pre-AIA) for the

law otherwise applicable.]

A person to whom the inventor has assigned or is under an

obligation to assign the invention may make an application for

patent. A person who otherwise shows sufficient proprietary

interest in the matter may make an application for patent on

behalf of and as agent for the inventor on proof of the pertinent

facts and a showing that such action is appropriate to preserve

the rights of the parties. If the Director grants a patent on an

application filed under this section by a person other than the

inventor, the patent shall be granted to the real party in interest

and upon such notice to the inventor as the Director considers

to be sufficient.

(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),

113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)); amended

Sept. 16, 2011, Public Law 112-29, sec. 4(b), 125 Stat. 284,

effective Sept. 16, 2012.)

35 U.S.C. 118 (pre-AIA) Filing by other than inventor.

[Editor Note: Not applicable to any patent application filed on

or after September 16, 2012. See 35 U.S.C. 118 for the law

otherwise applicable.]

Whenever an inventor refuses to execute an application for

patent, or cannot be found or reached after diligent effort, a

person to whom the inventor has assigned or agreed in writing

to assign the invention or who otherwise shows sufficient

proprietary interest in the matter justifying such action, may

make application for patent on behalf of and as agent for the

inventor on proof of the pertinent facts and a showing that such

action is necessary to preserve the rights of the parties or to

prevent irreparable damage; and the Director may grant a patent

to such inventor upon such notice to him as the Director deems

sufficient, and on compliance with such regulations as he

prescribes.

(Amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9),

113 Stat. 1501A-582 (S. 1948 sec. 4732(a)(10)(A)).)

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MANUAL OF PATENT EXAMINING PROCEDURE§ 116 (pre-AIA)

35 U.S.C. 119 Benefit of earlier filing date; right of priority.

[Editor Note: 35 U.S.C. 119(a) as set forth below is only

applicable to patent applications subject to the first inventor to

file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35

U.S.C. 119(a) (pre-AIA) for the law otherwise applicable.]

(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 12

months from the earliest date on which such foreign application

was filed. The Director may prescribe regulations, including the

requirement for payment of the fee specified in section 41(a)(7),

pursuant to which the 12-month period set forth in this

subsection may be extended by an additional 2 months if the

delay in filing the application in this country within the 12-month

period was unintentional.

(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 requirement for payment of the fee specified in section

41(a)(7), 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.

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 for an invention disclosed in the manner

provided by section 112(a) (other than the requirement to

disclose the best mode) in a provisional application filed under

section 111(b), by an inventor or inventors named in the

provisional application, shall have the same effect, as to such

invention, as though filed on the date of the provisional

application filed under section 111(b), if the application for

patent filed under section 111(a) or section 363 is filed not later

than 12 months after the date on which the provisional

application was filed and if it contains or is amended to contain

a specific reference to the provisional application. The Director

may prescribe regulations, including the requirement for

payment of the fee specified in section 41(a)(7), pursuant to

which the 12-month period set forth in this subsection may be

extended by an additional 2 months if the delay in filing the

application under section 111(a) or section 363 within the

12-month period was unintentional. No application shall be

entitled to the benefit of an earlier filed provisional application

under this subsection unless an amendment containing the

specific reference to the earlier filed provisional application is

submitted at such time during the pendency of the application

as required by the Director. The Director may consider the

failure to submit such an amendment within that time period as

a waiver of any benefit under this subsection. The Director may

establish procedures, including the payment of the fee specified

in section 41(a)(7), to accept an unintentionally delayed

submission of an amendment under this subsection.

(2) A provisional application filed under section 111(b)

may not be relied upon in any proceeding in the Patent and

Trademark Office unless the fee set forth in subparagraph (A)

or (C) of section 41(a)(1) has been paid.

(3) If the day that is 12 months after the filing date of

a provisional application falls on a Saturday, Sunday, or Federal

holiday within the District of Columbia, the period of pendency

of the provisional application shall be extended to the next

succeeding secular or business day. For an application for patent

filed under section 363 in a Receiving Office other than the

Patent and Trademark Office, the 12-month and additional

2-month period set forth in this subsection shall be extended as

provided under the treaty and Regulations as defined in section

351.

(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); and

March 2021L-29

§ 119PATENT LAWS

(2) the term “UPOV Contracting Party” means a

member of the International Convention for the Protection of

New Varieties of Plants.

(Amended Oct. 3, 1961, Public Law 87-333, sec. 1, 75 Stat.

748; July 28, 1972, Public Law 92-358, sec. 1, 86 Stat. 501;

Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; Dec. 8,

1994, Public Law 103-465, sec. 532(b)(1), 108 Stat. 4985;

subsection (b) amended Nov. 29, 1999, Public Law 106-113,

sec. 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 sec.4503(a));

subsection (e) amended Nov. 29, 1999, Public Law 106-113,

sec. 1000(a)(9), 113 Stat. 1501A-564, 588, 589 (S. 1948 secs.

4503(b)(2), 4801 and 4802; subsections (f) and (g) added Nov.

29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat.

1501A-589 (S. 1948 sec. 4802); subsections (e), (g) amended

Sept. 16, 2011, Public Law 112-29, secs. 15(b) (effective Sept.

16, 2011) and 20(j) (effective Sept. 16, 2012), 125 Stat. 284;

subsection (a) amended Sept. 16, 2011, Public Law 112-29, sec.

3(g) (effective March 16, 2013), 125 Stat. 284; subsections (a)

and (e), Dec. 18, 2012, Public Law 112-211, sec. 201(c)(1)(A),

126 Stat. 1527; subsection (b)(2), Dec. 18, 2012, Public Law

112-211, sec. 202(b)(2), 126 Stat. 1536.)

35 U.S.C. 119 (pre-AIA) Benefit of earlier filing date; right

of priority.

[Editor Note: pre-AIA 35 U.S.C. 119(a) as set forth below is

applicable to patent applications not subject to the first inventor

to file provisions of the AIA (see 35 U.S.C. 100 (note)). See 35

U.S.C. 119(a) for the law otherwise applicable.]