35 U.S.C. 202 Disposition of rights.
[Editor Note: 35 U.S.C. 202(c)(2) and (c)(3) as set forth below are applicable only 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. 202(c)(2) and (c)(3) (pre-AIA) for the law otherwise applicable.]
(a) Each nonprofit organization or small business firm may, within a reasonable time after disclosure as required by paragraph (c)(1) of this section, elect to retain title to any subject invention: Provided, however, That a funding agreement may provide otherwise (i) when the contractor is not located in the United States or does not have a place of business located in the United States or is subject to the control of a foreign government, (ii) in exceptional circumstances when it is determined by the agency that restriction or elimination of the right to retain title to any subject invention will better promote the policy and objectives of this chapter, (iii) when it is determined by a Government authority which is authorized by statute or Executive order to conduct foreign intelligence or counterintelligence activities that the restriction or elimination of the right to retain title to any subject invention is necessary to protect the security of such activities, or (iv) when the funding agreement includes the operation of a Government-owned, contractor-operated facility of the Department of Energy primarily dedicated to that Department’s naval nuclear propulsion or weapons related programs and all funding agreement limitations under this subparagraph on the contractor’s right to elect title to a subject invention are limited to inventions occurring under the above two programs of the Department of Energy. The rights of the nonprofit organization or small business firm shall be subject to the provisions of paragraph (c) of this section and the other provisions of this chapter.
(b) (1) The rights of the Government under subsection (a) shall not be exercised by a Federal agency unless it first determines that at
least one of the conditions identified in clauses (i) through (iii) of subsection (a) exists. Except in the case of subsection (a)(iii), the agency shall file with the Secretary of Commerce, within thirty days after the award of the applicable funding agreement, a copy of such determination. In the case of a determination under subsection (a)(ii), the statement shall include an analysis justifying the determination. In the case of determinations applicable to funding agreements with small business firms, copies shall also be sent to the Chief Counsel for Advocacy of the Small Business Administration. If the Secretary of Commerce believes that any individual determination or pattern of determinations is contrary to the policies and objectives of this chapter or otherwise not in conformance with this chapter, the Secretary shall so advise the head of the agency concerned and the Administrator of the Office of Federal Procurement Policy, and recommend corrective actions.
(2) Whenever the Administrator of the Office of Federal Procurement Policy has determined that one or more Federal agencies are utilizing the authority of clause (i) or (ii) of subsection (a) of this section in a manner that is contrary to the policies and objectives of this chapter the Administrator is authorized to issue regulations describing classes of situations in which agencies may not exercise the authorities of those clauses.
(3) If the contractor believes that a determination is contrary to the policies and objectives of this chapter or constitutes an abuse of discretion by the agency, the determination shall be subject to section 203(b) .
(c) Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following:
(1) That the contractor disclose each subject invention to the Federal agency within a reasonable time after it becomes known to contractor personnel responsible for the administration of patent matters, and that the Federal Government may receive title to any subject invention not disclosed to it within such time.
(2) That the contractor make a written election within two years after disclosure to the Federal agency (or such additional time as may be approved by the Federal agency) whether the contractor will retain title to a subject invention: Provided, That in any case where the 1-year period referred to in section 102(b) would end before the end of that 2-year period, the period for election may be shortened by the Federal agency to a date that is not more than sixty days before the end of that 1-year period: And provided further, That the Federal Government may receive title to any subject invention in which the contractor does not elect to retain rights or fails to elect rights within such times.
(3) That a contractor electing rights in a subject invention agrees to file a patent application prior to the expiration of the 1-year period referred to in section 102(b), and shall thereafter file corresponding patent applications in other countries in which it wishes to retain title within reasonable times, and that the Federal Government may receive title to any subject inventions in the United States or other countries in which the contractor has not filed patent applications on the subject invention within such times.
(4) With respect to any invention in which the contractor elects rights, the Federal agency shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention throughout the world: Provided, That the funding agreement may provide for such additional rights, including the right to assign or have assigned foreign patent rights in the subject invention, as are determined by the agency as necessary for meeting the obligations of the United States under any treaty, international agreement, arrangement of cooperation, memorandum of understanding, or similar arrangement, including military agreements relating to weapons development and production.
(5) The right of the Federal agency to require periodic reporting on the utilization or efforts at obtaining utilization that are being made by the contractor or his licensees or assignees: Provided, That any such information, as well as any information on utilization or efforts at obtaining utilization obtained as part of a proceeding under section 203 of this chapter shall be treated by the Federal agency as commercial and financial information obtained from a person and
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privileged and confidential and not subject to disclosure under section 552 of title 5.
(6) An obligation on the part of the contractor, in the event a United States patent application is filed by or on its behalf or by any assignee of the contractor, to include within the specification of such application and any patent issuing thereon, a statement specifying that the invention was made with Government support and that the Government has certain rights in the invention.
(7) In the case of a nonprofit organization, (A) a prohibition upon the assignment of rights to a subject invention in the United States without the approval of the Federal agency, except where such assignment is made to an organization which has as one of its primary functions the management of inventions (provided that such assignee shall be subject to the same provisions as the contractor); (B) a requirement that the contractor share royalties with the inventor; (C) except with respect to a funding agreement for the operation of a Government-owned-contractor-operated facility, a requirement that the balance of any royalties or income earned by the contractor with respect to subject inventions, after payment of expenses (including payments to inventors) incidental to the administration of subject inventions, be utilized for the support of scientific research, or education; (D) a requirement that, except where it is determined to be infeasible following a reasonable inquiry, a preference in the licensing of subject inventions shall be given to small business firms; and (E) with respect to a funding agreement for the operation of a Government-owned-contractor-operator facility, requirements (i) that after payment of patenting costs, licensing costs, payments to inventors, and other expenses incidental to the administration of subject inventions, 100 percent of the balance of any royalties or income earned and retained by the contractor during any fiscal year, up to an amount equal to 5 percent of the annual budget of the facility, shall be used by the contractor for scientific research, development, and education consistent with the research and development mission and objectives of the facility, including activities that increase the licensing potential of other inventions of the facility provided that if said balance exceeds 5 percent of the annual budget of the facility, that 15 percent of such excess shall be paid to the Treasury of the United States and the remaining 85 percent shall be used for the same purposes described above in this clause; and (ii) that, to the extent it provides the most effective technology transfer, the licensing of subject inventions shall be administered by contractor employees on location at the facility.
(8) The requirements of sections 203 and 204 of this chapter. (d) If a contractor does not elect to retain title to a subject
invention in cases subject to this section, the Federal agency may consider and after consultation with the contractor grant requests for retention of rights by the inventor subject to the provisions of this Act and regulations promulgated hereunder.
(e) In any case when a Federal employee is a coinventor of any invention made with a nonprofit organization, a small business firm, or a non-Federal inventor, the Federal agency employing such coinventor may, for the purpose of consolidating rights in the invention and if it finds that it would expedite the development of the invention—
(1) license or assign whatever rights it may acquire in the subject invention to the nonprofit organization, small business firm, or non-Federal inventor in accordance with the provisions of this chapter; or
(2) acquire any rights in the subject invention from the nonprofit organization, small business firm, or non-Federal inventor, but only to the extent the party from whom the rights are acquired voluntarily enters into the transaction and no other transaction under this chapter is conditioned on such acquisition.
(f) (1) No funding agreement with a small business firm or nonprofit organization shall contain a provision allowing a Federal agency to require the licensing to third parties of inventions owned by the contractor that are not subject inventions unless such provision has been approved by the head of the agency and a written justification has been signed by the head of the agency. Any such provision shall clearly state whether the licensing may be required in connection with the practice of a subject invention, a specifically identified work object, or
both. The head of the agency may not delegate the authority to approve provisions or sign justifications required by this paragraph.
(2) A Federal agency shall not require the licensing of third parties under any such provision unless the head of the agency determines that the use of the invention by others is necessary for the practice of a subject invention or for the use of a work object of the funding agreement and that such action is necessary to achieve the practical application of the subject invention or work object. Any such determination shall be on the record after an opportunity for an agency hearing. Any action commenced for judicial review of such determination shall be brought within sixty days after notification of such determination.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3020; subsection (b)(4) added and subsections (a), (b)(1), (b)(2), (c)(4), (c)(5), and (c)(7) amended Nov. 8, 1984, Public Law 98-620, sec. 501, 98 Stat. 3364; subsection (b)(3) amended Dec. 10, 1991, Public Law 102-204, sec. 10, 105 Stat. 1641; subsection (a) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-583 (S. 1948 sec. 4732(a)(12)); subsection (e) amended Nov. 1, 2000, Public Law 106-404, sec. 6(1), 114 Stat. 1745; subsections (b)(4), (c)(4), and (c)(5) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; paragraph (d)(4) redesignated as (d)(3) and former paragraph (d)(3) struck Public Law 111-8, div. G, title I, sec. 1301(h), Mar. 11, 2009, 123 Stat. 829; subsection (c)(7)(E)(i) amended Sept. 16, 2011, Public Law 112-29, sec. 13, 125 Stat. 284; subsections (b)(3) and (c)(7)(D) amended by Public Law 112-29, sec. 20(i)(effective Sept. 16, 2012), and subsections (c)(2) and (c)(3) amended by Public Law 112-29, sec. 3(g) (effective March 16, 2013), 125 Stat. 284.)
35 U.S.C. 202 (pre-AIA) Disposition of rights.
[Editor Note: Pre-AIA 35 U.S.C. 202(c)(2) and (c)(3) as set forth below are not 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. 202(c)(2) and (c)(3) for the law otherwise applicable.]
*****
(c) Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following:
*** (2) That the contractor make a written election within two
years after disclosure to the Federal agency (or such additional time as may be approved by the Federal agency) whether the contractor will retain title to a subject invention: Provided, That in any case where publication, on sale, or public use, has initiated the one year statutory period in which valid patent protection can still be obtained in the United States, the period for election may be shortened by the Federal agency to a date that is not more than sixty days prior to the end of the statutory period: And provided further, That the Federal Government may receive title to any subject invention in which the contractor does not elect to retain rights or fails to elect rights within such times.
(3) That a contractor electing rights in a subject invention agrees to file a patent application prior to any statutory bar date that may occur under this title due to publication, on sale, or public use, and shall thereafter file corresponding patent applications in other countries in which it wishes to retain title within reasonable times, and that the Federal Government may receive title to any subject inventions in the United States or other countries in which the contractor has not filed patent applications on the subject invention within such times.
***
*****
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3020; subsection (b)(4) added and subsections (a), (b)(1), (b)(2), (c)(4), (c)(5), and (c)(7) amended Nov. 8, 1984, Public Law 98-620, sec. 501, 98 Stat.
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3364; subsection (b)(3) amended Dec. 10, 1991, Public Law 102-204, sec. 10, 105 Stat. 1641; subsection (a) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-583 (S. 1948 sec. 4732(a)(12)); subsection (e) amended Nov. 1, 2000, Public Law 106-404, sec. 6(1), 114 Stat. 1745; subsections (b)(4), (c)(4), and (c)(5) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; paragraph (d)(4) redesignated as (d)(3) and former paragraph (d)(3) struck Public Law 111-8, div. G, title I, sec. 1301(h), Mar. 11, 2009, 123 Stat. 829; subsection (c)(7)(E)(i) amended Sept. 16, 2011, Public Law 112-29, sec. 13, 125 Stat. 284; subsections (b)(3) and (c)(7)(D) amended by Public Law 112-29, sec. 20(i) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 203 March-in rights. (a) With respect to any subject invention in which a small business
firm or nonprofit organization has acquired title under this chapter, the Federal agency under whose funding agreement the subject invention was made shall have the right, in accordance with such procedures as are provided in regulations promulgated hereunder, to require the contractor, an assignee, or exclusive licensee of a subject invention to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant or applicants, upon terms that are reasonable under the circumstances, and if the contractor, assignee, or exclusive licensee refuses such request, to grant such a license itself, if the Federal agency determines that such —
(1) action is necessary because the contractor or assignee has not taken, or is not expected to take within a reasonable time, effective steps to achieve practical application of the subject invention in such field of use;
(2) action is necessary to alleviate health or safety needs which are not reasonably satisfied by the contractor, assignee, or their licensees;
(3) action is necessary to meet requirements for public use specified by Federal regulations and such requirements are not reasonably satisfied by the contractor, assignee, or licensees; or
(4) action is necessary because the agreement required by section 204 has not been obtained or waived or because a licensee of the exclusive right to use or sell any subject invention in the United States is in breach of its agreement obtained pursuant to section 204.
(b) A determination pursuant to this section or section 202(b)(4) shall not be subject to chapter 71 of title 41. An administrative appeals procedure shall be established by regulations promulgated in accordance with section 206. Additionally, any contractor, inventor, assignee, or exclusive licensee adversely affected by a determination under this section may, at any time within sixty days after the determination is issued, file a petition in the United States Court of Federal Claims, which shall have jurisdiction to determine the appeal on the record and to affirm, reverse, remand or modify, as appropriate, the determination of the Federal agency. In cases described in paragraphs (1) and (3) of subsection (a), the agency’s determination shall be held in abeyance pending the exhaustion of appeals or petitions filed under the preceding sentence.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3022; amended Nov. 8, 1984, Public Law 98-620, sec. 501(9), 98 Stat. 3367; Oct. 29, 1992, Public Law 102-572, sec. 902(b)(1), 106 Stat. 4516; amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; subsection (b) amended Jan. 4, 2011, Public Law 111-350, sec. 5(i)(2), 124 Stat. 3850.)
35 U.S.C. 204 Preference for United States industry.
Notwithstanding any other provision of this chapter, no small business firm or nonprofit organization which receives title to any subject invention and no assignee of any such small business firm or nonprofit organization shall grant to any person the exclusive right to use or sell any subject invention in the United States unless such person agrees that any products embodying the subject invention or produced through the use of the subject invention will be manufactured substantially in
the United States. However, in individual cases, the requirement for such an agreement may be waived by the Federal agency under whose funding agreement the invention was made upon a showing by the small business firm, nonprofit organization, or assignee that reasonable but unsuccessful efforts have been made to grant licenses on similar terms to potential licensees that would be likely to manufacture substantially in the United States or that under the circumstances domestic manufacture is not commercially feasible.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3023.)
35 U.S.C. 205 Confidentiality.
Federal agencies are authorized to withhold from disclosure to the public information disclosing any invention in which the Federal Government owns or may own a right, title, or interest (including a nonexclusive license) for a reasonable time in order for a patent application to be filed. Furthermore, Federal agencies shall not be required to release copies of any document which is part of an application for patent filed with the United States Patent and Trademark Office or with any foreign patent office.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3023.)
35 U.S.C. 206 Uniform clauses and regulations.
The Secretary of Commerce may issue regulations which may be made applicable to Federal agencies implementing the provisions of sections 202 through 204 of this chapter and shall establish standard funding agreement provisions required under this chapter. The regulations and the standard funding agreement shall be subject to public comment before their issuance.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3023; amended Nov. 8, 1984, Public Law 98-620, sec. 501(10), 98 Stat. 3367.)
35 U.S.C. 207 Domestic and foreign protection of federally owned inventions.
(a) Each Federal agency is authorized to —
(1) apply for, obtain, and maintain patents or other forms of protection in the United States and in foreign countries on inventions in which the Federal Government owns a right, title, or interest;
(2) grant nonexclusive, exclusive, or partially exclusive licenses under federally owned inventions, royalty-free or for royalties or other consideration, and on such terms and conditions, including the grant to the licensee of the right of enforcement pursuant to the provisions of chapter 29 as determined appropriate in the public interest;
(3) undertake all other suitable and necessary steps to protect and administer rights to federally owned inventions on behalf of the Federal Government either directly or through contract, including acquiring rights for and administering royalties to the Federal Government in any invention, but only to the extent the party from whom the rights are acquired voluntarily enters into the transaction, to facilitate the licensing of a federally owned invention; and
(4) transfer custody and administration, in whole or in part, to another Federal agency, of the right, title, or interest in any federally owned invention.
(b) For the purpose of assuring the effective management of Government-owned inventions, the Secretary of Commerce authorized to
(1) assist Federal agency efforts to promote the licensing and utilization of Government-owned inventions;
(2) assist Federal agencies in seeking protection and maintaining inventions in foreign countries, including the payment of fees and costs connected therewith; and
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(3) consult with and advise Federal agencies as to areas of science and technology research and development with potential for commercial utilization.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3023; amended Nov. 8, 1984, Public Law 98-620, sec. 501(11), 98 Stat. 3367; subsections (a)(2) and (a)(3) amended Nov. 1, 2000, Public Law 106-404, sec. 6(2), 114 Stat. 1745; amended Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 208 Regulations governing Federal licensing.
The Secretary of Commerce is authorized to promulgate regulations specifying the terms and conditions upon which any federally owned invention, other than inventions owned by the Tennessee Valley Authority, may be licensed on a nonexclusive, partially exclusive, or exclusive basis.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3024; amended Nov. 8, 1984, Public Law 98-620, sec. 501(12), 98 Stat. 3367.)
35 U.S.C. 209 Licensing federally owned inventions. (a) AUTHORITY.—A Federal agency may grant an exclusive
or partially exclusive license on a federally owned invention under section 207(a)(2) only if—
(1) granting the license is a reasonable and necessary incentive to—
(A) call forth the investment capital and expenditures needed to bring the invention to practical application; or
(B) otherwise promote the invention’s utilization by the public;
(2) the Federal agency finds that the public will be served by the granting of the license, as indicated by the applicant’s intentions, plans, and ability to bring the invention to practical application or otherwise promote the invention’s utilization by the public, and that the proposed scope of exclusivity is not greater than reasonably necessary to provide the incentive for bringing the invention to practical application, as proposed by the applicant, or otherwise to promote the invention’s utilization by the public;
(3) the applicant makes a commitment to achieve practical application of the invention within a reasonable time, which time may be extended by the agency upon the applicant’s request and the applicant’s demonstration that the refusal of such extension would be unreasonable;
(4) granting the license will not tend to substantially lessen competition or create or maintain a violation of the Federal antitrust laws; and
(5) in the case of an invention covered by a foreign patent application or patent, the interests of the Federal Government or United States industry in foreign commerce will be enhanced.
(b) MANUFACTURE IN UNITED STATES.—A Federal agency shall normally grant a license under section 207(a)(2) to use or sell any federally owned invention in the United States only to a licensee who agrees that any products embodying the invention or produced through the use of the invention will be manufactured substantially in the United States.
(c) SMALL BUSINESS.—First preference for the granting of any exclusive or partially exclusive licenses under section 207(a)(2) shall be given to small business firms having equal or greater likelihood as other applicants to bring the invention to practical application within a reasonable time.
(d) TERMS AND CONDITIONS.—Any licenses granted under section 207(a)(2) shall contain such terms and conditions as the granting agency considers appropriate, and shall include provisions—
(1) retaining a nontransferable, irrevocable, paid-up license for any Federal agency to practice the invention or have the invention
practiced throughout the world by or on behalf of the Government of the United States;
(2) requiring periodic reporting on utilization of the invention, and utilization efforts, by the licensee, but only to the extent necessary to enable the Federal agency to determine whether the terms of the license are being complied with, except that any such report shall be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5; and
(3) empowering the Federal agency to terminate the license in whole or in part if the agency determines that—
(A) the licensee is not executing its commitment to achieve practical application of the invention, including commitments contained in any plan submitted in support of its request for a license, and the licensee cannot otherwise demonstrate to the satisfaction of the Federal agency that it has taken, or can be expected to take within a reasonable time, effective steps to achieve practical application of the invention;
(B) the licensee is in breach of an agreement described in subsection (b);
(C) termination is necessary to meet requirements for public use specified by Federal regulations issued after the date of the license, and such requirements are not reasonably satisfied by the licensee; or
(D) the licensee has been found by a court of competent jurisdiction to have violated the Federal antitrust laws in connection with its performance under the license agreement.
(e) PUBLIC NOTICE.—No exclusive or partially exclusive license may be granted under section 207(a)(2) unless public notice of the intention to grant an exclusive or partially exclusive license on a federally owned invention has been provided in an appropriate manner at least 15 days before the license is granted, and the Federal agency has considered all comments received before the end of the comment period in response to that public notice. This subsection shall not apply to the licensing of inventions made under a cooperative research and development agreement entered into under section 12 of the Stevenson-Wydler Technology Innovation Act of 1980 (15 U.S.C. 3710a).
(f) PLAN.—No Federal agency shall grant any license under a patent or patent application on a federally owned invention unless the person requesting the license has supplied the agency with a plan for development or marketing of the invention, except that any such plan shall be treated by the Federal agency as commercial and financial information obtained from a person and privileged and confidential and not subject to disclosure under section 552 of title 5.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3024; amended Nov. 1, 2000, Public Law 106-404, sec. 4, 114 Stat. 1743; subsections (d)(2) and (f) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; subsection (d)(1) amended Sept. 16, 2011, Public Law 112-29, sec. 20(i) (effective Sept. 16, 2012), 125 Stat. 284.)
35 U.S.C. 210 Precedence of chapter. (a) This chapter shall take precedence over any other Act which
would require a disposition of rights in subject inventions of small business firms or nonprofit organizations contractors in a manner that is inconsistent with this chapter, including but not necessarily limited to the following:
(1) section 10(a) of the Act of June 29, 1935, as added by title I of the Act of August 14, 1946 (7 U.S.C. 427i(a); 60 Stat. 1085);
(2) section 205(a) of the Act of August 14, 1946 (7 U.S.C. 1624(a); 60 Stat. 1090);
(3) section 501(c) of the Federal Mine Safety and Health Act of 1977 (30 U.S.C. 951(c); 83 Stat. 742);
(4) section 30168(e) of title 49; (5) section 12 of the National Science Foundation Act of
1950 (42 U.S.C. 1871(a); 82 Stat. 360); (6) section 152 of the Atomic Energy Act of 1954 (42 U.S.C.
2182; 68 Stat. 943);
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(7) section 20135 of title 51; (8) section 6 of the Coal Research and Development Act of
1960 (30 U.S.C. 666; 74 Stat. 337); (9) section 4 of the Helium Act Amendments of 1960 (50
U.S.C. 167b; 74 Stat. 920); (10) section 32 of the Arms Control and Disarmament Act
of 1961 (22 U.S.C. 2572; 75 Stat. 634); (11) section 9 of the Federal Nonnuclear Energy Research
and Development Act of 1974 (42 U.S.C. 5908; 88 Stat. 1878); (12) section 5(d) of the Consumer Product Safety Act (15
U.S.C. 2054(d); 86 Stat. 1211); (13) section 3 of the Act of April 5, 1944 (30 U.S.C. 323;
58 Stat. 191); (14) section 8001(c)(3) of the Solid Waste Disposal Act (42
U.S.C. 6981(c); 90 Stat. 2829); (15) section 219 of the Foreign Assistance Act of 1961 (22
U.S.C. 2179; 83 Stat. 806); (16) section 427(b) of the Federal Mine Health and Safety
Act of 1977 (30 U.S.C. 937(b); 86 Stat. 155); (17) section 306(d) of the Surface Mining and Reclamation
Act of 1977 (30 U.S.C. 1226(d); 91 Stat. 455); (18) section 21(d) of the Federal Fire Prevention and Control
Act of 1974 (15 U.S.C. 2218(d); 88 Stat. 1548); (19) section 6(b) of the Solar Photovoltaic Energy Research
Development and Demonstration Act of 1978 (42 U.S.C. 5585(b); 92 Stat. 2516);
(20) section 12 of the Native Latex Commercialization and Economic Development Act of 1978 (7 U.S.C. 178j; 92 Stat. 2533); and
(21) section 408 of the Water Resources and Development Act of 1978 (42 U.S.C. 7879; 92 Stat. 1360). The Act creating this chapter shall be construed to take precedence over any future Act unless that Act specifically cites this Act and provides that it shall take precedence over this Act.
(b) Nothing in this chapter is intended to alter the effect of the laws cited in paragraph (a) of this section or any other laws with respect to the disposition of rights in inventions made in the performance of funding agreements with persons other than nonprofit organizations or small business firms.
(c) Nothing in this chapter is intended to limit the authority of agencies to agree to the disposition of rights in inventions made in the performance of work under funding agreements with persons other than nonprofit organizations or small business firms in accordance with the Statement of Government Patent Policy issued on February 18, 1983, agency regulations, or other applicable regulations or to otherwise limit the authority of agencies to allow such persons to retain ownership of inventions, except that all funding agreements, including those with other than small business firms and nonprofit organizations, shall include the requirements established in section 202(c)(4) and section 203 . Any disposition of rights in inventions made in accordance with the Statement or implementing regulations, including any disposition occurring before enactment of this section, are hereby authorized.
(d) Nothing in this chapter shall be construed to require the disclosure of intelligence sources or methods or to otherwise affect the authority granted to the Director of Central Intelligence by statute or Executive order for the protection of intelligence sources or methods.
(e) The provisions of the Stevenson-Wydler Technology Innovation Act of 1980 shall take precedence over the provisions of this chapter to the extent that they permit or require a disposition of rights in subject inventions which is inconsistent with this chapter.
(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3026; subsection (c) amended Nov. 8, 1984, Public Law 98-620, sec. 501(13), 98 Stat. 3367; subsection (e) added Oct. 20, 1986, Public Law 99-502, sec. 9(c), 100 Stat. 1796; subsection (a)(4) amended July 5, 1994, Public Law 103-272, sec. 5(j), 108 Stat. 1375; subsection (e) amended Mar. 7, 1996, Public Law 104-113, sec. 7, 110 Stat. 779.; subsection (a) amended Nov. 13, 1998, Public Law 105-393, sec. 220(c)(2), 112 Stat. 3625; subsections (a)(11), (a)(20), and (c) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; subsection (a)(8) amended
Aug. 8, 2005, Public Law 109-58, sec. 1009(a)(2), 119 Stat. 934; subsection (a)(7) amended Dec. 18, 2010, Public Law 111-314, sec. 4(c), 124 Stat. 3440; subsection (c) amended amended Sept. 16, 2011, Public Law 112-29, sec. 20(j), 125 Stat. 284, effective Sept. 16, 2012.)
35 U.S.C. 211 Relationship to antitrust laws.
Nothing in this chapter shall be deemed to convey to any person immunity from civil or criminal liability, or to create any defenses to actions, under any antitrust law.
(Added Dec.12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3027.)
35 U.S.C. 212 Disposition of rights in educational awards.
No scholarship, fellowship, training grant, or other funding agreement made by a Federal agency primarily to an awardee for educational purposes will contain any provision giving the Federal agency any rights to inventions made by the awardee.
(Added Nov. 8, 1984, Public Law 98-620, sec. 501(14), 98 Stat. 3368.)
PART III — PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 25 — AMENDMENT AND CORRECTION OF PATENTS
Sec.
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.
35 U.S.C. 251 Reissue of defective patents.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 251 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
(b) MULTIPLE REISSUED PATENTS.— The Director may issue several reissued patents for distinct and separate parts of the thing
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§ 251 (pre-AIA) MANUAL OF PATENT EXAMINING PROCEDURE
patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
(d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
(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, secs. 4(b) and 20(d) (effective Sept, 16, 2012), 125 Stat. 284.)
35 U.S.C. 251 (pre-AIA) Reissue of defective patents.
[Editor Note: Not applicable to any patent application filed on or after September 16, 2012. See 35 U.S.C. 251 for the law otherwise applicable.]
Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
The Director may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant, and upon payment of the required fee for a reissue for each of such reissued patents.
The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent.
No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.
(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. 252 Effect of reissue.
The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.
A reissued patent shall not abridge or affect the right of any person or that person’s successors in business who, prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, 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 unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. 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, used, or imported as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made before the grant of the reissue, and the court may also provide for the continued practice of any process patented by the reissue that is practiced, or for the practice of which substantial preparation was made, before the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(2), 108 Stat. 4989; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(8)).)
35 U.S.C. 253 Disclaimer.
[Editor Note: Applicable to all proceedings commenced on or after September 16, 2012. See 35 U.S.C. 253 (pre-AIA) for the law otherwise applicable.]
(a) IN GENERAL.—Whenever a claim of a patent is invalid the remaining claims shall not thereby be rendered invalid. A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer of any complete claim, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing and recorded in the Patent and Trademark Office, and it shall thereafter be considered as part of the original patent to the extent of the interest possessed by the disclaimant and by those claiming under him.
(b) ADDITIONAL DISCLAIMER OR DEDICATION.—In the manner set forth in subsection (a), any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted or to be granted.
(Amended Jan. 2, 1975, Public Law 93-596, sec. 1, 88 Stat. 1949; amended Sept. 16, 2011, Public Law 112-29, sec. 20(e), 125 Stat. 284, effective Sept. 16, 2012.)
