35 U.S.C. § 261 — Ownership; assignment

Page 104 TITLE 35—PATENTS § 261 the patent that is the subject of the supple- mental examination, then in addition to any other actions the Director is authorized to take, including the cancellation of any claims found to be invalid under section 307 as a result of a re- examination ordered under this section, the Di- rector shall also refer the matter to the Attor- ney General for such further action as the At- torney General may deem appropriate. Any such referral shall be treated as confidential, shall not be included in the file of the patent, and shall not be disclosed to the public unless the United States charges a person with a criminal offense in connection with such referral. (f) RULE OF CONSTRUCTION.—Nothing in this section shall be construed— (1) to preclude the imposition of sanctions based upon criminal or antitrust laws (includ- ing section 1001(a) of title 18, the first section of the Clayton Act, and section 5 of the Fed- eral Trade Commission Act to the extent that section relates to unfair methods of competi- tion); (2) to limit the authority of the Director to investigate issues of possible misconduct and impose sanctions for misconduct in connection with matters or proceedings before the Office; or (3) to limit the authority of the Director to issue regulations under chapter 3 relating to sanctions for misconduct by representatives practicing before the Office. (Added and amended Pub. L. 112–29, §§ 12(a), 20(j), Sept. 16, 2011, 125 Stat. 325, 335.) Editorial Notes REFERENCES IN TEXT The first section of the Clayton Act, referred to in subsec. (f)(1), is classified to section 12 of Title 15, Com- merce and Trade, and section 53 of Title 29, Labor. Section 5 of the Federal Trade Commission Act, re- ferred to in subsec. (f)(1), is classified to section 45 of Title 15, Commerce and Trade. AMENDMENTS 2011—Subsec. (c)(2)(B). Pub. L. 112–29, § 20(j), struck out ‘‘of this title’’ after ‘‘281’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE Pub. L. 112–29, § 12(c), Sept. 16, 2011, 125 Stat. 327, pro- vided that: ‘‘The amendments made by this section [en- acting this section] shall take effect upon the expira- tion of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent issued before, on, or after that effective date.’’ CHAPTER 26—OWNERSHIP AND ASSIGNMENT Sec. 261. Ownership; assignment. 262. Joint owners. § 261. Ownership; assignment Subject to the provisions of this title, patents shall have the attributes of personal property. The Patent and Trademark Office shall main- tain a register of interests in patents and appli- cations for patents and shall record any docu- ment related thereto upon request, and may re- quire a fee therefor. Applications for patent, patents, or any inter- est therein, shall be assignable in law by an in- strument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States. A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States, or, in a foreign country, of a diplomatic or consular officer of the United States or an officer author- ized to administer oaths whose authority is proved by a certificate of a diplomatic or con- sular officer of the United States, or apostille of an official designated by a foreign country which, by treaty or convention, accords like ef- fect to apostilles of designated officials in the United States, shall be prima facie evidence of the execution of an assignment, grant or con- veyance of a patent or application for patent. An interest that constitutes an assignment, grant or conveyance shall be void as against any subsequent purchaser or mortgagee for a valu- able consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mort- gage. (July 19, 1952, ch. 950, 66 Stat. 810; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97–247, § 14(b), Aug. 27, 1982, 96 Stat. 321; Pub. L. 112–211, title II, § 201(d), Dec. 18, 2012, 126 Stat. 1535.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 47 (R.S. 4898, amended (1) Mar. 3, 1897, ch. 391, § 5, 29 Stat. 93 [29 Stat. 693], (2) Feb. 18, 1922, ch. 58, § 6, 42 Stat. 391, (3) Aug. 18, 1941, ch. 370, 55 Stat. 634). The first paragraph is new but is declaratory only. The second paragraph is the same as in the cor- responding section of existing statute. The third para- graph is from the existing statute, a specific reference to another statute is omitted. The fourth paragraph is the same as the existing statute but language has been changed. Editorial Notes AMENDMENTS 2012—Pub. L. 112–211 inserted ‘‘The Patent and Trade- mark Office shall maintain a register of interests in patents and applications for patents and shall record any document related thereto upon request, and may require a fee therefor.’’ at end of first par. and sub- stituted ‘‘An interest that constitutes an assignment’’ for ‘‘An assignment’’ in fourth par. 1982—Pub. L. 97–247 inserted ‘‘, or apostille of an offi- cial designated by a foreign country which, by treaty or convention, accords like effect to apostilles of des- ignated officials in the United States’’. 1975—Pub. L. 93–596 substituted ‘‘Patent and Trade- mark Office’’ for ‘‘Patent Office’’. Page 105 TITLE 35—PATENTS § 267 Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2012 AMENDMENT Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litiga- tion commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–247 effective Aug. 27, 1982, see section 17(a) of Pub. L. 97–247, set out as a note under section 41 of this title. EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade. § 262. Joint owners In the absence of any agreement to the con- trary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented in- vention within the United States, or import the patented invention into the United States, with- out the consent of and without accounting to the other owners. (July 19, 1952, ch. 950, 66 Stat. 810; Pub. L. 103–465, title V, § 533(b)(3), Dec. 8, 1994, 108 Stat. 4989.) HISTORICAL AND REVISION NOTES This section states a condition in existing law not ex- pressed in the existing statutes. Editorial Notes AMENDMENTS 1994—Pub. L. 103–465 substituted ‘‘use, offer to sell, or sell’’ for ‘‘use or sell’’ and inserted ‘‘within the United States, or import the patented invention into the United States,’’ after ‘‘invention’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1994 AMENDMENT Amendment by Pub. L. 103–465 effective on date that is one year after date on which the WTO Agreement en- ters into force with respect to the United States [Jan. 1, 1995], with provisions relating to earliest filed patent application, see section 534(a), (b)(3) of Pub. L. 103–465, set out as a note under section 154 of this title. CHAPTER 27—GOVERNMENT INTERESTS IN PATENTS Sec. [266. Repealed.] 267. Time for taking action in Government appli- cations. Editorial Notes AMENDMENTS 1965—Pub. L. 89–83, § 8, July 24, 1965, 79 Stat. 261, struck out item 266 ‘‘Issue of patents without fees to Government employees’’. [§ 266. Repealed. Pub. L. 89–83, § 8, July 24, 1965, 79 Stat. 261] Section, act July 19, 1952, ch. 950, § 1, 66 Stat. 811, pro- vided for issuance of patents to government employees without fees. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF REPEAL Repeal effective three months after July 24, 1965, see section 7(a) of Pub. L. 89–83, set out as an Effective Date of 1965 Amendment note under section 41 of this title. § 267. Time for taking action in Government ap- plications Notwithstanding the provisions of sections 133 and 151, the Director may extend the time for taking any action to three years, when an appli- cation has become the property of the United States and the head of the appropriate depart- ment or agency of the Government has certified to the Director that the invention disclosed therein is important to the armament or defense of the United States. (July 19, 1952, ch. 950, 66 Stat. 811; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, § 20(j), Sept. 16, 2011, 125 Stat. 335.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 37 (R.S. 4894, amended (1) Mar. 3, 1897, ch. 391, § 4, 29 Stat. 692, 693, (2) July 6, 1916, ch. 225, § 1, 39 Stat. 345, 347–8, (3) Mar. 2, 1927, ch. 273, § 1, 44 Stat. 1335, (4) Aug. 7, 1939, ch. 568, 53 Stat. 1264). This provision, which appears as the last two sen- tences of the corresponding section of the present stat- ute (see note to section 133) is made a separate section and rewritten in simpler form. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 struck out ‘‘of this title’’ after ‘‘151’’. 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. CHAPTER 28—INFRINGEMENT OF PATENTS Sec. 271. Infringement of patent. 272. Temporary presence in the United States. 273. Defense to infringement based on prior com- mercial use. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29, § 5(b), Sept. 16, 2011, 125 Stat. 299, amended item 273 generally, substituting ‘‘Defense to