35 U.S.C. § 257 — Supplemental examinations to consider, re-

Page 103 TITLE 35—PATENTS § 257 1982—Pub. L. 97–247 substituted ‘‘Correction of named inventor’’ for ‘‘Misjoinder of inventor’’ as section catchline and, in text, substituted ‘‘Whenever through error a person is named in an issued patent as the in- ventor, or through error an inventor is not named in an issued patent and such error arose without any decep- tive intention on his part, the Commissioner may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be im- posed, issue a certificate correcting such error’’ for ‘‘Whenever a patent is issued on the application of per- sons as joint inventors and it appears that one of such persons was not in fact a joint inventor, and that he was included as a joint inventor by error and without any deceptive intention, the Commissioner may, on ap- plication of all the parties and assignees, with proof of the facts and such other requirements as may be im- posed, issue a certificate deleting the name of the erro- neously joined person from the patent’’, substituted ‘‘The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as pro- vided in this section’’ for ‘‘Whenever a patent is issued and it appears that a person was a joint inventor, but was omitted by error and without deceptive intention on his part, the Commissioner may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate adding his name to the patent as a joint inventor’’, and struck out provision that the misjoinder or nonjoinder of joint inventors not invalidate a pat- ent, if such error could be corrected as provided in this section. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration 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. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L. 97–247, set out as an Effective Date note under section 294 of this title. § 257. Supplemental examinations to consider, re- consider, or correct information (a) REQUEST FOR SUPPLEMENTAL EXAMINA- TION.—A patent owner may request supple- mental examination of a patent in the Office to consider, reconsider, or correct information be- lieved to be relevant to the patent, in accord- ance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental exam- ination and shall conclude such examination by issuing a certificate indicating whether the in- formation presented in the request raises a sub- stantial new question of patentability. (b) REEXAMINATION ORDERED.—If the certifi- cate issued under subsection (a) indicates that a substantial new question of patentability is raised by 1 or more items of information in the request, the Director shall order reexamination of the patent. The reexamination shall be con- ducted according to procedures established by chapter 30, except that the patent owner shall not have the right to file a statement pursuant to section 304. During the reexamination, the Director shall address each substantial new question of patentability identified during the supplemental examination, notwithstanding the limitations in chapter 30 relating to patents and printed publication or any other provision of such chapter. (c) EFFECT.— (1) IN GENERAL.—A patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the in- formation was considered, reconsidered, or corrected during a supplemental examination of the patent. The making of a request under subsection (a), or the absence thereof, shall not be relevant to enforceability of the patent under section 282. (2) EXCEPTIONS.— (A) PRIOR ALLEGATIONS.—Paragraph (1) shall not apply to an allegation pled with particularity in a civil action, or set forth with particularity in a notice received by the patent owner under section 505(j)(2)(B)(iv)(II) of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355(j)(2)(B)(iv)(II)), before the date of a sup- plemental examination request under sub- section (a) to consider, reconsider, or correct information forming the basis for the allega- tion. (B) PATENT ENFORCEMENT ACTIONS.—In an action brought under section 337(a) of the Tariff Act of 1930 (19 U.S.C. 1337(a)), or sec- tion 281, paragraph (1) shall not apply to any defense raised in the action that is based upon information that was considered, re- considered, or corrected pursuant to a sup- plemental examination request under sub- section (a), unless the supplemental exam- ination, and any reexamination ordered pur- suant to the request, are concluded before the date on which the action is brought. (d) FEES AND REGULATIONS.— (1) FEES.—The Director shall, by regulation, establish fees for the submission of a request for supplemental examination of a patent, and to consider each item of information sub- mitted in the request. If reexamination is or- dered under subsection (b), fees established and applicable to ex parte reexamination pro- ceedings under chapter 30 shall be paid, in ad- dition to fees applicable to supplemental ex- amination. (2) REGULATIONS.—The Director shall issue regulations governing the form, content, and other requirements of requests for supple- mental examination, and establishing proce- dures for reviewing information submitted in such requests. (e) FRAUD.—If the Director becomes aware, during the course of a supplemental examina- tion or reexamination proceeding ordered under this section, that a material fraud on the Office may have been committed in connection with 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’’.