35 U.S.C. § 135 — Derivation proceedings

Page 62 TITLE 35—PATENTS § 135 EFFECTIVE DATE OF 1999 AMENDMENT Pub. L. 107–273, div. C, title III, § 13202(d), Nov. 2, 2002, 116 Stat. 1902, provided that: ‘‘The amendments made by section 4605(b), (c), and (e) of the Intellectual Prop- erty and Communications Omnibus Reform Act, as en- acted by section 1000(a)(9) of Public Law 106–113 [amending this section and sections 141 and 145 of this title], shall apply to any reexamination filed in the United States Patent and Trademark Office on or after the date of enactment of Public Law 106–113 [Nov. 29, 1999].’’ Amendment by Pub. L. 106–113 effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, § 4608(a)] of Pub. L. 106–113, set out as a note under section 41 of this title. EFFECTIVE DATE OF 1984 AMENDMENT Amendment by Pub. L. 98–622 effective three months after Nov. 8, 1984, see section 207 of Pub. L. 98–622, set out as a note under section 41 of this title. § 135. Derivation proceedings (a) INSTITUTION OF PROCEEDING.— (1) IN GENERAL.—An applicant for patent may file a petition with respect to an inven- tion to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an in- dividual named in an earlier application as the inventor or a joint inventor derived such in- vention from an individual named in the peti- tioner’s application as the inventor or a joint inventor and, without authorization, the ear- lier application claiming such invention was filed. Whenever the Director determines that a petition filed under this subsection dem- onstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding. (2) TIME FOR FILING.—A petition under this section with respect to an invention that is the same or substantially the same invention as a claim contained in a patent issued on an earlier application, or contained in an earlier application when published or deemed pub- lished under section 122(b), may not be filed unless such petition is filed during the 1-year period following the date on which the patent containing such claim was granted or the ear- lier application containing such claim was published, whichever is earlier. (3) EARLIER APPLICATION.—For purposes of this section, an application shall not be deemed to be an earlier application with re- spect to an invention, relative to another ap- plication, unless a claim to the invention was or could have been made in such application having an effective filing date that is earlier than the effective filing date of any claim to the invention that was or could have been made in such other application. (4) NO APPEAL.—A determination by the Di- rector whether to institute a derivation pro- ceeding under paragraph (1) shall be final and not appealable. (b) DETERMINATION BY PATENT TRIAL AND AP- PEAL BOARD.—In a derivation proceeding insti- tuted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inven- tor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without au- thorization, the earlier application claiming such invention was filed. In appropriate cir- cumstances, the Patent Trial and Appeal Board may correct the naming of the inventor in any application or patent at issue. The Director shall prescribe regulations setting forth stand- ards for the conduct of derivation proceedings, including requiring parties to provide sufficient evidence to prove and rebut a claim of deriva- tion. (c) DEFERRAL OF DECISION.—The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a deriva- tion proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant. (d) EFFECT OF FINAL DECISION.—The final deci- sion of the Patent Trial and Appeal Board, if ad- verse to claims in an application for patent, shall constitute the final refusal by the Office on those claims. The final decision of the Patent Trial and Appeal Board, if adverse to claims in a patent, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of those claims, and no- tice of such cancellation shall be endorsed on copies of the patent distributed after such can- cellation. (e) SETTLEMENT.—Parties to a proceeding in- stituted under subsection (a) may terminate the proceeding by filing a written statement reflect- ing the agreement of the parties as to the cor- rect inventor of the claimed invention in dis- pute. Unless the Patent Trial and Appeal Board finds the agreement to be inconsistent with the evidence of record, if any, it shall take action consistent with the agreement. Any written set- tlement or understanding of the parties shall be filed with the Director. At the request of a party to the proceeding, the agreement or under- standing shall be treated as business confiden- tial information, shall be kept separate from the file of the involved patents or applications, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause. (f) ARBITRATION.—Parties to a proceeding in- stituted under subsection (a) may, within such time as may be specified by the Director by reg- ulation, determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9, to the ex- tent such title is not inconsistent with this sec- tion. The parties shall give notice of any arbi- tration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this sub- section shall preclude the Director from deter- mining the patentability of the claimed inven- tions involved in the proceeding. (July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 87–831, Oct. 15, 1962, 76 Stat. 958; Pub. L. 93–596, § 1, Jan. Page 63 TITLE 35—PATENTS § 135 2, 1975, 88 Stat. 1949; Pub. L. 98–622, title I, § 105, title II, § 202, Nov. 8, 1984, 98 Stat. 3385, 3386; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4507(11), 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–566, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, §§ 3(i), 20(j), Sept. 16, 2011, 125 Stat. 289, 335; Pub. L. 112–274, § 1(e)(1), (k)(1), Jan. 14, 2013, 126 Stat. 2456, 2457.) HISTORICAL AND REVISION NOTES The first paragraph is based on Title 35, U.S.C., 1946 ed., § 52 (R.S. 4904 amended (1) Mar. 2, 1927, ch. 273, § 4, 44 Stat. 1335, 1336, (2) Aug. 5, 1939, ch. 451, § 1, 53 Stat. 1212). The first paragraph states the existing corresponding statute with a few changes in language. An explicit statement that the Office decision on priority con- stitutes a final refusal by the Office of the claims in- volved, is added. The last sentence is new and provides that judgment adverse to a patentee constitutes can- cellation of the claims of the patent involved after the judgment has become final, the patentee has a right of appeal (sec. 141) and is given a right of review by civil action (sec. 146). The second paragraph is based on Title 35, U.S.C., 1946 ed., § 51, (R.S. 4903, amended Aug. 5, 1939, ch. 452, § 1, 53 Stat. 1213). Changes in language are made. Editorial Notes AMENDMENTS 2013—Subsec. (a). Pub. L. 112–274, § 1(k)(1), amended subsec. (a) generally. Prior to amendment, text read as follows: ‘‘An applicant for patent may file a petition to institute a derivation proceeding in the Office. The pe- tition shall set forth with particularity the basis for finding that an inventor named in an earlier applica- tion derived the claimed invention from an inventor named in the petitioner’s application and, without au- thorization, the earlier application claiming such in- vention was filed. Any such petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier applica- tion’s claim to the invention, shall be made under oath, and shall be supported by substantial evidence. When- ever the Director determines that a petition filed under this subsection demonstrates that the standards for in- stituting a derivation proceeding are met, the Director may institute a derivation proceeding. The determina- tion by the Director whether to institute a derivation proceeding shall be final and nonappealable.’’ Subsec. (e). Pub. L. 112–274, § 1(e)(1), substituted ‘‘cor- rect inventor’’ for ‘‘correct inventors’’. 2011—Pub. L. 112–29, § 3(i), amended section generally. Prior to amendment, section related to interferences. Subsec. (b)(2). Pub. L. 112–29, § 20(j), struck out ‘‘of this title’’ after ‘‘122(b)’’. 2002—Subsecs. (a), (c), (d). Pub. L. 107–273 made tech- nical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment notes below. 1999—Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, sub- stituted ‘‘Director’’ for ‘‘Commissioner’’ wherever ap- pearing. Subsec. (b). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4507(11)], designated existing provisions as par. (1) and added par. (2). Subsecs. (c), (d). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, sub- stituted ‘‘Director’’ for ‘‘Commissioner’’ wherever ap- pearing. 1984—Subsec. (a). Pub. L. 98–622, § 202, amended sub- sec. (a) generally, substituting ‘‘, an interference may be declared and the Commissioner shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be’’ for ‘‘he shall give notice thereof to the applicants, or applicant and patentee, as the case may be’’ and substituting provisions vesting jurisdiction for determining questions of interference in the Board of Patent Appeals and Interferences for provisions vesting such jurisdiction in a board of pat- ent interferences. Subsec. (d). Pub. L. 98–622, § 105, added subsec. (d). 1975—Subsecs. (a), (c). Pub. L. 93–596 substituted ‘‘Patent and Trademark Office’’ for ‘‘Patent Office’’ wherever appearing. 1962—Pub. L. 87–831 designated first and second pars. as subsecs. (a) and (b) and added subsec. (c). Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2013 AMENDMENT Pub. L. 112–274, § 1(e)(2), Jan. 14, 2013, 126 Stat. 2456, provided that: ‘‘The amendment made by paragraph (1) [amending this section] shall be effective as if included in the amendment made by section 3(i) of the Leahy- Smith America Invents Act [Pub. L. 112–29].’’ Pub. L. 112–274, § 1(k)(2), Jan. 14, 2013, 126 Stat. 2458, provided that: ‘‘The amendment made by paragraph (1) [amending this section] shall be effective as if included in the amendment made by section 3(i) of the Leahy- Smith America Invents Act [Pub. L. 112–29].’’ EFFECTIVE DATE OF 2011 AMENDMENT Amendment by section 3(i) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under sec- tion 100 of this title. 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 section 1000(a)(9) [title IV, § 4507(11)] of Pub. L. 106–113 effective Nov. 29, 2000, and applicable only to applications (including international applica- tions designating the United States) filed on or after that date, see section 1000(a)(9) [title IV, § 4508] of Pub. L. 106–113, as amended, set out as a note under section 10 of this title. Amendment by section 1000(a)(9) [title IV, § 4732(a)(10)(A)] of 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 1984 AMENDMENT Amendment by section 105 of Pub. L. 98–622 applicable to all United States patents granted before, on, or after Nov. 8, 1984, and to all applications for United States patents pending on or filed after that date, except as otherwise provided, see section 106 of Pub. L. 98–622, set out as a note under section 103 of this title. Amendment by section 202 of Pub. L. 98–622 effective three months after Nov. 8, 1984, see section 207 of Pub. L. 98–622, 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. SAVINGS PROVISIONS Pub. L. 112–274, § 1(k)(3), Jan. 14, 2013, 126 Stat. 2458, provided that: ‘‘The provisions of sections 6 and 141 of title 35, United States Code, and section 1295(a)(4)(A) of title 28, United States Code, as in effect on September 15, 2012, shall apply to interference proceedings that are Page 64 TITLE 35—PATENTS § 141 declared after September 15, 2012, under section 135 of title 35, United States Code, as in effect before the ef- fective date under section 3(n) of the Leahy-Smith America Invents Act [Pub. L. 112—29, set out as a note under section 100 of this title]. The Patent Trial and Appeal Board may be deemed to be the Board of Patent Appeals and Interferences for purposes of such inter- ference proceedings.’’ Provisions of 35 U.S.C. 135, as in effect on the day be- fore the expiration of the 18-month period beginning on Sept. 16, 2011, apply to each claim of certain applica- tions for patent, and certain patents issued thereon, for which the amendments made by section 3 of Pub. L. 112–29 also apply, see section 3(n)(2) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Sav- ings Provisions note under section 100 of this title. CHAPTER 13—REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS Sec. 141. Appeal to Court of Appeals for the Federal Circuit. 142. Notice of appeal. 143. Proceedings on appeal. 144. Decision on appeal. 145. Civil action to obtain patent. 146. Civil action in case of derivation proceeding. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29, § 3(j)(6), Sept. 16, 2011, 125 Stat. 291, amended item 146 generally, substituting ‘‘Civil ac- tion in case of derivation proceeding’’ for ‘‘Civil action in case of interference’’. 1982—Pub. L. 97–164, title I, § 163(b)(1), Apr. 2, 1982, 96 Stat. 49, substituted ‘‘Court of Appeals for the Federal Circuit’’ for ‘‘Court of Customs and Patent Appeals’’ in item 141. 1975—Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949, sub- stituted ‘‘PATENT AND TRADEMARK OFFICE’’ for ‘‘PATENT OFFICE’’ in chapter heading. § 141. Appeal to Court of Appeals for the Federal Circuit (a) EXAMINATIONS.—An applicant who is dissat- isfied with the final decision in an appeal to the Patent Trial and Appeal Board under section 134(a) may appeal the Board’s decision to the United States Court of Appeals for the Federal Circuit. By filing such an appeal, the applicant waives his or her right to proceed under section 145. (b) REEXAMINATIONS.—A patent owner who is dissatisfied with the final decision in an appeal of a reexamination to the Patent Trial and Ap- peal Board under section 134(b) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit. (c) POST-GRANT AND INTER PARTES REVIEWS.— A party to an inter partes review or a post-grant review who is dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) or 328(a) (as the case may be) may appeal the Board’s decision only to the United States Court of Appeals for the Federal Circuit. (d) DERIVATION PROCEEDINGS.—A party to a derivation proceeding who is dissatisfied with the final decision of the Patent Trial and Appeal Board in the proceeding may appeal the decision to the United States Court of Appeals for the Federal Circuit, but such appeal shall be dis- missed if any adverse party to such derivation proceeding, within 20 days after the appellant has filed notice of appeal in accordance with sec- tion 142, files notice with the Director that the party elects to have all further proceedings con- ducted as provided in section 146. If the appel- lant does not, within 30 days after the filing of such notice by the adverse party, file a civil ac- tion under section 146, the Board’s decision shall govern the further proceedings in the case. (July 19, 1952, ch. 950, 66 Stat. 802; Pub. L. 97–164, title I, § 163(a)(7), (b)(2), Apr. 2, 1982, 96 Stat. 49, 50; Pub. L. 98–622, title II, § 203(a), Nov. 8, 1984, 98 Stat. 3387; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4605(c), 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–571, 1501A–582; Pub. L. 107–273, div. C, title III, §§ 13106(c), 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1901, 1906; Pub. L. 112–29, § 7(c)(1), Sept. 16, 2011, 125 Stat. 314.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 59a (R.S. 4911, amended (1) Mar. 2, 1927, ch. 273, § 8, 44 Stat. 1336, (2) Mar. 2, 1929, ch. 488, § 2a, 45 Stat. 1476, (3) Aug. 5, 1939, ch. 451, § 3, 53 Stat. 1212). Changes in language are made. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to appeals to the Court of Appeals for the Federal Circuit. 2002—Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amend- ment note below. Pub. L. 107–273, § 13106(c), inserted ‘‘, or a third-party requester in an inter partes reexamination proceeding, who is’’ after ‘‘patent owner’’ in third sentence. 1999—Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted ‘‘Director’’ for ‘‘Commis- sioner’’. Pub. L. 106–113, § 1000(a)(9) [title IV, § 4605(c)], inserted after second sentence ‘‘A patent owner in any reexam- ination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Inter- ferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.’’ 1984—Pub. L. 98–622, § 203(a)(1)(A), substituted ‘‘in an appeal to the Board of Patent Appeals and Inter- ferences under section 134 of this title may appeal the decision’’ for ‘‘of the Board of Patent Appeals may ap- peal’’ in first sentence. Pub. L. 98–622, § 203(a)(1)(B), substituted ‘‘. By filing such an appeal the applicant waives his or her right’’ for ‘‘, thereby waiving his right’’ in first sentence. Pub. L. 98–622, § 203(a)(2)(A), substituted ‘‘Board of Patent Appeals and Interferences on the interference may appeal the decision’’ for ‘‘board of patent inter- ferences on the question of priority of appeal’’ in sec- ond sentence. Pub. L. 98–622, § 203(a)(2)(B), substituted ‘‘In accord- ance with’’ for ‘‘according to’’ in second sentence. Pub. L. 98–622, § 203(a)(2)(C), substituted ‘‘the party’’ for ‘‘he’’ in second sentence. Pub. L. 98–622, § 203(a)(3), reenacted last sentence with minor changes in wording. 1982—Pub. L. 97–164, § 163(b)(2), substituted ‘‘Court of Appeals for the Federal Circuit’’ for ‘‘Court of Customs and Patent Appeals’’ in section catchline. Pub. L. 97–164, § 163(a)(7), substituted ‘‘Court of Ap- peals for the Federal Circuit’’ for ‘‘Court of Customs and Patent Appeals’’ in two places.