35 U.S.C. § 299 — Joinder of parties

Page 120 TITLE 35—PATENTS § 298 ployee, director, officer, partner, or independent contractor of such invention promoter), or by the failure of that invention promoter to dis- close such information as required under sub- section (a), may recover in a civil action against the invention promoter (or the officers, direc- tors, or partners of such invention promoter), in addition to reasonable costs and attorneys’ fees— (A) the amount of actual damages incurred by the customer; or (B) at the election of the customer at any time before final judgment is rendered, statu- tory damages in a sum of not more than $5,000, as the court considers just. (2) Notwithstanding paragraph (1), in a case where the customer sustains the burden of proof, and the court finds, that the invention promoter intentionally misrepresented or omitted a mate- rial fact to such customer, or willfully failed to disclose such information as required under sub- section (a), with the purpose of deceiving that customer, the court may increase damages to not more than three times the amount awarded, taking into account past complaints made against the invention promoter that resulted in regulatory sanctions or other corrective actions based on those records compiled by the Commis- sioner of Patents under subsection (d). (c) DEFINITIONS.—For purposes of this sec- tion— (1) a ‘‘contract for invention promotion serv- ices’’ means a contract by which an invention promoter undertakes invention promotion services for a customer; (2) a ‘‘customer’’ is any individual who en- ters into a contract with an invention pro- moter for invention promotion services; (3) the term ‘‘invention promoter’’ means any person, firm, partnership, corporation, or other entity who offers to perform or performs invention promotion services for, or on behalf of, a customer, and who holds itself out through advertising in any mass media as pro- viding such services, but does not include— (A) any department or agency of the Fed- eral Government or of a State or local gov- ernment; (B) any nonprofit, charitable, scientific, or educational organization, qualified under ap- plicable State law or described under section 170(b)(1)(A) of the Internal Revenue Code of 1986; (C) any person or entity involved in the evaluation to determine commercial poten- tial of, or offering to license or sell, a utility patent or a previously filed nonprovisional utility patent application; (D) any party participating in a trans- action involving the sale of the stock or as- sets of a business; or (E) any party who directly engages in the business of retail sales of products or the distribution of products; and (4) the term ‘‘invention promotion services’’ means the procurement or attempted procure- ment for a customer of a firm, corporation, or other entity to develop and market products or services that include the invention of the customer. (d) RECORDS OF COMPLAINTS.— (1) RELEASE OF COMPLAINTS.—The Commis- sioner of Patents shall make all complaints received by the Patent and Trademark Office involving invention promoters publicly avail- able, together with any response of the inven- tion promoters. The Commissioner of Patents shall notify the invention promoter of a com- plaint and provide a reasonable opportunity to reply prior to making such complaint publicly available. (2) REQUEST FOR COMPLAINTS.—The Commis- sioner of Patents may request complaints re- lating to invention promotion services from any Federal or State agency and include such complaints in the records maintained under paragraph (1), together with any response of the invention promoters. (Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4102(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–552.) Editorial Notes REFERENCES IN TEXT Section 170(b)(1)(A) of the Internal Revenue Code of 1986, referred to in subsec. (c)(3)(B), is classified to sec- tion 170(b)(1)(A) of Title 26, Internal Revenue Code. Statutory Notes and Related Subsidiaries EFFECTIVE DATE Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle A, § 4103], Nov. 29, 1999, 113 Stat. 1536, 1501A–554, provided that: ‘‘This subtitle [enacting this section and provi- sions set out as a note under section 1 of this title] and the amendments made by this subtitle shall take effect 60 days after the date of the enactment of this Act [Nov. 29, 1999].’’ § 298. Advice of counsel The failure of an infringer to obtain the advice of counsel with respect to any allegedly in- fringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the in- fringer intended to induce infringement of the patent. (Added Pub. L. 112–29, § 17(a), Sept. 16, 2011, 125 Stat. 329.) Statutory Notes and Related Subsidiaries EFFECTIVE DATE Pub. L. 112–274, § 1(a), Jan. 14, 2013, 126 Stat. 2456, pro- vided that: ‘‘Notwithstanding section 35 of the Leahy- Smith America Invents Act [Pub. L. 112–29] (35 U.S.C. 1 note), section 298 of title 35, United States Code, shall apply to any civil action commenced on or after the date of the enactment of this Act [Jan. 14, 2013].’’ Except as otherwise provided in Pub. L. 112–29, sec- tion effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to any pat- ent issued on or after that effective date, see section 35 of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment note under section 1 of this title. § 299. Joinder of parties (a) JOINDER OF ACCUSED INFRINGERS.—With re- spect to any civil action arising under any Act of Congress relating to patents, other than an Page 121 TITLE 35—PATENTS § 301 action or trial in which an act of infringement under section 271(e)(2) has been pled, parties that are accused infringers may be joined in one action as defendants or counterclaim defend- ants, or have their actions consolidated for trial, only if— (1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of trans- actions or occurrences relating to the making, using, importing into the United States, offer- ing for sale, or selling of the same accused product or process; and (2) questions of fact common to all defend- ants or counterclaim defendants will arise in the action. (b) ALLEGATIONS INSUFFICIENT FOR JOINDER.— For purposes of this subsection, accused infring- ers may not be joined in one action as defend- ants or counterclaim defendants, or have their actions consolidated for trial, based solely on al- legations that they each have infringed the pat- ent or patents in suit. (c) WAIVER.—A party that is an accused in- fringer may waive the limitations set forth in this section with respect to that party. (Added Pub. L. 112–29, § 19(d)(1), Sept. 16, 2011, 125 Stat. 332; amended Pub. L. 112–274, § 1(c), Jan. 14, 2013, 126 Stat. 2456.) Editorial Notes AMENDMENTS 2013—Subsec. (a). Pub. L. 112–274 substituted ‘‘only if’’ for ‘‘or counterclaim defendants only if’’ in introduc- tory provisions. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2013 AMENDMENT Amendment by Pub. L. 112–274 effective Jan. 14, 2013, and applicable to proceedings commenced on or after such date, see section 1(n) of Pub. L. 112–274, set out as a note under section 5 of this title. EFFECTIVE DATE Section applicable to any civil action commenced on or after Sept. 16, 2011, see section 19(e) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment note under section 1295 of Title 28, Judiciary and Judicial Procedure. CHAPTER 30—PRIOR ART CITATIONS TO OF- FICE AND EX PARTE REEXAMINATION OF PATENTS Sec. 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. 306. Appeal. 307. Certificate of patentability, unpatentability, and claim cancellation. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29, § 6(g)(2), Sept. 16, 2011, 125 Stat. 312, amended item 301 generally, substituting ‘‘Citation of prior art and written statements’’ for ‘‘Citation of prior art’’. 2002—Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906, made technical correction to directory language of Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582. See 1999 Amendment note below. 1999—Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582, as amended by Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906, substituted ‘‘Director’’ for ‘‘Commissioner’’ in item 304. Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4602, 4732(a)(9)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–567, 1501A–582, inserted ‘‘EX PARTE’’ before ‘‘REEXAMINA- TION’’ in chapter heading and substituted ‘‘Director’’ for ‘‘Commissioner’’ in item 303. § 301. Citation of prior art and written state- ments (a) IN GENERAL.—Any person at any time may cite to the Office in writing— (1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent; or (2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent. (b) OFFICIAL FILE.—If the person citing prior art or written statements pursuant to sub- section (a) explains in writing the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of the official file of the patent. (c) ADDITIONAL INFORMATION.—A party that submits a written statement pursuant to sub- section (a)(2) shall include any other documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement. (d) LIMITATIONS.—A written statement sub- mitted pursuant to subsection (a)(2), and addi- tional information submitted pursuant to sub- section (c), shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a pro- ceeding that is ordered or instituted pursuant to section 304, 314, or 324. If any such written state- ment or additional information is subject to an applicable protective order, such statement or information shall be redacted to exclude infor- mation that is subject to that order. (e) CONFIDENTIALITY.—Upon the written re- quest of the person citing prior art or written statements pursuant to subsection (a), that per- son’s identity shall be excluded from the patent file and kept confidential. (Added Pub. L. 96–517, § 1, Dec. 12, 1980, 94 Stat. 3015; amended Pub. L. 112–29, § 6(g)(1), Sept. 16, 2011, 125 Stat. 311.) Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, text read as follows: ‘‘Any person at any time may cite to the Office in writing prior art consisting of patents or printed publications which that person believes to have a bearing on the patent- ability of any claim of a particular patent. If the per-