35 U.S.C. § 297 — Improper and deceptive invention pro-

Page 119 TITLE 35—PATENTS § 297 of Pub. L. 106–113, set out as a note under section 1 of this title. EFFECTIVE DATE Pub. L. 97–247, § 17(c), Aug. 27, 1982, 96 Stat. 323, pro- vided that: ‘‘Sections 5, 6, 8 through 12, and 17(b) of this Act [enacting this section and amending sections 21, 111, 116, and 256 of this title and sections 1058, 1063, 1064, 1065, and 1066 of Title 15, Commerce and Trade] shall take effect six months after enactment [Aug. 27, 1982].’’ § 295. Presumption: Product made by patented process In actions alleging infringement of a process patent based on the importation, sale, offer for sale, or use of a product which is made from a process patented in the United States, if the court finds— (1) that a substantial likelihood exists that the product was made by the patented process, and (2) that the plaintiff has made a reasonable effort to determine the process actually used in the production of the product and was un- able to so determine, the product shall be presumed to have been so made, and the burden of establishing that the product was not made by the process shall be on the party asserting that it was not so made. (Added Pub. L. 100–418, title IX, § 9005(a), Aug. 23, 1988, 102 Stat. 1566; amended Pub. L. 103–465, title V, § 533(b)(7), Dec. 8, 1994, 108 Stat. 4990.) Editorial Notes AMENDMENTS 1994—Pub. L. 103–465 substituted ‘‘sale, offer for sale, or use’’ for ‘‘sale, or use’’ in introductory provisions. 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. EFFECTIVE DATE Section effective 6 months after Aug. 23, 1988, and, subject to enumerated exceptions, applicable only with respect to products made or imported after such effec- tive date, see section 9006 of Pub. L. 100–418, set out as an Effective Date of 1988 Amendment note under sec- tion 271 of this title. § 296. Liability of States, instrumentalities of States, and State officials for infringement of patents (a) IN GENERAL.—Any State, any instrumen- tality of a State, and any officer or employee of a State or instrumentality of a State acting in his official capacity, shall not be immune, under the eleventh amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person, including any governmental or nongovernmental entity, for infringement of a patent under section 271, or for any other viola- tion under this title. (b) REMEDIES.—In a suit described in sub- section (a) for a violation described in that sub- section, remedies (including remedies both at law and in equity) are available for the violation to the same extent as such remedies are avail- able for such a violation in a suit against any private entity. Such remedies include damages, interest, costs, and treble damages under sec- tion 284, attorney fees under section 285, and the additional remedy for infringement of design patents under section 289. (Added Pub. L. 102–560, § 2(a)(2), Oct. 28, 1992, 106 Stat. 4230.) Editorial Notes CONSTITUTIONALITY For information regarding the constitutionality of this section, as added by section 2(a)(2) of Pub. L. 102–560, see the Table of Laws Held Unconstitutional in Whole or in Part by the Supreme Court on the Con- stitution Annotated website, constitution.congress.gov. Statutory Notes and Related Subsidiaries EFFECTIVE DATE Section effective with respect to violations that occur on or after Oct. 28, 1992, see section 4 of Pub. L. 102–560, set out as an Effective Date of 1992 Amendment note under section 2541 of Title 7, Agriculture. § 297. Improper and deceptive invention pro- motion (a) IN GENERAL.—An invention promoter shall have a duty to disclose the following informa- tion to a customer in writing, prior to entering into a contract for invention promotion serv- ices: (1) the total number of inventions evaluated by the invention promoter for commercial po- tential in the past 5 years, as well as the num- ber of those inventions that received positive evaluations, and the number of those inven- tions that received negative evaluations; (2) the total number of customers who have contracted with the invention promoter in the past 5 years, not including customers who have purchased trade show services, research, advertising, or other nonmarketing services from the invention promoter, or who have de- faulted in their payment to the invention pro- moter; (3) the total number of customers known by the invention promoter to have received a net financial profit as a direct result of the inven- tion promotion services provided by such in- vention promoter; (4) the total number of customers known by the invention promoter to have received li- cense agreements for their inventions as a di- rect result of the invention promotion services provided by such invention promoter; and (5) the names and addresses of all previous invention promotion companies with which the invention promoter or its officers have collectively or individually been affiliated in the previous 10 years. (b) CIVIL ACTION.—(1) Any customer who en- ters into a contract with an invention promoter and who is found by a court to have been injured by any material false or fraudulent statement or representation, or any omission of material fact, by that invention promoter (or any agent, em- 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