35 U.S.C. § 184 — Filing of application in foreign country

Page 85 TITLE 35—PATENTS § 184 agreement with the applicant, his successors, assigns, or legal representatives, in full settle- ment for the damage and/or use. This settlement agreement shall be conclusive for all purposes notwithstanding any other provision of law to the contrary. If full settlement of the claim can- not be effected, the head of the department or agency may award and pay to such applicant, his successors, assigns, or legal representatives, a sum not exceeding 75 per centum of the sum which the head of the department or agency considers just compensation for the damage and/ or use. A claimant may bring suit against the United States in the United States Court of Fed- eral Claims or in the District Court of the United States for the district in which such claimant is a resident for an amount which when added to the award shall constitute just compensation for the damage and/or use of the invention by the Government. The owner of any patent issued upon an application that was sub- ject to a secrecy order issued pursuant to sec- tion 181, who did not apply for compensation as above provided, shall have the right, after the date of issuance of such patent, to bring suit in the United States Court of Federal Claims for just compensation for the damage caused by rea- son of the order of secrecy and/or use by the Government of the invention resulting from his disclosure. The right to compensation for use shall begin on the date of the first use of the in- vention by the Government. In a suit under the provisions of this section the United States may avail itself of all defenses it may plead in an ac- tion under section 1498 of title 28. This section shall not confer a right of action on anyone or his successors, assigns, or legal representatives who, while in the full-time employment or serv- ice of the United States, discovered, invented, or developed the invention on which the claim is based. (July 19, 1952, ch. 950, 66 Stat. 806; Pub. L. 97–164, title I, § 160(a)(12), Apr. 2, 1982, 96 Stat. 48; Pub. L. 102–572, title IX, § 902(b)(1), Oct. 29, 1992, 106 Stat. 4516; 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., § 153 (Feb. 1, 1952, ch. 4, § 3, 66 Stat. 4, 5). Language is changed. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 struck out ‘‘of this title’’ after ‘‘181’’. 1992—Pub. L. 102–572 substituted ‘‘United States Court of Federal Claims’’ for ‘‘United States Claims Court’’ in two places. 1982—Pub. L. 97–164 substituted ‘‘United States Claims Court’’ for ‘‘Court of Claims’’ in two places. 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 1992 AMENDMENT Amendment by Pub. L. 102–572 effective Oct. 29, 1992, see section 911 of Pub. L. 102–572, set out as a note under section 171 of Title 28, Judiciary and Judicial Procedure. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–164 effective Oct. 1, 1982, see section 402 of Pub. L. 97–164, set out as a note under section 171 of Title 28, Judiciary and Judicial Proce- dure. § 184. Filing of application in foreign country (a) FILING IN FOREIGN COUNTRY.—Except when authorized by a license obtained from the Com- missioner of Patents a person shall not file or cause or authorize to be filed in any foreign country prior to six months after filing in the United States an application for patent or for the registration of a utility model, industrial design, or model in respect of an invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 without the concurrence of the head of the departments and the chief officers of the agencies who caused the order to be issued. The license may be granted retroactively where an application has been filed abroad through error and the application does not disclose an invention within the scope of section 181. (b) APPLICATION.—The term ‘‘application’’ when used in this chapter includes applications and any modifications, amendments, or supple- ments thereto, or divisions thereof. (c) SUBSEQUENT MODIFICATIONS, AMENDMENTS, AND SUPPLEMENTS.—The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, re- quired to be made available for inspection under section 181 and if such modifications, amend- ments, and supplements do not change the gen- eral nature of the invention in a manner which would require such application to be made avail- able for inspection under such section 181. In any case in which a license is not, or was not, required in order to file an application in any foreign country, such subsequent modifications, amendments, and supplements may be made, without a license, to the application filed in the foreign country if the United States application was not required to be made available for in- spection under section 181 and if such modifica- tions, amendments, and supplements do not, or did not, change the general nature of the inven- tion in a manner which would require the United States application to have been made available for inspection under such section 181. (July 19, 1952, ch. 950, 66 Stat. 807; Pub. L. 100–418, title IX, § 9101(b)(1), Aug. 23, 1988, 102 Stat. 1567; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 112–29, § 20(b), (j), Sept. 16, 2011, 125 Stat. 333, 335.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 154 (Feb. 1, 1952, ch. 4, § 4, 66 Stat. 5). Language is changed. Page 86 TITLE 35—PATENTS § 185 Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 designated first to third pars. as subsecs. (a) to (c), respectively, inserted headings, in subsec. (a), struck out ‘‘of this title’’ after ‘‘181’’ in two places and struck out ‘‘and without deceptive intent’’ after ‘‘through error’’, and, in subsec. (c), struck out ‘‘of this title’’ after ‘‘under section 181’’ in first sen- tence. 1999—Pub. L. 106–113 substituted ‘‘Commissioner of Patents’’ for ‘‘Commissioner’’ two places in first par. 1988—Pub. L. 100–418, § 9101(b)(1)(A), substituted ‘‘filed abroad through error and without deceptive intent’’ for ‘‘inadvertently filed abroad’’ in first par. Pub. L. 100–418, § 9101(b)(1)(B), added third par. relat- ing to scope of a license. 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 1988 AMENDMENT Pub. L. 100–418, title IX, § 9101(d), Aug. 23, 1988, 102 Stat. 1568, provided that: ‘‘(1) Subject to paragraphs (2), (3), and (4) of this sub- section, the amendments made by this section [amend- ing sections 184 to 186 of this title] shall apply to all United States patents granted before, on, or after the date of enactment of this section [Aug. 23, 1988], to all applications for United States patents pending on or filed after such date of enactment, and to all licenses under section 184 granted before, on, or after the date of enactment of this section. ‘‘(2) The amendments made by this section shall not affect any final decision made by a court or the Patent and Trademark Office before the date of enactment of this section [Aug. 23, 1988] with respect to a patent or application for patent, if no appeal from such decision is pending and the time for filing an appeal has expired. ‘‘(3) No United States patent granted before the date of enactment of this section [Aug. 23, 1988] shall abridge or affect the right of any person or his successors in business who made, purchased, or used, prior to such date of enactment, anything protected by the patent, to continue the use of, or to sell to others to be used or sold, the specific thing so made, purchased, or used, if the patent claims were invalid or otherwise unen- forceable on a ground obviated by this section and the person made, purchased, or used the specific thing in reasonable reliance on such invalidity or unenforce- ability. If a person reasonably relied on such invalidity or unenforceability, the court before which such matter is in question may provide for the continued manufac- ture, use, or sale of the thing made, purchased, or used as specified, or for the manufacture, use, or sale of which substantial preparation was made before the date of enactment of this section, and it may also pro- vide for the continued practice of any process prac- ticed, or for the practice of which substantial prepara- tion was made, prior to the date of enactment of this section, to the extent and under such terms as the court deems equitable for the protection of invest- ments made or business commenced before such date of enactment. ‘‘(4) The amendments made by this section shall not affect the right of any party in any case pending in court on the date of enactment of this section [Aug. 23, 1988] to have its rights or liabilities— ‘‘(A) under any patent before the court, or ‘‘(B) under any patent granted after such date of enactment which is related to the patent before the court by deriving priority rights under section 120 or 121 of title 35, United States Code, from a patent or an application for patent common to both patents, determined on the basis of the substantive law in effect before the date of enactment of this section.’’ PROMULGATION OF REGULATIONS Pub. L. 100–418, title IX, § 9101(c), Aug. 23, 1988, 102 Stat. 1568, directed Commissioner of Patents and Trademarks to prescribe such regulations as necessary to implement the amendments made by section 9101 (amending sections 184 to 186 of this title). § 185. Patent barred for filing without license Notwithstanding any other provisions of law any person, and his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented to or as- sisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in re- spect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error, and the patent does not disclose subject matter within the scope of section 181. (July 19, 1952, ch. 950, 66 Stat. 807; Pub. L. 100–418, title IX, § 9101(b)(2), Aug. 23, 1988, 102 Stat. 1568; Pub. L. 107–273, div. C, title III, § 13206(a)(11), Nov. 2, 2002, 116 Stat. 1904; Pub. L. 112–29, § 20(c), (j), Sept. 16, 2011, 125 Stat. 333, 335.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 155 (Feb. 1, 1952, ch. 4, § 5, 66 Stat. 5). Language is changed. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 struck out ‘‘of this title’’ after ‘‘184’’ and after ‘‘181’’ and struck out ‘‘and without de- ceptive intent’’ after ‘‘error’’. 2002—Pub. L. 107–273 struck out second period at end. 1988—Pub. L. 100–418 inserted before period at end ‘‘, unless the failure to procure such license was through error and without deceptive intent, and the patent does not disclose subject matter within the scope of section 181 of this title.’’ 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 1988 AMENDMENT Amendment by Pub. L. 100–418 applicable, subject to certain qualifications and exceptions, to all United States patents, and to all licenses under section 184 of this title, regardless of the date such patents or li- censes are granted, and to all applications for such pat- ents pending on or filed after Aug. 23, 1988, see section 9101(d) of Pub. L. 100–418, set out as a note under sec- tion 184 of this title.