35 U.S.C. § 273 — Defense to infringement based on prior

Page 109 TITLE 35—PATENTS § 273 under section 337 of the Tariff Act of 1930 [19 U.S.C. 1337], or under any other provision of law.’’ EFFECTIVE DATE OF 1984 AMENDMENT Amendment by Pub. L. 98–622 applicable only to the supplying, or causing to be supplied, of any component or components of a patented invention after Nov. 8, 1984, see section 106(c) of Pub. L. 98–622, set out as a note under section 103 of this title. REPORTS TO CONGRESS; EFFECT ON DOMESTIC INDUS- TRIES OF PROCESS PATENT AMENDMENTS ACT OF 1988 Pub. L. 100–418, title IX, § 9007, Aug. 23, 1988, 102 Stat. 1567, provided that the Secretary of Commerce was to make annual reports to Congress covering each of the successive five 1-year periods beginning 6 months after Aug. 23, 1988, on the effect of the amendments made by subtitle A (§§ 9001–9007) of title IX of Pub. L. 100–418, en- acting section 295 of this title and amending sections 154, 271, and 287 of this title, on those domestic indus- tries that submit complaints to the Department of Commerce alleging that their legitimate sources of supply have been adversely affected by the amend- ments. § 272. Temporary presence in the United States The use of any invention in any vessel, air- craft or vehicle of any country which affords similar privileges to vessels, aircraft or vehicles of the United States, entering the United States temporarily or accidentally, shall not constitute infringement of any patent, if the invention is used exclusively for the needs of the vessel, air- craft or vehicle and is not offered for sale or sold in or used for the manufacture of anything to be sold in or exported from the United States. (July 19, 1952, ch. 950, 66 Stat. 812; Pub. L. 103–465, title V, § 533(b)(4), Dec. 8, 1994, 108 Stat. 4989.) HISTORICAL AND REVISION NOTES This section follows the requirement of the Inter- national Convention for the Protection of Industrial Property, to which the United States is a party, and also codifies the holding of the Supreme Court that use of a patented invention on board a foreign ship does not infringe a patent. Editorial Notes AMENDMENTS 1994—Pub. L. 103–465 substituted ‘‘not offered for sale or sold’’ for ‘‘not sold’’. 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. § 273. Defense to infringement based on prior commercial use (a) IN GENERAL.—A person shall be entitled to a defense under section 282(b) with respect to subject matter consisting of a process, or con- sisting of a machine, manufacture, or composi- tion of matter used in a manufacturing or other commercial process, that would otherwise in- fringe a claimed invention being asserted against the person if— (1) such person, acting in good faith, com- mercially used the subject matter in the United States, either in connection with an in- ternal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commer- cial use; and (2) such commercial use occurred at least 1 year before the earlier of either— (A) the effective filing date of the claimed invention; or (B) the date on which the claimed inven- tion was disclosed to the public in a manner that qualified for the exception from prior art under section 102(b). (b) BURDEN OF PROOF.—A person asserting a defense under this section shall have the burden of establishing the defense by clear and con- vincing evidence. (c) ADDITIONAL COMMERCIAL USES.— (1) PREMARKETING REGULATORY REVIEW.— Subject matter for which commercial mar- keting or use is subject to a premarketing reg- ulatory review period during which the safety or efficacy of the subject matter is estab- lished, including any period specified in sec- tion 156(g), shall be deemed to be commer- cially used for purposes of subsection (a)(1) during such regulatory review period. (2) NONPROFIT LABORATORY USE.—A use of subject matter by a nonprofit research labora- tory or other nonprofit entity, such as a uni- versity or hospital, for which the public is the intended beneficiary, shall be deemed to be a commercial use for purposes of subsection (a)(1), except that a defense under this section may be asserted pursuant to this paragraph only for continued and noncommercial use by and in the laboratory or other nonprofit enti- ty. (d) EXHAUSTION OF RIGHTS.—Notwithstanding subsection (e)(1), the sale or other disposition of a useful end result by a person entitled to assert a defense under this section in connection with a patent with respect to that useful end result shall exhaust the patent owner’s rights under the patent to the extent that such rights would have been exhausted had such sale or other dis- position been made by the patent owner. (e) LIMITATIONS AND EXCEPTIONS.— (1) PERSONAL DEFENSE.— (A) IN GENERAL.—A defense under this sec- tion may be asserted only by the person who performed or directed the performance of the commercial use described in subsection (a), or by an entity that controls, is controlled by, or is under common control with such person. (B) TRANSFER OF RIGHT.—Except for any transfer to the patent owner, the right to as- sert a defense under this section shall not be licensed or assigned or transferred to an- other person except as an ancillary and sub- ordinate part of a good-faith assignment or transfer for other reasons of the entire en- terprise or line of business to which the de- fense relates. (C) RESTRICTION ON SITES.—A defense under this section, when acquired by a person as part of an assignment or transfer described Page 110 TITLE 35—PATENTS § 273 1 So in original. Another closing parenthesis probably should precede the comma. 1 So in original. Does not conform to section catchline. in subparagraph (B), may only be asserted for uses at sites where the subject matter that would otherwise infringe a claimed in- vention is in use before the later of the effec- tive filing date of the claimed invention or the date of the assignment or transfer of such enterprise or line of business. (2) DERIVATION.—A person may not assert a defense under this section if the subject mat- ter on which the defense is based was derived from the patentee or persons in privity with the patentee. (3) NOT A GENERAL LICENSE.—The defense as- serted by a person under this section is not a general license under all claims of the patent at issue, but extends only to the specific sub- ject matter for which it has been established that a commercial use that qualifies under this section occurred, except that the defense shall also extend to variations in the quantity or volume of use of the claimed subject mat- ter, and to improvements in the claimed sub- ject matter that do not infringe additional specifically claimed subject matter of the pat- ent. (4) ABANDONMENT OF USE.—A person who has abandoned commercial use (that qualifies under this section) of subject matter may not rely on activities performed before the date of such abandonment in establishing a defense under this section with respect to actions taken on or after the date of such abandon- ment. (5) UNIVERSITY EXCEPTION.— (A) IN GENERAL.—A person commercially using subject matter to which subsection (a) applies may not assert a defense under this section if the claimed invention with respect to which the defense is asserted was, at the time the invention was made, owned or sub- ject to an obligation of assignment to either an institution of higher education (as de- fined in section 101(a) of the Higher Edu- cation Act of 1965 (20 U.S.C. 1001(a)),1 or a technology transfer organization whose pri- mary purpose is to facilitate the commer- cialization of technologies developed by one or more such institutions of higher edu- cation. (B) EXCEPTION.—Subparagraph (A) shall not apply if any of the activities required to reduce to practice the subject matter of the claimed invention could not have been un- dertaken using funds provided by the Fed- eral Government. (f) UNREASONABLE ASSERTION OF DEFENSE.—If the defense under this section is pleaded by a person who is found to infringe the patent and who subsequently fails to demonstrate a reason- able basis for asserting the defense, the court shall find the case exceptional for the purpose of awarding attorney fees under section 285. (g) INVALIDITY.—A patent shall not be deemed to be invalid under section 102 or 103 solely be- cause a defense is raised or established under this section. (Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4302(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–555; amended Pub. L. 112–29, § 5(a), Sept. 16, 2011, 125 Stat. 297.) Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to defense to infringe- ment based on earlier inventor. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Pub. L. 112–29, § 5(c), Sept. 16, 2011, 125 Stat. 299, pro- vided that: ‘‘The amendments made by this section [amending this section] shall apply to any patent issued on or after the date of the enactment of this Act [Sept. 16, 2011].’’ EFFECTIVE DATE Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle C, § 4303], Nov. 29, 1999, 113 Stat. 1536, 1501A–557, 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 on the date of the enactment of this Act [Nov. 29, 1999], but shall not apply to any action for infringement that is pending on such date of enactment or with respect to any subject matter for which an adjudication of in- fringement, including a consent judgment, has been made before such date of enactment.’’ CHAPTER 29—REMEDIES FOR INFRINGE- MENT OF PATENT, AND OTHER ACTIONS Sec. 281. Remedy for infringement of patent. 282. Presumption of validity; defenses. 283. Injunction. 284. Damages. 285. Attorney fees. 286. Time limitation on damages. 287. Limitation on damages and other remedies; marking and notice. 288. Action for infringement of a patent con- taining an invalid claim. 289. Additional remedy for infringement of design patent. 290. Notice of patent suits. 291. Derived patents. 292. False marking. 293. Nonresident patentee, service and notice.1 294. Voluntary arbitration. 295. Presumption: Product made by patented process. 296. Liability of States, instrumentalities of States, and State officials for infringement of patents. 297. Improper and deceptive invention promotion. 298. Advice of counsel. 299. Joinder of parties. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29, § 19(d)(2), Sept. 16, 2011, 125 Stat. 333, added item 299. Pub. L. 112–29, § 17(b), Sept. 16, 2011, 125 Stat. 329, added item 298. Pub. L. 112–29, § 3(h)(2), Sept. 16, 2011, 125 Stat. 289, amended item 291 generally, substituting ‘‘Derived pat- ents’’ for ‘‘Interfering patents’’. 1999—Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4102(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A–554, added item 297. 1992—Pub. L. 102–560, § 2(b), Oct. 28, 1992, 106 Stat. 4230, added item 296.