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U.S. Patent Act after the America Invents Act (35 USC)

Executive summary:

Potential for Errors: This portion of BitLaw contains the U.S. Patent Act (found in Title 35 of the United States Code) as amended by the Leahy-Smith America Invents Act. This section was last updated in October 2011. The original statutory text was taken from the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Eighth Revision (July 2010). The changes made by the AIA were made by hand. Consequently, it is possible and likely that some errors may have been made, and some changes implemented by the AIA are shown incorrectly. If you notice such errors, please contact Dan Tysver at (dtysver@bitlaw.com). Please use this as a resource to better understand the AIA, but do not rely upon this as the definitive version of the U.S. Statutes.

Alternate Views: This page uses Stylesheets to allow different views of index to 35 USC. By clicking on the buttons below, one can either view this section in redline version (showing through underlines and strikethroughs the changes made by the AIA), or in a clean version (showing the act after all of the changes in the AIA are implemented), or in the original version (showing the original act before the AIA). A word index designed for an earlier version of the Patent Act is also provided.

 

Redline Clean Version (after America Invents Act) Original (before AIA)

 


PART I - UNITED STATES PATENT AND TRADEMARK OFFICE

CHAPTER 1 ESTABLISHMENT, OFFICERS AND EMPLOYEES, FUNCTIONS

35 U.S.C. 1 Establishment.
35 U.S.C. 2 Powers and duties.
35 U.S.C. 3 Officers and employees.
35 U.S.C. 4 Restrictions on officers and employees as to interest in patents.
35 U.S.C. 5 Patent and Trademark Office Public Advisory Committees.
35 U.S.C. 6 Patent Trial and Appeal Board Board of Patent Appeals and Interferences.
35 U.S.C. 7 Library.
35 U.S.C. 8 Classification of patents.
35 U.S.C. 9 Certified copies of records.
35 U.S.C. 10 Publications.
35 U.S.C. 11 Exchange of copies of patents and applications with foreign countries.
35 U.S.C. 12 Copies of patents and applications for public libraries.
35 U.S.C. 13 Annual report to Congress.

CHAPTER 2 PROCEEDINGS IN THE PATENT AND TRADEMARK OFFICE

35 U.S.C. 21 Filing date and day for taking action.
35 U.S.C. 22 Printing of papers filed.
35 U.S.C. 23 Testimony in Patent and Trademark Office cases.
35 U.S.C. 24 Subpoenas, witnesses.
35 U.S.C. 25 Declaration in lieu of oath.
35 U.S.C. 26 Effect of defective execution.

CHAPTER 3 PRACTICE BEFORE PATENT AND TRADEMARK OFFICE

35 U.S.C. 31 [Repealed].
35 U.S.C. 32 Suspension or exclusion from practice.
35 U.S.C. 33 Unauthorized representation as practitioner.

CHAPTER 4 PATENT FEES; FUNDING; SEARCH SYSTEMS

35 U.S.C. 41 Patent fees; patent and trademark search systems.
35 U.S.C. 42 Patent and Trademark Office funding.

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 10 PATENTABILITY OF INVENTIONS

35 U.S.C. 100 Definitions.
35 U.S.C. 101 Inventions patentable.
35 U.S.C. 102 Conditions for patentability; novelty and loss of right to patent.
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.
35 U.S.C. 104 Invention made abroad.
35 U.S.C. 105 Inventions in outer space.

CHAPTER 11 APPLICATION FOR PATENT

35 U.S.C. 111 Application.
35 U.S.C. 112 Specification.
35 U.S.C. 113 Drawings.
35 U.S.C. 114 Models, specimens.
35 U.S.C. 115 Inventor's oath or declaration of applicant.
35 U.S.C. 116 Inventors.
35 U.S.C. 117 Death or incapacity of inventor.
35 U.S.C. 118 Filing by other than inventor.
35 U.S.C. 119 Benefit of earlier filing date; right of priority.
35 U.S.C. 120 Benefit of earlier filing date in the United States.
35 U.S.C. 121 Divisional applications.
35 U.S.C. 122 Confidential status of applications; publication of patent applications.
35 U.S.C. 123 Micro entity defined.

CHAPTER 12 EXAMINATION OF APPLICATION

35 U.S.C. 131 Examination of application.
35 U.S.C. 132 Notice of rejection; reexamination.
35 U.S.C. 133 Time for prosecuting application.
35 U.S.C. 134 Appeal to the Patent Trial and Appeal Board Board of Patent Appeals and Interferences.
35 U.S.C. 135 Derivation Proceedings Interferences.

CHAPTER 13 REVIEW OF PATENT AND TRADEMARK OFFICE DECISION

35 U.S.C. 141 Appeal to the Court of Appeals for the Federal Circuit.
35 U.S.C. 142 Notice of appeal.
35 U.S.C. 143 Proceedings on appeal.
35 U.S.C. 144 Decision on appeal.
35 U.S.C. 145 Civil action to obtain patent.
35 U.S.C. 146 Civil action in case of derivation proceeding interference.

CHAPTER 14 ISSUE OF PATENT

35 U.S.C. 151 Issue of patent.
35 U.S.C. 152 Issue of patent to assignee.
35 U.S.C. 153 How issued.
35 U.S.C. 154 Contents and term of patent; provisional rights.
35 U.S.C. 155 Patent term extension.
35 U.S.C. 155A Patent term restoration.
35 U.S.C. 156 Extension of patent term.
35 U.S.C. 157 Statutory invention registration.

CHAPTER 15 PLANT PATENTS

35 U.S.C. 161 Patents for plants.
35 U.S.C. 162 Description, claim.
35 U.S.C. 163 Grant.
35 U.S.C. 164 Assistance of the Department of Agriculture.

CHAPTER 16 DESIGNS

35 U.S.C. 171 Patents for designs.
35 U.S.C. 172 Right of priority.
35 U.S.C. 173 Term of design patent.

CHAPTER 17 SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN FOREIGN COUNTRIES

35 U.S.C. 181 Secrecy of certain inventions and withholding of patent.
35 U.S.C. 182 Abandonment of invention for unauthorized disclosure.
35 U.S.C. 183 Right to compensation.
35 U.S.C. 184 Filing of application in foreign country.
35 U.S.C. 185 Patent barred for filing without license.
35 U.S.C. 186 Penalty.
35 U.S.C. 187 Nonapplicability to certain persons.
35 U.S.C. 188 Rules and regulations, delegation of power.

CHAPTER 18 PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE

35 U.S.C. 200 Policy and objective.
35 U.S.C. 201 Definitions.
35 U.S.C. 202 Disposition of rights.
35 U.S.C. 203 March-in rights.
35 U.S.C. 204 Preference for United States industry.
35 U.S.C. 205 Confidentiality.
35 U.S.C. 206 Uniform clauses and regulations.
35 U.S.C. 207 Domestic and foreign protection of federally owned inventions.
35 U.S.C. 208 Regulations governing Federal licensing.
35 U.S.C. 209 Licensing federally owned inventions.
35 U.S.C. 210 Precedence of chapter.
35 U.S.C. 211 Relationship to antitrust laws.
35 U.S.C. 212 Disposition of rights in educational awards.

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 25 AMENDMENT AND CORRECTION OF PATENTS

35 U.S.C. 251 Reissue of defective patents.
35 U.S.C. 252 Effect of reissue.
35 U.S.C. 253 Disclaimer.
35 U.S.C. 254 Certificate of correction of Patent and Trademark Office mistake.
35 U.S.C. 255 Certificate of correction of applicant's mistake.
35 U.S.C. 256 Correction of named inventor.
35 U.S.C. 257, Supplemental examinations to consider, reconsider, or correct information

CHAPTER 26 OWNERSHIP AND ASSIGNMENT

35 U.S.C. 261 Ownership; assignment.
35 U.S.C. 262 Joint owners.

CHAPTER 27 GOVERNMENT INTERESTS IN PATENTS

35 U.S.C. 266 [Repealed]
35 U.S.C. 267 Time for taking action in Government applications.

CHAPTER 28 INFRINGEMENT OF PATENTS

35 U.S.C. 271 Infringement of patent.
35 U.S.C. 272 Temporary presence in the United States.
35 U.S.C. 273 Defense to infringement based on prior commercial use earlier inventor.

CHAPTER 29 REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

35 U.S.C. 281 Remedy for infringement of patent.
35 U.S.C. 282 Presumption of validity; defenses.
35 U.S.C. 283 Injunction.
35 U.S.C. 284 Damages.
35 U.S.C. 285 Attorney fees.
35 U.S.C. 286 Time limitation on damages.
35 U.S.C. 287 Limitation on damages and other remedies; marking and notice.
35 U.S.C. 288 Action for infringement of a patent containing an invalid claim.
35 U.S.C. 289 Additional remedy for infringement of design patent.
35 U.S.C. 290 Notice of patent suits.
35 U.S.C. 291 Interfering Derived patents.
35 U.S.C. 292 False marking.
35 U.S.C. 293 Nonresident patentee; service and notice.
35 U.S.C. 294 Voluntary arbitration.
35 U.S.C. 295 Presumption: Product made by patented process.
35 U.S.C. 296 Liability of States, instrumentalities of States, and State officials for infringement of patents.
35 U.S.C. 297 Improper and deceptive invention promotion.
35 U.S.C. 298 Advice of counsel.
35 U.S.C. 299 Joinder of parties.

CHAPTER 30 PRIOR ART CITATIONS TO OFFICE AND EX PARTE REEXAMINATION OF PATENTS

35 U.S.C. 301 Citation of prior art and written statements.
35 U.S.C. 302 Request for reexamination.
35 U.S.C. 303 Determination of issue by Director.
35 U.S.C. 304 Reexamination order by Director.
35 U.S.C. 305 Conduct of reexamination proceedings.
35 U.S.C. 306 Appeal.
35 U.S.C. 307 Certificate of patentability, unpatentability, and claim cancellation.

CHAPTER 31 OPTIONAL INTER PARTES REVIEW REEXAMINATION PROCEDURES

35 U.S.C. 311 Request for Inter partes review reexamination
35 U.S.C. 312 Petitions Determination of issue by Director
35 U.S.C. 313 Preliminary response to petition Inter partes reexamination order by Director
35 U.S.C. 314 Institution of inter partes review Conduct of inter partes reexamination proceedings
35 U.S.C. 315 Relation to other proceedings or actions Appeal
35 U.S.C. 316 Conduct of inter partes review Certificate of patentability, unpatentability and claim cancellation
35 U.S.C. 317 Settlement Inter partes reexamination prohibited
35 U.S.C. 318 Decision of the Board Stay of litigation
35 U.S.C. 319 Appeal

CHAPTER 32 POST GRANT REVIEW

35 U.S.C. 321 Post grant review
35 U.S.C. 322 Petitions
35 U.S.C. 323 Preliminary response to petition
35 U.S.C. 324 Institution of post-grant review
35 U.S.C. 325 Relation to other proceedings or actions
35 U.S.C. 326 Conduct of post-grant review
35 U.S.C. 327 Settlement
35 U.S.C. 328 Decision of the Board
35 U.S.C. 329 Appeal

PART IV - PATENT COOPERATION TREATY

CHAPTER 35 DEFINITIONS

35 U.S.C. 351 Definitions.

CHAPTER 36 INTERNATIONAL STAGE

35 U.S.C. 361 Receiving Office.
35 U.S.C. 362 International Searching Authority and International Preliminary Examining Authority.
35 U.S.C. 363 International application designating the United States: Effect.
35 U.S.C. 364 International stage: Procedure.
35 U.S.C. 365 Right of priority; benefit of the filing date of a prior application.
35 U.S.C. 366 Withdrawn international application.
35 U.S.C. 367 Actions of other authorities: Review.
35 U.S.C. 368 Secrecy of certain inventions; filing international applications in foreign countries.

CHAPTER 37 NATIONAL STAGE

35 U.S.C. 371 National stage: Commencement.
35 U.S.C. 372 National stage: Requirements and procedure.
35 U.S.C. 373 Improper applicant.
35 U.S.C. 374 Publication of international application.
35 U.S.C. 375 Patent issued on international application: Effect.
35 U.S.C. 376 Fees.