US (United States) Code. Title 35. Chapter 11: Application for patent

Codificación normativa de EEUU (Estados Unidos) Legislación Federal estadounidense # Patents. Patentability of inventions and grant of patents

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-CITE-

35 USC CHAPTER 11 - APPLICATION FOR PATENT 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

CHAPTER 11 - APPLICATION FOR PATENT

-MISC1-

Sec.

111. Application.

112. Specification.

113. Drawings.

114. Models, specimens.

115. Oath of applicant.

116. Inventors.

117. Death or incapacity of inventor.

118. Filing by other than inventor.

119. Benefit of earlier filing date; right of priority.

120. Benefit of earlier filing date in the United States.

121. Divisional applications.

122. Confidential status of applications; publication of

patent applications.

AMENDMENTS

2002 - Pub. L. 107-273, div. C, title III, Sec. 13206(a)(7), Nov.

2, 2002, 116 Stat. 1904, substituted "Inventors" for "Joint

inventors" in item 116.

1999 - Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4507(5)], Nov. 29, 1999, 113 Stat. 1536, 1501A-566, inserted ";

publication of patent applications" after "applications" in item

122.

1994 - Pub. L. 103-465, title V, Sec. 532(c)(6), Dec. 8, 1994,

108 Stat. 4987, substituted "Application" for "Application for

patent" in item 111 and "Benefit of earlier filing date; right of

priority" for "Benefit of earlier filing date in foreign country;

right of priority" in item 119.

-SECREF-

CHAPTER REFERRED TO IN OTHER SECTIONS

This chapter is referred to in sections 371, 373, 375 of this

title.

-End-

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35 USC Sec. 111 01/06/03

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TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 111. Application

-STATUTE-

(a) In General. -

(1) Written application. - An application for patent shall be

made, or authorized to be made, by the inventor, except as

otherwise provided in this title, in writing to the Director.

(2) Contents. - Such application shall include -

(A) a specification as prescribed by section 112 of this

title;

(B) a drawing as prescribed by section 113 of this title; and

(C) an oath by the applicant as prescribed by section 115 of

this title.

(3) Fee and oath. - The application must be accompanied by the

fee required by law. The fee and oath may be submitted after the

specification and any required drawing are submitted, within such

period and under such conditions, including the payment of a

surcharge, as may be prescribed by the Director.

(4) Failure to submit. - Upon failure to submit the fee and

oath within such prescribed period, the application shall be

regarded as abandoned, unless it is shown to the satisfaction of

the Director that the delay in submitting the fee and oath was

unavoidable or unintentional. The filing date of an application

shall be the date on which the specification and any required

drawing are received in the Patent and Trademark Office.

(b) Provisional Application. -

(1) Authorization. - A provisional application for patent shall

be made or authorized to be made by the inventor, except as

otherwise provided in this title, in writing to the Director.

Such application shall include -

(A) a specification as prescribed by the first paragraph of

section 112 of this title; and

(B) a drawing as prescribed by section 113 of this title.

(2) Claim. - A claim, as required by the second through fifth

paragraphs of section 112, shall not be required in a provisional

application.

(3) Fee. - (A) The application must be accompanied by the fee

required by law.

(B) The fee may be submitted after the specification and any

required drawing are submitted, within such period and under such

conditions, including the payment of a surcharge, as may be

prescribed by the Director.

(C) Upon failure to submit the fee within such prescribed

period, the application shall be regarded as abandoned, unless it

is shown to the satisfaction of the Director that the delay in

submitting the fee was unavoidable or unintentional.

(4) Filing date. - The filing date of a provisional application

shall be the date on which the specification and any required

drawing are received in the Patent and Trademark Office.

(5) Abandonment. - Notwithstanding the absence of a claim, upon

timely request and as prescribed by the Director, a provisional

application may be treated as an application filed under

subsection (a). Subject to section 119(e)(3) of this title, if no

such request is made, the provisional application shall be

regarded as abandoned 12 months after the filing date of such

application and shall not be subject to revival after such

12-month period.

(6) Other basis for provisional application. - Subject to all

the conditions in this subsection and section 119(e) of this

title, and as prescribed by the Director, an application for

patent filed under subsection (a) may be treated as a provisional

application for patent.

(7) No right of priority or benefit of earliest filing date. -

A provisional application shall not be entitled to the right of

priority of any other application under section 119 or 365(a) of

this title or to the benefit of an earlier filing date in the

United States under section 120, 121, or 365(c) of this title.

(8) Applicable provisions. - The provisions of this title

relating to applications for patent shall apply to provisional

applications for patent, except as otherwise provided, and except

that provisional applications for patent shall not be subject to

sections 115, 131, 135, and 157 of this title.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 798; Pub. L. 97-247, Sec. 5, Aug.

27, 1982, 96 Stat. 319; Pub. L. 103-465, title V, Sec. 532(b)(3),

Dec. 8, 1994, 108 Stat. 4986; Pub. L. 106-113, div. B, Sec.

1000(a)(9) [title IV, Secs. 4732(a)(10)(A), 4801(a)], Nov. 29,

1999, 113 Stat. 1536, 1501A-582, 1501A-588; Pub. L. 107-273, div.

C, title III, Sec. 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 33 (R.S. 4888, amended

(1) Mar. 3, 1915, ch. 94, Sec. 1, 38 Stat. 958; (2) May 23, 1930,

ch. 312, Sec. 2, 46 Stat. 376).

The corresponding section of existing statute is divided into an

introductory section relating to the application generally (this

section) and a section on the specification (sec. 112).

The parts of the application are specified and the requirement

for signature is placed in this general section so as to insure

that only one signature will suffice.

AMENDMENTS

2002 - Subsecs. (a)(1), (3), (4), (b)(1), (3)(B), (C), (6). Pub.

L. 107-273 made technical correction to directory language of Pub.

L. 106-113, Sec. 1000(a)(9) [title IV, Sec. 4732(a)(10)(A)]. See

1999 Amendment notes below.

1999 - Subsecs. (a)(1), (3), (4), (b)(1), (3)(B), (C). Pub. L.

106-113, Sec. 1000(a)(9) [title IV, Sec. 4732(a)(10)(A)], as

amended by Pub. L. 107-273, substituted "Director" for

"Commissioner".

Subsec. (b)(5). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.

4801(a)], amended heading and text of par. (5) generally. Prior to

amendment, text read as follows: "The provisional application shall

be regarded as abandoned 12 months after the filing date of such

application and shall not be subject to revival thereafter."

Subsec. (b)(6). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.

4732(a)(10)(A)], as amended by Pub. L. 107-273, substituted

"Director" for "Commissioner".

1994 - Pub. L. 103-465 amended section generally. Prior to

amendment, section read as follows: "Application for patent shall

be made, or authorized to be made, by the inventor, except as

otherwise provided in this title, in writing to the Commissioner.

Such application shall include (1) a specification as prescribed by

section 112 of this title; (2) a drawing as prescribed by section

113 of this title; and (3) an oath by the applicant as prescribed

by section 115 of this title. The application must be accompanied

by the fee required by law. The fee and oath may be submitted after

the specification and any required drawing are submitted, within

such period and under such conditions, including the payment of a

surcharge, as may be prescribed by the Commissioner. Upon failure

to submit the fee and oath within such prescribed period, the

application shall be regarded as abandoned, unless it is shown to

the satisfaction of the Commissioner that the delay in submitting

the fee and oath was unavoidable. The filing date of an application

shall be the date on which the specification and any required

drawing are received in the Patent and Trademark Office."

1982 - Pub. L. 97-247 inserted ", or authorized to be made,"

after "shall be made", struck out the colon after "shall include",

struck out "signed by the applicant and" after "The application",

and inserted provisions that the fee and oath may be submitted

after the specification and any required drawing are submitted,

within such period and under such conditions, including the payment

of a surcharge, as may be prescribed by the Commissioner, that upon

failure to submit the fee and oath within such prescribed period,

the application shall be regarded as abandoned, unless it is shown

to the satisfaction of the Commissioner that the delay in

submitting the fee and oath was unavoidable, and that the filing

date of an application shall be the date on which the specification

and any required drawing are received in the Patent and Trademark

Office.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by section 1000(a)(9) [title IV, Sec. 4732(a)(10)(A)]

of Pub. L. 106-113 effective 4 months after Nov. 29, 1999, see

section 1000(a)(9) [title IV, Sec. 4731] of Pub. L. 106-113, set

out as a note under section 1 of this title.

Amendment by section 1000(a)(9) [title IV, Sec. 4801(a)] of Pub.

L. 106-113 effective Nov. 29, 1999, and applicable to any

provisional application filed on or after June 8, 1995, see section

1000(a)(9) [title IV, Sec. 4801(d)] of Pub. L. 106-113, set out as

a note under section 119 of this title.

EFFECTIVE DATE OF 1994 AMENDMENT

Amendment by Pub. L. 103-465 effective 6 months after Dec. 8,

1994, and applicable to all patent applications filed in the United

States on or after that effective date, with provisions relating to

earliest filed patent application, see section 534(b)(1), (3) of

Pub. L. 103-465, set out as a note under section 154 of this title.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-247 effective six months after Aug. 27,

1982, see section 17(c) of Pub. L. 97-247, set out as an Effective

Date note under section 294 of this title.

EMERGENCY RELIEF FROM POSTAL SITUATION AFFECTING PATENT, TRADEMARK,

AND OTHER FEDERAL CASES

Pub. L. 92-34, June 30, 1971, 85 Stat. 87, provided that a patent

or trademark application would be considered filed in the United

States Patent Office on the date that it would have been received

by the Patent Office except for the delay caused by emergency

situation affecting postal service from Mar. 18, 1970 to Mar. 30,

1970, if a claim was made.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 122, 154 of this title.

-End-

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35 USC Sec. 112 01/06/03

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TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 112. Specification

-STATUTE-

The specification shall contain a written description of the

invention, and of the manner and process of making and using it, in

such full, clear, concise, and exact terms as to enable any person

skilled in the art to which it pertains, or with which it is most

nearly connected, to make and use the same, and shall set forth the

best mode contemplated by the inventor of carrying out his

invention.

The specification shall conclude with one or more claims

particularly pointing out and distinctly claiming the subject

matter which the applicant regards as his invention.

A claim may be written in independent or, if the nature of the

case admits, in dependent or multiple dependent form.

Subject to the following paragraph, a claim in dependent form

shall contain a reference to a claim previously set forth and then

specify a further limitation of the subject matter claimed. A claim

in dependent form shall be construed to incorporate by reference

all the limitations of the claim to which it refers.

A claim in multiple dependent form shall contain a reference, in

the alternative only, to more than one claim previously set forth

and then specify a further limitation of the subject matter

claimed. A multiple dependent claim shall not serve as a basis for

any other multiple dependent claim. A multiple dependent claim

shall be construed to incorporate by reference all the limitations

of the particular claim in relation to which it is being

considered.

An element in a claim for a combination may be expressed as a

means or step for performing a specified function without the

recital of structure, material, or acts in support thereof, and

such claim shall be construed to cover the corresponding structure,

material, or acts described in the specification and equivalents

thereof.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 798; Pub. L. 89-83, Sec. 9, July

24, 1965, 79 Stat. 261; Pub. L. 94-131, Sec. 7, Nov. 14, 1975, 89

Stat. 691.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 33 (R.S. 4888, amended

(1) Mar. 3, 1915, ch. 94, Sec. 1, 38 Stat. 958; (2) May 23, 1930,

ch. 312, Sec. 2, 46 Stat. 376).

The sentence relating to signature of the specification is

omitted in view of the general requirement for a signature in

section 111.

The last sentence is omitted for inclusion in the chapter

relating to plant patents.

The clause relating to machines is omitted as unnecessary and the

requirement for disclosing the best mode of carrying out the

invention is stated as generally applicable to all types of

invention (derived from Title 35, U.S.C., 1946 ed., Sec. 69, first

defense).

The clause relating to the claim is made a separate paragraph to

emphasize the distinction between the description and the claim or

definition, and the language is modified.

A new paragraph relating to functional claims is added.

AMENDMENTS

1975 - Pub. L. 94-131 substituted provision authorizing the

writing of claims, if the nature of the case admits, in dependent

or multiple dependent form for prior provision for writing claims

in dependent form, required claims in dependent form to contain a

reference to a claim previously set forth and then specify a

further limitation of the subject matter claimed, substituted text

respecting construction of a claim in dependent form so as to

incorporate by reference all the limitations of the claim to which

it refers for prior text for construction of a dependent claim to

include all the limitations of the claim incorporated by reference

into the dependent claim, and inserted paragraph respecting certain

requirements for claims in multiple dependent form.

1965 - Pub. L. 89-83 permitted a claim to be written in

independent or dependent form, and if in dependent form, required

it to be construed to include all the limitations of the claim

incorporated by reference into the dependent claim.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 94-131 effective Jan. 24, 1978, and

applicable on and after that date to patent applications filed in

the United States and to international applications, where

applicable, see section 11 of Pub. L. 94-131, set out as an

Effective Date note under section 351 of this title.

EFFECTIVE DATE OF 1965 AMENDMENT

Amendment by Pub. L. 89-83 effective three months after July 24,

1965, see section 7(a) of Pub. L. 89-83, set out as a note under

section 41 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 41, 111, 119, 120, 157,

162, 282 of this title.

-End-

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35 USC Sec. 113 01/06/03

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TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 113. Drawings

-STATUTE-

The applicant shall furnish a drawing where necessary for the

understanding of the subject matter sought to be patented. When the

nature of such subject matter admits of illustration by a drawing

and the applicant has not furnished such a drawing, the Director

may require its submission within a time period of not less than

two months from the sending of a notice thereof. Drawings submitted

after the filing date of the application may not be used (i) to

overcome any insufficiency of the specification due to lack of an

enabling disclosure or otherwise inadequate disclosure therein, or

(ii) to supplement the original disclosure thereof for the purpose

of interpretation of the scope of any claim.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 94-131, Sec. 8, Nov.

14, 1975, 89 Stat. 691; Pub. L. 106-113, div. B, Sec. 1000(a)(9)

[title IV, Sec. 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536,

1501A-582; Pub. L. 107-273, div. C, title III, Sec. 13206(b)(1)(B),

Nov. 2, 2002, 116 Stat. 1906.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 34, part (R.S. 4889,

amended Mar. 3, 1915, ch. 94, Sec. 2, 38 Stat. 958).

The requirement for signature in the corresponding section of

existing statute is omitted; regulations of the Patent Office can

take care of any substitute. A redundant clause is omitted.

AMENDMENTS

2002 - Pub. L. 107-273 made technical correction to directory

language of Pub. L. 106-113. See 1999 Amendment note below.

1999 - Pub. L. 106-113, as amended by Pub. L. 107-273,

substituted "Director" for "Commissioner".

1975 - Pub. L. 94-131 substituted provisions respecting drawings

requiring necessary-for-understanding drawings and submission of

drawings within prescribed time period and limiting use of drawings

submitted after filing date of application for prior provision

requiring the applicant to furnish a drawing when the nature of the

case admitted it.

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, Sec. 4731] of Pub. L.

106-113, set out as a note under section 1 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 94-131 effective Jan. 24, 1978, and

applicable on and after that date to patent applications filed in

the United States and to international applications, where

applicable, see section 11 of Pub. L. 94-131, set out as an

Effective Date note under section 351 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 111 of this title.

-End-

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35 USC Sec. 114 01/06/03

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TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 114. Models, specimens

-STATUTE-

The Director may require the applicant to furnish a model of

convenient size to exhibit advantageously the several parts of his

invention.

When the invention relates to a composition of matter, the

Director may require the applicant to furnish specimens or

ingredients for the purpose of inspection or experiment.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 106-113, div. B,

Sec. 1000(a)(9) [title IV, Sec. 4732(a)(10)(A)], Nov. 29, 1999, 113

Stat. 1536, 1501A-582; Pub. L. 107-273, div. C, title III, Sec.

13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 34, part (R.S. 4890 and

4891).

The change in language in the second paragraph broadens the

requirement for specimens.

AMENDMENTS

2002 - Pub. L. 107-273 made technical correction to directory

language of Pub. L. 106-113. See 1999 Amendment note below.

1999 - Pub. L. 106-113, as amended by Pub. L. 107-273,

substituted "Director" for "Commissioner" in two places.

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, Sec. 4731] of Pub. L.

106-113, set out as a note under section 1 of this title.

-End-

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35 USC Sec. 115 01/06/03

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TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 115. Oath of applicant

-STATUTE-

The applicant shall make oath that he believes himself to be the

original and first inventor of the process, machine, manufacture,

or composition of matter, or improvement thereof, for which he

solicits a patent; and shall state of what country he is a citizen.

Such oath may be made before any person within the United States

authorized by law to administer oaths, or, when, made in a foreign

country, before any diplomatic or consular officer of the United

States authorized to administer oaths, or before any officer having

an official seal and authorized to administer oaths in the foreign

country in which the applicant may be, whose authority is proved by

certificate of a diplomatic or consular officer of the United

States, or apostille of an official designated by a foreign country

which, by treaty or convention, accords like effect to apostilles

of designated officials in the United States, and such oath shall

be valid if it complies with the laws of the state or country where

made. When the application is made as provided in this title by a

person other than the inventor, the oath may be so varied in form

that it can be made by him. For purposes of this section, a

consular officer shall include any United States citizen serving

overseas, authorized to perform notarial functions pursuant to

section 1750 of the Revised Statutes, as amended (22 U.S.C. 4221).

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 97-247, Sec. 14(a),

Aug. 27, 1982, 96 Stat. 321; Pub. L. 105-277, div. G, title XXII,

Sec. 2222(d), Oct. 21, 1998, 112 Stat. 2681-818.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 35 (R.S. 4892, amended

(1) Mar. 3, 1903, ch. 1019, Sec. 2, 32 Stat. 1225, 1226, (2) May

23, 1930, ch. 312, Sec. 3, 46 Stat. 376).

The expression at the end of the second sentence is added to

avoid application of the District of Columbia law to oaths taken

outside the District.

Changes in language are made.

AMENDMENTS

1998 - Pub. L. 105-277 inserted at end "For purposes of this

section, a consular officer shall include any United States citizen

serving overseas, authorized to perform notarial functions pursuant

to section 1750 of the Revised Statutes, as amended (22 U.S.C.

4221)."

1982 - Pub. L. 97-247 substituted "is" for "shall be" after

"whose authority", and inserted ", or apostille of an official

designated by a foreign country which, by treaty or convention,

accords like effect to apostilles of designated officials in the

United States".

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-247 effective Aug. 27, 1982, see section

17(a) of Pub. L. 97-247, set out as a note under section 41 of this

title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 111, 371 of this title.

-End-

-CITE-

35 USC Sec. 116 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 116. Inventors

-STATUTE-

When an invention is made by two or more persons jointly, they

shall apply for patent jointly and each make the required oath,

except as otherwise provided in this title. Inventors may apply for

a patent jointly even though (1) they did not physically work

together or at the same time, (2) each did not make the same type

or amount of contribution, or (3) each did not make a contribution

to the subject matter of every claim of the patent.

If a joint inventor refuses to join in an application for patent

or cannot be found or reached after diligent effort, the

application may be made by the other inventor on behalf of himself

and the omitted inventor. The Director, on proof of the pertinent

facts and after such notice to the omitted inventor as he

prescribes, may grant a patent to the inventor making the

application, subject to the same rights which the omitted inventor

would have had if he had been joined. The omitted inventor may

subsequently join in the application.

Whenever through error a person is named in an application for

patent as the inventor, or through error an inventor is not named

in an application, and such error arose without any deceptive

intention on his part, the Director may permit the application to

be amended accordingly, under such terms as he prescribes.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 97-247, Sec. 6(a),

Aug. 27, 1982, 96 Stat. 320; Pub. L. 98-622, title I, Sec. 104(a),

Nov. 8, 1984, 98 Stat. 3384; Pub. L. 106-113, div. B, Sec.

1000(a)(9) [title IV, Sec. 4732(a)(10)(A)], Nov. 29, 1999, 113

Stat. 1536, 1501A-582; Pub. L. 107-273, div. C, title III, Sec.

13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.)

-MISC1-

HISTORICAL AND REVISION NOTES

The first paragraph is implied in the present statutes, and the

part of the last paragraph relating to omission of an erroneously

joined inventor is in the Patent Office rules. The remainder is new

and provides for the correction of a mistake in erroneously joining

a person as inventor, and for filing an application when one of

several joint inventors cannot be found. This section is ancillary

to section 256.

AMENDMENTS

2002 - Pub. L. 107-273 made technical correction to directory

language of Pub. L. 106-113. See 1999 Amendment note below.

1999 - Pub. L. 106-113, as amended by Pub. L. 107-273,

substituted "Director" for "Commissioner" in two places.

1984 - Pub. L. 98-622 amended first par. generally, striking out

"and each sign the application" after "patent jointly" and

inserting sentence beginning "Inventors may apply".

1982 - Pub. L. 97-247 substituted "Inventors" for "Joint

inventors" as section catchline, and substituted "through error a

person is named in an application for patent as the inventor, or

through error an inventor is not named in an application" for "a

person is joined in an application for patent as joint inventor

through error, or a joint inventor is not included in an

application through error".

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, Sec. 4731] of Pub. L.

106-113, set out as a note under section 1 of this title.

EFFECTIVE DATE OF 1984 AMENDMENT

Amendment by Pub. L. 98-622 applicable to all United States

patents granted before, on, or after Nov. 8, 1984, and to all

applications for United States patents pending on or filed after

that date, except as otherwise provided, see section 106 of Pub. L.

98-622, set out as a note under section 103 of this title.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-247 effective six months after Aug. 27,

1982, see section 17(c) of Pub. L. 97-247, set out as an Effective

Date note under section 294 of this title.

-End-

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35 USC Sec. 117 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 117. Death or incapacity of inventor

-STATUTE-

Legal representatives of deceased inventors and of those under

legal incapacity may make application for patent upon compliance

with the requirements and on the same terms and conditions

applicable to the inventor.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 799.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 46 (R.S. 4896, amended

(1) Feb. 28, 1899, ch. 227, 30 Stat. 915, (2) Mar. 3, 1903, ch.

1019, Sec. 3, 32 Stat. 1225, 1226, (3) May 23, 1908, ch. 188, 35

Stat. 245).

The language has been considerably simplified.

-End-

-CITE-

35 USC Sec. 118 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 118. Filing by other than inventor

-STATUTE-

Whenever an inventor refuses to execute an application for

patent, or cannot be found or reached after diligent effort, a

person to whom the inventor has assigned or agreed in writing to

assign the invention or who otherwise shows sufficient proprietary

interest in the matter justifying such action, may make application

for patent on behalf of and as agent for the inventor on proof of

the pertinent facts and a showing that such action is necessary to

preserve the rights of the parties or to prevent irreparable

damage; and the Director may grant a patent to such inventor upon

such notice to him as the Director deems sufficient, and on

compliance with such regulations as he prescribes.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 799; Pub. L. 106-113, div. B,

Sec. 1000(a)(9) [title IV, Sec. 4732(a)(10)(A)], Nov. 29, 1999, 113

Stat. 1536, 1501A-582; Pub. L. 107-273, div. C, title III, Sec.

13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.)

-MISC1-

HISTORICAL AND REVISION NOTES

This section is new and provides for the filing of an application

by another on behalf of the inventor in certain special hardship

situations.

AMENDMENTS

2002 - Pub. L. 107-273 made technical correction to directory

language of Pub. L. 106-113. See 1999 Amendment note below.

1999 - Pub. L. 106-113, as amended by Pub. L. 107-273,

substituted "Director" for "Commissioner" in two places.

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, Sec. 4731] of Pub. L.

106-113, set out as a note under section 1 of this title.

-End-

-CITE-

35 USC Sec. 119 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 119. Benefit of earlier filing date; right of priority

-STATUTE-

(a) An application for patent for an invention filed in this

country by any person who has, or whose legal representatives or

assigns have, previously regularly filed an application for a

patent for the same invention in a foreign country which affords

similar privileges in the case of applications filed in the United

States or to citizens of the United States, or in a WTO member

country, shall have the same effect as the same application would

have if filed in this country on the date on which the application

for patent for the same invention was first filed in such foreign

country, if the application in this country is filed within twelve

months from the earliest date on which such foreign application was

filed; but no patent shall be granted on any application for patent

for an invention which had been patented or described in a printed

publication in any country more than one year before the date of

the actual filing of the application in this country, or which had

been in public use or on sale in this country more than one year

prior to such filing.

(b)(1) No application for patent shall be entitled to this right

of priority unless a claim is filed in the Patent and Trademark

Office, identifying the foreign application by specifying the

application number on that foreign application, the intellectual

property authority or country in or for which the application was

filed, and the date of filing the application, at such time during

the pendency of the application as required by the Director.

(2) The Director may consider the failure of the applicant to

file a timely claim for priority as a waiver of any such claim. The

Director may establish procedures, including the payment of a

surcharge, to accept an unintentionally delayed claim under this

section.

(3) The Director may require a certified copy of the original

foreign application, specification, and drawings upon which it is

based, a translation if not in the English language, and such other

information as the Director considers necessary. Any such

certification shall be made by the foreign intellectual property

authority in which the foreign application was filed and show the

date of the application and of the filing of the specification and

other papers.

(c) In like manner and subject to the same conditions and

requirements, the right provided in this section may be based upon

a subsequent regularly filed application in the same foreign

country instead of the first filed foreign application, provided

that any foreign application filed prior to such subsequent

application has been withdrawn, abandoned, or otherwise disposed

of, without having been laid open to public inspection and without

leaving any rights outstanding, and has not served, nor thereafter

shall serve, as a basis for claiming a right of priority.

(d) Applications for inventors' certificates filed in a foreign

country in which applicants have a right to apply, at their

discretion, either for a patent or for an inventor's certificate

shall be treated in this country in the same manner and have the

same effect for purpose of the right of priority under this section

as applications for patents, subject to the same conditions and

requirements of this section as apply to applications for patents,

provided such applicants are entitled to the benefits of the

Stockholm Revision of the Paris Convention at the time of such

filing.

(e)(1) An application for patent filed under section 111(a) or

section 363 of this title for an invention disclosed in the manner

provided by the first paragraph of section 112 of this title in a

provisional application filed under section 111(b) of this title,

by an inventor or inventors named in the provisional application,

shall have the same effect, as to such invention, as though filed

on the date of the provisional application filed under section

111(b) of this title, if the application for patent filed under

section 111(a) or section 363 of this title is filed not later than

12 months after the date on which the provisional application was

filed and if it contains or is amended to contain a specific

reference to the provisional application. No application shall be

entitled to the benefit of an earlier filed provisional application

under this subsection unless an amendment containing the specific

reference to the earlier filed provisional application is submitted

at such time during the pendency of the application as required by

the Director. The Director may consider the failure to submit such

an amendment within that time period as a waiver of any benefit

under this subsection. The Director may establish procedures,

including the payment of a surcharge, to accept an unintentionally

delayed submission of an amendment under this subsection during the

pendency of the application.

(2) A provisional application filed under section 111(b) of this

title may not be relied upon in any proceeding in the Patent and

Trademark Office unless the fee set forth in subparagraph (A) or

(C) of section 41(a)(1) of this title has been paid.

(3) If the day that is 12 months after the filing date of a

provisional application falls on a Saturday, Sunday, or Federal

holiday within the District of Columbia, the period of pendency of

the provisional application shall be extended to the next

succeeding secular or business day.

(f) Applications for plant breeder's rights filed in a WTO member

country (or in a foreign UPOV Contracting Party) shall have the

same effect for the purpose of the right of priority under

subsections (a) through (c) of this section as applications for

patents, subject to the same conditions and requirements of this

section as apply to applications for patents.

(g) As used in this section -

(1) the term "WTO member country" has the same meaning as the

term is defined in section 104(b)(2) of this title; and

(2) the term "UPOV Contracting Party" means a member of the

International Convention for the Protection of New Varieties of

Plants.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 800; Pub. L. 87-333, Sec. 1, Oct.

3, 1961, 75 Stat. 748; Pub. L. 92-358, Sec. 1, July 28, 1972, 86

Stat. 501; Pub. L. 93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949;

Pub. L. 103-465, title V, Sec. 532(b)(1), Dec. 8, 1994, 108 Stat.

4985; Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Secs.

4503(a), (b)(2), 4801(b), (c), 4802], Nov. 29, 1999, 113 Stat.

1536, 1501A-563, 1501A-564, 1501A-588, 1501A-589; Pub. L. 107-273,

div. C, title III, Sec. 13206(b)(2), Nov. 2, 2002, 116 Stat. 1906.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 32, second paragraph

(R.S. 4887, second paragraph, amended (1) Mar. 3, 1903, ch. 1019,

Sec. 1, 32 Stat. 1225, 1226, (2) June 19, 1936, ch. 594, 49 Stat.

1529, (3) Aug. 5, 1939, ch. 450, Sec. 1, 53 Stat. 1212).

The first paragraph is the same as the present law with changes

in language. The references to designs have been removed for

inclusion in another section and the opening clause has been

modified to accord with actual practice and the requirements of the

International Convention for the Protection of Industrial Property.

The second paragraph is new, making an additional procedural

requirement for obtaining the right of priority. Copies of the

foreign papers on which the right of priority is based are required

so that the record of the United States patent will be complete in

this country.

-REFTEXT-

REFERENCES IN TEXT

The Stockholm Revision of the Paris Convention, referred to in

subsec. (d), means the Convention revising the Convention of the

Union of Paris of Mar. 20, 1883, as revised, for the protection of

industrial property, done at Stockholm July 14, 1967, entered into

force for the United States Sept. 5, 1970, with the exception of

Articles 1 through 12 which entered into force for the United

States Aug. 25, 1973. See 21 UST 1583; 24 UST 2140; TIAS 6293,

7727.

-MISC2-

AMENDMENTS

2002 - Subsec. (a). Pub. L. 107-273 made technical correction to

directory language of Pub. L. 106-113, Sec. 1000(a)(9) [title IV,

Sec. 4802(1)]. See 1999 Amendment note below.

1999 - Subsec. (a). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,

Sec. 4802(1)], as amended by Pub. L. 107-273, inserted "or in a WTO

member country," after "or to citizens of the United States,".

Subsec. (b). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.

4503(a)], amended subsec. (b) generally. Prior to amendment,

subsec. (b) read as follows: "No application for patent shall be

entitled to this right of priority unless a claim therefor and a

certified copy of the original foreign application, specification

and drawings upon which it is based are filed in the Patent and

Trademark Office before the patent is granted, or at such time

during the pendency of the application as required by the

Commissioner not earlier than six months after the filing of the

application in this country. Such certification shall be made by

the patent office of the foreign country in which filed and show

the date of the application and of the filing of the specification

and other papers. The Commissioner may require a translation of the

papers filed if not in the English language and such other

information as he deems necessary."

Subsec. (e)(1). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.

4503(b)(2)], inserted at end: "No application shall be entitled to

the benefit of an earlier filed provisional application under this

subsection unless an amendment containing the specific reference to

the earlier filed provisional application is submitted at such time

during the pendency of the application as required by the Director.

The Director may consider the failure to submit such an amendment

within that time period as a waiver of any benefit under this

subsection. The Director may establish procedures, including the

payment of a surcharge, to accept an unintentionally delayed

submission of an amendment under this subsection during the

pendency of the application."

Subsec. (e)(2). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.

4801(c)], struck out before period at end "and the provisional

application was pending on the filing date of the application for

patent under section 111(a) or section 363 of this title".

Subsec. (e)(3). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.

4801(b)], added par. (3).

Subsecs. (f), (g). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,

Sec. 4802(2)], added subsecs. (f) and (g).

1994 - Pub. L. 103-465, in section catchline, struck out "in

foreign country" after "date", designated four undesignated

paragraphs as subsecs. (a) to (d), and added subsec. (e).

1975 - Pub. L. 93-596 substituted "Patent and Trademark Office"

for "Patent Office".

1972 - Pub. L. 92-358 inserted last paragraph providing that

under certain circumstances, applications for inventors'

certificate filed in a foreign country would be given the same

priority as applications for patents, if the applicants are

entitled to the benefits of the Stockholm Revision of the Paris

Convention at the time of filing.

1961 - Pub. L. 87-333 authorized the right provided by this

section to be based upon a subsequent application in the same

foreign country, instead of the first application, provided that

any foreign application filed prior to such subsequent one was

withdrawn, or otherwise disposed of, without having been open to

public inspection and without leaving any rights outstanding, nor

any basis for claiming priority.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by section 1000(a)(9) [title IV, Sec. 4503(a), (b)(2)]

of Pub. L. 106-113 effective Nov. 29, 2000, and applicable only to

applications (including international applications designating the

United States) filed on or after that date, see section 1000(a)(9)

[title IV, Sec. 4508] of Pub. L. 106-113, as amended, set out as a

note under section 10 of this title.

Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4801(d)], Nov. 29, 1999, 113 Stat. 1536, 1501A-589, provided that:

"The amendments made by this section [amending this section and

section 111 of this title] shall take effect on the date of the

enactment of this Act [Nov. 29, 1999] and shall apply to any

provisional application filed on or after June 8, 1995, except that

the amendments made by subsections (b) and (c) [amending this

section] shall have no effect with respect to any patent which is

the subject of litigation in an action commenced before such date

of enactment."

EFFECTIVE DATE OF 1994 AMENDMENT

Amendment by Pub. L. 103-465 effective 6 months after Dec. 8,

1994, and applicable to all patent applications filed in the United

States on or after that effective date, with provisions relating to

earliest filed patent application, see section 534(b)(1), (3) of

Pub. L. 103-465, set out as a note under section 154 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of Title

15, Commerce and Trade.

EFFECTIVE DATE OF 1972 AMENDMENT

Section 3(a) of Pub. L. 92-358 provided that: "Section 1 of this

Act [amending this section] shall take effect on the date when

Articles 1-12 of the Paris Convention of March 20, 1883, for the

Protection of Industrial Property, as revised at Stockholm, July

14, 1967, come into force with respect to the United States [Aug.

25, 1973] and shall apply only to applications thereafter filed in

the United States."

EFFECTIVE DATE OF 1961 AMENDMENT

Amendment by Pub. L. 87-333 effective on the date when the

Convention of Paris for the Protection of Industrial Property of

March 20, 1883, as revised at Lisbon, Oct. 31, 1958, comes into

force with respect to the United States [Jan. 4, 1962] and shall

apply only to applications thereafter filed in the United States by

persons entitled to the benefit of said convention, as revised at

the time of such filing, see section 3 of Pub. L. 87-333, set out

as a note under section 1126 of Title 15, Commerce and Trade.

JAPANESE AND CERTAIN GERMAN NATIONALS; TEMPORARY EXTENSION OF

PRIORITY RIGHTS

Act Aug. 23, 1954, ch. 823, 68 Stat. 764, provided that the

priority rights specified in section 101 of former Title 35,

Patents, which arose before Apr. 1, 1950, were extended, with

respect to inventions made subsequent to Jan. 1, 1946, in favor of

certain Japanese and German nationals, to a date nine months after

Aug. 23, 1954, subject to conditions and limitations specified in

sections 104, 110, 112, and 114 of former title 35.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 104, 111, 154, 172, 273,

373 of this title.

-End-

-CITE-

35 USC Sec. 120 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 120. Benefit of earlier filing date in the United States

-STATUTE-

An application for patent for an invention disclosed in the

manner provided by the first paragraph of section 112 of this title

in an application previously filed in the United States, or as

provided by section 363 of this title, which is filed by an

inventor or inventors named in the previously filed application

shall have the same effect, as to such invention, as though filed

on the date of the prior application, if filed before the patenting

or abandonment of or termination of proceedings on the first

application or on an application similarly entitled to the benefit

of the filing date of the first application and if it contains or

is amended to contain a specific reference to the earlier filed

application. No application shall be entitled to the benefit of an

earlier filed application under this section unless an amendment

containing the specific reference to the earlier filed application

is submitted at such time during the pendency of the application as

required by the Director. The Director may consider the failure to

submit such an amendment within that time period as a waiver of any

benefit under this section. The Director may establish procedures,

including the payment of a surcharge, to accept an unintentionally

delayed submission of an amendment under this section.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 800; Pub. L. 94-131, Sec. 9, Nov.

14, 1975, 89 Stat. 691; Pub. L. 98-622, title I, Sec. 104(b), Nov.

8, 1984, 98 Stat. 3385; Pub. L. 106-113, div. B, Sec. 1000(a)(9)

[title IV, Sec. 4503(b)(1)], Nov. 29, 1999, 113 Stat. 1536,

1501A-563.)

-MISC1-

HISTORICAL AND REVISION NOTES

This section represents present law not expressed in the statute,

except for the added requirement that the first application must be

specifically mentioned in the second.

AMENDMENTS

1999 - Pub. L. 106-113 inserted at end "No application shall be

entitled to the benefit of an earlier filed application under this

section unless an amendment containing the specific reference to

the earlier filed application is submitted at such time during the

pendency of the application as required by the Director. The

Director may consider the failure to submit such an amendment

within that time period as a waiver of any benefit under this

section. The Director may establish procedures, including the

payment of a surcharge, to accept an unintentionally delayed

submission of an amendment under this section."

1984 - Pub. L. 98-622 substituted "which is filed by an inventor

or inventors named in the previously filed application" for "by the

same inventor".

1975 - Pub. L. 94-131 inserted ", or as provided by section 363

of this title," after "filed in the United States".

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by Pub. L. 106-113 effective Nov. 29, 2000, and

applicable only to applications (including international

applications designating the United States) filed on or after that

date, see section 1000(a)(9) [title IV, Sec. 4508] of Pub. L.

106-113, as amended, set out as a note under section 10 of this

title.

EFFECTIVE DATE OF 1984 AMENDMENT

Amendment by Pub. L. 98-622 applicable to all United States

patents granted before, on, or after Nov. 8, 1984, and to all

applications for United States patents pending on or filed after

that date, except as otherwise provided, see section 106 of Pub. L.

98-622, set out as a note under section 103 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 94-131 effective Jan. 24, 1978, and

applicable on and after that date to patent applications filed in

the United States and to international applications, where

applicable, see section 11 of Pub. L. 94-131, set out as an

Effective Date note under section 351 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 111, 121, 154, 273, 365,

373 of this title.

-End-

-CITE-

35 USC Sec. 121 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 121. Divisional applications

-STATUTE-

If two or more independent and distinct inventions are claimed in

one application, the Director may require the application to be

restricted to one of the inventions. If the other invention is made

the subject of a divisional application which complies with the

requirements of section 120 of this title it shall be entitled to

the benefit of the filing date of the original application. A

patent issuing on an application with respect to which a

requirement for restriction under this section has been made, or on

an application filed as a result of such a requirement, shall not

be used as a reference either in the Patent and Trademark Office or

in the courts against a divisional application or against the

original application or any patent issued on either of them, if the

divisional application is filed before the issuance of the patent

on the other application. If a divisional application is directed

solely to subject matter described and claimed in the original

application as filed, the Director may dispense with signing and

execution by the inventor. The validity of a patent shall not be

questioned for failure of the Director to require the application

to be restricted to one invention.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 800; Pub. L. 93-596, Sec. 1, Jan.

2, 1975, 88 Stat. 1949; Pub. L. 106-113, div. B, Sec. 1000(a)(9)

[title IV, Sec. 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536,

1501A-582; Pub. L. 107-273, div. C, title III, Sec. 13206(b)(1)(B),

Nov. 2, 2002, 116 Stat. 1906.)

-MISC1-

HISTORICAL AND REVISION NOTES

This section enacts as law existing practice with respect to

division, at the same time introducing a number of changes.

Division is made discretionary with the Commissioner. The

requirements of section 120 are made applicable and neither of the

resulting patents can be held invalid over the other merely because

of their being divided in several patents. In some cases a

divisional application may be filed by the assignee.

AMENDMENTS

2002 - Pub. L. 107-273 made technical correction to directory

language of Pub. L. 106-113. See 1999 Amendment note below.

1999 - Pub. L. 106-113, as amended by Pub. L. 107-273,

substituted "Director" for "Commissioner" wherever appearing.

1975 - Pub. L. 93-596 substituted "Patent and Trademark Office"

for "Patent Office".

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, Sec. 4731] of Pub. L.

106-113, set out as a note under section 1 of this title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of Title

15, Commerce and Trade.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 111, 154, 372 of this

title.

-End-

-CITE-

35 USC Sec. 122 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 11 - APPLICATION FOR PATENT

-HEAD-

Sec. 122. Confidential status of applications; publication of

patent applications

-STATUTE-

(a) Confidentiality. - Except as provided in subsection (b),

applications for patents shall be kept in confidence by the Patent

and Trademark Office and no information concerning the same given

without authority of the applicant or owner unless necessary to

carry out the provisions of an Act of Congress or in such special

circumstances as may be determined by the Director.

(b) Publication. -

(1) In general. - (A) Subject to paragraph (2), each

application for a patent shall be published, in accordance with

procedures determined by the Director, promptly after the

expiration of a period of 18 months from the earliest filing date

for which a benefit is sought under this title. At the request of

the applicant, an application may be published earlier than the

end of such 18-month period.

(B) No information concerning published patent applications

shall be made available to the public except as the Director

determines.

(C) Notwithstanding any other provision of law, a determination

by the Director to release or not to release information

concerning a published patent application shall be final and

nonreviewable.

(2) Exceptions. - (A) An application shall not be published if

that application is -

(i) no longer pending;

(ii) subject to a secrecy order under section 181 of this

title;

(iii) a provisional application filed under section 111(b) of

this title; or

(iv) an application for a design patent filed under chapter

16 of this title.

(B)(i) If an applicant makes a request upon filing, certifying

that the invention disclosed in the application has not and will

not be the subject of an application filed in another country, or

under a multilateral international agreement, that requires

publication of applications 18 months after filing, the

application shall not be published as provided in paragraph (1).

(ii) An applicant may rescind a request made under clause (i)

at any time.

(iii) An applicant who has made a request under clause (i) but

who subsequently files, in a foreign country or under a

multilateral international agreement specified in clause (i), an

application directed to the invention disclosed in the

application filed in the Patent and Trademark Office, shall

notify the Director of such filing not later than 45 days after

the date of the filing of such foreign or international

application. A failure of the applicant to provide such notice

within the prescribed period shall result in the application

being regarded as abandoned, unless it is shown to the

satisfaction of the Director that the delay in submitting the

notice was unintentional.

(iv) If an applicant rescinds a request made under clause (i)

or notifies the Director that an application was filed in a

foreign country or under a multilateral international agreement

specified in clause (i), the application shall be published in

accordance with the provisions of paragraph (1) on or as soon as

is practical after the date that is specified in clause (i).

(v) If an applicant has filed applications in one or more

foreign countries, directly or through a multilateral

international agreement, and such foreign filed applications

corresponding to an application filed in the Patent and Trademark

Office or the description of the invention in such foreign filed

applications is less extensive than the application or

description of the invention in the application filed in the

Patent and Trademark Office, the applicant may submit a redacted

copy of the application filed in the Patent and Trademark Office

eliminating any part or description of the invention in such

application that is not also contained in any of the

corresponding applications filed in a foreign country. The

Director may only publish the redacted copy of the application

unless the redacted copy of the application is not received

within 16 months after the earliest effective filing date for

which a benefit is sought under this title. The provisions of

section 154(d) shall not apply to a claim if the description of

the invention published in the redacted application filed under

this clause with respect to the claim does not enable a person

skilled in the art to make and use the subject matter of the

claim.

(c) Protest and Pre-Issuance Opposition. - The Director shall

establish appropriate procedures to ensure that no protest or other

form of pre-issuance opposition to the grant of a patent on an

application may be initiated after publication of the application

without the express written consent of the applicant.

(d) National Security. - No application for patent shall be

published under subsection (b)(1) if the publication or disclosure

of such invention would be detrimental to the national security.

The Director shall establish appropriate procedures to ensure that

such applications are promptly identified and the secrecy of such

inventions is maintained in accordance with chapter 17 of this

title.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 93-596, Sec. 1, Jan.

2, 1975, 88 Stat. 1949; Pub. L. 106-113, div. B, Sec. 1000(a)(9)

[title IV, Sec. 4502(a)], Nov. 29, 1999, 113 Stat. 1536,

1501A-561.)

-MISC1-

HISTORICAL AND REVISION NOTES

This section enacts the Patent Office rule of secrecy of

applications.

AMENDMENTS

1999 - Pub. L. 106-113 amended section catchline and text

generally. Prior to amendment, text read as follows: "Applications

for patents shall be kept in confidence by the Patent and Trademark

Office and no information concerning the same given without

authority of the applicant or owner unless necessary to carry out

the provisions of any Act of Congress or in such special

circumstances as may be determined by the Commissioner."

1975 - Pub. L. 93-596 substituted "Patent and Trademark Office"

for "Patent Office".

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by of Pub. L. 106-113 effective Nov. 29, 2000, and

applicable only to applications (including international

applications designating the United States) filed on or after that

date, and applications published pursuant to subsec. (b) of this

section resulting from an international application filed before

Nov. 29, 2000 not to be effective as prior art as of the filing

date of the international application, but to be effective as prior

art in accordance with section 102(e) of this title in effect on

Nov. 28, 2000, see section 1000(a)(9) [title IV, Sec. 4508] of Pub.

L. 106-113, as amended, set out as a note under section 10 of this

title.

EFFECTIVE DATE OF 1975 AMENDMENT

Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4

of Pub. L. 93-596, set out as a note under section 1111 of Title

15, Commerce and Trade.

STUDY OF APPLICANTS FILING ONLY IN UNITED STATES

Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4502(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A-562, provided that:

"(1) In general. - The Comptroller General shall conduct a 3-year

study of the applicants who file only in the United States on or

after the effective date of this subtitle [see section 1000(a)(9)

[title IV, Sec. 4508] of Pub. L. 106-113, set out as an Effective

Date of 1999 Amendment note under section 10 of this title] and

shall provide the results of such study to the Judiciary Committees

of the House of Representatives and the Senate.

"(2) Contents. - The study conducted under paragraph (1) shall -

"(A) consider the number of such applicants in relation to the

number of applicants who file in the United States and outside of

the United States;

"(B) examine how many domestic-only filers request at the time

of filing not to be published;

"(C) examine how many such filers rescind that request or later

choose to file abroad;

"(D) examine the status of the entity seeking an application

and any correlation that may exist between such status and the

publication of patent applications; and

"(E) examine the abandonment/issuance ratios and length of

application pendency before patent issuance or abandonment for

published versus unpublished applications."

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 2, 5, 102, 135, 154, 374

of this title.

-End-