US (United States) Code. Title 35. Chapter 25: Amendment and correction of patents

Codificación normativa de EEUU (Estados Unidos) Legislación Federal estadounidense # Patents

  • Enviado por: El remitente no desea revelar su nombre
  • Idioma: inglés
  • País: Estados Unidos Estados Unidos
  • 13 páginas
publicidad

-CITE-

35 USC CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS

-HEAD-

CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS

-MISC1-

Sec.

251. Reissue of defective patents.

252. Effect of reissue.

253. Disclaimer.

254. Certificate of correction of Patent and Trademark

Office mistake.

255. Certificate of correction of applicant's mistake.

256. Correction of named inventor.

AMENDMENTS

2002 - Pub. L. 107-273, div. C, title III, Sec. 13206(a)(18),

Nov. 2, 2002, 116 Stat. 1905, substituted "Correction of named

inventor" for "Misjoinder of inventor" in item 256.

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

substituted "Patent and Trademark Office" for "Patent Office" in

item 254.

-End-

-CITE-

35 USC Sec. 251 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS

-HEAD-

Sec. 251. Reissue of defective patents

-STATUTE-

Whenever any patent is, through error without any deceptive

intention, deemed wholly or partly inoperative or invalid, by

reason of a defective specification or drawing, or by reason of the

patentee claiming more or less than he had a right to claim in the

patent, the Director shall, on the surrender of such patent and the

payment of the fee required by law, reissue the patent for the

invention disclosed in the original patent, and in accordance with

a new and amended application, for the unexpired part of the term

of the original patent. No new matter shall be introduced into the

application for reissue.

The Director may issue several reissued patents for distinct and

separate parts of the thing patented, upon demand of the applicant,

and upon payment of the required fee for a reissue for each of such

reissued patents.

The provisions of this title relating to applications for patent

shall be applicable to applications for reissue of a patent, except

that application for reissue may be made and sworn to by the

assignee of the entire interest if the application does not seek to

enlarge the scope of the claims of the original patent.

No reissued patent shall be granted enlarging the scope of the

claims of the original patent unless applied for within two years

from the grant of the original patent.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 808; 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. 64 (R.S. 4916, amended

May 24, 1928, ch. 730, 45 Stat. 732.)

The sentences of the corresponding section of existing statute

are rearranged and divided into two sections with some changes in

language. The clause at the end of the present statute is omitted

as obsolete.

The third paragraph incorporates by reference the requirements of

other applications, and adds a new provision relating to

application for reissue being made in certain cases by the

assignee.

A two year period of limitation on applying for broadened

reissues is added, codifying the present rule of decision with a

fixed period.

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 first and second pars.

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.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 282 of this title.

-End-

-CITE-

35 USC Sec. 252 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS

-HEAD-

Sec. 252. Effect of reissue

-STATUTE-

The surrender of the original patent shall take effect upon the

issue of the reissued patent, and every reissued patent shall have

the same effect and operation in law, on the trial of actions for

causes thereafter arising, as if the same had been originally

granted in such amended form, but in so far as the claims of the

original and reissued patents are substantially identical, such

surrender shall not affect any action then pending nor abate any

cause of action then existing, and the reissued patent, to the

extent that its claims are substantially identical with the

original patent, shall constitute a continuation thereof and have

effect continuously from the date of the original patent.

A reissued patent shall not abridge or affect the right of any

person or that person's successors in business who, prior to the

grant of a reissue, made, purchased, offered to sell, or used

within the United States, or imported into the United States,

anything patented by the reissued patent, to continue the use of,

to offer to sell, or to sell to others to be used, offered for

sale, or sold, the specific thing so made, purchased, offered for

sale, used, or imported unless the making, using, offering for

sale, or selling of such thing infringes a valid claim of the

reissued patent which was in the original patent. The court before

which such matter is in question may provide for the continued

manufacture, use, offer for sale, or sale of the thing made,

purchased, offered for sale, used, or imported as specified, or for

the manufacture, use, offer for sale, or sale in the United States

of which substantial preparation was made before the grant of the

reissue, and the court may also provide for the continued practice

of any process patented by the reissue that is practiced, or for

the practice of which substantial preparation was made, before the

grant of the reissue, to the extent and under such terms as the

court deems equitable for the protection of investments made or

business commenced before the grant of the reissue.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 808; Pub. L. 103-465, title V,

Sec. 533(b)(2), Dec. 8, 1994, 108 Stat. 4989; Pub. L. 106-113, div.

B, Sec. 1000(a)(9) [title IV, Sec. 4507(8)], Nov. 29, 1999, 113

Stat. 1536, 1501A-566.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 64 (R.S. 4916, amended

May 24, 1928, ch. 730, 45 Stat. 732.)

The first paragraph follows the present section with some

rearrangement in language. The second paragraph adds new provisions

for the protection of intervening rights, the court is given

discretion to protect legitimate activities which would be

adversely affected by the grant of a reissue and things made before

the grant of the reissue are not subject to the reissue unless a

claim of the original patent which is repeated in the reissue is

infringed.

AMENDMENTS

1999 - Pub. L. 106-113 inserted "substantially" before

"identical" in two places in first par.

1994 - Pub. L. 103-465 amended second par. generally. Prior to

amendment, second par. read as follows: "No reissued patent shall

abridge or affect the right of any person or his successors in

business who made, purchased or used prior to the grant of a

reissue anything patented by the reissued patent, to continue the

use of, or to sell to others to be used or sold, the specific thing

so made, purchased or used, unless the making, using or selling of

such thing infringes a valid claim of the reissued patent which was

in the original patent. The court before which such matter is in

question may provide for the continued manufacture, 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 grant of the reissue, and it may also provide for the

continued practice of any process patented by the reissue,

practice, or for the practice of which substantial preparation was

made, prior to the grant of the reissue, to the extent and under

such terms as the court deems equitable for the protection of

investments made or business commenced before the grant of the

reissue."

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 1994 AMENDMENT

Amendment by Pub. L. 103-465 effective on date that is one year

after date on which the WTO Agreement enters 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.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 307, 316 of this title.

-End-

-CITE-

35 USC Sec. 253 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS

-HEAD-

Sec. 253. Disclaimer

-STATUTE-

Whenever, without any deceptive intention, a claim of a patent is

invalid the remaining claims shall not thereby be rendered invalid.

A patentee, whether of the whole or any sectional interest therein,

may, on payment of the fee required by law, make disclaimer of any

complete claim, stating therein the extent of his interest in such

patent. Such disclaimer shall be in writing, and recorded in the

Patent and Trademark Office; and it shall thereafter be considered

as part of the original patent to the extent of the interest

possessed by the disclaimant and by those claiming under him.

In like manner any patentee or applicant may disclaim or dedicate

to the public the entire term, or any terminal part of the term, of

the patent granted or to be granted.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 809; Pub. L. 93-596, Sec. 1, Jan.

2, 1975, 88 Stat. 1949.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 65 (R.S. 4917).

Language is changed and substantive changes are introduced; (1)

only a claim as a whole may be disclaimed, and (2) the provision

regarding delay is omitted. See preliminary general description of

bill.

See section 288.

The second paragraph is new and provides for the disclaiming or

dedication of an entire patent, or any terminal part of the term,

for example, a patentee may disclaim the last three years of the

term of his patent.

AMENDMENTS

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

for "Patent Office".

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.

-End-

-CITE-

35 USC Sec. 254 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS

-HEAD-

Sec. 254. Certificate of correction of Patent and Trademark Office

mistake

-STATUTE-

Whenever a mistake in a patent, incurred through the fault of the

Patent and Trademark Office, is clearly disclosed by the records of

the Office, the Director may issue a certificate of correction

stating the fact and nature of such mistake, under seal, without

charge, to be recorded in the records of patents. A printed copy

thereof shall be attached to each printed copy of the patent, and

such certificate shall be considered as part of the original

patent. Every such patent, together with such certificate, shall

have the same effect and operation in law on the trial of actions

for causes thereafter arising as if the same had been originally

issued in such corrected form. The Director may issue a corrected

patent without charge in lieu of and with like effect as a

certificate of correction.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 809; 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

Based on Title 35, U.S.C., 1946 ed., Sec. 88 (Mar. 4, 1925, ch.

535, Sec. 1, 43 Stat. 1268).

The last sentence of the present section is omitted as obsolete.

A sentence is added similar to a provision in the corresponding

section in the trade-mark law, 15 U.S.C., 1946 ed., Sec. 1057(f),

and provides that the Commissioner may issue a corrected patent

instead of a certificate of correction.

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.

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

for "Patent Office" in section catchline and text.

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.

-End-

-CITE-

35 USC Sec. 255 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS

-HEAD-

Sec. 255. Certificate of correction of applicant's mistake

-STATUTE-

Whenever a mistake of a clerical or typographical nature, or of

minor character, which was not the fault of the Patent and

Trademark Office, appears in a patent and a showing has been made

that such mistake occurred in good faith, the Director may, upon

payment of the required fee, issue a certificate of correction, if

the correction does not involve such changes in the patent as would

constitute new matter or would require re-examination. Such patent,

together with the certificate, shall have the same effect and

operation in law on the trial of actions for causes thereafter

arising as if the same had been originally issued in such corrected

form.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 809; 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 providing for the correction of minor clerical

errors made by the applicant, is new and follows a similar

provision in the trade-mark law, 15 U.S.C., 1946 ed., Sec. 1057(g).

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. 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 section 41 of this title.

-End-

-CITE-

35 USC Sec. 256 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 25 - AMENDMENT AND CORRECTION OF PATENTS

-HEAD-

Sec. 256. Correction of named inventor

-STATUTE-

Whenever through error a person is named in an issued patent as

the inventor, or through error an inventor is not named in an

issued patent and such error arose without any deceptive intention

on his part, the Director may, on application of all the parties

and assignees, with proof of the facts and such other requirements

as may be imposed, issued a certificate correcting such error.

The error of omitting inventors or naming persons who are not

inventors shall not invalidate the patent in which such error

occurred if it can be corrected as provided in this section. The

court before which such matter is called in question may order

correction of the patent on notice and hearing of all parties

concerned and the Director shall issue a certificate accordingly.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 810; Pub. L. 97-247, Sec. 6(b),

Aug. 27, 1982, 96 Stat. 320; 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 is companion to section 116.

The first two paragraphs provide for the correction of the

inadvertent joining or nonjoining of a person as a joint inventor.

The third paragraph provides that a patent shall not be invalid for

such cause, and also provides that a court may order correction of

a patent; the two sentences of this paragraph are independent.

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.

1982 - Pub. L. 97-247 substituted "Correction of named inventor"

for "Misjoinder of inventor" as section catchline and, in text,

substituted "Whenever through error a person is named in an issued

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

in an issued patent and such error arose without any deceptive

intention on his part, the Commissioner may, on application of all

the parties and assignees, with proof of the facts and such other

requirements as may be imposed, issue a certificate correcting such

error" for "Whenever a patent is issued on the application of

persons as joint inventors and it appears that one of such persons

was not in fact a joint inventor, and that he was included as a

joint inventor by error and without any deceptive intention, the

Commissioner may, on application of all the parties and assignees,

with proof of the facts and such other requirements as may be

imposed, issue a certificate deleting the name of the erroneously

joined person from the patent", substituted "The error of omitting

inventors or naming persons who are not inventors shall not

invalidate the patent in which such error occurred if it can be

corrected as provided in this section" for "Whenever a patent is

issued and it appears that a person was a joint inventor, but was

omitted by error and without deceptive intention on his part, the

Commissioner may, on application of all the parties and assignees,

with proof of the facts and such other requirements as may be

imposed, issue a certificate adding his name to the patent as a

joint inventor", and struck out provision that the misjoinder or

nonjoinder of joint inventors not invalidate a patent, if such

error could be corrected as provided in this section.

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 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-