US (United States) Code. Title 35. Part II. Chapter 12: Examination of application

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

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35 USC CHAPTER 12 - EXAMINATION OF APPLICATION 01/06/03

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TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 12 - EXAMINATION OF APPLICATION

-HEAD-

CHAPTER 12 - EXAMINATION OF APPLICATION

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Sec.

131. Examination of application.

132. Notice of rejection; reexamination.

133. Time for prosecuting application.

134. Appeal to the Board of Patent Appeals and

Interferences.

135. Interferences.

AMENDMENTS

1984 - Pub. L. 98-622, title II, Sec. 204(b)(2), Nov. 8, 1984, 98

Stat. 3388, substituted "Patent Appeals and Interferences" for

"Appeals" in item 134.

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35 USC Sec. 131 01/06/03

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TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 12 - EXAMINATION OF APPLICATION

-HEAD-

Sec. 131. Examination of application

-STATUTE-

The Director shall cause an examination to be made of the

application and the alleged new invention; and if on such

examination it appears that the applicant is entitled to a patent

under the law, the Director shall issue a patent therefor.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 801; 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.)

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HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 36 (R.S. 4893).

The first part is revised in language and amplified. The phrase

"and that the invention is sufficiently useful and important" is

omitted as unnecessary, the requirements for patentability being

stated in sections 101, 102 and 103.

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.

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SECTION REFERRED TO IN OTHER SECTIONS

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

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35 USC Sec. 132 01/06/03

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TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 12 - EXAMINATION OF APPLICATION

-HEAD-

Sec. 132. Notice of rejection; reexamination

-STATUTE-

(a) Whenever, on examination, any claim for a patent is rejected,

or any objection or requirement made, the Director shall notify the

applicant thereof, stating the reasons for such rejection, or

objection or requirement, together with such information and

references as may be useful in judging of the propriety of

continuing the prosecution of his application; and if after

receiving such notice, the applicant persists in his claim for a

patent, with or without amendment, the application shall be

reexamined. No amendment shall introduce new matter into the

disclosure of the invention.

(b) The Director shall prescribe regulations to provide for the

continued examination of applications for patent at the request of

the applicant. The Director may establish appropriate fees for such

continued examination and shall provide a 50 percent reduction in

such fees for small entities that qualify for reduced fees under

section 41(h)(1) of this title.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 106-113, div. B,

Sec. 1000(a)(9) [title IV, Secs. 4403, 4732(a)(10)(A)], Nov. 29,

1999, 113 Stat. 1536, 1501A-560, 1501A-582; Pub. L. 107-273, div.

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

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HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 51 (R.S. 4903, amended

Aug. 5, 1939, ch. 452, Sec. 1, 53 Stat. 1213).

The first paragraph of the corresponding section of existing

statute is revised in language and amplified to incorporate present

practice; the second paragraph of the existing statute is placed in

section 135.

The last sentence relating to new matter is added but represents

no departure from present practice.

AMENDMENTS

2002 - 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 note below.

1999 - 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".

Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec. 4403],

designated existing provisions as subsec. (a) and added subsec.

(b).

EFFECTIVE DATE OF 1999 AMENDMENT

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

4405(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A-560, provided that:

"The amendments made by section 4403 [amending this section] -

"(1) shall take effect on the date that is 6 months after the

date of the enactment of this Act [Nov. 29, 1999], and shall

apply to all applications filed under section 111(a) of title 35,

United States Code, on or after June 8, 1995, and all

applications complying with section 371 of title 35, United

States Code, that resulted from international applications filed

on or after June 8, 1995; and

"(2) do not apply to applications for design patents under

chapter 16 of title 35, United States Code."

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.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 41, 154, 305, 314 of this

title.

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35 USC Sec. 133 01/06/03

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TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 12 - EXAMINATION OF APPLICATION

-HEAD-

Sec. 133. Time for prosecuting application

-STATUTE-

Upon failure of the applicant to prosecute the application within

six months after any action therein, of which notice has been given

or mailed to the applicant, or within such shorter time, not less

than thirty days, as fixed by the Director in such action, the

application shall be regarded as abandoned by the parties thereto,

unless it be shown to the satisfaction of the Director that such

delay was unavoidable.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 801; 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.)

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HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 37 (R.S. 4894, amended

(1) Mar. 3, 1897, ch. 391, Sec. 4, 29 Stat. 692, 693, (2) July 6,

1916, ch. 225, Sec. 1, 39 Stat. 345, 347-8, (3) Mar. 2, 1927, ch.

273, Sec. 1, 44 Stat. 1335, (4) Aug. 7, 1939, ch. 568, 53 Stat.

1264).

The opening clause of the corresponding section of existing

statute is omitted as having no present day meaning or value and

the last two sentences are omitted for inclusion in section 267.

The notice is stated as given or mailed. Language is revised.

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.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 41, 267, 305, 314 of this

title.

-End-

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35 USC Sec. 134 01/06/03

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TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 12 - EXAMINATION OF APPLICATION

-HEAD-

Sec. 134. Appeal to the Board of Patent Appeals and Interferences

-STATUTE-

(a) Patent Applicant. - An applicant for a patent, any of whose

claims has been twice rejected, may appeal from the decision of the

primary examiner to the Board of Patent Appeals and Interferences,

having once paid the fee for such appeal.

(b) Patent Owner. - A patent owner in any reexamination

proceeding may appeal from the final rejection of any claim by the

primary examiner to the Board of Patent Appeals and Interferences,

having once paid the fee for such appeal.

(c) Third-Party. - A third-party requester in an inter partes

proceeding may appeal to the Board of Patent Appeals and

Interferences from the final decision of the primary examiner

favorable to the patentability of any original or proposed amended

or new claim of a patent, having once paid the fee for such appeal.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98-622, title II,

Sec. 204(b)(1), Nov. 8, 1984, 98 Stat. 3388; Pub. L. 106-113, div.

B, Sec. 1000(a)(9) [title IV, Sec. 4605(b)], Nov. 29, 1999, 113

Stat. 1536, 1501A-570; Pub. L. 107-273, div. C, title III, Secs.

13106(b), 13202(b)(1), Nov. 2, 2002, 116 Stat. 1901.)

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HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 57 (R.S. 4909 amended

(1) Mar. 2, 1927, ch. 273, Sec. 5, 44 Stat. 1335, 1336, (2) Aug. 5,

1939, ch. 451, Sec. 2, 53 Stat. 1212).

Reference to reissues is omitted in view of the general provision

in section 251. Minor changes in language are made.

AMENDMENTS

2002 - Subsecs. (a), (b). Pub. L. 107-273, Sec. 13202(b)(1),

substituted "primary examiner" for "administrative patent judge".

Subsec. (c). Pub. L. 107-273, Sec. 13202(b)(1), substituted

"primary examiner" for "administrative patent judge".

Pub. L. 107-273, Sec. 13106(b), struck out at end "The

third-party requester may not appeal the decision of the Board of

Patent Appeals and Interferences."

1999 - Pub. L. 106-113 reenacted section catchline without change

and amended text generally. Prior to amendment, text read as

follows: "An applicant for a patent, any of whose claims has been

twice rejected, may appeal from the decision of the primary

examiner to the Board of Patent Appeals and Interferences, having

once paid the fee for such appeal."

1984 - Pub. L. 98-622 substituted "Patent Appeals and

Interferences" for "Appeals" in section catchline and text.

EFFECTIVE DATE OF 2002 AMENDMENT

Pub. L. 107-273, div. C, title III, Sec. 13106(d), Nov. 2, 2002,

116 Stat. 1901, provided that: "The amendments made by this section

[amending this section and sections 141 and 315 of this title]

apply with respect to any reexamination proceeding commenced on or

after the date of enactment of this Act [Nov. 2, 2002]."

EFFECTIVE DATE OF 1999 AMENDMENT

Pub. L. 107-273, div. C, title III, Sec. 13202(d), Nov. 2, 2002,

116 Stat. 1902, provided that: "The amendments made by section

4605(b), (c), and (e) of the Intellectual Property and

Communications Omnibus Reform Act, as enacted by section 1000(a)(9)

of Public Law 106-113 [amending this section and sections 141 and

145 of this title], shall apply to any reexamination filed in the

United States Patent and Trademark Office on or after the date of

enactment of Public Law 106-113 [Nov. 29, 1999]."

Amendment by Pub. L. 106-113 effective Nov. 29, 1999, and

applicable to any patent issuing from an original application filed

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

[title IV, Sec. 4608(a)] of Pub. L. 106-113, set out as a note

under section 41 of this title.

EFFECTIVE DATE OF 1984 AMENDMENT

Amendment by Pub. L. 98-622 effective three months after Nov. 8,

1984, see section 207 of Pub. L. 98-622, 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 141, 145, 154, 306, 315

of this title.

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35 USC Sec. 135 01/06/03

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TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 12 - EXAMINATION OF APPLICATION

-HEAD-

Sec. 135. Interferences

-STATUTE-

(a) Whenever an application is made for a patent which, in the

opinion of the Director, would interfere with any pending

application, or with any unexpired patent, an interference may be

declared and the Director shall give notice of such declaration to

the applicants, or applicant and patentee, as the case may be. The

Board of Patent Appeals and Interferences shall determine questions

of priority of the inventions and may determine questions of

patentability. Any final decision, if adverse to the claim of an

applicant, shall constitute the final refusal by the Patent and

Trademark Office of the claims involved, and the Director may issue

a patent to the applicant who is adjudged the prior inventor. A

final judgment adverse to a patentee from which no appeal or other

review has been or can be taken or had shall constitute

cancellation of the claims involved in the patent, and notice of

such cancellation shall be endorsed on copies of the patent

distributed after such cancellation by the Patent and Trademark

Office.

(b)(1) A claim which is the same as, or for the same or

substantially the same subject matter as, a claim of an issued

patent may not be made in any application unless such a claim is

made prior to one year from the date on which the patent was

granted.

(2) A claim which is the same as, or for the same or

substantially the same subject matter as, a claim of an application

published under section 122(b) of this title may be made in an

application filed after the application is published only if the

claim is made before 1 year after the date on which the application

is published.

(c) Any agreement or understanding between parties to an

interference, including any collateral agreements referred to

therein, made in connection with or in contemplation of the

termination of the interference, shall be in writing and a true

copy thereof filed in the Patent and Trademark Office before the

termination of the interference as between the said parties to the

agreement or understanding. If any party filing the same so

requests, the copy shall be kept separate from the file of the

interference, and made available only to Government agencies on

written request, or to any person on a showing of good cause.

Failure to file the copy of such agreement or understanding shall

render permanently unenforceable such agreement or understanding

and any patent of such parties involved in the interference or any

patent subsequently issued on any application of such parties so

involved. The Director may, however, on a showing of good cause for

failure to file within the time prescribed, permit the filing of

the agreement or understanding during the six-month period

subsequent to the termination of the interference as between the

parties to the agreement or understanding.

The Director shall give notice to the parties or their attorneys

of record, a reasonable time prior to said termination, of the

filing requirement of this section. If the Director gives such

notice at a later time, irrespective of the right to file such

agreement or understanding within the six-month period on a showing

of good cause, the parties may file such agreement or understanding

within sixty days of the receipt of such notice.

Any discretionary action of the Director under this subsection

shall be reviewable under section 10 of the Administrative

Procedure Act.

(d) Parties to a patent interference, within such time as may be

specified by the Director by regulation, may determine such contest

or any aspect thereof by arbitration. Such arbitration shall be

governed by the provisions of title 9 to the extent such title is

not inconsistent with this section. The parties shall give notice

of any arbitration award to the Director, and such award shall, as

between the parties to the arbitration, be dispositive of the

issues to which it relates. The arbitration award shall be

unenforceable until such notice is given. Nothing in this

subsection shall preclude the Director from determining

patentability of the invention involved in the interference.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 87-831, Oct. 15,

1962, 76 Stat. 958; Pub. L. 93-596, Sec. 1, Jan. 2, 1975, 88 Stat.

1949; Pub. L. 98-622, title I, Sec. 105, title II, Sec. 202, Nov.

8, 1984, 98 Stat. 3385, 3386; Pub. L. 106-113, div. B, Sec.

1000(a)(9) [title IV, Secs. 4507(11), 4732(a)(10)(A)], Nov. 29,

1999, 113 Stat. 1536, 1501A-566, 1501A-582; Pub. L. 107-273, div.

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

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HISTORICAL AND REVISION NOTES

The first paragraph is based on Title 35, U.S.C., 1946 ed., Sec.

52 (R.S. 4904 amended (1) Mar. 2, 1927, ch. 273, Sec. 4, 44 Stat.

1335, 1336, (2) Aug. 5, 1939, ch. 451, Sec. 1, 53 Stat. 1212).

The first paragraph states the existing corresponding statute

with a few changes in language. An explicit statement that the

Office decision on priority constitutes a final refusal by the

Office of the claims involved, is added. The last sentence is new

and provides that judgment adverse to a patentee constitutes

cancellation of the claims of the patent involved after the

judgment has become final, the patentee has a right of appeal (sec.

141) and is given a right of review by civil action (sec. 146).

The second paragraph is based on Title 35, U.S.C., 1946 ed., Sec.

51, (R.S. 4903, amended Aug. 5, 1939, ch. 452, Sec. 1, 53 Stat.

1213). Changes in language are made.

-REFTEXT-

REFERENCES IN TEXT

Section 10 of the Administrative Procedure Act, referred to in

subsec. (c), is section 10 of act June 11, 1946, ch. 324, 60 Stat.

243, which was repealed by Pub. L. 89-554, Sec. 8(a), Sept. 6,

1966, 80 Stat. 632, and reenacted by the first section thereof as

chapter 7 (Sec. 701 et seq.) of Title 5, Government Organization

and Employees.

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AMENDMENTS

2002 - Subsecs. (a), (c), (d). 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 - Subsec. (a). 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" wherever appearing.

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

4507(11)], designated existing provisions as par. (1) and added

par. (2).

Subsecs. (c), (d). 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" wherever appearing.

1984 - Subsec. (a). Pub. L. 98-622, Sec. 202, amended subsec. (a)

generally, substituting ", an interference may be declared and the

Commissioner shall give notice of such declaration to the

applicants, or applicant and patentee, as the case may be" for "he

shall give notice thereof to the applicants, or applicant and

patentee, as the case may be" and substituting provisions vesting

jurisdiction for determining questions of interference in the Board

of Patent Appeals and Interferences for provisions vesting such

jurisdiction in a board of patent interferences.

Subsec. (d). Pub. L. 98-622, Sec. 105, added subsec. (d).

1975 - Subsecs. (a), (c). Pub. L. 93-596 substituted "Patent and

Trademark Office" for "Patent Office" wherever appearing.

1962 - Pub. L. 87-831 designated first and second pars. as

subsecs. (a) and (b) and added subsec. (c).

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by section 1000(a)(9) [title IV, Sec. 4507(11)] 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.

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.

EFFECTIVE DATE OF 1984 AMENDMENT

Amendment by section 105 of 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.

Amendment by section 202 of Pub. L. 98-622 effective three months

after Nov. 8, 1984, see section 207 of Pub. L. 98-622, set out as a

note under section 41 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 6, 102, 111, 154 of this

title.

-End-