US (United States) Code. Title 35. Part III. Chapter 29: Remedies for infringement of patent, and other actions

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
  • 36 páginas
publicidad

-CITE-

35 USC CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT,

AND OTHER ACTIONS 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-MISC1-

Sec.

281. Remedy for infringement of patent.

282. Presumption of validity; defenses.

283. Injunction.

284. Damages.

285. Attorney fees.

286. Time limitation on damages.

287. Limitation on damages and other remedies; marking and

notice.

288. Action for infringement of a patent containing an

invalid claim.

289. Additional remedy for infringement of design patent.

290. Notice of patent suits.

291. Interfering patents.

292. False marking.

293. Nonresident patentee, service and notice.(!1)

294. Voluntary arbitration.

295. Presumption: Product made by patented process.

296. Liability of States, instrumentalities of States, and

State officials for infringement of patents.

297. Improper and deceptive invention promotion.

AMENDMENTS

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

4102(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A-554, added item 297.

1992 - Pub. L. 102-560, Sec. 2(b), Oct. 28, 1992, 106 Stat. 4230,

added item 296.

1988 - Pub. L. 100-418, title IX, Secs. 9004(b), 9005(b), Aug.

23, 1988, 102 Stat. 1566, inserted "and other remedies" in item 287

and added item 295.

1982 - Pub. L. 97-247, Sec. 17(b)(2), Aug. 27, 1982, 96 Stat.

323, added item 294.

-SECREF-

CHAPTER REFERRED TO IN OTHER SECTIONS

This chapter is referred to in sections 154, 207 of this title;

title 15 section 3710a.

-FOOTNOTE-

(!1) So in original. Does not conform to section catchline.

-End-

-CITE-

35 USC Sec. 281 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 281. Remedy for infringement of patent

-STATUTE-

A patentee shall have remedy by civil action for infringement of

his patent.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 812.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Secs. 67 and 70, part (R.S.

4919; R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, Sec. 6, 29

Stat. 694, (2) Feb. 18, 1922, ch. 58, Sec. 8, 42 Stat. 392, (3)

Aug. 1, 1946, ch. 726, Sec. 1, 60 Stat. 778).

The corresponding two sections of existing law are divided among

sections 281, 283, 284, 285, 286 and 289 with some changes in

language. Section 281 serves as an introduction or preamble to the

following sections, the modern term civil action is used, there

would be, of course, a right to a jury trial when no injunction is

sought.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 157, 287 of this title.

-End-

-CITE-

35 USC Sec. 282 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 282. Presumption of validity; defenses

-STATUTE-

A patent shall be presumed valid. Each claim of a patent (whether

in independent, dependent, or multiple dependent form) shall be

presumed valid independently of the validity of other claims;

dependent or multiple dependent claims shall be presumed valid even

though dependent upon an invalid claim. Notwithstanding the

preceding sentence, if a claim to a composition of matter is held

invalid and that claim was the basis of a determination of

nonobviousness under section 103(b)(1), the process shall no longer

be considered nonobvious solely on the basis of section 103(b)(1).

The burden of establishing invalidity of a patent or any claim

thereof shall rest on the party asserting such invalidity.

The following shall be defenses in any action involving the

validity or infringement of a patent and shall be pleaded:

(1) Noninfringement, absence of liability for infringement or

unenforceability,

(2) Invalidity of the patent or any claim in suit on any ground

specified in part II of this title as a condition for

patentability,

(3) Invalidity of the patent or any claim in suit for failure

to comply with any requirement of sections 112 or 251 of this

title,

(4) Any other fact or act made a defense by this title.

In actions involving the validity or infringement of a patent the

party asserting invalidity or noninfringement shall give notice in

the pleadings or otherwise in writing to the adverse party at least

thirty days before the trial, of the country, number, date, and

name of the patentee of any patent, the title, date, and page

numbers of any publication to be relied upon as anticipation of the

patent in suit or, except in actions in the United States Court of

Federal Claims, as showing the state of the art, and the name and

address of any person who may be relied upon as the prior inventor

or as having prior knowledge of or as having previously used or

offered for sale the invention of the patent in suit. In the

absence of such notice proof of the said matters may not be made at

the trial except on such terms as the court requires. Invalidity of

the extension of a patent term or any portion thereof under section

154(b) or 156 of this title because of the material failure -

(1) by the applicant for the extension, or

(2) by the Director,

to comply with the requirements of such section shall be a defense

in any action involving the infringement of a patent during the

period of the extension of its term and shall be pleaded. A due

diligence determination under section 156(d)(2) is not subject to

review in such an action.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 812; Pub. L. 89-83, Sec. 10, July

24, 1965, 79 Stat. 261; Pub. L. 94-131, Sec. 10, Nov. 14, 1975, 89

Stat. 692; Pub. L. 97-164, title I, Sec. 161(7), Apr. 2, 1982, 96

Stat. 49; Pub. L. 98-417, title II, Sec. 203, Sept. 24, 1984, 98

Stat. 1603; Pub. L. 102-572, title IX, Sec. 902(b)(1), Oct. 29,

1992, 106 Stat. 4516; Pub. L. 104-41, Sec. 2, Nov. 1, 1995, 109

Stat. 352; Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV,

Secs. 4402(b)(1), 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), (4), Nov. 2, 2002, 116 Stat. 1906.)

-MISC1-

HISTORICAL AND REVISION NOTES

Derived from Title 35, U.S.C., 1946 ed., Sec. 69 (R.S. 4920,

amended (1) Mar. 3, 1897, ch. 391, Sec. 2, 29 Stat. 692, (2) Aug.

5, 1939, ch. 450, Sec. 1, 53 Stat. 1212).

The first paragraph declares the existing presumption of validity

of patents.

The five defenses named in R.S. 4920 are omitted and replaced by

a broader paragraph specifying defenses in general terms.

The third paragraph, relating to notice of prior patents,

publications and uses, is based on part of the last paragraph of

R.S. 4920 which was superseded by the Federal Rules of Civil

Procedure but which is reinstated with modifications.

AMENDMENTS

2002 - Third par. Pub. L. 107-273, Sec. 13206(b)(4), made

technical correction to directory language of Pub. L. 106-113, Sec.

1000(a)(9) [title IV, Sec. 4402(b)(1)]. See 1999 Amendment note

below.

Pub. L. 107-273, Sec. 13206(b)(1)(B), 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 - Third par. Pub. L. 106-113, Sec. 1000(a)(9) [title IV,

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

13206(b)(1)(B), substituted "(2) by the Director," for "(2) by the

Commissioner,".

Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec. 4402(b)(1)], as

amended by Pub. L. 107-273, Sec. 13206(b)(4), substituted "154(b)

or 156 of this title" for "156 of this title".

1995 - First par. Pub. L. 104-41 inserted after second sentence

"Notwithstanding the preceding sentence, if a claim to a

composition of matter is held invalid and that claim was the basis

of a determination of nonobviousness under section 103(b)(1), the

process shall no longer be considered nonobvious solely on the

basis of section 103(b)(1)."

1992 - Third par. Pub. L. 102-572 substituted "United States

Court of Federal Claims" for "United States Claims Court".

1984 - Pub. L. 98-417 inserted provision at end that the

invalidity of the extension of a patent term or any portion thereof

under section 156 of this title because of the material failure by

the applicant for the extension, or by the Commissioner, to comply

with the requirements of such section shall be a defense in any

action involving the infringement of a patent during the period of

the extension of its term and shall be pleaded, and that a due

diligence determination under section 156(d)(2) is not subject to

review in such an action.

1982 - Third par. Pub. L. 97-164 substituted "Claims Court" for

"Court of Claims".

1975 - First par. Pub. L. 94-131 made presumption of validity

applicable to claim of a patent in multiple dependent form and

multiple dependent claims and substituted "asserting such

invalidity" for "asserting it".

1965 - Pub. L. 89-83 required each claim of a patent (whether in

independent or dependent form) to be presumed valid independently

of the validity of other claims and required dependent claims to be

presumed valid even though dependent upon an invalid claim.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by section 1000(a)(9) [title IV, Sec. 4402(b)(1)] of

Pub. L. 106-113 effective on date that is 6 months after Nov. 29,

1999, and, except for design patent application filed under chapter

16 of this title, applicable to any application filed on or after

such date, see section 1000(a)(9) [title IV, Sec. 4405(a)] of Pub.

L. 106-113, set out as a note under section 154 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 1992 AMENDMENT

Amendment by Pub. L. 102-572 effective Oct. 29, 1992, see section

911 of Pub. L. 102-572, set out as a note under section 171 of

Title 28, Judiciary and Judicial Procedure.

EFFECTIVE DATE OF 1982 AMENDMENT

Amendment by Pub. L. 97-164 effective Oct. 1, 1982, see section

402 of Pub. L. 97-164, set out as a note under section 171 of Title

28, Judiciary and Judicial Procedure.

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 3 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 157, 294 of this title.

-End-

-CITE-

35 USC Sec. 283 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 283. Injunction

-STATUTE-

The several courts having jurisdiction of cases under this title

may grant injunctions in accordance with the principles of equity

to prevent the violation of any right secured by patent, on such

terms as the court deems reasonable.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 812.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 70, part (R.S. 4921,

amended (1) Mar. 3, 1897, ch. 391, Sec. 6, 29 Stat. 694, (2) Feb.

18, 1922, ch. 58, Sec. 8, 42 Stat. 392, (3) Aug. 1, 1946, ch. 726,

Sec. 1, 60 Stat. 778).

This section is the same as the provision which opens R.S. 4921

with minor changes in language.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 154, 157, 287 of this

title.

-End-

-CITE-

35 USC Sec. 284 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 284. Damages

-STATUTE-

Upon finding for the claimant the court shall award the claimant

damages adequate to compensate for the infringement, but in no

event less than a reasonable royalty for the use made of the

invention by the infringer, together with interest and costs as

fixed by the court.

When the damages are not found by a jury, the court shall assess

them. In either event the court may increase the damages up to

three times the amount found or assessed. Increased damages under

this paragraph shall not apply to provisional rights under section

154(d) of this title.

The court may receive expert testimony as an aid to the

determination of damages or of what royalty would be reasonable

under the circumstances.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 813; Pub. L. 106-113, div. B,

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

1536, 1501A-566.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Secs. 67 and 70, part (R.S.

4919; R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, Sec. 6, 29

Stat. 694, (2) Feb. 18, 1922, ch. 58, Sec. 8, 42 Stat. 392, (3)

Aug. 1, 1946, ch. 726, Sec. 1, 60 Stat. 778).

This section consolidates the provisions relating to damages in

R.S. 4919 and 4921, with some changes in language.

AMENDMENTS

1999 - Second par. Pub. L. 106-113 inserted at end "Increased

damages under this paragraph shall not apply to provisional rights

under section 154(d) of this title."

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.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 154, 157, 287, 296 of

this title.

-End-

-CITE-

35 USC Sec. 285 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 285. Attorney fees

-STATUTE-

The court in exceptional cases may award reasonable attorney fees

to the prevailing party.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 813.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 70, part (R.S. 4921,

amended (1) Mar. 3, 1897, ch. 391, Sec. 6, 29 Stat. 694, (2) Feb.

18, 1922, ch. 58, Sec. 8, 42 Stat. 392, (3) Aug. 1, 1946, ch. 726,

Sec. 1, 60 Stat. 778).

This section is substantially the same as the corresponding

provision in R.S. 4921; "in exceptional cases" has been added as

expressing the intention of the present statute as shown by its

legislative history and as interpreted by the courts.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 154, 157, 271, 273, 287,

296 of this title.

-End-

-CITE-

35 USC Sec. 286 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 286. Time limitation on damages

-STATUTE-

Except as otherwise provided by law, no recovery shall be had for

any infringement committed more than six years prior to the filing

of the complaint or counterclaim for infringement in the action.

In the case of claims against the United States Government for

use of a patented invention, the period before bringing suit, up to

six years, between the date of receipt of a written claim for

compensation by the department or agency of the Government having

authority to settle such claim, and the date of mailing by the

Government of a notice to the claimant that his claim has been

denied shall not be counted as part of the period referred to in

the preceding paragraph.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 813.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 70, part (R.S. 4921,

amended (1) Mar. 3, 1897, ch. 391, Sec. 6, 29 Stat. 694, (2) Feb.

18, 1922, ch. 58, Sec. 8, 42 Stat. 392, (3) Aug. 1, 1946, ch. 726,

Sec. 1, 60 Stat. 778).

The first paragraph is the same as the provision in R.S. 4921

with minor changes in language, with the added provision relating

to the date for counterclaims for infringement.

The second paragraph is new and relates to extending the period

of limitations with respect to suits in the Court of Claims in

certain instances when administrative consideration is pending.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 157 of this title.

-End-

-CITE-

35 USC Sec. 287 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 287. Limitation on damages and other remedies; marking and

notice

-STATUTE-

(a) Patentees, and persons making, offering for sale, or selling

within the United States any patented article for or under them, or

importing any patented article into the United States, may give

notice to the public that the same is patented, either by fixing

thereon the word "patent" or the abbreviation "pat.", together with

the number of the patent, or when, from the character of the

article, this can not be done, by fixing to it, or to the package

wherein one or more of them is contained, a label containing a like

notice. In the event of failure so to mark, no damages shall be

recovered by the patentee in any action for infringement, except on

proof that the infringer was notified of the infringement and

continued to infringe thereafter, in which event damages may be

recovered only for infringement occurring after such notice. Filing

of an action for infringement shall constitute such notice.

(b)(1) An infringer under section 271(g) shall be subject to all

the provisions of this title relating to damages and injunctions

except to the extent those remedies are modified by this subsection

or section 9006 of the Process Patent Amendments Act of 1988. The

modifications of remedies provided in this subsection shall not be

available to any person who -

(A) practiced the patented process;

(B) owns or controls, or is owned or controlled by, the person

who practiced the patented process; or

(C) had knowledge before the infringement that a patented

process was used to make the product the importation, use, offer

for sale, or sale of which constitutes the infringement.

(2) No remedies for infringement under section 271(g) of this

title shall be available with respect to any product in the

possession of, or in transit to, the person subject to liability

under such section before that person had notice of infringement

with respect to that product. The person subject to liability shall

bear the burden of proving any such possession or transit.

(3)(A) In making a determination with respect to the remedy in an

action brought for infringement under section 271(g), the court

shall consider -

(i) the good faith demonstrated by the defendant with respect

to a request for disclosure,

(ii) the good faith demonstrated by the plaintiff with respect

to a request for disclosure, and

(iii) the need to restore the exclusive rights secured by the

patent.

(B) For purposes of subparagraph (A), the following are evidence

of good faith:

(i) a request for disclosure made by the defendant;

(ii) a response within a reasonable time by the person

receiving the request for disclosure; and

(iii) the submission of the response by the defendant to the

manufacturer, or if the manufacturer is not known, to the

supplier, of the product to be purchased by the defendant,

together with a request for a written statement that the process

claimed in any patent disclosed in the response is not used to

produce such product.

The failure to perform any acts described in the preceding sentence

is evidence of absence of good faith unless there are mitigating

circumstances. Mitigating circumstances include the case in which,

due to the nature of the product, the number of sources for the

product, or like commercial circumstances, a request for disclosure

is not necessary or practicable to avoid infringement.

(4)(A) For purposes of this subsection, a "request for

disclosure" means a written request made to a person then engaged

in the manufacture of a product to identify all process patents

owned by or licensed to that person, as of the time of the request,

that the person then reasonably believes could be asserted to be

infringed under section 271(g) if that product were imported into,

or sold, offered for sale, or used in, the United States by an

unauthorized person. A request for disclosure is further limited to

a request -

(i) which is made by a person regularly engaged in the United

States in the sale of the same type of products as those

manufactured by the person to whom the request is directed, or

which includes facts showing that the person making the request

plans to engage in the sale of such products in the United

States;

(ii) which is made by such person before the person's first

importation, use, offer for sale, or sale of units of the product

produced by an infringing process and before the person had

notice of infringement with respect to the product; and

(iii) which includes a representation by the person making the

request that such person will promptly submit the patents

identified pursuant to the request to the manufacturer, or if the

manufacturer is not known, to the supplier, of the product to be

purchased by the person making the request, and will request from

that manufacturer or supplier a written statement that none of

the processes claimed in those patents is used in the manufacture

of the product.

(B) In the case of a request for disclosure received by a person

to whom a patent is licensed, that person shall either identify the

patent or promptly notify the licensor of the request for

disclosure.

(C) A person who has marked, in the manner prescribed by

subsection (a), the number of the process patent on all products

made by the patented process which have been offered for sale or

sold by that person in the United States, or imported by the person

into the United States, before a request for disclosure is received

is not required to respond to the request for disclosure. For

purposes of the preceding sentence, the term "all products" does

not include products made before the effective date of the Process

Patent Amendments Act of 1988.

(5)(A) For purposes of this subsection, notice of infringement

means actual knowledge, or receipt by a person of a written

notification, or a combination thereof, of information sufficient

to persuade a reasonable person that it is likely that a product

was made by a process patented in the United States.

(B) A written notification from the patent holder charging a

person with infringement shall specify the patented process alleged

to have been used and the reasons for a good faith belief that such

process was used. The patent holder shall include in the

notification such information as is reasonably necessary to explain

fairly the patent holder's belief, except that the patent holder is

not required to disclose any trade secret information.

(C) A person who receives a written notification described in

subparagraph (B) or a written response to a request for disclosure

described in paragraph (4) shall be deemed to have notice of

infringement with respect to any patent referred to in such written

notification or response unless that person, absent mitigating

circumstances -

(i) promptly transmits the written notification or response to

the manufacturer or, if the manufacturer is not known, to the

supplier, of the product purchased or to be purchased by that

person; and

(ii) receives a written statement from the manufacturer or

supplier which on its face sets forth a well grounded factual

basis for a belief that the identified patents are not infringed.

(D) For purposes of this subsection, a person who obtains a

product made by a process patented in the United States in a

quantity which is abnormally large in relation to the volume of

business of such person or an efficient inventory level shall be

rebuttably presumed to have actual knowledge that the product was

made by such patented process.

(6) A person who receives a response to a request for disclosure

under this subsection shall pay to the person to whom the request

was made a reasonable fee to cover actual costs incurred in

complying with the request, which may not exceed the cost of a

commercially available automated patent search of the matter

involved, but in no case more than $500.

(c)(1) With respect to a medical practitioner's performance of a

medical activity that constitutes an infringement under section

271(a) or (b) of this title, the provisions of sections 281, 283,

284, and 285 of this title shall not apply against the medical

practitioner or against a related health care entity with respect

to such medical activity.

(2) For the purposes of this subsection:

(A) the term "medical activity" means the performance of a

medical or surgical procedure on a body, but shall not include

(i) the use of a patented machine, manufacture, or composition of

matter in violation of such patent, (ii) the practice of a

patented use of a composition of matter in violation of such

patent, or (iii) the practice of a process in violation of a

biotechnology patent.

(B) the term "medical practitioner" means any natural person

who is licensed by a State to provide the medical activity

described in subsection (c)(1) or who is acting under the

direction of such person in the performance of the medical

activity.

(C) the term "related health care entity" shall mean an entity

with which a medical practitioner has a professional affiliation

under which the medical practitioner performs the medical

activity, including but not limited to a nursing home, hospital,

university, medical school, health maintenance organization,

group medical practice, or a medical clinic.

(D) the term "professional affiliation" shall mean staff

privileges, medical staff membership, employment or contractual

relationship, partnership or ownership interest, academic

appointment, or other affiliation under which a medical

practitioner provides the medical activity on behalf of, or in

association with, the health care entity.

(E) the term "body" shall mean a human body, organ or cadaver,

or a nonhuman animal used in medical research or instruction

directly relating to the treatment of humans.

(F) the term "patented use of a composition of matter" does not

include a claim for a method of performing a medical or surgical

procedure on a body that recites the use of a composition of

matter where the use of that composition of matter does not

directly contribute to achievement of the objective of the

claimed method.

(G) the term "State" shall mean any state (!1) or territory of

the United States, the District of Columbia, and the Commonwealth

of Puerto Rico.

(3) This subsection does not apply to the activities of any

person, or employee or agent of such person (regardless of whether

such person is a tax exempt organization under section 501(c) of

the Internal Revenue Code), who is engaged in the commercial

development, manufacture, sale, importation, or distribution of a

machine, manufacture, or composition of matter or the provision of

pharmacy or clinical laboratory services (other than clinical

laboratory services provided in a physician's office), where such

activities are:

(A) directly related to the commercial development,

manufacture, sale, importation, or distribution of a machine,

manufacture, or composition of matter or the provision of

pharmacy or clinical laboratory services (other than clinical

laboratory services provided in a physician's office), and

(B) regulated under the Federal Food, Drug, and Cosmetic Act,

the Public Health Service Act, or the Clinical Laboratories

Improvement Act.

(4) This subsection shall not apply to any patent issued based on

an application the earliest effective filing date of which is prior

to September 30, 1996.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 813; Pub. L. 100-418, title IX,

Sec. 9004(a), Aug. 23, 1988, 102 Stat. 1564; Pub. L. 103-465, title

V, Sec. 533(b)(5), Dec. 8, 1994, 108 Stat. 4989; Pub. L. 104-208,

div. A, title I, Sec. 101(a) [title VI, Sec. 616], Sept. 30, 1996,

110 Stat. 3009, 3009-67; Pub. L. 106-113, div. B, Sec. 1000(a)(9)

[title IV, Sec. 4803], Nov. 29, 1999, 113 Stat. 1536, 1501A-589.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 49 (R.S. 4900, amended

Feb. 7, 1927, ch. 67, 44 Stat. 1058).

Language is changed. The proviso in the corresponding section of

existing statute is omitted as being temporary in character and now

obsolete.

-REFTEXT-

REFERENCES IN TEXT

Section 9006 of the Process Patent Amendments Act of 1988,

referred to in subsec. (b)(1), is section 9006 of title IX of Pub.

L. 100-418, which is set out as a note under section 271 of this

title.

The effective date of the Process Patent Amendments Act of 1988,

referred to in subsec. (b)(4)(C), is the effective date of title IX

of Pub. L. 100-418. See section 9006 of Pub. L. 100-418, set out as

a note under section 271 of this title.

Section 501(c) of the Internal Revenue Code, referred to in

subsec. (c)(3), is classified to section 501(c) of Title 26,

Internal Revenue Code.

The Federal Food, Drug, and Cosmetic Act, referred to in subsec.

(c)(3)(B), is act June 25, 1938, ch. 675, 52 Stat. 1040, as

amended, which is classified generally to chapter 9 (Sec. 301 et

seq.) of Title 21, Food and Drugs. For complete classification of

this Act to the Code, see section 301 of Title 21 and Tables.

The Public Health Service Act, referred to in subsec. (c)(3)(B),

is act July 1, 1944, ch. 373, 58 Stat. 682, as amended, which is

classified generally to chapter 6A (Sec. 201 et seq.) of Title 42,

The Public Health and Welfare. For complete classification of this

Act to the Code, see Short Title note set out under section 201 of

Title 42 and Tables.

The Clinical Laboratories Improvement Act, referred to in subsec.

(c)(3)(B), probably means the Clinical Laboratories Improvement Act

of 1967, section 5 of Pub. L. 90-174, Dec. 5, 1967, 81 Stat. 536,

which enacted section 263a of Title 42 and enacted provisions set

out as notes under section 263a of Title 42. For complete

classification of this Act to the Code, see Short Title note set

out under section 263a of Title 42 and Tables.

-MISC2-

AMENDMENTS

1999 - Subsec. (c)(4). Pub. L. 106-113 substituted "based on an

application the earliest effective filing date of which is prior to

September 30, 1996" for "before the date of enactment of this

subsection".

1996 - Subsec. (c). Pub. L. 104-208 added subsec. (c).

1994 - Subsec. (a). Pub. L. 103-465, Sec. 533(b)(5)(A),

substituted "making, offering for sale, or selling within the

United States" for "making or selling" and inserted "or importing

any patented article into the United States," after "under them,".

Subsec. (b)(1)(C). Pub. L. 103-465, Sec. 533(b)(5)(B)(i),

substituted "use, offer for sale, or sale" for "use, or sale".

Subsec. (b)(4)(A). Pub. L. 103-465, Sec. 533(b)(5)(B)(ii),

substituted "sold, offered for sale, or" for "sold or" in

introductory provisions.

Subsec. (b)(4)(A)(ii). Pub. L. 103-465, Sec. 533(b)(5)(B)(iii),

substituted "use, offer for sale, or sale" for "use, or sale".

Subsec. (b)(4)(C). Pub. L. 103-465, Sec. 533(b)(5)(B)(iv), (v),

substituted "have been offered for sale or sold" for "have been

sold" and "United States, or imported by the person into the United

States, before" for "United States before".

1988 - Pub. L. 100-418 inserted "and other remedies" in section

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

subsec. (b).

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.

EFFECTIVE DATE OF 1988 AMENDMENT

Amendment by Pub. L. 100-418 effective 6 months after Aug. 23,

1988, and, subject to enumerated exceptions, applicable only with

respect to products made or imported after such effective date, see

section 9006 of Pub. L. 100-418, set out as a note under section

271 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 157 of this title.

-FOOTNOTE-

(!1) So in original. Probably should be capitalized.

-End-

-CITE-

35 USC Sec. 288 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 288. Action for infringement of a patent containing an invalid

claim

-STATUTE-

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

invalid, an action may be maintained for the infringement of a

claim of the patent which may be valid. The patentee shall recover

no costs unless a disclaimer of the invalid claim has been entered

at the Patent and Trademark Office before the commencement of the

suit.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 813; 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. 71 (R.S. 4922).

The necessity for a disclaimer to recover on valid claims is

eliminated. See section 253.

Language is changed.

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.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 157 of this title.

-End-

-CITE-

35 USC Sec. 289 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 289. Additional remedy for infringement of design patent

-STATUTE-

Whoever during the term of a patent for a design, without license

of the owner, (1) applies the patented design, or any colorable

imitation thereof, to any article of manufacture for the purpose of

sale, or (2) sells or exposes for sale any article of manufacture

to which such design or colorable imitation has been applied shall

be liable to the owner to the extent of his total profit, but not

less than $250, recoverable in any United States district court

having jurisdiction of the parties.

Nothing in this section shall prevent, lessen, or impeach any

other remedy which an owner of an infringed patent has under the

provisions of this title, but he shall not twice recover the profit

made from the infringement.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 813.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Secs. 74, 75 (Feb. 4, 1887,

ch. 105, Secs. 1, 2, 24 Stat. 387, 388).

Language is changed.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 157, 296 of this title.

-End-

-CITE-

35 USC Sec. 290 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 290. Notice of patent suits

-STATUTE-

The clerks of the courts of the United States, within one month

after the filing of an action under this title shall give notice

thereof in writing to the Director, setting forth so far as known

the names and addresses of the parties, name of the inventor, and

the designating number of the patent upon which the action has been

brought. If any other patent is subsequently included in the action

he shall give like notice thereof. Within one month after the

decision is rendered or a judgment issued the clerk of the court

shall give notice thereof to the Director. The Director shall, on

receipt of such notices, enter the same in the file of such patent.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 814; 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. 70, part (R.S. 4921,

amended (1) Mar. 3, 1897, ch. 391, Sec. 6, 29 Stat. 694, (2) Feb.

18, 1922, ch. 58, Sec. 8, 42 Stat. 392, (3) Aug. 1, 1946, ch. 726,

Sec. 1, 60 Stat. 778).

This is the last sentence of R.S. 4921, third paragraph, with

minor changes in language.

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.

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. 291 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 291. Interfering patents

-STATUTE-

The owner of an interfering patent may have relief against the

owner of another by civil action, and the court may adjudge the

question of the validity of any of the interfering patents, in

whole or in part. The provisions of the second paragraph of section

146 of this title shall apply to actions brought under this

section.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 814.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 66 (R.S. 4918, amended

Mar. 2, 1927, ch. 273, Sec. 12, 44 Stat. 1337).

Language is changed.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 102 of this title.

-End-

-CITE-

35 USC Sec. 292 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 292. False marking

-STATUTE-

(a) Whoever, without the consent of the patentee, marks upon, or

affixes to, or uses in advertising in connection with anything

made, used, offered for sale, or sold by such person within the

United States, or imported by the person into the United States,

the name or any imitation of the name of the patentee, the patent

number, or the words "patent," "patentee," or the like, with the

intent of counterfeiting or imitating the mark of the patentee, or

of deceiving the public and inducing them to believe that the thing

was made, offered for sale, sold, or imported into the United

States by or with the consent of the patentee; or

Whoever marks upon, or affixes to, or uses in advertising in

connection with any unpatented article, the word "patent" or any

word or number importing that the same is patented for the purpose

of deceiving the public; or

Whoever marks upon, or affixes to, or uses in advertising in

connection with any article, the words "patent applied for,"

"patent pending," or any word importing that an application for

patent has been made, when no application for patent has been made,

or if made, is not pending, for the purpose of deceiving the public

-

Shall be fined not more than $500 for every such offense.

(b) Any person may sue for the penalty, in which event one-half

shall go to the person suing and the other to the use of the United

States.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 814; Pub. L. 103-465, title V,

Sec. 533(b)(6), Dec. 8, 1994, 108 Stat. 4990.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 50 (R.S. 4901).

This is a criminal provision. The first two paragraphs of the

corresponding section of existing statute are consolidated, a new

paragraph relating to false marking of "patent applied for" is

added, and false advertising is included in all the offenses. The

minimum fine which has been interpreted by the courts as a maximum,

is replaced by a higher maximum. The informer action is included as

additional to an ordinary criminal action.

AMENDMENTS

1994 - Subsec. (a). Pub. L. 103-465, in first par., substituted

"used, offered for sale, or sold by such person within the United

States, or imported by the person into the United States" for

"used, or sold by him" and "made, offered for sale, sold, or

imported into the United States" for "made or sold".

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 section 157 of this title.

-End-

-CITE-

35 USC Sec. 293 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 293. Nonresident patentee; service and notice

-STATUTE-

Every patentee not residing in the United States may file in the

Patent and Trademark Office a written designation stating the name

and address of a person residing within the United States on whom

may be served process or notice of proceedings affecting the patent

or rights thereunder. If the person designated cannot be found at

the address given in the last designation, or if no person has been

designated, the United States District Court for the District of

Columbia shall have jurisdiction and summons shall be served by

publication or otherwise as the court directs. The court shall have

the same jurisdiction to take any action respecting the patent or

rights thereunder that it would have if the patentee were

personally within the jurisdiction of the court.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 814; Pub. L. 93-596, Sec. 1, Jan.

2, 1975, 88 Stat. 1949.)

-MISC1-

HISTORICAL AND REVISION NOTES

This section provides for service on non-resident patentees.

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. 294 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 294. Voluntary arbitration

-STATUTE-

(a) A contract involving a patent or any right under a patent may

contain a provision requiring arbitration of any dispute relating

to patent validity or infringement arising under the contract. In

the absence of such a provision, the parties to an existing patent

validity or infringement dispute may agree in writing to settle

such dispute by arbitration. Any such provision or agreement shall

be valid, irrevocable, and enforceable, except for any grounds that

exist at law or in equity for revocation of a contract.

(b) Arbitration of such disputes, awards by arbitrators and

confirmation of awards shall be governed by title 9, to the extent

such title is not inconsistent with this section. In any such

arbitration proceeding, the defenses provided for under section 282

of this title shall be considered by the arbitrator if raised by

any party to the proceeding.

(c) An award by an arbitrator shall be final and binding between

the parties to the arbitration but shall have no force or effect on

any other person. The parties to an arbitration may agree that in

the event a patent which is the subject matter of an award is

subsequently determined to be invalid or unenforceable in a

judgment rendered by a court of competent jurisdiction from which

no appeal can or has been taken, such award may be modified by any

court of competent jurisdiction upon application by any party to

the arbitration. Any such modification shall govern the rights and

obligations between such parties from the date of such

modification.

(d) When an award is made by an arbitrator, the patentee, his

assignee or licensee shall give notice thereof in writing to the

Director. There shall be a separate notice prepared for each patent

involved in such proceeding. Such notice shall set forth the names

and addresses of the parties, the name of the inventor, and the

name of the patent owner, shall designate the number of the patent,

and shall contain a copy of the award. If an award is modified by a

court, the party requesting such modification shall give notice of

such modification to the Director. The Director shall, upon receipt

of either notice, enter the same in the record of the prosecution

of such patent. If the required notice is not filed with the

Director, any party to the proceeding may provide such notice to

the Director.

(e) The award shall be unenforceable until the notice required by

subsection (d) is received by the Director.

-SOURCE-

(Added Pub. L. 97-247, Sec. 17(b)(1), Aug. 27, 1982, 96 Stat. 322;

amended 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(a)(19), (b)(1)(B), Nov. 2,

2002, 116 Stat. 1905, 1906.)

-MISC1-

AMENDMENTS

2002 - Subsec. (b). Pub. L. 107-273, Sec. 13206(a)(19)(A), struck

out "United States Code," after "title 9,".

Subsec. (c). Pub. L. 107-273, Sec. 13206(a)(19)(B), substituted

"rendered by a court of" for "rendered by a court to".

Subsecs. (d), (e). Pub. L. 107-273, Sec. 13206(b)(1)(B), made

technical correction to directory language of Pub. L. 106-113. See

1999 Amendment note below.

1999 - Subsecs. (d), (e). Pub. L. 106-113, as amended by Pub. L.

107-273, Sec. 13206(b)(1)(B), substituted "Director" for

"Commissioner" wherever appearing.

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

Section 17(c) of Pub. L. 97-247 provided that: "Sections 5, 6, 8

through 12, and 17(b) of this Act [enacting this section and

amending sections 21, 111, 116, and 256 of this title and sections

1058, 1063, 1064, 1065, and 1066 of Title 15, Commerce and Trade]

shall take effect six months after enactment [Aug. 27, 1982]."

-End-

-CITE-

35 USC Sec. 295 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 295. Presumption: Product made by patented process

-STATUTE-

In actions alleging infringement of a process patent based on the

importation, sale, offer for sale, or use of a product which is

made from a process patented in the United States, if the court

finds -

(1) that a substantial likelihood exists that the product was

made by the patented process, and

(2) that the plaintiff has made a reasonable effort to

determine the process actually used in the production of the

product and was unable to so determine,

the product shall be presumed to have been so made, and the burden

of establishing that the product was not made by the process shall

be on the party asserting that it was not so made.

-SOURCE-

(Added Pub. L. 100-418, title IX, Sec. 9005(a), Aug. 23, 1988, 102

Stat. 1566; amended Pub. L. 103-465, title V, Sec. 533(b)(7), Dec.

8, 1994, 108 Stat. 4990.)

-MISC1-

AMENDMENTS

1994 - Pub. L. 103-465 substituted "sale, offer for sale, or use"

for "sale, or use" in introductory provisions.

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.

EFFECTIVE DATE

Section effective 6 months after Aug. 23, 1988, and, subject to

enumerated exceptions, applicable only with respect to products

made or imported after such effective date, see section 9006 of

Pub. L. 100-418, set out as an Effective Date of 1988 Amendment

note under section 271 of this title.

-End-

-CITE-

35 USC Sec. 296 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 296. Liability of States, instrumentalities of States, and

State officials for infringement of patents

-STATUTE-

(a) In General. - Any State, any instrumentality of a State, and

any officer or employee of a State or instrumentality of a State

acting in his official capacity, shall not be immune, under the

eleventh amendment of the Constitution of the United States or

under any other doctrine of sovereign immunity, from suit in

Federal court by any person, including any governmental or

nongovernmental entity, for infringement of a patent under section

271, or for any other violation under this title.

(b) Remedies. - In a suit described in subsection (a) for a

violation described in that subsection, remedies (including

remedies both at law and in equity) are available for the violation

to the same extent as such remedies are available for such a

violation in a suit against any private entity. Such remedies

include damages, interest, costs, and treble damages under section

284, attorney fees under section 285, and the additional remedy for

infringement of design patents under section 289.

-SOURCE-

(Added Pub. L. 102-560, Sec. 2(a)(2), Oct. 28, 1992, 106 Stat.

4230.)

-MISC1-

EFFECTIVE DATE

Section effective with respect to violations that occur on or

after Oct. 28, 1992, see section 4 of Pub. L. 102-560, set out as

an Effective Date of 1992 Amendment note under section 2541 of

Title 7, Agriculture.

-End-

-CITE-

35 USC Sec. 297 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 29 - REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

-HEAD-

Sec. 297. Improper and deceptive invention promotion

-STATUTE-

(a) In General. - An invention promoter shall have a duty to

disclose the following information to a customer in writing, prior

to entering into a contract for invention promotion services:

(1) the total number of inventions evaluated by the invention

promoter for commercial potential in the past 5 years, as well as

the number of those inventions that received positive

evaluations, and the number of those inventions that received

negative evaluations;

(2) the total number of customers who have contracted with the

invention promoter in the past 5 years, not including customers

who have purchased trade show services, research, advertising, or

other nonmarketing services from the invention promoter, or who

have defaulted in their payment to the invention promoter;

(3) the total number of customers known by the invention

promoter to have received a net financial profit as a direct

result of the invention promotion services provided by such

invention promoter;

(4) the total number of customers known by the invention

promoter to have received license agreements for their inventions

as a direct result of the invention promotion services provided

by such invention promoter; and

(5) the names and addresses of all previous invention promotion

companies with which the invention promoter or its officers have

collectively or individually been affiliated in the previous 10

years.

(b) Civil Action. - (1) Any customer who enters into a contract

with an invention promoter and who is found by a court to have been

injured by any material false or fraudulent statement or

representation, or any omission of material fact, by that invention

promoter (or any agent, employee, director, officer, partner, or

independent contractor of such invention promoter), or by the

failure of that invention promoter to disclose such information as

required under subsection (a), may recover in a civil action

against the invention promoter (or the officers, directors, or

partners of such invention promoter), in addition to reasonable

costs and attorneys' fees -

(A) the amount of actual damages incurred by the customer; or

(B) at the election of the customer at any time before final

judgment is rendered, statutory damages in a sum of not more than

$5,000, as the court considers just.

(2) Notwithstanding paragraph (1), in a case where the customer

sustains the burden of proof, and the court finds, that the

invention promoter intentionally misrepresented or omitted a

material fact to such customer, or willfully failed to disclose

such information as required under subsection (a), with the purpose

of deceiving that customer, the court may increase damages to not

more than three times the amount awarded, taking into account past

complaints made against the invention promoter that resulted in

regulatory sanctions or other corrective actions based on those

records compiled by the Commissioner of Patents under subsection

(d).

(c) Definitions. - For purposes of this section -

(1) a "contract for invention promotion services" means a

contract by which an invention promoter undertakes invention

promotion services for a customer;

(2) a "customer" is any individual who enters into a contract

with an invention promoter for invention promotion services;

(3) the term "invention promoter" means any person, firm,

partnership, corporation, or other entity who offers to perform

or performs invention promotion services for, or on behalf of, a

customer, and who holds itself out through advertising in any

mass media as providing such services, but does not include -

(A) any department or agency of the Federal Government or of

a State or local government;

(B) any nonprofit, charitable, scientific, or educational

organization, qualified under applicable State law or described

under section 170(b)(1)(A) of the Internal Revenue Code of

1986;

(C) any person or entity involved in the evaluation to

determine commercial potential of, or offering to license or

sell, a utility patent or a previously filed nonprovisional

utility patent application;

(D) any party participating in a transaction involving the

sale of the stock or assets of a business; or

(E) any party who directly engages in the business of retail

sales of products or the distribution of products; and

(4) the term "invention promotion services" means the

procurement or attempted procurement for a customer of a firm,

corporation, or other entity to develop and market products or

services that include the invention of the customer.

(d) Records of Complaints. -

(1) Release of complaints. - The Commissioner of Patents shall

make all complaints received by the Patent and Trademark Office

involving invention promoters publicly available, together with

any response of the invention promoters. The Commissioner of

Patents shall notify the invention promoter of a complaint and

provide a reasonable opportunity to reply prior to making such

complaint publicly available.

(2) Request for complaints. - The Commissioner of Patents may

request complaints relating to invention promotion services from

any Federal or State agency and include such complaints in the

records maintained under paragraph (1), together with any

response of the invention promoters.

-SOURCE-

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

4102(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-552.)

-REFTEXT-

REFERENCES IN TEXT

Section 170(b)(1)(A) of the Internal Revenue Code of 1986,

referred to in subsec. (c)(3)(B), is classified to section

170(b)(1)(A) of Title 26, Internal Revenue Code.

-MISC1-

EFFECTIVE DATE

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

Sec. 4103], Nov. 29, 1999, 113 Stat. 1536, 1501A-554, provided

that: "This subtitle [enacting this section and provisions set out

as a note under section 1 of this title] and the amendments made by

this subtitle shall take effect 60 days after the date of the

enactment of this Act [Nov. 29, 1999]."

-End-