-CITE-

35 USC CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE

DECISIONS 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS

-HEAD-

CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS

-MISC1-

Sec.

141. Appeal to Court of Appeals for the Federal Circuit.

142. Notice of appeal.

143. Proceedings on appeal.

144. Decision on appeal.

145. Civil action to obtain patent.

146. Civil action in case of interference.

AMENDMENTS

1982 - Pub. L. 97-164, title I, Sec. 163(b)(1), Apr. 2, 1982, 96

Stat. 49, substituted "Court of Appeals for the Federal Circuit"

for "Court of Customs and Patent Appeals" in item 141.

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

substituted "PATENT AND TRADEMARK OFFICE" for "PATENT OFFICE" in

chapter heading.

-End-

-CITE-

35 USC Sec. 141 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS

-HEAD-

Sec. 141. Appeal to Court of Appeals for the Federal Circuit

-STATUTE-

An applicant dissatisfied with the decision in an appeal to the

Board of Patent Appeals and Interferences under section 134 of this

title may appeal the decision to the United States Court of Appeals

for the Federal Circuit. By filing such an appeal the applicant

waives his or her right to proceed under section 145 of this title.

A patent owner, or a third-party requester in an inter partes

reexamination proceeding, who is in any reexamination proceeding

dissatisfied with the final decision in an appeal to the Board of

Patent Appeals and Interferences under section 134 may appeal the

decision only to the United States Court of Appeals for the Federal

Circuit. A party to an interference dissatisfied with the decision

of the Board of Patent Appeals and Interferences on the

interference may appeal the decision to the United States Court of

Appeals for the Federal Circuit, but such appeal shall be dismissed

if any adverse party to such interference, within twenty days after

the appellant has filed notice of appeal in accordance with section

142 of this title, files notice with the Director that the party

elects to have all further proceedings conducted as provided in

section 146 of this title. If the appellant does not, within thirty

days after the filing of such notice by the adverse party, file a

civil action under section 146, the decision appealed from shall

govern the further proceedings in the case.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 802; Pub. L. 97-164, title I,

Sec. 163(a)(7), (b)(2), Apr. 2, 1982, 96 Stat. 49, 50; Pub. L.

98-622, title II, Sec. 203(a), Nov. 8, 1984, 98 Stat. 3387; Pub. L.

106-113, div. B, Sec. 1000(a)(9) [title IV, Secs. 4605(c),

4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A-571,

1501A-582; Pub. L. 107-273, div. C, title III, Secs. 13106(c),

13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1901, 1906.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 59a (R.S. 4911, amended

(1) Mar. 2, 1927, ch. 273, Sec. 8, 44 Stat. 1336, (2) Mar. 2, 1929,

ch. 488, Sec. 2a, 45 Stat. 1476, (3) Aug. 5, 1939, ch. 451, Sec. 3,

53 Stat. 1212).

Changes in language are made.

AMENDMENTS

2002 - 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.

Pub. L. 107-273, Sec. 13106(c), inserted ", or a third-party

requester in an inter partes reexamination proceeding, who is"

after "patent owner" in third sentence.

1999 - 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 "Director" for "Commissioner".

Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec. 4605(c)],

inserted after second sentence "A patent owner in any reexamination

proceeding dissatisfied with the final decision in an appeal to the

Board of Patent Appeals and Interferences under section 134 may

appeal the decision only to the United States Court of Appeals for

the Federal Circuit."

1984 - Pub. L. 98-622, Sec. 203(a)(1)(A), substituted "in an

appeal to the Board of Patent Appeals and Interferences under

section 134 of this title may appeal the decision" for "of the

Board of Patent Appeals may appeal" in first sentence.

Pub. L. 98-622, Sec. 203(a)(1)(B), substituted ". By filing such

an appeal the applicant waives his or her right" for ", thereby

waiving his right" in first sentence.

Pub. L. 98-622, Sec. 203(a)(2)(A), substituted "Board of Patent

Appeals and Interferences on the interference may appeal the

decision" for "board of patent interferences on the question of

priority of appeal" in second sentence.

Pub. L. 98-622, Sec. 203(a)(2)(B), substituted "In accordance

with" for "according to" in second sentence.

Pub. L. 98-622, Sec. 203(a)(2)(C), substituted "the party" for

"he" in second sentence.

Pub. L. 98-622, Sec. 203(a)(3), reenacted last sentence with

minor changes in wording.

1982 - Pub. L. 97-164, Sec. 163(b)(2), substituted "Court of

Appeals for the Federal Circuit" for "Court of Customs and Patent

Appeals" in section catchline.

Pub. L. 97-164, Sec. 163(a)(7), substituted "Court of Appeals for

the Federal Circuit" for "Court of Customs and Patent Appeals" in

two places.

EFFECTIVE DATE OF 2002 AMENDMENT

Amendment by section 13106(c) of Pub. L. 107-273 applicable with

respect to any reexamination proceeding commenced on or after Nov.

2, 2002, see section 13106(d) of Pub. L. 107-273, set out as a note

under section 134 of this title.

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by section 1000(a)(9) [title IV, Sec. 4605(c)] of Pub.

L. 106-113 applicable to any reexamination filed in the United

States Patent and Trademark Office on or after Nov. 2, 2002, see

section 13202(d) of Pub. L. 107-273, set out as a note under

section 134 of this title.

Amendment by section 1000(a)(9) [title IV, Sec. 4605(c)] of 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.

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 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 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.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 146, 154, 306, 315 of

this title.

-End-

-CITE-

35 USC Sec. 142 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS

-HEAD-

Sec. 142. Notice of appeal

-STATUTE-

When an appeal is taken to the United States Court of Appeals for

the Federal Circuit, the appellant shall file in the Patent and

Trademark Office a written notice of appeal directed to the

Director, within such time after the date of the decision from

which the appeal is taken as the Director prescribes, but in no

case less than 60 days after that date.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 802; Pub. L. 93-596, Sec. 1, Jan.

2, 1975, 88 Stat. 1949; Pub. L. 97-164, title I, Sec. 163(a)(7),

Apr. 2, 1982, 96 Stat. 49; Pub. L. 98-620, title IV, Sec. 414(a),

Nov. 8, 1984, 98 Stat. 3362; 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. 60 (R.S. 4912, amended

(1) Mar. 2, 1927, ch. 273, Sec. 9, 44 Stat. 1336, (2) Mar. 2, 1929,

ch. 488, Sec. 2(b), 45 Stat. 1476).

Changes in language are made.

AMENDMENTS

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

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

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

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

1984 - Pub. L. 98-620 amended section generally, substituting

"the appellant shall file in the Patent and Trademark Office a

written notice of appeal directed to the Commissioner, within such

time after the date of the decision from which the appeal is taken

as the Commissioner prescribes, but in no case less than 60 days

after that date" for "the appellant shall give notice thereof to

the Commissioner, and shall file in the Patent and Trademark Office

his reasons of appeal, specifically set forth in writing, within

such time after the date of the decision appealed from, not less

than sixty days, as the Commissioner appoints".

1982 - Pub. L. 97-164 substituted "Court of Appeals for the

Federal Circuit" for "Court of Customs and Patent Appeals".

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 1984 AMENDMENT

Section 414(c) of Pub. L. 98-620 provided that: "The amendments

made by this section [amending this section, sections 143 and 144

of this title, and section 1071 of Title 15, Commerce and Trade]

shall apply to proceedings pending in the Patent and Trademark

Office on the date of the enactment of this Act [Nov. 8, 1984] and

to appeals pending in the United States Court of Appeals for the

Federal Circuit on such date."

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. 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 141, 143, 306, 315 of

this title.

-End-

-CITE-

35 USC Sec. 143 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS

-HEAD-

Sec. 143. Proceedings on appeal

-STATUTE-

With respect to an appeal described in section 142 of this title,

the Director shall transmit to the United States Court of Appeals

for the Federal Circuit a certified list of the documents

comprising the record in the Patent and Trademark Office. The court

may request that the Director forward the original or certified

copies of such documents during pendency of the appeal. In an ex

parte case or any reexamination case, the Director shall submit to

the court in writing the grounds for the decision of the Patent and

Trademark Office, addressing all the issues involved in the appeal.

The court shall, before hearing an appeal, give notice of the time

and place of the hearing to the Director and the parties in the

appeal. The court shall, before hearing an appeal, give notice of

the time and place of the hearing to the Director and the parties

in the appeal.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 802; Pub. L. 93-596, Sec. 1, Jan.

2, 1975, 88 Stat. 1949; Pub. L. 97-164, title I, Sec. 163(a)(7),

Apr. 2, 1982, 96 Stat. 49; Pub. L. 98-620, title IV, Sec. 414(a),

Nov. 8, 1984, 98 Stat. 3363; Pub. L. 106-113, div. B, Sec.

1000(a)(9) [title IV, Secs. 4605(d), 4732(a)(10)(A)], Nov. 29,

1999, 113 Stat. 1536, 1501A-571, 1501A-582; Pub. L. 107-273, div.

C, title III, Secs. 13202(b)(2), 13206(b)(1)(B), Nov. 2, 2002, 116

Stat. 1901, 1906.)

-MISC1-

HISTORICAL AND REVISION NOTES

Based on Title 35, U.S.C., 1946 ed., Sec. 61 (R.S. 4913, amended

Mar. 2, 1927, ch. 273, Sec. 10, 44 Stat. 1336).

Language is changed. The requirement that the Commissioner notify

the parties is omitted and a requirement that the court notify the

parties is added. The statement relating to filing the papers and

testimony is made more explicit.

AMENDMENTS

2002 - 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.

Pub. L. 107-273, Sec. 13202(b)(2), amended third sentence

generally and added fourth sentence. Prior to amendment, third

sentence read as follows: "In any reexamination case, the Director

shall submit to the court in writing the grounds for the decision

of the Patent and Trademark Office, addressing all the issues

involved in the appeal."

1999 - 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 "Director" for "Commissioner" the

first, second, and fourth places appearing.

Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec. 4605(d)],

amended third sentence generally. Prior to amendment, third

sentence read as follows: "In an ex parte case, the Commissioner

shall submit to the court in writing the grounds for the decision

of the Patent and Trademark Office, addressing all the issues

involved in the appeal."

1984 - Pub. L. 98-620 substituted provisions requiring the

Commissioner to transmit to the court a certified list of the

documents comprising the record in the Patent and Trademark Office,

with respect to an appeal described in section 142 of this title,

for provision which required the Commissioner to transmit to the

court certified copies of all the necessary original papers and

evidence in the case specified by the appellant and the appellee,

and inserted provision that the court may request that the

Commissioner forward the original or certified copies of such

documents during the pendency of the appeal.

1982 - Pub. L. 97-164 substituted "Court of Appeals for the

Federal Circuit" for "Court of Customs and Patent Appeals".

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

for "Patent Office".

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by section 1000(a)(9) [title IV, Sec. 4605(d)] of 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.

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 Pub. L. 98-620 applicable to proceedings pending in

the Patent and Trademark Office on Nov. 8, 1984, and to appeals

pending in the United States Court of Appeals for the Federal

Circuit on such date, see section 414(c) of Pub. L. 98-620, set out

as a note under section 142 of this title.

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. 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 306, 315 of this title.

-End-

-CITE-

35 USC Sec. 144 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS

-HEAD-

Sec. 144. Decision on appeal

-STATUTE-

The United States Court of Appeals for the Federal Circuit shall

review the decision from which an appeal is taken on the record

before the Patent and Trademark Office. Upon its determination the

court shall issue to the Director its mandate and opinion, which

shall be entered of record in the Patent and Trademark Office and

shall govern the further proceedings in the case.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 802; Pub. L. 93-596, Sec. 1, Jan.

2, 1975, 88 Stat. 1949; Pub. L. 97-164, title I, Sec. 163(a)(7),

Apr. 2, 1982, 96 Stat. 49; Pub. L. 98-620, title IV, Sec. 414(a),

Nov. 8, 1984, 98 Stat. 3363; 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. 62 (R.S. 4914).

Language is changed and the last sentence of the corresponding

section of existing statute omitted as superfluous; such a sentence

does not appear in the present civil action section, 35 U.S.C. 63

and in either case the validity of the patent may be questioned.

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".

1984 - Pub. L. 98-620 substituted provisions requiring the court

to review the decision on the record before the Patent and

Trademark Office and upon reaching a determination to issue its

mandate and opinion to the Commissioner for provisions which

required the court, on petition, to hear and determine the appeal

on the evidence produced before the Patent and Trademark Office

(with the decision to be confined to the points set forth in the

reasons of appeal) and, upon its determination, to return to the

Commissioner a certificate of its proceedings and decision.

1982 - Pub. L. 97-164 substituted "Court of Appeals for the

Federal Circuit" for "Court of Customs and Patent Appeals".

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

for "Patent Office" 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.

EFFECTIVE DATE OF 1984 AMENDMENT

Amendment by Pub. L. 98-620 applicable to proceedings pending in

the Patent and Trademark Office on Nov. 8, 1984, and to appeals

pending in the United States Court of Appeals for the Federal

Circuit on such date, see section 414(c) of Pub. L. 98-620, set out

as a note under section 142 of this title.

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. 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 306, 315 of this title.

-End-

-CITE-

35 USC Sec. 145 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS

-HEAD-

Sec. 145. Civil action to obtain patent

-STATUTE-

An applicant dissatisfied with the decision of the Board of

Patent Appeals and Interferences in an appeal under section 134(a)

of this title may, unless appeal has been taken to the United

States Court of Appeals for the Federal Circuit, have remedy by

civil action against the Director in the United States District

Court for the District of Columbia if commenced within such time

after such decision, not less than sixty days, as the Director

appoints. The court may adjudge that such applicant is entitled to

receive a patent for his invention, as specified in any of his

claims involved in the decision of the Board of Patent Appeals and

Interferences, as the facts in the case may appear and such

adjudication shall authorize the Director to issue such patent on

compliance with the requirements of law. All the expenses of the

proceedings shall be paid by the applicant.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 803; Pub. L. 97-164, title I,

Sec. 163(a)(7), Apr. 2, 1982, 96 Stat. 49; Pub. L. 98-622, title

II, Sec. 203(b), Nov. 8, 1984, 98 Stat. 3387; Pub. L. 106-113, div.

B, Sec. 1000(a)(9) [title IV, Secs. 4605(e), 4732(a)(10)(A)], Nov.

29, 1999, 113 Stat. 1536, 1501A-571, 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. 63 (R.S. 4915, amended

(1) Mar. 2, 1927, ch. 273, Sec. 11, 44 Stat. 1336, (2) Mar. 2,

1929, ch. 488, Sec. 2(b), 45 Stat. 1476, (3) Aug. 5, 1939, ch. 451,

Sec. 4, 53 Stat. 1212).

Bill in equity is changed to civil action and the section is

restricted to exclude interferences which are covered by the next

section. The time for filing the action is changed to the same as

the time for appeal. The requirement for the applicant to file a

copy of the decision in the Patent Office is omitted.

Language is changed.

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" wherever appearing.

Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec. 4605(e)],

inserted "(a)" after "section 134".

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

Interferences in an appeal under section 134 of this title may,"

for "Appeals may" in first sentence and "Patent Appeals and

Interferences" for "Appeals" in second sentence.

1982 - Pub. L. 97-164 substituted "Court of Appeals for the

Federal Circuit" for "Court of Customs and Patent Appeals".

EFFECTIVE DATE OF 1999 AMENDMENT

Amendment by section 1000(a)(9) [title IV, Sec. 4605(e)] of Pub.

L. 106-113 applicable to any reexamination filed in the United

States Patent and Trademark Office on or after Nov. 2, 2002, see

section 13202(d) of Pub. L. 107-273, set out as a note under

section 134 of this title.

Amendment by section 1000(a)(9) [title IV, Sec. 4605(e)] of 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.

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 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 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.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 141, 154, 306 of this

title; title 28 section 1295.

-End-

-CITE-

35 USC Sec. 146 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART II - PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 13 - REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS

-HEAD-

Sec. 146. Civil action in case of interference

-STATUTE-

Any party to an interference dissatisfied with the decision of

the Board of Patent Appeals and Interferences on the interference,

may have remedy by civil action, if commenced within such time

after such decision, not less than sixty days, as the Director

appoints or as provided in section 141 of this title, unless he has

appealed to the United States Court of Appeals for the Federal

Circuit, and such appeal is pending or has been decided. In such

suits the record in the Patent and Trademark Office shall be

admitted on motion of either party upon the terms and conditions as

to costs, expenses, and the further cross-examination of the

witnesses as the court imposes, without prejudice to the right of

the parties to take further testimony. The testimony and exhibits

of the record in the Patent and Trademark Office when admitted

shall have the same effect as if originally taken and produced in

the suit.

Such suit may be instituted against the party in interest as

shown by the records of the Patent and Trademark Office at the time

of the decision complained of, but any party in interest may become

a party to the action. If there be adverse parties residing in a

plurality of districts not embraced within the same state, or an

adverse party residing in a foreign country, the United States

District Court for the District of Columbia shall have jurisdiction

and may issue summons against the adverse parties directed to the

marshal of any district in which any adverse party resides. Summons

against adverse parties residing in foreign countries may be served

by publication or otherwise as the court directs. The Director

shall not be a necessary party but he shall be notified of the

filing of the suit by the clerk of the court in which it is filed

and shall have the right to intervene. Judgment of the court in

favor of the right of an applicant to a patent shall authorize the

Director to issue such patent on the filing in the Patent and

Trademark Office of a certified copy of the judgment and on

compliance with the requirements of law.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 803; Pub. L. 93-596, Sec. 1, Jan.

2, 1975, 88 Stat. 1949; Pub. L. 97-164, title I, Sec. 163(a)(7),

Apr. 2, 1982, 96 Stat. 49; Pub. L. 98-622, title II, Sec. 203(c),

Nov. 8, 1984, 98 Stat. 3387; Pub. L. 106-113, div. B, Sec.

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

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

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

-MISC1-

HISTORICAL AND REVISION NOTES

The first paragraph and parts of the second paragraph are based

on Title 35, U.S.C., 1946 ed., Sec. 63 (R.S. 4915, amended (1) Mar.

2, 1927, ch. 273, Sec. 11, 44 Stat. 1336, (2) Mar. 2, 1929, ch.

488, Sec. 2(b), 45 Stat. 1476, (3) Aug. 5, 1939, ch. 451, Sec. 4,

53 Stat. 1212), limited to interferences and making some changes.

The action is not restricted to applicants, but a patentee may also

bring the action. The time for bringing the action is made the same

as for appeals.

In the second paragraph the first sentence is new and eliminates

difficulties arising from unrecorded interests.

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

72a (Mar. 3, 1927, ch. 364, 44 Stat. 1394, reenacted Oct. 31, 1951,

ch. 655, Sec. 53a, 65 Stat. 728) with changes in language.

The fourth sentence is new and prevents such suits from being

filed against the Commissioner as a defendant; however, the

Commissioner has the right to intervene.

Language is changed.

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.

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

Interferences on the interference" for "board of patent

interference on the question of priority".

1982 - Pub. L. 97-164 substituted "Court of Appeals for the

Federal Circuit" for "Court of Customs and Patent Appeals".

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

for "Patent Office" 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 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.

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. 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 141, 154, 291 of this

title; title 28 section 1295.

-End-