-CITE-

35 USC CHAPTER 28 - INFRINGEMENT OF PATENTS 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 28 - INFRINGEMENT OF PATENTS

-HEAD-

CHAPTER 28 - INFRINGEMENT OF PATENTS

-MISC1-

Sec.

271. Infringement of patent.

272. Temporary presence in the United States.

273. Defense to infringement based on earlier inventor.

AMENDMENTS

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

4302(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A-557, added item 273.

-SECREF-

CHAPTER REFERRED TO IN OTHER SECTIONS

This chapter is referred to in section 154 of this title.

-End-

-CITE-

35 USC Sec. 271 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 28 - INFRINGEMENT OF PATENTS

-HEAD-

Sec. 271. Infringement of patent

-STATUTE-

(a) Except as otherwise provided in this title, whoever without

authority makes, uses, offers to sell, or sells any patented

invention, within the United States or imports into the United

States any patented invention during the term of the patent

therefor, infringes the patent.

(b) Whoever actively induces infringement of a patent shall be

liable as an infringer.

(c) Whoever offers to sell or sells within the United States or

imports into the United States a component of a patented machine,

manufacture, combination or composition, or a material or apparatus

for use in practicing a patented process, constituting a material

part of the invention, knowing the same to be especially made or

especially adapted for use in an infringement of such patent, and

not a staple article or commodity of commerce suitable for

substantial noninfringing use, shall be liable as a contributory

infringer.

(d) No patent owner otherwise entitled to relief for infringement

or contributory infringement of a patent shall be denied relief or

deemed guilty of misuse or illegal extension of the patent right by

reason of his having done one or more of the following: (1) derived

revenue from acts which if performed by another without his consent

would constitute contributory infringement of the patent; (2)

licensed or authorized another to perform acts which if performed

without his consent would constitute contributory infringement of

the patent; (3) sought to enforce his patent rights against

infringement or contributory infringement; (4) refused to license

or use any rights to the patent; or (5) conditioned the license of

any rights to the patent or the sale of the patented product on the

acquisition of a license to rights in another patent or purchase of

a separate product, unless, in view of the circumstances, the

patent owner has market power in the relevant market for the patent

or patented product on which the license or sale is conditioned.

(e)(1) It shall not be an act of infringement to make, use, offer

to sell, or sell within the United States or import into the United

States a patented invention (other than a new animal drug or

veterinary biological product (as those terms are used in the

Federal Food, Drug, and Cosmetic Act and the Act of March 4, 1913)

which is primarily manufactured using recombinant DNA, recombinant

RNA, hybridoma technology, or other processes involving site

specific genetic manipulation techniques) solely for uses

reasonably related to the development and submission of information

under a Federal law which regulates the manufacture, use, or sale

of drugs or veterinary biological products.

(2) It shall be an act of infringement to submit -

(A) an application under section 505(j) of the Federal Food,

Drug, and Cosmetic Act or described in section 505(b)(2) of such

Act for a drug claimed in a patent or the use of which is claimed

in a patent, or

(B) an application under section 512 of such Act or under the

Act of March 4, 1913 (21 U.S.C. 151-158) for a drug or veterinary

biological product which is not primarily manufactured using

recombinant DNA, recombinant RNA, hybridoma technology, or other

processes involving site specific genetic manipulation techniques

and which is claimed in a patent or the use of which is claimed

in a patent,

if the purpose of such submission is to obtain approval under such

Act to engage in the commercial manufacture, use, or sale of a drug

or veterinary biological product claimed in a patent or the use of

which is claimed in a patent before the expiration of such patent.

(3) In any action for patent infringement brought under this

section, no injunctive or other relief may be granted which would

prohibit the making, using, offering to sell, or selling within the

United States or importing into the United States of a patented

invention under paragraph (1).

(4) For an act of infringement described in paragraph (2) -

(A) the court shall order the effective date of any approval of

the drug or veterinary biological product involved in the

infringement to be a date which is not earlier than the date of

the expiration of the patent which has been infringed,

(B) injunctive relief may be granted against an infringer to

prevent the commercial manufacture, use, offer to sell, or sale

within the United States or importation into the United States of

an approved drug or veterinary biological product, and

(C) damages or other monetary relief may be awarded against an

infringer only if there has been commercial manufacture, use,

offer to sell, or sale within the United States or importation

into the United States of an approved drug or veterinary

biological product.

The remedies prescribed by subparagraphs (A), (B), and (C) are the

only remedies which may be granted by a court for an act of

infringement described in paragraph (2), except that a court may

award attorney fees under section 285.

(f)(1) Whoever without authority supplies or causes to be

supplied in or from the United States all or a substantial portion

of the components of a patented invention, where such components

are uncombined in whole or in part, in such manner as to actively

induce the combination of such components outside of the United

States in a manner that would infringe the patent if such

combination occurred within the United States, shall be liable as

an infringer.

(2) Whoever without authority supplies or causes to be supplied

in or from the United States any component of a patented invention

that is especially made or especially adapted for use in the

invention and not a staple article or commodity of commerce

suitable for substantial noninfringing use, where such component is

uncombined in whole or in part, knowing that such component is so

made or adapted and intending that such component will be combined

outside of the United States in a manner that would infringe the

patent if such combination occurred within the United States, shall

be liable as an infringer.

(g) Whoever without authority imports into the United States or

offers to sell, sells, or uses within the United States a product

which is made by a process patented in the United States shall be

liable as an infringer, if the importation, offer to sell, sale, or

use of the product occurs during the term of such process patent.

In an action for infringement of a process patent, no remedy may be

granted for infringement on account of the noncommercial use or

retail sale of a product unless there is no adequate remedy under

this title for infringement on account of the importation or other

use, offer to sell, or sale of that product. A product which is

made by a patented process will, for purposes of this title, not be

considered to be so made after -

(1) it is materially changed by subsequent processes; or

(2) it becomes a trivial and nonessential component of another

product.

(h) As used in this section, the term "whoever" includes 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. Any State, and any such instrumentality, officer, or

employee, shall be subject to the provisions of this title in the

same manner and to the same extent as any nongovernmental entity.

(i) As used in this section, an "offer for sale" or an "offer to

sell" by a person other than the patentee, or any designee of the

patentee, is that in which the sale will occur before the

expiration of the term of the patent.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 811; Pub. L. 98-417, title II,

Sec. 202, Sept. 24, 1984, 98 Stat. 1603; Pub. L. 98-622, title I,

Sec. 101(a), Nov. 8, 1984, 98 Stat. 3383; Pub. L. 100-418, title

IX, Sec. 9003, Aug. 23, 1988, 102 Stat. 1563; Pub. L. 100-670,

title II, Sec. 201(i), Nov. 16, 1988, 102 Stat. 3988; Pub. L.

100-703, title II, Sec. 201, Nov. 19, 1988, 102 Stat. 4676; Pub. L.

102-560, Sec. 2(a)(1), Oct. 28, 1992, 106 Stat. 4230; Pub. L.

103-465, title V, Sec. 533(a), Dec. 8, 1994, 108 Stat. 4988.)

-MISC1-

HISTORICAL AND REVISION NOTES

The first paragraph of this section is declaratory only, defining

infringement.

Paragraphs (b) and (c) define and limit contributory infringement

of a patent and paragraph (d) is ancillary to these paragraphs, see

preliminary general description of bill. One who actively induces

infringement as by aiding and abetting the same is liable as an

infringer, and so is one who sells a component part of a patented

invention or material or apparatus for use therein knowing the same

to be especially made or especially adapted for use in the

infringement of the patent except in the case of a staple article

or commodity of commerce having other uses. A patentee is not

deemed to have misused his patent solely by reason of doing

anything authorized by the section.

-REFTEXT-

REFERENCES IN TEXT

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

(e)(1), (2), 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. Sections 505(b)(2), 505(j), and

512 of that Act are classified, respectively, to sections

355(b)(2), 355(j), and 360b of Title 21. For complete

classification of this Act to the Code, see section 301 of Title 21

and Tables.

Act of March 4, 1913, referred to in subsec. (e)(1), (2), is act

Mar. 4, 1913, ch. 145, 37 Stat. 828, as amended. The provisions of

such act relating to viruses, etc., applicable to domestic animals,

popularly known as the Virus-Serum-Toxin Act, are contained in the

eighth paragraph under the heading "Bureau of Animal Industry" of

act Mar. 4, 1913, at 37 Stat. 832, and are classified generally to

chapter 5 (Sec. 151 et seq.) of Title 21. For complete

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

out under section 151 of Title 21 and Tables.

-MISC2-

AMENDMENTS

1994 - Subsec. (a). Pub. L. 103-465, Sec. 533(a)(1), inserted ",

offers to sell," after "uses" and "or imports into the United

States any patented invention" after "the United States".

Subsec. (c). Pub. L. 103-465, Sec. 533(a)(2), substituted "offers

to sell or sells within the United States or imports into the

United States" for "sells".

Subsec. (e)(1). Pub. L. 103-465, Sec. 533(a)(3)(A), substituted

"offer to sell, or sell within the United States or import into the

United States" for "or sell".

Subsec. (e)(3). Pub. L. 103-465, Sec. 533(a)(3)(B), substituted

"offering to sell, or selling within the United States or importing

into the United States" for "or selling".

Subsec. (e)(4)(B), (C). Pub. L. 103-465, Sec. 533(a)(3)(C), (D),

substituted "offer to sell, or sale within the United States or

importation into the United States" for "or sale".

Subsec. (g). Pub. L. 103-465, Sec. 533(a)(4), substituted "offers

to sell, sells," for "sells", "importation, offer to sell, sale,"

for "importation, sale,", and "other use, offer to sell, or" for

"other use or".

Subsec. (i). Pub. L. 103-465, Sec. 533(a)(5), added subsec. (i).

1992 - Subsec. (h). Pub. L. 102-560 added subsec. (h).

1988 - Subsec. (d). Pub. L. 100-703 added cls. (4) and (5).

Subsec. (e)(1). Pub. L. 100-670, Sec. 201(i)(1), inserted "which

is primarily manufactured using recombinant DNA, recombinant RNA,

hybridoma technology, or other processes involving site specific

genetic manipulation techniques" after "March 4, 1913)" and "or

veterinary biological products" after "sale of drugs".

Subsec. (e)(2). Pub. L. 100-670, Sec. 201(i)(2), amended par. (2)

generally. Prior to amendment, par. (2) read as follows: "It shall

be an act of infringement to submit an application under section

505(j) of the Federal Food, Drug, and Cosmetic Act or described in

section 505(b)(2) of such Act for a drug claimed in a patent or the

use of which is claimed in a patent, if the purpose of such

submission is to obtain approval under such Act to engage in the

commercial manufacture, use, or sale of a drug claimed in a patent

or the use of which is claimed in a patent before the expiration of

such patent."

Subsec. (e)(4). Pub. L. 100-670, Sec. 201(i)(3), inserted "or

veterinary biological product" after "drug" in subpars. (A) to (C).

Subsec. (g). Pub. L. 100-418 added subsec. (g).

1984 - Subsec. (e). Pub. L. 98-417 added subsec. (e).

Subsec. (f). Pub. L. 98-622 added subsec. (f).

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 1992 AMENDMENT

Amendment by Pub. L. 102-560 effective with respect to violations

that occur on or after Oct. 28, 1992, see section 4 of Pub. L.

102-560, set out as a note under section 2541 of Title 7,

Agriculture.

EFFECTIVE DATE OF 1988 AMENDMENTS

Section 202 of title II of Pub. L. 100-703 provided that: "The

amendment made by this title [amending this section] shall apply

only to cases filed on or after the date of the enactment of this

Act [Nov. 19, 1988]."

Section 9006 of Pub. L. 100-418 provided that:

"(a) In General. - The amendments made by this subtitle [subtitle

A (Secs. 9001-9007) of title IX of Pub. L. 100-418, enacting

section 295 of this title and amending this section and sections

154 and 287 of this title] take effect 6 months after the date of

enactment of this Act [Aug. 23, 1988] and, subject to subsections

(b) and (c), shall apply only with respect to products made or

imported after the effective date of the amendments made by this

subtitle.

"(b) Exceptions. - The amendments made by this subtitle shall not

abridge or affect the right of any person or any successor in

business of such person to continue to use, sell, or import any

specific product already in substantial and continuous sale or use

by such person in the United States on January 1, 1988, or for

which substantial preparation by such person for such sale or use

was made before such date, to the extent equitable for the

protection of commercial investments made or business commenced in

the United States before such date. This subsection shall not apply

to any person or any successor in business of such person using,

selling, or importing a product produced by a patented process that

is the subject of a process patent enforcement action commenced

before January 1, 1987, before the International Trade Commission,

that is pending or in which an order has been entered.

"(c) Retention of Other Remedies. - The amendments made by this

subtitle shall not deprive a patent owner of any remedies available

under subsections (a) through (f) of section 271 of title 35,

United States Code, under section 337 of the Tariff Act of 1930 [19

U.S.C. 1337], or under any other provision of law."

EFFECTIVE DATE OF 1984 AMENDMENT

Amendment by Pub. L. 98-622 applicable only to the supplying, or

causing to be supplied, of any component or components of a

patented invention after Nov. 8, 1984, see section 106(c) of Pub.

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

REPORTS TO CONGRESS; EFFECT ON DOMESTIC INDUSTRIES OF PROCESS

PATENT AMENDMENTS ACT OF 1988

Pub. L. 100-418, title IX, Sec. 9007, Aug. 23, 1988, 102 Stat.

1567, provided that the Secretary of Commerce was to make annual

reports to Congress covering each of the successive five 1-year

periods beginning 6 months after Aug. 23, 1988, on the effect of

the amendments made by subtitle A (Secs. 9001-9007) of title IX of

Pub. L. 100-418, enacting section 295 of this title and amending

sections 154, 271, and 287 of this title, on those domestic

industries that submit complaints to the Department of Commerce

alleging that their legitimate sources of supply have been

adversely affected by the amendments.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 157, 273, 287, 296 of

this title; title 21 sections 355, 360b.

-End-

-CITE-

35 USC Sec. 272 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 28 - INFRINGEMENT OF PATENTS

-HEAD-

Sec. 272. Temporary presence in the United States

-STATUTE-

The use of any invention in any vessel, aircraft or vehicle of

any country which affords similar privileges to vessels, aircraft

or vehicles of the United States, entering the United States

temporarily or accidentally, shall not constitute infringement of

any patent, if the invention is used exclusively for the needs of

the vessel, aircraft or vehicle and is not offered for sale or sold

in or used for the manufacture of anything to be sold in or

exported from the United States.

-SOURCE-

(July 19, 1952, ch. 950, 66 Stat. 812; Pub. L. 103-465, title V,

Sec. 533(b)(4), Dec. 8, 1994, 108 Stat. 4989.)

-MISC1-

HISTORICAL AND REVISION NOTES

This section follows the requirement of the International

Convention for the Protection of Industrial Property, to which the

United States is a party, and also codifies the holding of the

Supreme Court that use of a patented invention on board a foreign

ship does not infringe a patent.

AMENDMENTS

1994 - Pub. L. 103-465 substituted "not offered for sale or sold"

for "not 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; title

42 section 2457.

-End-

-CITE-

35 USC Sec. 273 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 28 - INFRINGEMENT OF PATENTS

-HEAD-

Sec. 273. Defense to infringement based on earlier inventor

-STATUTE-

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

(1) the terms "commercially used" and "commercial use" mean use

of a method in the United States, so long as such use is in

connection with an internal commercial use or an actual

arm's-length sale or other arm's-length commercial transfer of a

useful end result, whether or not the subject matter at issue is

accessible to or otherwise known to the public, except that the

subject matter for which commercial marketing or use is subject

to a premarketing regulatory review period during which the

safety or efficacy of the subject matter is established,

including any period specified in section 156(g), shall be deemed

"commercially used" and in "commercial use" during such

regulatory review period;

(2) in the case of activities performed by a nonprofit research

laboratory, or nonprofit entity such as a university, research

center, or hospital, a use for which the public is the intended

beneficiary shall be considered to be a use described in

paragraph (1), except that the use -

(A) may be asserted as a defense under this section only for

continued use by and in the laboratory or nonprofit entity; and

(B) may not be asserted as a defense with respect to any

subsequent commercialization or use outside such laboratory or

nonprofit entity;

(3) the term "method" means a method of doing or conducting

business; and

(4) the "effective filing date" of a patent is the earlier of

the actual filing date of the application for the patent or the

filing date of any earlier United States, foreign, or

international application to which the subject matter at issue is

entitled under section 119, 120, or 365 of this title.

(b) Defense to Infringement. -

(1) In general. - It shall be a defense to an action for

infringement under section 271 of this title with respect to any

subject matter that would otherwise infringe one or more claims

for a method in the patent being asserted against a person, if

such person had, acting in good faith, actually reduced the

subject matter to practice at least 1 year before the effective

filing date of such patent, and commercially used the subject

matter before the effective filing date of such patent.

(2) Exhaustion of right. - The sale or other disposition of a

useful end product produced by a patented method, by a person

entitled to assert a defense under this section with respect to

that useful end result shall exhaust the patent owner's rights

under the patent to the extent such rights would have been

exhausted had such sale or other disposition been made by the

patent owner.

(3) Limitations and qualifications of defense. - The defense to

infringement under this section is subject to the following:

(A) Patent. - A person may not assert the defense under this

section unless the invention for which the defense is asserted

is for a method.

(B) Derivation. - A person may not assert the defense under

this section if the subject matter on which the defense is

based was derived from the patentee or persons in privity with

the patentee.

(C) Not a general license. - The defense asserted by a person

under this section is not a general license under all claims of

the patent at issue, but extends only to the specific subject

matter claimed in the patent with respect to which the person

can assert a defense under this chapter, except that the

defense shall also extend to variations in the quantity or

volume of use of the claimed subject matter, and to

improvements in the claimed subject matter that do not infringe

additional specifically claimed subject matter of the patent.

(4) Burden of proof. - A person asserting the defense under

this section shall have the burden of establishing the defense by

clear and convincing evidence.

(5) Abandonment of use. - A person who has abandoned commercial

use of subject matter may not rely on activities performed before

the date of such abandonment in establishing a defense under this

section with respect to actions taken after the date of such

abandonment.

(6) Personal defense. - The defense under this section may be

asserted only by the person who performed the acts necessary to

establish the defense and, except for any transfer to the patent

owner, the right to assert the defense shall not be licensed or

assigned or transferred to another person except as an ancillary

and subordinate part of a good faith assignment or transfer for

other reasons of the entire enterprise or line of business to

which the defense relates.

(7) Limitation on sites. - A defense under this section, when

acquired as part of a good faith assignment or transfer of an

entire enterprise or line of business to which the defense

relates, may only be asserted for uses at sites where the subject

matter that would otherwise infringe one or more of the claims is

in use before the later of the effective filing date of the

patent or the date of the assignment or transfer of such

enterprise or line of business.

(8) Unsuccessful assertion of defense. - If the defense under

this section is pleaded by a person who is found to infringe the

patent and who subsequently fails to demonstrate a reasonable

basis for asserting the defense, the court shall find the case

exceptional for the purpose of awarding attorney fees under

section 285 of this title.

(9) Invalidity. - A patent shall not be deemed to be invalid

under section 102 or 103 of this title solely because a defense

is raised or established under this section.

-SOURCE-

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

4302(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-555.)

-MISC1-

EFFECTIVE DATE

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

Sec. 4303], Nov. 29, 1999, 113 Stat. 1536, 1501A-557, 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 on the date of the enactment of

this Act [Nov. 29, 1999], but shall not apply to any action for

infringement that is pending on such date of enactment or with

respect to any subject matter for which an adjudication of

infringement, including a consent judgment, has been made before

such date of enactment."

-End-