§146 — Title 35 Patents | U.S. Code

Summary

If a party is unhappy with a Patent Trial and Appeal Board decision in a derivation case, they can sue in federal court. The suit must start within the time the Director sets, which must be at least sixty days, or as provided in section 141, unless the party has appealed to the United States Court of Appeals for the Federal Circuit and that appeal is pending or decided. The Patent and Trademark Office record can be used in the lawsuit on the court’s terms and counts the same as if the evidence were given in court. Parties may add more testimony or evidence. The suit may name the party shown in the Patent and Trademark Office records, and others with an interest may join. If opposing parties live in different states or abroad, the U.S. District Court for the Eastern District of Virginia has jurisdiction and can send summonses to marshals in other districts; service on foreign residents may be by publication or as the court directs. The Director does not have to be a party but must be notified and may intervene. If the court finds in favor of an applicant, the Director can issue the patent after getting a certified copy of the judgment and meeting legal requirements.

Title 35, §146

Patents — Source: USLM XML via OLRC

Any party to a derivation proceeding dissatisfied with the decision of the Patent Trial and Appeal Board on the derivation proceeding, 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, 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 Eastern District of Virginia 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.

Notes & Related Subsidiaries

Historical and Revision Notes

The first paragraph and parts of the second paragraph are based on Title 35, U.S.C., 1946 ed., § 63 (R.S. 4915, amended (1) Mar. 2, 1927, ch. 273, § 11, 44 Stat. 1336, (2) Mar. 2, 1929, ch. 488, § 2(b), 45 Stat. 1476, (3) Aug. 5, 1939, ch. 451, § 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., § 72a (Mar. 3, 1927, ch. 364, 44 Stat. 1394, reenacted Oct. 31, 1951, ch. 655, § 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.

Editorial Notes

Amendments

2011—Pub. L. 112–29, § 20(j), struck out “of this title” after “141”. Pub. L. 112–29, § 9(a), substituted “United States District Court for the Eastern District of Virginia” for “United States District Court for the District of Columbia”. Pub. L. 112–29, § 3(j)(1), (2)(A), (4), amended section catchline generally, substituting “Civil action in case of derivation proceeding” for “Civil action in case of interference”, and substituted in text “a derivation proceeding” for “an interference”, “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences”, and “the derivation proceeding” for “the interference”. 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.

Statutory Notes and Related Subsidiaries

Effective Date

of 2011 AmendmentAmendment by section 3(j)(1), (2)(A), (4) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an

Effective Date

of 2011 Amendment;

Savings Provision

s note under section 100 of this title. Amendment by section 9(a) of Pub. L. 112–29 effective Sept. 16, 2011, and applicable to any civil action commenced on or after that date, see section 9(b) of Pub. L. 112–29, set out as a note under section 1071 of Title 15, Commerce and Trade. Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that

Effective Date

, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date

of 1999 AmendmentAmendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Effective Date

of 1984 AmendmentAmendment 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 AmendmentAmendment 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 AmendmentAmendment 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.

§146 Civil action in case of derivation proceeding

Summary

Title 35, §146

Notes & Related Subsidiaries

Historical and Revision Notes

Editorial Notes

Amendments

Statutory Notes and Related Subsidiaries

Effective Date

Effective Date

Savings Provision

Effective Date

Effective Date

Effective Date

Effective Date

Effective Date

Citations & Metadata