PRIA, Government Policy, Made Personal

Summary

If a court awards a plaintiff in a patent case that covers only part of a patent, and the patent owner had said in the patent papers they were the original inventor of an important part but they were not, the court cannot include costs in the judgment. Costs can be added only if the owner filed a proper disclaimer with the U.S. Patent and Trademark Office before the lawsuit started.

Title 28, §1928

Judiciary and Judicial Procedure, Source: USLM XML via OLRC

Whenever a judgment is rendered for the plaintiff in any patent infringement action involving a part of a patent and it appears that the patentee, in his specifications, claimed to be, but was not, the original and first inventor or discoverer of any material or substantial part of the thing patented, no costs shall be included in such judgment, unless the proper disclaimer has been filed in the United States Patent and Trademark Office prior to the commencement of the action.

Notes & Related Subsidiaries

Historical and Revision Notes

Based on title 28, U.S.C., 1940 ed., § 821 (R.S. § 973). Word “action” was substituted for “any suit at law or in equity” to conform with Rule 2 of the Federal Rules of Civil Procedure. Words “or decree” were omitted after “judgment,” because a judgment under Rule 54(a) of the Federal Rules of Civil Procedure by definition includes a decree. Changes were made in phraseology.

Editorial Notes

Amendments

1999—Pub. L. 106–113 substituted “United States Patent and Trademark Office” for “Patent Office”.

Statutory Notes and Related Subsidiaries

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 Title 35, Patents.

§1928 Patent Infringement Action; Disclaimer Not Filed