[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC135]
TITLE 35--PATENTS
PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 12--EXAMINATION OF APPLICATION
Sec. 135. Interferences
(a) Whenever an application is made for a patent which, in the
opinion of the Director, would interfere with any pending application,
or with any unexpired patent, an interference may be declared and the
Director shall give notice of such declaration to the applicants, or
applicant and patentee, as the case may be. The Board of Patent Appeals
and Interferences shall determine questions of priority of the
inventions and may determine questions of patentability. Any final
decision, if adverse to the claim of an applicant, shall constitute the
final refusal by the Patent and Trademark Office of the claims involved,
and the Director may issue a patent to the applicant who is adjudged the
prior inventor. A final judgment adverse to a patentee from which no
appeal or other review has been or can be taken or had shall constitute
cancellation of the claims involved in the patent, and notice of such
cancellation shall be endorsed on copies of the patent distributed after
such cancellation by the Patent and Trademark Office.
(b)(1) A claim which is the same as, or for the same or
substantially the same subject matter as, a claim of an issued patent
may not be made in any application unless such a claim is made prior to
one year from the date on which the patent was granted.
(2) A claim which is the same as, or for the same or substantially
the same subject matter as, a claim of an application published under
section 122(b) of this title may be made in an application filed after
the application is published only if the claim is made before 1 year
after the date on which the application is published.
(c) Any agreement or understanding between parties to an
interference, including any collateral agreements referred to therein,
made in connection with or in contemplation of the termination of the
interference, shall be in writing and a true copy thereof filed in the
Patent and Trademark Office before the termination of the interference
as between the said parties to the agreement or understanding. If any
party filing the same so requests, the copy shall be kept separate from
the file of the interference, and made available only to Government
agencies on written request, or to any person on a showing of good
cause. Failure to file the copy of such agreement or understanding shall
render permanently unenforceable such agreement or understanding and any
patent of such parties involved in the interference or any patent
subsequently issued on any application of such parties so involved. The
Director may, however, on a showing of good cause for failure to file
within the time prescribed, permit the filing of the agreement or
understanding during the six-month period subsequent to the termination
of the interference as between the parties to the agreement or
understanding.
The Director shall give notice to the parties or their attorneys of
record, a reasonable time prior to said termination, of the filing
requirement of this section. If the Director gives such notice at a
later time, irrespective of the right to file such agreement or
understanding within the six-month period on a showing of good cause,
the parties may file such agreement or understanding within sixty days
of the receipt of such notice.
Any discretionary action of the Director under this subsection shall
be reviewable under section 10 of the Administrative Procedure Act.
(d) Parties to a patent interference, within such time as may be
specified by the Director by regulation, may determine such contest or
any aspect thereof by arbitration. Such arbitration shall be governed by
the provisions of title 9 to the extent such title is not inconsistent
with this section. The parties shall give notice of any arbitration
award to the Director, and such award shall, as between the parties to
the arbitration, be dispositive of the issues to which it relates. The
arbitration award shall be unenforceable until such notice is given.
Nothing in this subsection shall preclude the Director from determining
patentability of the invention involved in the interference.
(July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 87-831, Oct. 15, 1962, 76
Stat. 958; Pub. L. 93-596, Sec. 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L.
98-622, title I, Sec. 105, title II, Sec. 202, Nov. 8, 1984, 98 Stat.
3385, 3386; Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV,
Secs. 4507(11), 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A-
566, 1501A-582; Pub. L. 107-273, div. C, title III, Sec. 13206(b)(1)(B),
Nov. 2, 2002, 116 Stat. 1906.)
Historical and Revision Notes
The first paragraph is based on Title 35, U.S.C., 1946 ed., Sec. 52
(R.S. 4904 amended (1) Mar. 2, 1927, ch. 273, Sec. 4, 44 Stat. 1335,
1336, (2) Aug. 5, 1939, ch. 451, Sec. 1, 53 Stat. 1212).
The first paragraph states the existing corresponding statute with a
few changes in language. An explicit statement that the Office decision
on priority constitutes a final refusal by the Office of the claims
involved, is added. The last sentence is new and provides that judgment
adverse to a patentee constitutes cancellation of the claims of the
patent involved after the judgment has become final, the patentee has a
right of appeal (sec. 141) and is given a right of review by civil
action (sec. 146).
The second paragraph is based on Title 35, U.S.C., 1946 ed.,
Sec. 51, (R.S. 4903, amended Aug. 5, 1939, ch. 452, Sec. 1, 53 Stat.
1213). Changes in language are made.
References in Text
Section 10 of the Administrative Procedure Act, referred to in
subsec. (c), is section 10 of act June 11, 1946, ch. 324, 60 Stat. 243,
which was repealed by Pub. L. 89-554, Sec. 8(a), Sept. 6, 1966, 80 Stat.
632, and reenacted by the first section thereof as chapter 7 (Sec. 701
et seq.) of Title 5, Government Organization and Employees.
Amendments
2002--Subsecs. (a), (c), (d). 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 notes below.
1999--Subsec. (a). 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.
Subsec. (b). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4507(11)], designated existing provisions as par. (1) and added
par. (2).
Subsecs. (c), (d). 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.
1984--Subsec. (a). Pub. L. 98-622, Sec. 202, amended subsec. (a)
generally, substituting ``, an interference may be declared and the
Commissioner shall give notice of such declaration to the applicants, or
applicant and patentee, as the case may be'' for ``he shall give notice
thereof to the applicants, or applicant and patentee, as the case may
be'' and substituting provisions vesting jurisdiction for determining
questions of interference in the Board of Patent Appeals and
Interferences for provisions vesting such jurisdiction in a board of
patent interferences.
Subsec. (d). Pub. L. 98-622, Sec. 105, added subsec. (d).
1975--Subsecs. (a), (c). Pub. L. 93-596 substituted ``Patent and
Trademark Office'' for ``Patent Office'' wherever appearing.
1962--Pub. L. 87-831 designated first and second pars. as subsecs.
(a) and (b) and added subsec. (c).
Effective Date of 1999 Amendment
Amendment by section 1000(a)(9) [title IV, Sec. 4507(11)] of 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.
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 section 105 of Pub. L. 98-622 applicable to all United
States patents gra
