§ 146. — Civil action in case of interference.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC146]
TITLE 35--PATENTS
PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 13--REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS
Sec. 146. Civil action in case of interference
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.
(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.)
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.
Section Referred to in Other Sections
This section is referred to in sections 141, 154, 291 of this title;
title 28 section 1295.
