§ 154. — Contents and term of patent; provisional rights.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC154]
TITLE 35--PATENTS
PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 14--ISSUE OF PATENT
Sec. 154. Contents and term of patent; provisional rights
(a) In General.--
(1) Contents.--Every patent shall contain a short title of the
invention and a grant to the patentee, his heirs or assigns, of the
right to exclude others from making, using, offering for sale, or
selling the invention throughout the United States or importing the
invention into the United States, and, if the invention is a
process, of the right to exclude others from using, offering for
sale or selling throughout the United States, or importing into the
United States, products made by that process, referring to the
specification for the particulars thereof.
(2) Term.--Subject to the payment of fees under this title, such
grant shall be for a term beginning on the date on which the patent
issues and ending 20 years from the date on which the application
for the patent was filed in the United States or, if the application
contains a specific reference to an earlier filed application or
applications under section 120, 121, or 365(c) of this title, from
the date on which the earliest such application was filed.
(3) Priority.--Priority under section 119, 365(a), or 365(b) of
this title shall not be taken into account in determining the term
of a patent.
(4) Specification and drawing.--A copy of the specification and
drawing shall be annexed to the patent and be a part of such patent.
(b) Adjustment of Patent Term.--
(1) Patent term guarantees.--
(A) Guarantee of prompt patent and trademark office
responses.--Subject to the limitations under paragraph (2), if
the issue of an original patent is delayed due to the failure of
the Patent and Trademark Office to--
(i) provide at least one of the notifications under
section 132 of this title or a notice of allowance under
section 151 of this title not later than 14 months after--
(I) the date on which an application was filed under
section 111(a) of this title; or
(II) the date on which an international application
fulfilled the requirements of section 371 of this title;
(ii) respond to a reply under section 132, or to an
appeal taken under section 134, within 4 months after the
date on which the reply was filed or the appeal was taken;
(iii) act on an application within 4 months after the
date of a decision by the Board of Patent Appeals and
Interferences under section 134 or 135 or a decision by a
Federal court under section 141, 145, or 146 in a case in
which allowable claims remain in the application; or
(iv) issue a patent within 4 months after the date on
which the issue fee was paid under section 151 and all
outstanding requirements were satisfied,
the term of the patent shall be extended 1 day for each day
after the end of the period specified in clause (i), (ii),
(iii), or (iv), as the case may be, until the action described
in such clause is taken.
(B) Guarantee of no more than 3-year application pendency.--
Subject to the limitations under paragraph (2), if the issue of
an original patent is delayed due to the failure of the United
States Patent and Trademark Office to issue a patent within 3
years after the actual filing date of the application in the
United States, not including--
(i) any time consumed by continued examination of the
application requested by the applicant under section 132(b);
(ii) any time consumed by a proceeding under section
135(a), any time consumed by the imposition of an order
under section 181, or any time consumed by appellate review
by the Board of Patent Appeals and Interferences or by a
Federal court; or
(iii) any delay in the processing of the application by
the United States Patent and Trademark Office requested by
the applicant except as permitted by paragraph (3)(C),
the term of the patent shall be extended 1 day for each day
after the end of that 3-year period until the patent is issued.
(C) Guarantee or adjustments for delays due to
interferences, secrecy orders, and appeals.--Subject to the
limitations under paragraph (2), if the issue of an original
patent is delayed due to--
(i) a proceeding under section 135(a);
(ii) the imposition of an order under section 181; or
(iii) appellate review by the Board of Patent Appeals
and Interferences or by a Federal court in a case in which
the patent was issued under a decision in the review
reversing an adverse determination of patentability,
the term of the patent shall be extended 1 day for each day of
the pendency of the proceeding, order, or review, as the case
may be.
(2) Limitations.--
(A) In general.--To the extent that periods of delay
attributable to grounds specified in paragraph (1) overlap, the
period of any adjustment granted under this subsection shall not
exceed the actual number of days the issuance of the patent was
delayed.
(B) Disclaimed term.--No patent the term of which has been
disclaimed beyond a specified date may be adjusted under this
section beyond the expiration date specified in the disclaimer.
(C) Reduction of period of adjustment.--
(i) The period of adjustment of the term of a patent
under paragraph (1) shall be reduced by a period equal to
the period of time during which the applicant failed to
engage in reasonable efforts to conclude prosecution of the
application.
(ii) With respect to adjustments to patent term made
under the authority of paragraph (1)(B), an applicant shall
be deemed to have failed to engage in reasonable efforts to
conclude processing or examination of an application for the
cumulative total of any periods of time in excess of 3
months that are taken to respond to a notice from the Office
making any rejection, objection, argument, or other request,
measuring such 3-month period from the date the notice was
given or mailed to the applicant.
(iii) The Director shall prescribe regulations
establishing the circumstances that constitute a failure of
an applicant to engage in reasonable efforts to conclude
processing or examination of an application.
(3) Procedures for patent term adjustment determination.--
(A) The Director shall prescribe regulations establishing
procedures for the application for and determination of patent
term adjustments under this subsection.
(B) Under the procedures established under subparagraph (A),
the Director shall--
(i) make a determination of the period of any patent
term adjustment under this subsection, and shall transmit a
notice of that determination with the written notice of
allowance of the application under section 151; and
(ii) provide the applicant one opportunity to request
reconsideration of any patent term adjustment determination
made by the Director.
(C) The Director shall reinstate all or part of the
cumulative period of time of an adjustment under paragraph
(2)(C) if the applicant, prior to the issuance of the patent,
makes a showing that, in spite of all due care, the applicant
was unable to respond within the 3-month period, but in no case
shall more than three additional months for each such response
beyond the original 3-month period be reinstated.
(D) The Director shall proceed to grant the patent after
completion of the Director's determination of a patent term
adjustment under the procedures established under this
subsection, notwithstanding any appeal taken by the applicant of
such determination.
(4) Appeal of patent term adjustment determination.--
(A) An applicant dissatisfied with a determination made by
the Director under paragraph (3) shall have remedy by a civil
action against the Director filed in the United States District
Court for the District of Columbia within 180 days after the
grant of the patent. Chapter 7 of title 5 shall apply to such
action. Any final judgment resulting in a change to the period
of adjustment of the patent term shall be served on the
Director, and the Director shall thereafter alter the term of
the patent to reflect such change.
(B) The determination of a patent term adjustment under this
subsection shall not be subject to appeal or challenge by a
third party prior to the grant of the patent.
(c) Continuation.--
(1) Determination.--The term of a patent that is in force on or
that results from an application filed before the date that is 6
months after the date of the enactment of the Uruguay Round
Agreements Act shall be the greater of the 20-year term as provided
in subsection (a), or 17 years from grant, subject to any terminal
disclaimers.
(2) Remedies.--The remedies of sections 283, 284, and 285 of
this title shall not apply to acts which--
(A) were commenced or for which substantial investment was
made before the date that is 6 months after the date of the
enactment of the Uruguay Round Agreements Act; and
(B) became infringing by reason of paragraph (1).
(3) Remuneration.--The acts referred to in paragraph (2) may be
continued only upon the payment of an equitable remuneration to the
patentee that is determined in an action brought under chapter 28
and chapter 29 (other than those provisions excluded by paragraph
(2)) of this title.
(d) Provisional Rights.--
(1) In general.--In addition to other rights provided by this
section, a patent shall include the right to obtain a reasonable
royalty from any person who, during the period beginning on the date
of publication of the application for such patent under section
122(b), or in the case of an international application filed under
the treaty defined in section 351(a) designating the United States
under Article 21(2)(a) of such treaty, the date of publication of
the application, and ending on the date the patent is issued--
(A)(i) makes, uses, offers for sale, or sells in the United
States the invention as claimed in the published patent
application or imports such an invention into the United States;
or
(ii) if the invention as claimed in the published patent
application is a process, uses, offers for sale, or sells in the
United States or imports into the United States products made by
that process as claimed in the published patent application; and
(B) had actual notice of the published patent application
and, in a case in which the right arising under this paragraph
is based upon an international application designating the
United States that is published in a language other than
English, had a translation of the international application into
the English language.
(2) Right based on substantially identical inventions.--The
right under paragraph (1) to obtain a reasonable royalty shall not
be available under this subsection unless the invention as claimed
in the patent is substantially identical to the invention as claimed
in the published patent application.
(3) Time limitation on obtaining a reasonable royalty.--The
right under paragraph (1) to obtain a reasonable royalty shall be
available only in an action brought not later than 6 years after the
patent is issued. The right under paragraph (1) to obtain a
reasonable royalty shall not be affected by the duration of the
period described in paragraph (1).
(4) Requirements for international applications.--
(A) Effective date.--The right under paragraph (1) to obtain
a reasonable royalty based upon the publication under the treaty
defined in section 351(a) of an international application
designating the United States shall commence on the date of
publication under the treaty of the international application,
or, if the publication under the treaty of the international
application is in a language other than English, on the date on
which the Patent and Trademark Office receives a translation of
the publication in the English language.
(B) Copies.--The Director may require the applicant to
provide a copy of the international application and a
translation thereof.
(July 19, 1952, ch. 950, 66 Stat. 804; Pub. L. 89-83, Sec. 5, July 24,
1965, 79 Stat. 261; Pub. L. 96-517, Sec. 4, Dec. 12, 1980, 94 Stat.
3018; Pub. L. 100-418, title IX, Sec. 9002, Aug. 23, 1988, 102 Stat.
1563; Pub. L. 103-465, title V, Sec. 532(a)(1), Dec. 8, 1994, 108 Stat.
4983; Pub. L. 104-295, Sec. 20(e)(1), Oct. 11, 1996, 110 Stat. 3529;
Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Secs. 4402(a),
4504], Nov. 29, 1999, 113 Stat. 1536, 1501A-557, 1501A-564; Pub. L. 107-
273, div. C, title III, Secs. 13204, 13206(a)(8), Nov. 2, 2002, 116
Stat. 1902, 1904.)
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., Sec. 40 (R.S. 4884, amended May
23, 1930, ch. 312, Sec. 1, 46 Stat. 376).
The reference to plants is omitted for inclusion in another section
and the reference to the title is shortened since the title is of no
legal significance.
The wording of the granting clause is changed to ``the right to
exclude others from making, using, or selling'', following language used
by the Supreme Court, to render the meaning clearer.
``United States'' is defined in section 100.
References in Text
The date of the enactment of the Uruguay Round Agreements Act,
referred to in subsec. (c)(1), (2)(A), is the date of enactment of Pub.
L. 103-465, which was approved Dec. 8, 1994.
Amendments
2002--Subsec. (b)(4)(A). Pub. L. 107-273, Sec. 13206(a)(8), struck
out ``, United States Code,'' after ``title 5''.
Subsec. (d)(4)(A). Pub. L. 107-273, Sec. 13204, amended subsec.
(d)(4)(A) as in effect on Nov. 29, 2000, by substituting ``the date of''
for ``the date on which the Patent and Trademark Office receives a copy
of the'' and ``publication in the English language'' for ``international
application in the English language''.
1999--Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec. 4504(1)],
inserted ``; provisional rights'' after ``patent'' in section catchline.
Subsec. (b). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4402(a)], amended heading and text of subsec. (b) generally. Prior
to amendment, text provided for interference delay or secrecy orders,
extensions for appellate review, a limitations period, and a maximum
period of 5 years duration for all extensions.
Subsec. (d). Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4504(2)], added subsec. (d).
1996--Subsec. (c)(2). Pub. L. 104-295 substituted ``acts'' for
``Acts'' in introductory provisions.
1994--Pub. L. 103-465 amended section catchline and text generally.
Prior to amendment, text read as follows: ``Every patent shall contain a
short title of the invention and a grant to the patentee, his heirs or
assigns, for the term of seventeen years, subject to the payment of fees
as provided for in this title, of the right to exclude others from
making, using, or selling the invention throughout the United States
and, if the invention is a process, of the right to exclude others from
using or selling throughout the United States, or importing into the
United States, products made by that process,, referring to the
specification for the particulars thereof. A copy of the specification
and drawings shall be annexed to the patent and be a part thereof.''
1988--Pub. L. 100-418 inserted ``and, if the invention is a process,
of the right to exclude others from using or selling throughout the
United States, or importing into the United States, products made by
that process,'' after ``United States''.
1980--Pub. L. 96-517 substituted ``payment of fees'' for ``payment
of issue fees''.
1965--Pub. L. 89-83 added ``subject to the payment of issue fees as
provided for in this title''.
Effective Date of 1999 Amendment
Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec. 4405(a)],
Nov. 29, 1999, 113 Stat. 1536, 1501A-560, provided that: ``The
amendments made by sections 4402 and 4404 [amending this section,
sections 156 and 282 of this title, and section 1295 of Title 28,
Judiciary and Judicial Procedure] shall take effect on the date that is
6 months after the date of the enactment of this Act [Nov. 29, 1999]
and, except for a design patent application filed under chapter 16 of
title 35, United States Code, shall apply to any application filed on or
after the date that is 6 months after the date of the enactment of this
Act.''
Amendment by section 1000(a)(9) [title IV, Sec. 4504] of Pub. L.
106-113 effective Nov. 29, 2000, applicable only to applications
(including international applications designating the United States)
filed on or after that date, and additionally applicable to any pending
application filed before Nov. 29, 2000, if such pending application is
published pursuant to a request of the applicant under such procedures
as may be established by the Director, 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.
Effective Date of 1994 Amendment
Section 534 of title V of Pub. L. 103-465 provided that:
``(a) In General.--Subject to subsection (b), the amendments made by
this subtitle [subtitle C (Secs. 531-534) of title V of Pub. L. 103-465,
amending this section and sections 41, 104, 111, 119, 156, 172, 173,
252, 262, 271, 272, 287, 292, 295, 307, 365, and 373 of this title] take
effect on the date that is one year after the date on which the WTO
Agreement enters into force with respect to the United States [Jan. 1,
1995].
``(b) Patent Applications.--
``(1) In general.--Subject to paragraph (2), the amendments made
by section 532 [amending this section and sections 41, 111, 119,
156, 172, 173, 365, and 373 of this title] take effect on the date
that is 6 months after the date of the enactment of this Act [Dec.
8, 1994] and shall apply to all patent applications filed in the
United States on or after the effective date.
``(2) Section 154(a)(1).--Section 154(a)(1) of title 35, United
States Code, as amended by section 532(a)(1) of this Act, shall take
effect on the effective date described in subsection (a).
``(3) Earliest filing.--The term of a patent granted on an
application that is filed on or after the effective date described
in subsection (a) and that contains a specific reference to an
earlier application filed under the provisions of section 120, 121,
or 365(c) of title 35, United States Code, shall be measured from
the filing date of the earliest filed application.''
Effective Date of 1988 Amendment
Amendment by Pub. L. 100-418 effective 6 months after Aug. 23, 1988,
and, subject to enumerated exceptions, applicable only with respect to
products made or imported after such effective date, see section 9006 of
Pub. L. 100-418, set out as a note under section 271 of this title.
Effective Date of 1980 Amendment
Amendment by Pub. L. 96-517 effective Dec. 12, 1980, see section
8(a) of Pub. L. 96-517, set out as a note under section 41 of this
title.
Effective Date of 1965 Amendment
Amendment by Pub. L. 89-83 effective three months after July 24,
1965, see section 7(a) of Pub. L. 89-83, set out as a note under section
41 of this title.
Regulations
Section 532(a)(2) of Pub. L. 103-465 authorized the Commissioner of
Patents and Trademarks to prescribe regulations for further limited
reexamination of applications pending 2 years or longer and for
examination of more than 1 independent and distinct invention in
applications pending 3 years or longer, as of the effective date of
section 154(a)(2) of this title, and to establish appropriate related
fees.
Section Referred to in Other Sections
This section is referred to in sections 103, 122, 155, 155A, 156,
282, 284, 374 of this title; title 28 section 1295.
