§ 184. — Filing of application in foreign country.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC184]
TITLE 35--PATENTS
PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 17--SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN
FOREIGN COUNTRY
Sec. 184. Filing of application in foreign country
Except when authorized by a license obtained from the Commissioner
of Patents a person shall not file or cause or authorize to be filed in
any foreign country prior to six months after filing in the United
States an application for patent or for the registration of a utility
model, industrial design, or model in respect of an invention made in
this country. A license shall not be granted with respect to an
invention subject to an order issued by the Commissioner of Patents
pursuant to section 181 of this title without the concurrence of the
head of the departments and the chief officers of the agencies who
caused the order to be issued. The license may be granted retroactively
where an application has been filed abroad through error and without
deceptive intent and the application does not disclose an invention
within the scope of section 181 of this title.
The term ``application'' when used in this chapter includes
applications and any modifications, amendments, or supplements thereto,
or divisions thereof.
The scope of a license shall permit subsequent modifications,
amendments, and supplements containing additional subject matter if the
application upon which the request for the license is based is not, or
was not, required to be made available for inspection under section 181
of this title and if such modifications, amendments, and supplements do
not change the general nature of the invention in a manner which would
require such application to be made available for inspection under such
section 181. In any case in which a license is not, or was not, required
in order to file an application in any foreign country, such subsequent
modifications, amendments, and supplements may be made, without a
license, to the application filed in the foreign country if the United
States application was not required to be made available for inspection
under section 181 and if such modifications, amendments, and supplements
do not, or did not, change the general nature of the invention in a
manner which would require the United States application to have been
made available for inspection under such section 181.
(July 19, 1952, ch. 950, 66 Stat. 807; Pub. L. 100-418, title IX,
Sec. 9101(b)(1), Aug. 23, 1988, 102 Stat. 1567; Pub. L. 106-113, div. B,
Sec. 1000(a)(9) [title IV, Sec. 4732(a)(10)(B)], Nov. 29, 1999, 113
Stat. 1536, 1501A-582.)
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., Sec. 154 (Feb. 1, 1952, ch. 4,
Sec. 4, 66 Stat. 5).
Language is changed.
Amendments
1999--Pub. L. 106-113 substituted ``Commissioner of Patents'' for
``Commissioner'' two places in first par.
1988--Pub. L. 100-418, Sec. 9101(b)(1)(A), substituted ``filed
abroad through error and without deceptive intent'' for ``inadvertently
filed abroad'' in first par.
Pub. L. 100-418, Sec. 9101(b)(1)(B), added third par. relating to
scope of a license.
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 1988 Amendment
Section 9101(d) of Pub. L. 100-418 provided that:
``(1) Subject to paragraphs (2), (3), and (4) of this subsection,
the amendments made by this section [amending sections 184 to 186 of
this title] shall apply to all United States patents granted before, on,
or after the date of enactment of this section [Aug. 23, 1988], to all
applications for United States patents pending on or filed after such
date of enactment, and to all licenses under section 184 granted before,
on, or after the date of enactment of this section.
``(2) The amendments made by this section shall not affect any final
decision made by a court or the Patent and Trademark Office before the
date of enactment of this section [Aug. 23, 1988] with respect to a
patent or application for patent, if no appeal from such decision is
pending and the time for filing an appeal has expired.
``(3) No United States patent granted before the date of enactment
of this section [Aug. 23, 1988] shall abridge or affect the right of any
person or his successors in business who made, purchased, or used, prior
to such date of enactment, anything protected by the patent, to continue
the use of, or to sell to others to be used or sold, the specific thing
so made, purchased, or used, if the patent claims were invalid or
otherwise unenforceable on a ground obviated by this section and the
person made, purchased, or used the specific thing in reasonable
reliance on such invalidity or unenforceability. If a person reasonably
relied on such invalidity or unenforceability, the court before which
such matter is in question may provide for the continued manufacture,
use, or sale of the thing made, purchased, or used as specified, or for
the manufacture, use, or sale of which substantial preparation was made
before the date of enactment of this section, and it may also provide
for the continued practice of any process practiced, or for the practice
of which substantial preparation was made, prior to the date of
enactment of this section, to the extent and under such terms as the
court deems equitable for the protection of investments made or business
commenced before such date of enactment.
``(4) The amendments made by this section shall not affect the right
of any party in any case pending in court on the date of enactment of
this section [Aug. 23, 1988] to have its rights or liabilities--
``(A) under any patent before the court, or
``(B) under any patent granted after such date of enactment
which is related to the patent before the court by deriving priority
rights under section 120 or 121 of title 35, United States Code,
from a patent or an application for patent common to both patents,
determined on the basis of the substantive law in effect before the date
of enactment of this section.''
Promulgation of Regulations
Section 9101(c) of Pub. L. 100-418 directed Commissioner of Patents
and Trademarks to prescribe such regulations as necessary to implement
the amendments made by section 9101 (amending sections 184 to 186 of
this title).
Section Referred to in Other Sections
This section is referred to in sections 185, 186 of this title.
