§ 273. — Defense to infringement based on earlier inventor.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC273]
TITLE 35--PATENTS
PART III--PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 28--INFRINGEMENT OF PATENTS
Sec. 273. Defense to infringement based on earlier inventor
(a) Definitions.--For purposes of this section--
(1) the terms ``commercially used'' and ``commercial use'' mean
use of a method in the United States, so long as such use is in
connection with an internal commercial use or an actual arm's-length
sale or other arm's-length commercial transfer of a useful end
result, whether or not the subject matter at issue is accessible to
or otherwise known to the public, except that the subject matter for
which commercial marketing or use is subject to a premarketing
regulatory review period during which the safety or efficacy of the
subject matter is established, including any period specified in
section 156(g), shall be deemed ``commercially used'' and in
``commercial use'' during such regulatory review period;
(2) in the case of activities performed by a nonprofit research
laboratory, or nonprofit entity such as a university, research
center, or hospital, a use for which the public is the intended
beneficiary shall be considered to be a use described in paragraph
(1), except that the use--
(A) may be asserted as a defense under this section only for
continued use by and in the laboratory or nonprofit entity; and
(B) may not be asserted as a defense with respect to any
subsequent commercialization or use outside such laboratory or
nonprofit entity;
(3) the term ``method'' means a method of doing or conducting
business; and
(4) the ``effective filing date'' of a patent is the earlier of
the actual filing date of the application for the patent or the
filing date of any earlier United States, foreign, or international
application to which the subject matter at issue is entitled under
section 119, 120, or 365 of this title.
(b) Defense to Infringement.--
(1) In general.--It shall be a defense to an action for
infringement under section 271 of this title with respect to any
subject matter that would otherwise infringe one or more claims for
a method in the patent being asserted against a person, if such
person had, acting in good faith, actually reduced the subject
matter to practice at least 1 year before the effective filing date
of such patent, and commercially used the subject matter before the
effective filing date of such patent.
(2) Exhaustion of right.--The sale or other disposition of a
useful end product produced by a patented method, by a person
entitled to assert a defense under this section with respect to that
useful end result shall exhaust the patent owner's rights under the
patent to the extent such rights would have been exhausted had such
sale or other disposition been made by the patent owner.
(3) Limitations and qualifications of defense.--The defense to
infringement under this section is subject to the following:
(A) Patent.--A person may not assert the defense under this
section unless the invention for which the defense is asserted
is for a method.
(B) Derivation.--A person may not assert the defense under
this section if the subject matter on which the defense is based
was derived from the patentee or persons in privity with the
patentee.
(C) Not a general license.--The defense asserted by a person
under this section is not a general license under all claims of
the patent at issue, but extends only to the specific subject
matter claimed in the patent with respect to which the person
can assert a defense under this chapter, except that the defense
shall also extend to variations in the quantity or volume of use
of the claimed subject matter, and to improvements in the
claimed subject matter that do not infringe additional
specifically claimed subject matter of the patent.
(4) Burden of proof.--A person asserting the defense under this
section shall have the burden of establishing the defense by clear
and convincing evidence.
(5) Abandonment of use.--A person who has abandoned commercial
use of subject matter may not rely on activities performed before
the date of such abandonment in establishing a defense under this
section with respect to actions taken after the date of such
abandonment.
(6) Personal defense.--The defense under this section may be
asserted only by the person who performed the acts necessary to
establish the defense and, except for any transfer to the patent
owner, the right to assert the defense shall not be licensed or
assigned or transferred to another person except as an ancillary and
subordinate part of a good faith assignment or transfer for other
reasons of the entire enterprise or line of business to which the
defense relates.
(7) Limitation on sites.--A defense under this section, when
acquired as part of a good faith assignment or transfer of an entire
enterprise or line of business to which the defense relates, may
only be asserted for uses at sites where the subject matter that
would otherwise infringe one or more of the claims is in use before
the later of the effective filing date of the patent or the date of
the assignment or transfer of such enterprise or line of business.
(8) Unsuccessful assertion of defense.--If the defense under
this section is pleaded by a person who is found to infringe the
patent and who subsequently fails to demonstrate a reasonable basis
for asserting the defense, the court shall find the case exceptional
for the purpose of awarding attorney fees under section 285 of this
title.
(9) Invalidity.--A patent shall not be deemed to be invalid
under section 102 or 103 of this title solely because a defense is
raised or established under this section.
(Added Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV,
Sec. 4302(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-555.)
Effective Date
Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, subtitle C,
Sec. 4303], Nov. 29, 1999, 113 Stat. 1536, 1501A-557, provided that:
``This subtitle [enacting this section and provisions set out as a note
under section 1 of this title] and the amendments made by this subtitle
shall take effect on the date of the enactment of this Act [Nov. 29,
1999], but shall not apply to any action for infringement that is
pending on such date of enactment or with respect to any subject matter
for which an adjudication of infringement, including a consent judgment,
has been made before such date of enactment.''
