§ 282. — Presumption of validity; defenses.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC282]
TITLE 35--PATENTS
PART III--PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 29--REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS
Sec. 282. Presumption of validity; defenses
A patent shall be presumed valid. Each claim of a patent (whether in
independent, dependent, or multiple dependent form) shall be presumed
valid independently of the validity of other claims; dependent or
multiple dependent claims shall be presumed valid even though dependent
upon an invalid claim. Notwithstanding the preceding sentence, if a
claim to a composition of matter is held invalid and that claim was the
basis of a determination of nonobviousness under section 103(b)(1), the
process shall no longer be considered nonobvious solely on the basis of
section 103(b)(1). The burden of establishing invalidity of a patent or
any claim thereof shall rest on the party asserting such invalidity.
The following shall be defenses in any action involving the validity
or infringement of a patent and shall be pleaded:
(1) Noninfringement, absence of liability for infringement or
unenforceability,
(2) Invalidity of the patent or any claim in suit on any ground
specified in part II of this title as a condition for patentability,
(3) Invalidity of the patent or any claim in suit for failure to
comply with any requirement of sections 112 or 251 of this title,
(4) Any other fact or act made a defense by this title.
In actions involving the validity or infringement of a patent the
party asserting invalidity or noninfringement shall give notice in the
pleadings or otherwise in writing to the adverse party at least thirty
days before the trial, of the country, number, date, and name of the
patentee of any patent, the title, date, and page numbers of any
publication to be relied upon as anticipation of the patent in suit or,
except in actions in the United States Court of Federal Claims, as
showing the state of the art, and the name and address of any person who
may be relied upon as the prior inventor or as having prior knowledge of
or as having previously used or offered for sale the invention of the
patent in suit. In the absence of such notice proof of the said matters
may not be made at the trial except on such terms as the court requires.
Invalidity of the extension of a patent term or any portion thereof
under section 154(b) or 156 of this title because of the material
failure--
(1) by the applicant for the extension, or
(2) by the Director,
to comply with the requirements of such section shall be a defense in
any action involving the infringement of a patent during the period of
the extension of its term and shall be pleaded. A due diligence
determination under section 156(d)(2) is not subject to review in such
an action.
(July 19, 1952, ch. 950, 66 Stat. 812; Pub. L. 89-83, Sec. 10, July 24,
1965, 79 Stat. 261; Pub. L. 94-131, Sec. 10, Nov. 14, 1975, 89 Stat.
692; Pub. L. 97-164, title I, Sec. 161(7), Apr. 2, 1982, 96 Stat. 49;
Pub. L. 98-417, title II, Sec. 203, Sept. 24, 1984, 98 Stat. 1603; Pub.
L. 102-572, title IX, Sec. 902(b)(1), Oct. 29, 1992, 106 Stat. 4516;
Pub. L. 104-41, Sec. 2, Nov. 1, 1995, 109 Stat. 352; Pub. L. 106-113,
div. B, Sec. 1000(a)(9) [title IV, Secs. 4402(b)(1), 4732(a)(10)(A)],
Nov. 29, 1999, 113 Stat. 1536, 1501A-560, 1501A-582; Pub. L. 107-273,
div. C, title III, Sec. 13206(b)(1)(B), (4), Nov. 2, 2002, 116 Stat.
1906.)
Historical and Revision Notes
Derived from Title 35, U.S.C., 1946 ed., Sec. 69 (R.S. 4920, amended
(1) Mar. 3, 1897, ch. 391, Sec. 2, 29 Stat. 692, (2) Aug. 5, 1939, ch.
450, Sec. 1, 53 Stat. 1212).
The first paragraph declares the existing presumption of validity of
patents.
The five defenses named in R.S. 4920 are omitted and replaced by a
broader paragraph specifying defenses in general terms.
The third paragraph, relating to notice of prior patents,
publications and uses, is based on part of the last paragraph of R.S.
4920 which was superseded by the Federal Rules of Civil Procedure but
which is reinstated with modifications.
Amendments
2002--Third par. Pub. L. 107-273, Sec. 13206(b)(4), made technical
correction to directory language of Pub. L. 106-113, Sec. 1000(a)(9)
[title IV, Sec. 4402(b)(1)]. See 1999 Amendment note below.
Pub. L. 107-273, Sec. 13206(b)(1)(B), 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 note below.
1999--Third par. Pub. L. 106-113, Sec. 1000(a)(9) [title IV,
Sec. 4732(a)(10)(A)], as amended by Pub. L. 107-273,
Sec. 13206(b)(1)(B), substituted ``(2) by the Director,'' for ``(2) by
the Commissioner,''.
Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec. 4402(b)(1)], as
amended by Pub. L. 107-273, Sec. 13206(b)(4), substituted ``154(b) or
156 of this title'' for ``156 of this title''.
1995--First par. Pub. L. 104-41 inserted after second sentence
``Notwithstanding the preceding sentence, if a claim to a composition of
matter is held invalid and that claim was the basis of a determination
of nonobviousness under section 103(b)(1), the process shall no longer
be considered nonobvious solely on the basis of section 103(b)(1).''
1992--Third par. Pub. L. 102-572 substituted ``United States Court
of Federal Claims'' for ``United States Claims Court''.
1984--Pub. L. 98-417 inserted provision at end that the invalidity
of the extension of a patent term or any portion thereof under section
156 of this title because of the material failure by the applicant for
the extension, or by the Commissioner, to comply with the requirements
of such section shall be a defense in any action involving the
infringement of a patent during the period of the extension of its term
and shall be pleaded, and that a due diligence determination under
section 156(d)(2) is not subject to review in such an action.
1982--Third par. Pub. L. 97-164 substituted ``Claims Court'' for
``Court of Claims''.
1975--First par. Pub. L. 94-131 made presumption of validity
applicable to claim of a patent in multiple dependent form and multiple
dependent claims and substituted ``asserting such invalidity'' for
``asserting it''.
1965--Pub. L. 89-83 required each claim of a patent (whether in
independent or dependent form) to be presumed valid independently of the
validity of other claims and required dependent claims to be presumed
valid even though dependent upon an invalid claim.
Effective Date of 1999 Amendment
Amendment by section 1000(a)(9) [title IV, Sec. 4402(b)(1)] of Pub.
L. 106-113 effective on date that is 6 months after Nov. 29, 1999, and,
except for design patent application filed under chapter 16 of this
title, applicable to any application filed on or after such date, see
section 1000(a)(9) [title IV, Sec. 4405(a)] of Pub. L. 106-113, set out
as a note under section 154 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 1992 Amendment
Amendment by Pub. L. 102-572 effective Oct. 29, 1992, see section
911 of Pub. L. 102-572, set out as a note under section 171 of Title 28,
Judiciary and Judicial Procedure.
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. 94-131 effective Jan. 24, 1978, and applicable
on and after that date to patent applications filed in the United States
and to international applications, where applicable, see section 11 of
Pub. L. 94-131, set out as an Effective Date note under section 351 of
this title.
Effective Date of 1965 Amendment
Amendment by Pub. L. 89-83 effective 3 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.
Section Referred to in Other Sections
This section is referred to in sections 157, 294 of this title.
