§ 294. — Voluntary arbitration.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC294]
TITLE 35--PATENTS
PART III--PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 29--REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS
Sec. 294. Voluntary arbitration
(a) A contract involving a patent or any right under a patent may
contain a provision requiring arbitration of any dispute relating to
patent validity or infringement arising under the contract. In the
absence of such a provision, the parties to an existing patent validity
or infringement dispute may agree in writing to settle such dispute by
arbitration. Any such provision or agreement shall be valid,
irrevocable, and enforceable, except for any grounds that exist at law
or in equity for revocation of a contract.
(b) Arbitration of such disputes, awards by arbitrators and
confirmation of awards shall be governed by title 9, to the extent such
title is not inconsistent with this section. In any such arbitration
proceeding, the defenses provided for under section 282 of this title
shall be considered by the arbitrator if raised by any party to the
proceeding.
(c) An award by an arbitrator shall be final and binding between the
parties to the arbitration but shall have no force or effect on any
other person. The parties to an arbitration may agree that in the event
a patent which is the subject matter of an award is subsequently
determined to be invalid or unenforceable in a judgment rendered by a
court of competent jurisdiction from which no appeal can or has been
taken, such award may be modified by any court of competent jurisdiction
upon application by any party to the arbitration. Any such modification
shall govern the rights and obligations between such parties from the
date of such modification.
(d) When an award is made by an arbitrator, the patentee, his
assignee or licensee shall give notice thereof in writing to the
Director. There shall be a separate notice prepared for each patent
involved in such proceeding. Such notice shall set forth the names and
addresses of the parties, the name of the inventor, and the name of the
patent owner, shall designate the number of the patent, and shall
contain a copy of the award. If an award is modified by a court, the
party requesting such modification shall give notice of such
modification to the Director. The Director shall, upon receipt of either
notice, enter the same in the record of the prosecution of such patent.
If the required notice is not filed with the Director, any party to the
proceeding may provide such notice to the Director.
(e) The award shall be unenforceable until the notice required by
subsection (d) is received by the Director.
(Added Pub. L. 97-247, Sec. 17(b)(1), Aug. 27, 1982, 96 Stat. 322;
amended 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(a)(19), (b)(1)(B), Nov. 2, 2002,
116 Stat. 1905, 1906.)
Amendments
2002--Subsec. (b). Pub. L. 107-273, Sec. 13206(a)(19)(A), struck out
``United States Code,'' after ``title 9,''.
Subsec. (c). Pub. L. 107-273, Sec. 13206(a)(19)(B), substituted
``rendered by a court of'' for ``rendered by a court to''.
Subsecs. (d), (e). Pub. L. 107-273, Sec. 13206(b)(1)(B), made
technical correction to directory language of Pub. L. 106-113. See 1999
Amendment note below.
1999--Subsecs. (d), (e). Pub. L. 106-113, as amended by Pub. L. 107-
273, Sec. 13206(b)(1)(B), substituted ``Director'' for ``Commissioner''
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
Section 17(c) of Pub. L. 97-247 provided that: ``Sections 5, 6, 8
through 12, and 17(b) of this Act [enacting this section and amending
sections 21, 111, 116, and 256 of this title and sections 1058, 1063,
1064, 1065, and 1066 of Title 15, Commerce and Trade] shall take effect
six months after enactment [Aug. 27, 1982].''
