§ 104. — Invention made abroad.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC104]
TITLE 35--PATENTS
PART II--PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS
CHAPTER 10--PATENTABILITY OF INVENTIONS
Sec. 104. Invention made abroad
(a) In General.--
(1) Proceedings.--In proceedings in the Patent and Trademark
Office, in the courts, and before any other competent authority, an
applicant for a patent, or a patentee, may not establish a date of
invention by reference to knowledge or use thereof, or other
activity with respect thereto, in a foreign country other than a
NAFTA country or a WTO member country, except as provided in
sections 119 and 365 of this title.
(2) Rights.--If an invention was made by a person, civil or
military--
(A) while domiciled in the United States, and serving in any
other country in connection with operations by or on behalf of
the United States,
(B) while domiciled in a NAFTA country and serving in
another country in connection with operations by or on behalf of
that NAFTA country, or
(C) while domiciled in a WTO member country and serving in
another country in connection with operations by or on behalf of
that WTO member country,
that person shall be entitled to the same rights of priority in the
United States with respect to such invention as if such invention
had been made in the United States, that NAFTA country, or that WTO
member country, as the case may be.
(3) Use of information.--To the extent that any information in a
NAFTA country or a WTO member country concerning knowledge, use, or
other activity relevant to proving or disproving a date of invention
has not been made available for use in a proceeding in the Patent
and Trademark Office, a court, or any other competent authority to
the same extent as such information could be made available in the
United States, the Director, court, or such other authority shall
draw appropriate inferences, or take other action permitted by
statute, rule, or regulation, in favor of the party that requested
the information in the proceeding.
(b) Definitions.--As used in this section--
(1) the term ``NAFTA country'' has the meaning given that term
in section 2(4) of the North American Free Trade Agreement
Implementation Act; and
(2) the term ``WTO member country'' has the meaning given that
term in section 2(10) of the Uruguay Round Agreements Act.
(July 19, 1952, ch. 950, 66 Stat. 798; Pub. L. 93-596, Sec. 1, Jan. 2,
1975, 88 Stat. 1949; Pub. L. 94-131, Sec. 6, Nov. 14, 1975, 89 Stat.
691; Pub. L. 98-622, title IV, Sec. 403(a), Nov. 8, 1984, 98 Stat. 3392;
Pub. L. 103-182, title III, Sec. 331, Dec. 8, 1993, 107 Stat. 2113; Pub.
L. 103-465, title V, Sec. 531(a), Dec. 8, 1994, 108 Stat. 4982; 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(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906.)
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., Sec. 109 (Aug. 8, 1946, ch.
910, 60 Stat. 943).
Language has been changed and the last sentence has been broadened
to refer to persons serving in connection with operations by or on
behalf of the United States, instead of solely in connection with the
prosecution of the war.
References in Text
Section 2(4) of the North American Free Trade Agreement
Implementation Act, referred to in subsec. (b)(1), is classified to
section 3301(4) of Title 19, Customs Duties.
Section 2(10) of the Uruguay Round Agreements Act, referred to in
subsec. (b)(2), is classified to section 3501(10) of Title 19.
Amendments
2002--Subsec. (a)(3). Pub. L. 107-273 made technical correction to
directory language of Pub. L. 106-113. See 1999 Amendment note below.
1999--Subsec. (a)(3). Pub. L. 106-113, as amended by Pub. L. 107-
273, substituted ``Director'' for ``Commissioner''.
1994--Pub. L. 103-465 amended section generally, expanding scope of
section to include WTO member countries along with NAFTA countries and
defining term ``WTO member country''.
1993--Pub. L. 103-182 amended section catchline and text generally.
Prior to amendment, text read as follows: ``In proceedings in the Patent
and Trademark Office and in the courts, an applicant for a patent, or a
patentee, may not establish a date of invention by reference to
knowledge or use thereof, or other activity with respect thereto, in a
foreign country, except as provided in sections 119 and 365 of this
title. Where an invention was made by a person, civil or military, while
domiciled in the United States and serving in a foreign country in
connection with operations by or on behalf of the United States, he
shall be entitled to the same rights of priority with respect to such
invention as if the same had been made in the United States.''
1984--Pub. L. 98-622 substituted ``Patent and Trademark Office'' for
``Patent Office''.
1975--Pub. L. 94-131 inserted in exception provision reference to
section 365 of this title relating to priority of applications having
benefit of filing date of prior applications.
Pub. L. 93-596 substituted ``Patent and Trademark Office'' for
``Patent Office''.
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 1994 Amendment
Section 531(b) of Pub. L. 103-465 provided that:
``(1) In general.--Except as provided in paragraph (2), the
amendment made by this section [amending this section] shall apply to
all patent applications that are filed on or after the date that is 12
months after the date of entry into force of the WTO Agreement with
respect to the United States [Jan. 1, 1995].
``(2) Establishment of date.--An applicant for a patent, or a
patentee, may not establish a date of invention for purposes of title
35, United States Code, that is earlier than 12 months after the date of
entry into force of the WTO Agreement with respect to the United States
by reference to knowledge or use, or other activity, in a WTO member
country, except as provided in sections 119 and 365 of such title.''
Effective Date of 1993 Amendment
Amendment by Pub. L. 103-182 applicable to all patent applications
filed on or after Dec. 8, 1993, provided that applicant for a patent, or
a patentee, may not establish a date of invention by reference to
knowledge or use thereof, or other activity with respect thereto, in
NAFTA country, except as provided in sections 119 and 365 of this title,
that is earlier than Dec. 8, 1993, see section 335(b) of Pub. L. 103-
182, set out as a note under section 1052 of Title 15, Commerce and
Trade.
Effective Date of 1984 Amendment
Amendment by Pub. L. 98-622 effective on Nov. 8, 1984, see section
406(a) of Pub. L. 98-622, set out as a note under section 351 of this
title.
Effective Date of 1975 Amendments
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.
Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4 of
Pub. L. 93-596, set out as a note under section 1111 of Title 15,
Commerce and Trade.
Section Referred to in Other Sections
This section is referred to in sections 11, 102, 119 of this title.
