§ 135. Derivation proceedings

Legislative history

Reconstructed from this section’s Code source credit and amendment notes, resolved against the local Statutes at Large. Editorial notes are evidence, not the law that made the change.

1. 1952

   July 19, 1952, ch. 950, 66 Stat. 801 · 66 Stat. 801

   Enacted · 35 U.S.C. § 135

   July 19, 1952, ch. 950, 66 Stat. 801

   Source evidence

   Code source credit
   July 19, 1952, ch. 950, 66 Stat. 801

2. 1962

   Pub. L. 87–831 · 76 Stat. 958

   1. Amended · 35 U.S.C. § 135

      Pub. L. 87–831 designated first and second pars. as subsecs. (a) and (b)

   2. Added · 35 U.S.C. § 135

      Pub. L. 87–831 added subsec. (c)

   Source evidence

   Code amendment note
   Pub. L. 87–831 designated first and second pars. as subsecs. (a) and (b) and added subsec. (c).

3. 1975

   Pub. L. 93–596 § 1 · 88 Stat. 1949

   Substituted · 35 U.S.C. § 135(a); 35 U.S.C. § 135(c)

   Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office” wherever appearing

   Source evidence

   Code amendment note
   Subsecs. (a), (c). Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office” wherever appearing.

   Enacted provision · exact public law section
   Section 1. The Trademark Act of 1946, 60 Stat. 427, as amended (15 U.S.C. sec. 1051 et seq. (1970)), and title 35 of the United States Code, entitled “Patents”, are amended by striking out each time they 35 USC 1 et seq. appear “Patent Office” and “Commissioner of Patents” and inserting in lieu thereof “Patent and Trademark Office” and “Commissioner of Patents and Trademarks”, respectively.

4. 1984

   Patent Law Amendments Act of 1984

   Pub. L. 98–622 § 202 · 98 Stat. 3383

   1. Amended · 35 U.S.C. § 135(a)

      Pub. L. 98–622, § 202, amended subsec. (a) generally

   2. Substituted · 35 U.S.C. § 135(a)

      Pub. L. 98–622, § 202, substituting “, an interference may be declared and the Commissioner shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be” for “he shall give notice thereof to the applicants, or applicant and patentee, as the case may be”

   3. Substituted · 35 U.S.C. § 135(a)

      Pub. L. 98–622, § 202, substituting provisions vesting jurisdiction for determining questions of interference in the Board of Patent Appeals and Interferences for provisions vesting such jurisdiction in a board of patent interferences

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 98–622, § 202, amended subsec. (a) generally, substituting “, an interference may be declared and the Commissioner shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be” for “he shall give notice thereof to the applicants, or applicant and patentee, as the case may be” and substituting provisions vesting jurisdiction for determining questions of interference in the Board of Patent Appeals and Interferences for provisions vesting such jurisdiction in a board of patent interferences.

   Enacted provision · exact public law section
   Sec. 202. interferences Section 135(a) of title 35, United States Code, is amended to read as follows: “(a) Whenever an application is made for a patent which, in the opinion of the Commissioner, would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Commissioner shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be. The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability. Any final decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims involved, and the Commissioner may issue a patent to the applicant who is adjudged the prior inventor. A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.”.

5. 1984

   Patent Law Amendments Act of 1984

   Pub. L. 98–622 § 105 · 98 Stat. 3383

   Added · 35 U.S.C. § 135(d)

   Pub. L. 98–622, § 105, added subsec. (d)

   Source evidence

   Code amendment note
   Subsec. (d). Pub. L. 98–622, § 105, added subsec. (d).

   Enacted provision · exact public law section
   Sec. 105. arbitration of interferences Section 135 of title 35, United States Code, is amended by adding at the end thereof the following new subsection: “(d) Parties to a patent interference, within such time as may be specified by the Commissioner by regulation, may determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9 to the extent such title is not 9 USC 1 et seq. inconsistent with this section. The parties shall give notice of any arbitration award to the Commissioner, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall preclude the Commissioner from determining patentability of the invention involved in the interference.”.

6. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIV)(s4732)(a)(10)(A) · 113 Stat. 1501

   1. Amended · 35 U.S.C. § 135(a)

      Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273

   2. Substituted · 35 U.S.C. § 135(a)

      Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as substituted “Director” for “Commissioner” wherever appearing

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, substituted “Director” for “Commissioner” wherever appearing.

7. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIV)(s4507)(11) · 113 Stat. 1501

   1. Amended · 35 U.S.C. § 135(b)

      Pub. L. 106–113, § 1000(a)(9) [title IV, § 4507(11)], designated existing provisions as par. (1)

   2. Added · 35 U.S.C. § 135(b)

      Pub. L. 106–113, § 1000(a)(9) [title IV, § 4507(11)], added par. (2)

   Source evidence

   Code amendment note
   Subsec. (b). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4507(11)], designated existing provisions as par. (1) and added par. (2).

8. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 § 1000(a)(9)(tIV)(s4732)(a)(10)(A) · 113 Stat. 1501

   1. Amended · 35 U.S.C. § 135(c); 35 U.S.C. § 135(d)

      Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273

   2. Substituted · 35 U.S.C. § 135(c); 35 U.S.C. § 135(d)

      Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as substituted “Director” for “Commissioner” wherever appearing

   Source evidence

   Code amendment note
   Subsecs. (c), (d). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, substituted “Director” for “Commissioner” wherever appearing.

9. 2002

   Intellectual Property and High Technology Technical Amendments Act of 2002

   Pub. L. 107–273 div. C title III § 13206(b)(1)(B) · 116 Stat. 1758

   Changed · 35 U.S.C. § 135(a); 35 U.S.C. § 135(c); 35 U.S.C. § 135(d)

   Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment notes below

   Source evidence

   Code amendment note
   Subsecs. (a), (c), (d). Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment notes below.

   Enacted provision · exact public law section
   (B) in paragraph (10)(A), by inserting after “title 35, United States Code,” the following: “other than sections 1 through 6 (as amended by chapter 1 of this subtitle),”.

10. 2011

    Pub. L. 112–29 § 3(i) · 125 Stat. 289

    Amended · 35 U.S.C. § 135

    Pub. L. 112–29, § 3(i), amended section generally. Prior to amendment, section related to interferences

    Source evidence

    Code amendment note
    Pub. L. 112–29, § 3(i), amended section generally. Prior to amendment, section related to interferences.

    Enacted provision · exact public law section
    (i) Derivation Proceedings.— Section 135 of title 35, United States Code, is amended to read as follows: “§ 135. Derivation proceedings “(a) Institution of Proceeding.— An applicant for patent may file a petition to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. Time period. Any such petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention, shall be made under oath, and shall be supported by substantial evidence. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding. The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable. “(b) Determination by Patent Trial and Appeal Board.— In a derivation proceeding instituted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inventor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. In appropriate circumstances, the Patent Trial and Appeal Board may correct the naming of the inventor in any application or patent at issue. Regulations. The Director shall prescribe regulations setting forth standards for the conduct of derivation proceedings, including requiring parties to provide sufficient evidence to prove and rebut a claim of derivation. “(c) Deferral of Decision.— The Time period. Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a derivation proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant. “(d) Effect of Final Decision.— The final decision of the Patent Trial and Appeal Board, if adverse to claims in an application for patent, shall constitute the final refusal by the Office on those claims. The final decision of the Patent Trial and Appeal Board, if adverse to claims in a patent, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of those claims, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation. “(e) Settlement.— Parties to a proceeding instituted under subsection (a) may terminate the proceeding by filing a written statement reflecting the agreement of the parties as to the correct inventors of the claimed invention in dispute. Unless the Patent Trial and Appeal Board finds the agreement to be inconsistent with the evidence of record, if any, it shall take action consistent with the agreement. Any written settlement or understanding of the parties shall be filed with the Director. Confidentiality. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents or applications, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause. “(f) Arbitration.— Parties Regulations. to a proceeding instituted under subsection (a) may, within such time as may be specified by the Director by regulation, determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9, to the extent such title is not inconsistent with this section. Notice. The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall preclude the Director from determining the patentability of the claimed inventions involved in the proceeding.” .

    Effective date note
    Pub. L. 112–274, § 1(e)(2), Jan. 14, 2013, 126 Stat. 2456, provided that: “The amendment made by paragraph (1) [amending this section] shall be effective as if included in the amendment made by section 3(i) of the Leahy-Smith America Invents Act [Pub. L. 112–29].” Pub. L. 112–274, § 1(k)(2), Jan. 14, 2013, 126 Stat. 2458, provided that: “The amendment made by paragraph (1) [amending this section] shall be effective as if included in the amendment made by section 3(i) of the Leahy-Smith America Invents Act [Pub. L. 112–29].”

11. 2011

    Pub. L. 112–29 § 20(j) · 125 Stat. 289

    Struck · 35 U.S.C. § 135(b)(2)

    Pub. L. 112–29, § 20(j), struck out “of this title” after “122(b)”

    Source evidence

    Code amendment note
    Subsec. (b)(2). Pub. L. 112–29, § 20(j), struck out “of this title” after “122(b)”.

    Enacted provision · exact public law section
    (j) Unnecessary References.— (1) In general.— Title 35, 35 USC 2, 12, 32, 41, 103, 104, 111, 119–123, 132, 135, 143, 145, 146, 154, 157, 162, 172, 182–186, 207, 210, 257, 267. United States Code, is amended by striking “of this title” each place that term appears. (2) Exception.— The amendment made by paragraph (1) shall not apply to the use of such term in the following sections of title 35, United States Code: (A) Section 1(c). (B) Section 101. (C) Subsections (a) and (b) of section 105. (D) The first instance of the use of such term in section 111(b)(8). (E) Section 161. (F) Section 164. (G) Section 171. (H) Section 251(c), as so designated by this section. (I) Section 261. (J) Subsections (g) and (h) of section 271. (K) Section 287(b)(1). (L) Section 289. (M) The first instance of the use of such term in section 375(a).

    Effective date note
    Pub. L. 112–274, § 1(e)(2), Jan. 14, 2013, 126 Stat. 2456, provided that: “The amendment made by paragraph (1) [amending this section] shall be effective as if included in the amendment made by section 3(i) of the Leahy-Smith America Invents Act [Pub. L. 112–29].” Pub. L. 112–274, § 1(k)(2), Jan. 14, 2013, 126 Stat. 2458, provided that: “The amendment made by paragraph (1) [amending this section] shall be effective as if included in the amendment made by section 3(i) of the Leahy-Smith America Invents Act [Pub. L. 112–29].”

12. 2013

    Pub. L. 112–274 § 1(k)(1) · 126 Stat. 2456

    Amended · 35 U.S.C. § 135(a)

    Pub. L. 112–274, § 1(k)(1), amended subsec. (a) generally. Prior to amendment, text read as follows: “An applicant for patent may file a petition to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. Any such petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention, shall be made under oath, and shall be supported by substantial evidence. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding. The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable.”

    Source evidence

    Code amendment note
    Subsec. (a). Pub. L. 112–274, § 1(k)(1), amended subsec. (a) generally. Prior to amendment, text read as follows: “An applicant for patent may file a petition to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without authorization, the earlier application claiming such invention was filed. Any such petition may be filed only within the 1-year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention, shall be made under oath, and shall be supported by substantial evidence. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding. The determination by the Director whether to institute a derivation proceeding shall be final and nonappealable.”

    Enacted provision · exact public law section
    (1) In general.— Section 135(a) of title 35, United States Code, as amended by section 3(i) of the Leahy-Smith America Invents Act, is amended to read as follows: “(a) Institution of Proceeding.— “(1) In general.— An applicant for patent may file a petition with respect to an invention to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an individual named in an earlier application as the inventor or a joint inventor derived such invention from an individual named in the petitioner’s application as the inventor or a joint inventor and, without authorization, the earlier application claiming such invention was filed. Whenever the Director determines that a petition filed under this subsection demonstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding. “(2) Time for filing.— A petition under this section with respect to an invention that is the same or substantially the same invention as a claim contained in a patent issued on an earlier application, or contained in an earlier application when published or deemed published under section 122(b), may not be filed unless such petition is filed during the 1-year period following the date on which the patent containing such claim was granted or the earlier application containing such claim was published, whichever is earlier. “(3) Earlier application.— For purposes of this section, an application shall not be deemed to be an earlier application with respect to an invention, relative to another application, unless a claim to the invention was or could have been made in such application having an effective filing date that is earlier than the effective filing date of any claim to the invention that was or could have been made in such other application. “(4) No appeal.— A determination by the Director whether to institute a derivation proceeding under paragraph (1) shall be final and not appealable.” .

    Effective date note
    Pub. L. 112–274, § 1(e)(2), Jan. 14, 2013, 126 Stat. 2456, provided that: “The amendment made by paragraph (1) [amending this section] shall be effective as if included in the amendment made by section 3(i) of the Leahy-Smith America Invents Act [Pub. L. 112–29].” Pub. L. 112–274, § 1(k)(2), Jan. 14, 2013, 126 Stat. 2458, provided that: “The amendment made by paragraph (1) [amending this section] shall be effective as if included in the amendment made by section 3(i) of the Leahy-Smith America Invents Act [Pub. L. 112–29].”

13. 2013

    Pub. L. 112–274 § 1(e)(1) · 126 Stat. 2456

    Substituted · 35 U.S.C. § 135(e)

    Pub. L. 112–274, § 1(e)(1), substituted “correct inventor” for “correct inventors”

    Source evidence

    Code amendment note
    Subsec. (e). Pub. L. 112–274, § 1(e)(1), substituted “correct inventor” for “correct inventors”.

    Enacted provision · exact public law section
    (1) In general.— Section 135(e) of title 35, United States Code, as amended by section 3(i) of the Leahy-Smith America Invents Act, is amended by striking “correct inventors” and inserting “correct inventor”.

    Effective date note
    Pub. L. 112–274, § 1(e)(2), Jan. 14, 2013, 126 Stat. 2456, provided that: “The amendment made by paragraph (1) [amending this section] shall be effective as if included in the amendment made by section 3(i) of the Leahy-Smith America Invents Act [Pub. L. 112–29].” Pub. L. 112–274, § 1(k)(2), Jan. 14, 2013, 126 Stat. 2458, provided that: “The amendment made by paragraph (1) [amending this section] shall be effective as if included in the amendment made by section 3(i) of the Leahy-Smith America Invents Act [Pub. L. 112–29].”

10 of 19 references resolved to an enrolled provision · 9 partial