Title 35 — Patents
Part II · Chapter 13 — Review of Patent and Trademark Office Decisions
§ 145. Civil action to obtain patent
Statutory text
An applicant dissatisfied with the decision of the Patent Trial and Appeal Board in an appeal under section 134(a) may, unless appeal has been taken to the United States Court of Appeals for the Federal Circuit, have remedy by civil action against the Director in the United States District Court for the Eastern District of Virginia if commenced within such time after such decision, not less than sixty days, as the Director appoints. The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims involved in the decision of the Patent Trial and Appeal Board, as the facts in the case may appear and such adjudication shall authorize the Director to issue such patent on compliance with the requirements of law. All the expenses of the proceedings shall be paid by the applicant.
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.
July 19, 1952, ch. 950, 66 Stat. 803 · 66 Stat. 803
Enacted · 35 U.S.C. § 145
July 19, 1952, ch. 950, 66 Stat. 803
Source evidence
Code source credit
July 19, 1952, ch. 950, 66 Stat. 803Federal Courts Improvement Act of 1982
Pub. L. 97–164 title I § 163(a)(7) · 96 Stat. 25
Substituted · 35 U.S.C. § 145
Pub. L. 97–164 substituted “Court of Appeals for the Federal Circuit” for “Court of Customs and Patent Appeals”
Source evidence
Code amendment note
Pub. L. 97–164 substituted “Court of Appeals for the Federal Circuit” for “Court of Customs and Patent Appeals”.Enacted provision · exact public law section
(7) Sections 141 through 146 of title 35, United States Code.Patent Law Amendments Act of 1984
Pub. L. 98–622 title II § 203(b) · 98 Stat. 3383
Substituted · 35 U.S.C. § 145
Pub. L. 98–622 substituted “Patent Appeals and Interferences in an appeal under section 134 of this title may,” for “Appeals may” in second sentence
Substituted · 35 U.S.C. § 145
Pub. L. 98–622 substituted “Patent Appeals and Interferences” for “Appeals” in second sentence
Source evidence
Code amendment note
Pub. L. 98–622 substituted “Patent Appeals and Interferences in an appeal under section 134 of this title may,” for “Appeals may” in first sentence and “Patent Appeals and Interferences” for “Appeals” in second sentence.Enacted provision · exact public law section
(b) Section 145 of title 35, United States Code, is amended— (1) in the first sentence by striking out “Appeals may” and inserting in lieu thereof “Patent Appeals and Interferences in an appeal under section 134 of this title may,”; and (2) in the second sentence by striking out “Appeals” and inserting in lieu thereof “Patent Appeals and Interferences”.District of Columbia Appropriations Act, 2000
Pub. L. 106–113 § 1000(a)(9)(tIV)(s4732)(a)(10)(A) · 113 Stat. 1501
Amended · 35 U.S.C. § 145
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273
Substituted · 35 U.S.C. § 145
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
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.District of Columbia Appropriations Act, 2000
Pub. L. 106–113 § 1000(a)(9)(tIV)(s4605)(e) · 113 Stat. 1501
Inserted · 35 U.S.C. § 145
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4605(e)], inserted “(a)” after “section 134”
Target inherited from the preceding amendment note.
Source evidence
Code amendment note
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4605(e)], inserted “(a)” after “section 134”.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. § 145
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 note below
Source evidence
Code amendment note
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 note 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),”.Pub. L. 112–29 § 20(j) · 125 Stat. 290
Struck · 35 U.S.C. § 145
Pub. L. 112–29, § 20(j), struck out “of this title” after “134(a)”
Source evidence
Code amendment note
Pub. L. 112–29, § 20(j), struck out “of this title” after “134(a)”.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
Amendment by section 3(j)(1) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title. Amendment by section 9(a) of Pub. L. 112–29 effective Sept. 16, 2011, and applicable to any civil action commenced on or after that date, see section 9(b) of Pub. L. 112–29, set out as a note under section 1071 of Title 15, Commerce and Trade. Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.Pub. L. 112–29 § 9(a) · 125 Stat. 290
Substituted · 35 U.S.C. § 145
Pub. L. 112–29, § 9(a), substituted “United States District Court for the Eastern District of Virginia” for “United States District Court for the District of Columbia”
Target inherited from the preceding amendment note.
Source evidence
Code amendment note
Pub. L. 112–29, § 9(a), substituted “United States District Court for the Eastern District of Virginia” for “United States District Court for the District of Columbia”.Enacted provision · exact public law section
(a) Technical Amendments Relating to Venue.— Sections 32, 145, 146, 154(b)(4)(A), and 293 of title 35, United States Code, and section 21(b)(4) of the Trademark Act of 1946 (15 U.S.C. 1071(b)(4)), are each amended by striking “United States District Court for the District of Columbia” each place that term appears and inserting “United States District Court for the Eastern District of Virginia”.Effective date note
Amendment by section 3(j)(1) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title. Amendment by section 9(a) of Pub. L. 112–29 effective Sept. 16, 2011, and applicable to any civil action commenced on or after that date, see section 9(b) of Pub. L. 112–29, set out as a note under section 1071 of Title 15, Commerce and Trade. Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.Pub. L. 112–29 § 3(j)(1) · 125 Stat. 290
Substituted · 35 U.S.C. § 145
Pub. L. 112–29, § 3(j)(1), substituted “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences” in two places
Target inherited from the preceding amendment note.
Source evidence
Code amendment note
Pub. L. 112–29, § 3(j)(1), substituted “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences” in two places.Enacted provision · exact public law section
(1) Sections 134, 145, 146, 154, and 305 of title 35, United States Code, are each amended by striking “Board of Patent Appeals and Interferences” each place it appears and inserting “Patent Trial and Appeal Board”.Effective date note
Amendment by section 3(j)(1) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title. Amendment by section 9(a) of Pub. L. 112–29 effective Sept. 16, 2011, and applicable to any civil action commenced on or after that date, see section 9(b) of Pub. L. 112–29, set out as a note under section 1071 of Title 15, Commerce and Trade. Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.
7 of 11 references resolved to an enrolled provision · 4 partial
Notes
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., § 63 (R.S. 4915, amended (1) Mar. 2, 1927, ch. 273, § 11, 44 Stat. 1336, (2) Mar. 2, 1929, ch. 488, § 2(b), 45 Stat. 1476, (3) Aug. 5, 1939, ch. 451, § 4, 53 Stat. 1212).
Bill in equity is changed to civil action and the section is restricted to exclude interferences which are covered by the next section. The time for filing the action is changed to the same as the time for appeal. The requirement for the applicant to file a copy of the decision in the Patent Office is omitted.
Language is changed.
Editorial Notes
Amendments1982–2011 · 5 rounds
2011
Pub. L. 112–29, § 20(j), struck out “of this title” after “134(a)”.
Pub. L. 112–29, § 9(a), substituted “United States District Court for the Eastern District of Virginia” for “United States District Court for the District of Columbia”.
Pub. L. 112–29, § 3(j)(1), substituted “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences” in two places.
2002
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 note below.
1999
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.
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4605(e)], inserted “(a)” after “section 134”.
1984
Pub. L. 98–622 substituted “Patent Appeals and Interferences in an appeal under section 134 of this title may,” for “Appeals may” in first sentence and “Patent Appeals and Interferences” for “Appeals” in second sentence.
1982
Pub. L. 97–164 substituted “Court of Appeals for the Federal Circuit” for “Court of Customs and Patent Appeals”.
Statutory Notes and Related Subsidiaries
Effective Date of 2011 Amendment
Amendment by section 3(j)(1) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on , and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title.
Amendment by section 9(a) of Pub. L. 112–29 effective , and applicable to any civil action commenced on or after that date, see section 9(b) of Pub. L. 112–29, set out as a note under section 1071 of Title 15, Commerce and Trade.
Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on , and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.
Effective Date of 1999 Amendment
Amendment by section 1000(a)(9) [title IV, § 4605(e)] of Pub. L. 106–113 applicable to any reexamination filed in the United States Patent and Trademark Office on or after , see section 13202(d) of Pub. L. 107–273, set out as a note under section 134 of this title.
Amendment by section 1000(a)(9) [title IV, § 4605(e)] of Pub. L. 106–113 effective , and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, § 4608(a)] of Pub. L. 106–113, set out as a note under section 41 of this title.
Amendment by section 1000(a)(9) [title IV, § 4732(a)(10)(A)] of Pub. L. 106–113 effective 4 months after , see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title.
Effective Date of 1984 Amendment
Amendment by Pub. L. 98–622 effective three months after , see section 207 of Pub. L. 98–622, set out as a note under section 41 of this title.
Effective Date of 1982 Amendment
Amendment by Pub. L. 97–164 effective , see section 402 of Pub. L. 97–164, set out as a note under section 171 of Title 28, Judiciary and Judicial Procedure.
Credits
1952–2011 · 6 acts
- 1952July 19, 1952, ch. 950, 66 Stat. 803
- 1982Pub. L. 97–164, title I, § 163(a)(7), , 96 Stat. 49
- 1984Pub. L. 98–622, title II, § 203(b), , 98 Stat. 3387
- 1999Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4605(e), 4732(a)(10)(A)], , 113 Stat. 1536, 1501A–571, 1501A–582
- 2002Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), , 116 Stat. 1906
- 2011Pub. L. 112–29, §§ 3(j)(1), 9(a), 20(j), , 125 Stat. 290, 316, 335.
Show as published
(July 19, 1952, ch. 950, 66 Stat. 803; Pub. L. 97–164, title I, § 163(a)(7), , 96 Stat. 49; Pub. L. 98–622, title II, § 203(b), , 98 Stat. 3387; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4605(e), 4732(a)(10)(A)], , 113 Stat. 1536, 1501A–571, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), , 116 Stat. 1906; Pub. L. 112–29, §§ 3(j)(1), 9(a), 20(j), , 125 Stat. 290, 316, 335.)