Title 35 — Patents
Part II · Chapter 13 — Review of Patent and Trademark Office Decisions
§ 146. Civil action in case of derivation proceeding
Statutory text
Any party to a derivation proceeding dissatisfied with the decision of the Patent Trial and Appeal Board on the derivation proceeding, may have remedy by civil action, if commenced within such time after such decision, not less than sixty days, as the Director appoints or as provided in section 141, unless he has appealed to the United States Court of Appeals for the Federal Circuit, and such appeal is pending or has been decided. In such suits the record in the Patent and Trademark Office shall be admitted on motion of either party upon the terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court imposes, without prejudice to the right of the parties to take further testimony. The testimony and exhibits of the record in the Patent and Trademark Office when admitted shall have the same effect as if originally taken and produced in the suit.
Such suit may be instituted against the party in interest as shown by the records of the Patent and Trademark Office at the time of the decision complained of, but any party in interest may become a party to the action. If there be adverse parties residing in a plurality of districts not embraced within the same state, or an adverse party residing in a foreign country, the United States District Court for the Eastern District of Virginia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs. The Director shall not be a necessary party but he shall be notified of the filing of the suit by the clerk of the court in which it is filed and shall have the right to intervene. Judgment of the court in favor of the right of an applicant to a patent shall authorize the Director to issue such patent on the filing in the Patent and Trademark Office of a certified copy of the judgment and on compliance with the requirements of law.
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. § 146
July 19, 1952, ch. 950, 66 Stat. 803
Source evidence
Code source credit
July 19, 1952, ch. 950, 66 Stat. 803Pub. L. 93–596 § 1 · 88 Stat. 1949
Substituted · 35 U.S.C. § 146
Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office” wherever appearing
Source evidence
Code amendment note
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.Federal Courts Improvement Act of 1982
Pub. L. 97–164 title I § 163(a)(7) · 96 Stat. 25
Substituted · 35 U.S.C. § 146
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(c) · 98 Stat. 3383
Substituted · 35 U.S.C. § 146
Pub. L. 98–622 substituted “Board of Patent Appeals and Interferences on the interference” for “board of patent interference on the question of priority”
Source evidence
Code amendment note
Pub. L. 98–622 substituted “Board of Patent Appeals and Interferences on the interference” for “board of patent interference on the question of priority”.Enacted provision · exact public law section
(c) Section 146 of title 35, United States Code, is amended by striking out “board of patent interferences on the question of priority” and inserting in lieu thereof “Board of Patent Appeals and Interferences on the interference”.District of Columbia Appropriations Act, 2000
Pub. L. 106–113 div. B § 1000(a)(9)(tIV)(s4732)(a)(10)(A) · 113 Stat. 1501
Amended · 35 U.S.C. § 146
Pub. L. 106–113, as amended by Pub. L. 107–273
Substituted · 35 U.S.C. § 146
Pub. L. 106–113, as substituted “Director” for “Commissioner” wherever appearing
Source evidence
Code amendment note
Pub. L. 106–113, as amended by Pub. L. 107–273, substituted “Director” for “Commissioner” wherever appearing.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. § 146
Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113. 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. 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. § 146
Pub. L. 112–29, § 20(j), struck out “of this title” after “141”
Source evidence
Code amendment note
Pub. L. 112–29, § 20(j), struck out “of this title” after “141”.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), (2)(A), (4) 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. § 146
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), (2)(A), (4) 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
Amended · 35 U.S.C. § 146
Pub. L. 112–29, § 3(j)(1), (2)(A), (4), amended section catchline generally
Substituted · 35 U.S.C. § 146
Pub. L. 112–29, § 3(j)(1), (2)(A), (4), substituting “Civil action in case of derivation proceeding” for “Civil action in case of interference”
Substituted · 35 U.S.C. § 146
Pub. L. 112–29, § 3(j)(1), (2)(A), (4), substituted in text “a derivation proceeding” for “an interference”
Substituted · 35 U.S.C. § 146
Pub. L. 112–29, § 3(j)(1), (2)(A), (4), substituted in text “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences”
Substituted · 35 U.S.C. § 146
Pub. L. 112–29, § 3(j)(1), (2)(A), (4), substituted in text “the derivation proceeding” for “the interference”
Target inherited from the preceding amendment note.
Source evidence
Code amendment note
Pub. L. 112–29, § 3(j)(1), (2)(A), (4), amended section catchline generally, substituting “Civil action in case of derivation proceeding” for “Civil action in case of interference”, and substituted in text “a derivation proceeding” for “an interference”, “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences”, and “the derivation proceeding” for “the interference”.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), (2)(A), (4) 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.
11 of 14 references resolved to an enrolled provision · 3 partial
Notes
Historical and Revision Notes
The first paragraph and parts of the second paragraph are 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), limited to interferences and making some changes. The action is not restricted to applicants, but a patentee may also bring the action. The time for bringing the action is made the same as for appeals.
In the second paragraph the first sentence is new and eliminates difficulties arising from unrecorded interests.
The second sentence is based on Title 35, U.S.C., 1946 ed., § 72a (Mar. 3, 1927, ch. 364, 44 Stat. 1394, reenacted Oct. 31, 1951, ch. 655, § 53a, 65 Stat. 728) with changes in language.
The fourth sentence is new and prevents such suits from being filed against the Commissioner as a defendant; however, the Commissioner has the right to intervene.
Language is changed.
Editorial Notes
Amendments1975–2011 · 6 rounds
2011
Pub. L. 112–29, § 20(j), struck out “of this title” after “141”.
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), (2)(A), (4), amended section catchline generally, substituting “Civil action in case of derivation proceeding” for “Civil action in case of interference”, and substituted in text “a derivation proceeding” for “an interference”, “Patent Trial and Appeal Board” for “Board of Patent Appeals and Interferences”, and “the derivation proceeding” for “the interference”.
2002
Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113. See 1999 Amendment note below.
1999
Pub. L. 106–113, as amended by Pub. L. 107–273, substituted “Director” for “Commissioner” wherever appearing.
1984
Pub. L. 98–622 substituted “Board of Patent Appeals and Interferences on the interference” for “board of patent interference on the question of priority”.
1982
Pub. L. 97–164 substituted “Court of Appeals for the Federal Circuit” for “Court of Customs and Patent Appeals”.
1975
Pub. L. 93–596 substituted “Patent and Trademark Office” for “Patent Office” wherever appearing.
Statutory Notes and Related Subsidiaries
Effective Date of 2011 Amendment
Amendment by section 3(j)(1), (2)(A), (4) 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 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.
Effective Date of 1975 Amendment
Amendment by Pub. L. 93–596 effective , see section 4 of Pub. L. 93–596, set out as a note under section 1111 of Title 15, Commerce and Trade.
Credits
1952–2011 · 7 acts
- 1952July 19, 1952, ch. 950, 66 Stat. 803
- 1975Pub. L. 93–596, § 1, , 88 Stat. 1949
- 1982Pub. L. 97–164, title I, § 163(a)(7), , 96 Stat. 49
- 1984Pub. L. 98–622, title II, § 203(c), , 98 Stat. 3387
- 1999Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], , 113 Stat. 1536, 1501A–582
- 2002Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), , 116 Stat. 1906
- 2011Pub. L. 112–29, §§ 3(j)(1), (2)(A), (4), 9(a), 20(j), , 125 Stat. 290, 316, 335.
Show as published
(July 19, 1952, ch. 950, 66 Stat. 803; Pub. L. 93–596, § 1, , 88 Stat. 1949; Pub. L. 97–164, title I, § 163(a)(7), , 96 Stat. 49; Pub. L. 98–622, title II, § 203(c), , 98 Stat. 3387; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], , 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), , 116 Stat. 1906; Pub. L. 112–29, §§ 3(j)(1), (2)(A), (4), 9(a), 20(j), , 125 Stat. 290, 316, 335.)