§ 294. Voluntary arbitration

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. 1982

   Pub. L. 97–247 § 17(b)(1) · 96 Stat. 317

   Enacted · 35 U.S.C. § 294

   Added Pub. L. 97–247, § 17(b)(1), Aug. 27, 1982, 96 Stat. 322

   Source evidence

   Code source credit
   Added Pub. L. 97–247, § 17(b)(1), Aug. 27, 1982, 96 Stat. 322

   Enacted provision · exact public law section
   (1) Title 35, United States Code, is amended by inserting after section 293 the following new section of chapter 29: “§ 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 Awards. 9 USC 1 et seq. of awards shall be governed by title 9, United States Code, 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 35 USC 282. 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 Modification. 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 to 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 Notices. assignee or licensee shall give notice thereof in writing to the Commissioner. 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 Modification. modified by a court, the party requesting such modification shall give notice of such modification to the Commissioner, The Commissioner 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 Commissioner, any party to the proceeding may provide such notice to the Commissioner. “(e) The award shall be unenforceable until the notice required by subsection (d) is received by the Commissioner.”.

2. 1999

   District of Columbia Appropriations Act, 2000

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

   1. Amended · 35 U.S.C. § 294(d); 35 U.S.C. § 294(e)

      Pub. L. 106–113, as amended by Pub. L. 107–273, § 13206(b)(1)(B)

   2. Substituted · 35 U.S.C. § 294(d); 35 U.S.C. § 294(e)

      Pub. L. 106–113, as substituted “Director” for “Commissioner” wherever appearing

   Source evidence

   Code amendment note
   Subsecs. (d), (e). Pub. L. 106–113, as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted “Director” for “Commissioner” wherever appearing.

3. 2002

   Intellectual Property and High Technology Technical Amendments Act of 2002

   Pub. L. 107–273 § 13206(a)(19)(A) · 116 Stat. 1758

   Struck · 35 U.S.C. § 294(b)

   Pub. L. 107–273, § 13206(a)(19)(A), struck out “United States Code,” after “title 9,”

   Source evidence

   Code amendment note
   Subsec. (b). Pub. L. 107–273, § 13206(a)(19)(A), struck out “United States Code,” after “title 9,”.

   Enacted provision · exact public law section
   (A) in subsection (b), by striking “United States Code,”; and

4. 2002

   Intellectual Property and High Technology Technical Amendments Act of 2002

   Pub. L. 107–273 § 13206(a)(19)(B) · 116 Stat. 1758

   Substituted · 35 U.S.C. § 294(c)

   Pub. L. 107–273, § 13206(a)(19)(B), substituted “rendered by a court of” for “rendered by a court to”

   Source evidence

   Code amendment note
   Subsec. (c). Pub. L. 107–273, § 13206(a)(19)(B), substituted “rendered by a court of” for “rendered by a court to”.

   Enacted provision · exact public law section
   (B) in subsection (c), in the second sentence by striking “court to” and inserting “court of”.

5. 2002

   Intellectual Property and High Technology Technical Amendments Act of 2002

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

   Changed · 35 U.S.C. § 294(d); 35 U.S.C. § 294(e)

   Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113. See 1999 Amendment note below

   Source evidence

   Code amendment note
   Subsecs. (d), (e). Pub. L. 107–273, § 13206(b)(1)(B), 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),”.

6. 2011

   Pub. L. 112–29 § 20(j) · 125 Stat. 335

   Struck · 35 U.S.C. § 294(b)

   Pub. L. 112–29 struck out “of this title” after “282”

   Source evidence

   Code amendment note
   Subsec. (b). Pub. L. 112–29 struck out “of this title” after “282”.

   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 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.

5 of 7 references resolved to an enrolled provision · 2 partial