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.
July 19, 1952, ch. 95066 Stat. 803Pub. L. 93–596, § 188 Stat. 1949Pub. L. 97–164, title I, § 163(a)(7)96 Stat. 49Pub. L. 98–622, title II, § 203(c)98 Stat. 3387Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]113 Stat. 1536Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B)116 Stat. 1906Pub. L. 112–29125 Stat. 290(, ; , , ; , , ; , , ; , , , 1501A–582; , , ; , §§ 3(j)(1), (2)(A), (4), 9(a), 20(j), , , 316, 335.)
Historical and Revision Notes
Mar. 2, 1927, ch. 273, § 1144 Stat. 1336Mar. 2, 1929, ch. 488, § 2(b)45 Stat. 1476Aug. 5, 1939, ch. 451, § 453 Stat. 1212The first paragraph and parts of the second paragraph are based on Title 35, U.S.C., 1946 ed., § 63 (R.S. 4915, amended (1) , , (2) , , (3) , ), 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.
Mar. 3, 1927, ch. 36444 Stat. 1394Oct. 31, 1951, ch. 655, § 53a65 Stat. 728The second sentence is based on Title 35, U.S.C., 1946 ed., § 72a (, , reenacted , ) 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
Amendments
Pub. L. 112–29, § 20(j)2011—, 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”.
Pub. L. 107–273Pub. L. 106–1132002— made technical correction to directory language of . See 1999 Amendment note below.
Pub. L. 106–113Pub. L. 107–2731999—, as amended by , substituted “Director” for “Commissioner” wherever appearing.
Pub. L. 98–6221984— substituted “Board of Patent Appeals and Interferences on the interference” for “board of patent interference on the question of priority”.
Pub. L. 97–1641982— substituted “Court of Appeals for the Federal Circuit” for “Court of Customs and Patent Appeals”.
Pub. L. 93–5961975— substituted “Patent and Trademark Office” for “Patent Office” wherever appearing.
Statutory Notes and Related Subsidiaries
Effective Date of 2011 Amendment
Pub. L. 112–29section 3(n) of Pub. L. 112–29section 100 of this titleAmendment by section 3(j)(1), (2)(A), (4) of effective upon the expiration of the 18-month period beginning on , and applicable to certain applications for patent and any patents issuing thereon, see , set out as an Effective Date of 2011 Amendment; Savings Provisions note under .
section 9(a) of Pub. L. 112–29section 9(b) of Pub. L. 112–29section 1071 of Title 15Amendment by effective , and applicable to any civil action commenced on or after that date, see , set out as a note under , Commerce and Trade.
section 20(j) of Pub. L. 112–29lPub. L. 112–29section 2 of this titleAmendment by 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() of , set out as a note under .
Effective Date of 1999 Amendment
Pub. L. 106–113Pub. L. 106–113section 1 of this titleAmendment by effective 4 months after , see section 1000(a)(9) [title IV, § 4731] of , set out as a note under .
Effective Date of 1984 Amendment
Pub. L. 98–622section 207 of Pub. L. 98–622section 41 of this titleAmendment by effective three months after , see , set out as a note under .
Effective Date of 1982 Amendment
Pub. L. 97–164section 402 of Pub. L. 97–164section 171 of Title 28Amendment by effective , see , set out as a note under , Judiciary and Judicial Procedure.
Effective Date of 1975 Amendment
Pub. L. 93–596section 4 of Pub. L. 93–596section 1111 of Title 15Amendment by effective , see , set out as a note under , Commerce and Trade.