35 U.S.C. § 282 | Presumption of validity; defenses

(a)

In General .—

A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.

(b)

Defenses .—

The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:

(1)

Noninfringement, absence of liability for infringement or unenforceability.

(2)

Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.

(3)

Invalidity of the patent or any claim in suit for failure to comply with—

(A)

any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or

(B)

any requirement of section 251.

(4)

Any other fact or act made a defense by this title.

(c)

Notice of Actions; Actions During Extension of Patent Term .—

In an action involving the validity or infringement of a patent the party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the country, number, date, and name of the patentee of any patent, the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in suit or, except in actions in the United States Court of Federal Claims, as showing the state of the art, and the name and address of any person who may be relied upon as the prior inventor or as having prior knowledge of or as having previously used or offered for sale the invention of the patent in suit. In the absence of such notice proof of the said matters may not be made at the trial except on such terms as the court requires. Invalidity of the extension of a patent term or any portion thereof under section 154(b) or 156 because of the material failure—

(1)

by the applicant for the extension, or

(2)

by the Director,

to comply with the requirements of such section shall be a defense in any action involving the infringement of a patent during the period of the extension of its term and shall be pleaded. A due diligence determination under section 156(d)(2) is not subject to review in such an action.

July 19, 1952, ch. 950 66 Stat. 812 Pub. L. 89–83, § 10July 24, 196579 Stat. 261 Pub. L. 94–131, § 10Nov. 14, 197589 Stat. 692 Pub. L. 97–164, title I, § 161(7)Apr. 2, 198296 Stat. 49 Pub. L. 98–417, title II, § 203Sept. 24, 198498 Stat. 1603 Pub. L. 104–41, § 2Nov. 1, 1995109 Stat. 352 Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4402(b)(1), 4732(a)(10)(A)]Nov. 29, 1999113 Stat. 1536 Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B)Nov. 2, 2002116 Stat. 1906 Pub. L. 112–29Sept. 16, 2011125 Stat. 328(, ; , , ; , , ; , , ; , , ; , , ; , , , 1501A–560, 1501A–582; , (4), , ; , §§ 15(a), 20(g), (j), , , 334, 335.)

Historical and Revision Notes

Mar. 3, 1897, ch. 391, § 2 29 Stat. 692 Aug. 5, 1939, ch. 450, § 1 53 Stat. 1212Derived from Title 35, U.S.C., 1946 ed., § 69 (R.S. 4920, amended (1) , , (2) , ).

The first paragraph declares the existing presumption of validity of patents.

The five defenses named in R.S. 4920 are omitted and replaced by a broader paragraph specifying defenses in general terms.

The third paragraph, relating to notice of prior patents, publications and uses, is based on part of the last paragraph of R.S. 4920 which was superseded by the Federal Rules of Civil Procedure but which is reinstated with modifications.

Editorial Notes

Amendments

Pub. L. 112–29, § 20(g)(1)2011—, (2)(A), (C), (3), (j), designated first to third pars. as subsecs. (a) to (c), respectively, inserted headings, in subsec. (a), struck out third sentence which read “Notwithstanding the preceding sentence, if a claim to a composition of matter is held invalid and that claim was the basis of a determination of nonobviousness under section 103(b)(1), the process shall no longer be considered nonobvious solely on the basis of section 103(b)(1).”, in par. (2) of subsec. (b), struck out “of this title” after “II” and substituted “patentability.” for “patentability,”, and in introductory provisions of subsec. (c), struck out “of this title” after “156” and substituted “In an action involving the validity or infringement of a patent” for “In actions involving the validity or infringement of a patent” and “Court of Federal Claims” for “Claims Court”.

Pub. L. 112–29, § 20(g)(2)(B), which directed substitution of “unenforceability.” for “uneforceability,” in par. (1) of former second par. which was designated subsec. (b), was executed by making the substitution for “unenforceability,”, to reflect the probable intent of Congress.

Pub. L. 112–29, § 15(a), amended second par. by substituting “(3) Invalidity of the patent or any claim in suit for failure to comply with—

“(A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or

“(B) any requirement of section 251.”

for “(3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of sections 112 or 251 of this title,”.

Pub. L. 107–273, § 13206(b)(4)Pub. L. 106–113, § 1000(a)(9) [title IV, § 4402(b)(1)]2002—Third par. , made technical correction to directory language of . See 1999 Amendment note below.

Pub. L. 107–273, § 13206(b)(1)(B)Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], made technical correction to directory language of . See 1999 Amendment note below.

Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]Pub. L. 107–273, § 13206(b)(1)(B)1999—Third par. , as amended by , substituted “(2) by the Director,” for “(2) by the Commissioner,”.

Pub. L. 106–113, § 1000(a)(9) [title IV, § 4402(b)(1)]Pub. L. 107–273, § 13206(b)(4), as amended by , substituted “154(b) or 156 of this title” for “156 of this title”.

Pub. L. 104–411995—First par. inserted after second sentence “Notwithstanding the preceding sentence, if a claim to a composition of matter is held invalid and that claim was the basis of a determination of nonobviousness under section 103(b)(1), the process shall no longer be considered nonobvious solely on the basis of section 103(b)(1).”

Pub. L. 98–417 section 156 of this title1984— inserted provision at end that the invalidity of the extension of a patent term or any portion thereof under because of the material failure by the applicant for the extension, or by the Commissioner, to comply with the requirements of such section shall be a defense in any action involving the infringement of a patent during the period of the extension of its term and shall be pleaded, and that a due diligence determination under section 156(d)(2) is not subject to review in such an action.

Pub. L. 97–1641982—Third par. substituted “Claims Court” for “Court of Claims”.

Pub. L. 94–1311975—First par. made presumption of validity applicable to claim of a patent in multiple dependent form and multiple dependent claims and substituted “asserting such invalidity” for “asserting it”.

Pub. L. 89–831965— required each claim of a patent (whether in independent or dependent form) to be presumed valid independently of the validity of other claims and required dependent claims to be presumed valid even though dependent upon an invalid claim.

Statutory Notes and Related Subsidiaries

Effective Date of 2011 Amendment

section 15(a) of Pub. L. 112–29Sept. 16, 2011section 15(c) of Pub. L. 112–29 section 119 of this titleAmendment by effective on , and applicable to proceedings commenced on or after that date, see , set out as a note under .

Pub. L. 112–29Sept. 16, 2011lPub. L. 112–29 section 2 of this titleAmendment by section 20(g), (j) of 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. 106–113Nov. 29, 1999Pub. L. 106–113 section 154 of this titleAmendment by section 1000(a)(9) [title IV, § 4402(b)(1)] of effective on date that is 6 months after , and, except for design patent application filed under chapter 16 of this title, applicable to any application filed on or after such date, see section 1000(a)(9) [title IV, § 4405(a)] of , set out as a note under .

Pub. L. 106–113Nov. 29, 1999Pub. L. 106–113 section 1 of this titleAmendment by section 1000(a)(9) [title IV, § 4732(a)(10)(A)] of effective 4 months after , see section 1000(a)(9) [title IV, § 4731] of , set out as a note under .

Effective Date of 1982 Amendment

Pub. L. 97–164Oct. 1, 1982section 402 of Pub. L. 97–164 section 171 of Title 28Amendment by effective , see , set out as a note under , Judiciary and Judicial Procedure.

Effective Date of 1975 Amendment

Pub. L. 94–131Jan. 24, 1978section 11 of Pub. L. 94–131 section 351 of this titleAmendment by effective , and applicable on and after that date to patent applications filed in the United States and to international applications, where applicable, see , set out as an Effective Date note under .

Effective Date of 1965 Amendment

Pub. L. 89–83July 24, 1965section 7(a) of Pub. L. 89–83 section 41 of this titleAmendment by effective 3 months after , see , set out as a note under .