35 U.S.C. § 146 — Civil action in case of derivation proceeding

submitted 74 years ago by ch. 950 to r/title-35-PATENTS · 359 words · no verdicts yet

in plain englishAI-generated · not legal advice

This law lets a party unhappy with a Patent Trial and Appeal Board derivation-proceeding decision sue in court instead of appealing, as long as they haven't already appealed and that appeal isn't pending or decided. Patent Office records come into evidence, both sides can keep gathering testimony, and a winning applicant's patent can then issue.

This section covers a party who is dissatisfied with a decision the Patent Trial and Appeal Board made in a "derivation proceeding" — a proceeding that decides who actually invented something first. That party may bring a "remedy by civil action," meaning a lawsuit, instead of appealing. This suit must be started within a set time after the decision — at least sixty days, as set by the Director or under section 141 — and only if the party has not already appealed to the Federal Circuit, or if that appeal is not still pending or already decided. In this lawsuit, the record from the Patent and Trademark Office can be entered into evidence if either party asks, on whatever terms about costs, expenses, and further cross-examination the court sets, without stopping either party from gathering more testimony. Once admitted, that Patent Office testimony and evidence count the same as if they had originally been produced in this lawsuit. The suit is brought against whoever the Patent and Trademark Office's records showed as the party in interest at the time of the decision, though any other party in interest may also join the case. If the parties on the other side live in more than one federal district that are not in the same state, or if an opposing party lives in a foreign country, the United States District Court for the Eastern District of Virginia has jurisdiction and can issue summonses to the marshal of any district where an opposing party lives. A summons to someone in a foreign country can be served by publication or another method the court orders. The Director does not have to be made a party to the case, but the clerk of the court must notify the Director once the suit is filed, and the Director has the right to step into the case. If the court rules in favor of an applicant's right to a patent, that judgment authorizes the Director to issue the patent, once a certified copy of the judgment is filed with the Patent and Trademark Office and the usual legal requirements are met.

the actual law source: uscode.house.gov ↗public domain

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.

Source credit: (July 19, 1952, ch. 950, 66 Stat. 803; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 97–164, title I, § 163(a)(7), Apr. 2, 1982, 96 Stat. 49; Pub. L. 98–622, title II, § 203(c), Nov. 8, 1984, 98 Stat. 3387; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, §§ 3(j)(1), (2)(A), (4), 9(a), 20(j), Sept. 16, 2011, 125 Stat. 290, 316, 335.)

history & why it existsrecord from the source credit

1952Enacted · Act of July 19, 1952, ch. 950 · 66 Stat. 803
1975Amended · Pub. L. 93-596 · 88 Stat. 1949
1982Amended · Pub. L. 97-164 · 96 Stat. 49
1984Amended · Pub. L. 98-622 · 98 Stat. 3387
1999Amended · Pub. L. 106-113 · 113 Stat. 1536, 1501
2002Amended · Pub. L. 107-273 · 116 Stat. 1906
2011Amended · Pub. L. 112-29 · 125 Stat. 290, 316, 335

A history note hasn’t been published yet. The record shows enactment by ch. 950 on 1952-07-19.

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