35 U.S.C. § 294 — Voluntary arbitration
submitted 44 years ago by Pub. L. 97-247 to r/title-35-PATENTS · 412 words · no verdicts yet
A patent contract can require arbitration of disputes about the patent's validity or infringement. Parties without such a clause can still agree in writing to arbitrate. The arbitrator's award only binds the parties involved, and it must be reported to the Director.
(a) A contract involving a patent, or any right under a patent, can include a clause requiring arbitration of a dispute over the patent's validity or over infringement that arises under the contract. If a contract has no such clause, the parties to an existing dispute over patent validity or infringement can still agree in writing to settle it by arbitration instead. Either kind of arbitration clause or agreement is valid, cannot be taken back, and can be enforced — except for the same legal or equitable reasons that could void any contract.
(b) Title 9 of the U.S. Code (the Federal Arbitration Act) governs the arbitration itself, the arbitrator's awards, and confirming those awards, as long as title 9 doesn't conflict with this section. During arbitration, the arbitrator must consider the defenses listed in section 282, if any party to the proceeding raises them.
(c) An arbitrator's award is final and binds only the parties to the arbitration — it has no force or effect on anyone else. The parties can agree that if a court with proper authority later rules, with no further appeal possible, that the patent involved is invalid or unenforceable, then any court with proper authority can modify the award if a party to the arbitration asks. Any such modification governs the parties' rights and duties starting from the date the modification is made.
(d) Once an arbitrator makes an award, the patent owner, assignee, or licensee must give the Director written notice — a separate notice for each patent involved. The notice must give the parties' names and addresses, the inventor's name, the patent owner's name, the patent number, and a copy of the award. If a court later modifies the award, the party who asked for the modification must notify the Director of that too. The Director must record either notice in the record of that patent. If the required notice is not filed, any other party to the proceeding may file it instead.
(e) The award cannot be enforced until the Director receives the notice required by subsection (d).
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.
Arbitration of such disputes, awards by arbitrators and confirmation of awards shall be governed by title 9, to the extent such title is not inconsistent with this section. In any such arbitration proceeding, the defenses provided for under section 282 shall be considered by the arbitrator if raised by any party to the proceeding.
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 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 of 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.
When an award is made by an arbitrator, the patentee, his assignee or licensee shall give notice thereof in writing to the Director. 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 modified by a court, the party requesting such modification shall give notice of such modification to the Director. The Director 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 Director, any party to the proceeding may provide such notice to the Director.
The award shall be unenforceable until the notice required by subsection (d) is received by the Director.
Source credit: (Added Pub. L. 97–247, § 17(b)(1), Aug. 27, 1982, 96 Stat. 322; amended 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(a)(19), (b)(1)(B), Nov. 2, 2002, 116 Stat. 1905, 1906; Pub. L. 112–29, § 20(j), Sept. 16, 2011, 125 Stat. 335.)
- 1982Enacted · Pub. L. 97-247 · 96 Stat. 322
- 1999Amended · Pub. L. 106-113 · 113 Stat. 1536, 1501
- 2002Amended · Pub. L. 107-273 · 116 Stat. 1905, 1906
- 2011Amended · Pub. L. 112-29 · 125 Stat. 335
A history note hasn’t been published yet. The record shows enactment by Pub. L. 97-247 on 1982-08-27.
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