P.L. 82-593, TITLE 35, UNITED STATES CODE-- PATENTS

Senate Report No. 82-1979,

June 27, 1952 (To accompany H.R. 7794)

House Report No. 82-1923,

May 12, 1952 (To accompany H.R. 7794)

The Senate Report repeats in substance the House Report.

Senate Report No. 82-1979

June 27, 1952

THE Committee on the Judiciary, to which was referred the bill (H.R. 7794) to revise, codify, and enact into law title 35 of the United States Code entitled 'Patents,' having considered the same, reports favorably thereon, with amendments, and recommends that the bill, as amended, do pass.

PURPOSE

The purpose of the proposed legislation is to revise and codify the laws relating to patents and enact into law title 35 of the United States Code entitled 'Patents'.

STATEMENT

Hearings were held in the House on H.R. 3760, which dealt with the matter of the codification of title 35, and as a result of those hearings the bill was revised and introduced as H.R. 7794.

This bill is part of the comprehensive program of revising and enacting into law all the titles of the United States Code. Up to the present time 9 out of the 50 titles of the code have been revised and enacted into law and consideration or preparation of bills relating to a number of additional titles is in process.

For many years there had been considerable agitation for a complete restatement and codification of all the laws of the United States, inasmuch as the only such codification-- the Revised Statutes of 1874-- had become generally outmoded on all subjects.

In 1926, in response to widespread recognition of the need therefor, and after nearly 7 years' effort, the Congress adopted the United States Code, which was a codification of the existing general and permanent laws of the United States arranged in 50 titles according to subject matter, and which was declared to be prima facie evidence of the law.

Because of the size of that code Congress decided that it should undergo a testing period before it was enacted into positive law.

The code has now been subjected to such a testing period lasting more than 25 years.

The present patent laws consist of about 60 sections of the Revised Statutes of 1874, together with a large number of acts of Congress passed since that date revising various sections of the Revised Statutes or making new enactments not related to any section of the Revised Statutes.

Since the sections of the Revised Statutes relating to patents were merely a compilation of the act of July 8, 1870, 16 Stat. 198, our present patent law is essentially the act of 1870 with subsequent amendatory and supplemental enactments.

The last general revision of the patent laws was the act of July 8, 1870, which was enacted as part of a program to revise and consolidate all the laws of the United States then under way. In 1866 Congress passed a law providing for a commission to revise and consolidate the statutes of the United States. The Commission which was appointed to perform this work prepared a preliminary draft of the part relating to patents and copyrights in 1868, and a second preliminary draft in 1869. The followingyear a draft of the statutes relating to patents and copyrights as revised, simplified, arranged, and consolidated by the Commission was reported to Congress, and at the same time referred to the Committee on Patents; a bill was introduced by the chairman a few days later.

The object of the Commission on revisions of the laws was only to revise, arrange, and consolidate the statutes in force and the draft reported from the Commission presumably was for this purpose only.

The probable reason for referring the matter to the Committee on Patents was that during this same period there had been suggestions for amending the patent laws in substance and it appears that the Committee on Patents studied the draft of the Commission and changed it by various amendments affecting matters of substance. The bill thus introduced was enacted on July 8, 1870, 16 Stat. 198, and included the subjects of copyrights and trade-marks as well as patents.

When the Revised Statutes, as in force on December 1, 1873, were enacted on June 22, 1874, the sections of the act of 1870 were distributed in various parts of the Revised Statutes.

As has already been stated, the present patent laws consist of the Patent Act of 1870 with subsequent enactments adding to or changing various sections of that original act. The first patent law was enacted in the second session of the First Congress in 1790. When the first Congress met, one of its very first items of business was the consideration of patents and copyrights, and the first patent bill was H.R. 10 of the First Congress.

The patent laws are enacted by Congress in accordance with the power granted by article 1, section 8, of the Constitution which provides that:

The Congress shall have the power * * * to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.

This provision was unanimously adopted by the Constitutional Convention following suggestions for Federal jurisdiction over both patents and copyrights which had been made in the Convention by James Madison of Virginia and Charles Pinckney of South Carolina. Each proposed separate provisions relating to patents and to copyrights which were merged by the Drafting Committee of the Convention into the general statement we now have, which was adopted without any dissenting voice.

The background, the balanced construction, and the usage current then and later, indicate that the constitutional provisions is really two provisions merged into one. The purpose of the first provision is to promote the progress of science by securing for limited times to authors the exclusive right to their writings, the word 'science' in this connection having the meaning of knowledge in general, which is one of its meanings today. The other provision is that Congress has the power to promote the progress of useful arts by securing for limited times to inventors the exclusive right to their discoveries. The first patent law and all patent laws up to a much later period were entitled 'Acts to promote the progress of useful arts.'

The first patent law, which was enacted on April 10, 1790, vested the jurisdiction to issue patents in a Board consisting of the Secretary of State, the Attorney General, and the Secretary of War. The person principally interested and the leader of the group was the Secretary of State, Thomas Jefferson, who was personally deeply interested in the subject matter of patent law. Jefferson was not a patentee himself, but he was the inventor of a number of devices, most of them being 'gadgets'.

The first law made the power of the Board to issue patents absolute, and also provided for various things that would be necessary in a general patent law.

While the Board, and particularly Thomas Jefferson, was quite favorable to the granting of patents, and granted them with great consideration, the other duties of members of this Board, in view of their high offices, made it impossible for them to devote much time to this work, and as a result the law was changed in 1793 to make the granting of patents a clerical function. Under the act of 1793 patents were granted to anyone who applied on fulfilling the formal requirements and filing the necessary papers and fees.

This law continued in force until 1836 when the dissatisfaction with the granting of patents without any examination as to novelty or other matters led to the appointment of a select committee by the Senate which introduced a bill that became the new law which was enacted on July 4, 1836. This new law contains the fundamental principles of our present patent law. It created a Patent Office with a Commissioner of Patents at the head, and examiners with the function of examining applications for patents and with the power to refuse patents, which was not present in the previous law. The law had many other provisions in it relating to details of procedure, enforcement of patents, and matters of that sort.

Amendments were made to this act of 1836 at various times until 1870 when the law was completely revised in the manner above referred to.

The present bill in a sense, then, is the second revision and codification of the patent laws.

A detailed description of the provisions of H.R. 7794 as set forth in House Report No. 1923, Eighty-second Congress, is as follows:

Although the principal purpose of the bill is the codification of title 35, United States Code, and involves simplification and clarification of language and arrangement, and elimination of obsolete and redundant provisions, there are a number of changes in substantive statutory law. These will be explained in some detail in the revision notes keyed to each section which appear in the appendix of this report. The major changes or innovations in the title consist of incorporating a requirement for invention in sec. 103 and the judicial doctrine of contributory infringement in sec. 271.

The bill divides the statutes into three parts. The first part contains the sections of the law relating to the Patent Office generally, its powers and duties and some ancillary matters of that kind. The second part consists of the sections relating to the conditions under which a patent may be obtained and the procedure in obtaining patents. The third part contains the sections relating to the patents themselves and the protection of rights under patents, and matters relating to that phase of the subject.

Stated generally, these three parts relate to, first, the Patent Office, second, obtaining a patent, and third, the patent itself. Of course it has not been possible to maintain this three-part division strictly and there may be some overlapping of the three phases of the subject. In each part of the sections are arranged in several chapters of more or less homogeneous subject matter, with chapter headings.

The organization of the bill and the arrangement of the sections are such that new future amendments can readily find their place in the organization. Catch lines of parts, chapters, and sections are provided for convenience of reference.

The first chapter in part 1 relates to the Patent Office and covers the establishment of the Patent Office, its seal, officers and employees, restrictions on officers and employees as to interest in patents, bond of the Commissioner, duties of the Commissioner, the Board of Appeals, the Patent Office library, etc. Very little change is introduced in these sections. There is one change in section 3, relating to a temporary successor to the Commissioner when the office is vacant, filling a gap in the present law. There is a change in section 4 relating to the disability of Patent Office employees to obtain patents.

The next chapter collects some of the details relating to procedure in the Patent Office of general application with no important changes.

The next group, sections 31, 32, and 33, relate to practice before the Patent Office. In them the language of the prior statutes has been rearranged and divided into several sections. There has been no change in substance in these sections, except in the third of this group which is a criminal provision for unauthorized practice. The language has been considerably simplified, and the maximum fine has been raised from $100 to $1,000.

In the next group of sections, relating to Patent Office fees, there have been a few readjustments in some minor fees, and an upward change in the fee for an appeal to the Board of Appeals.

The sections of the first part apply to the Patent Office as such, and, except for provisions specific to patents, include trade-marks as well as patents, where they relate to organizational and procedural matters, since the registration of trade-marks is handled by the Patent Office.

Part II relates to patentability of inventions and the grant of patents.

Referring first to section 101, this section specifies the type of material which can be the subject matter of a patent. The present law states that any person who has invented or discovered any 'new and useful art, machine, manufacture, or composition of matter, or any new or useful improvement thereof: may obtain a patent. That language has been preserved except that the word 'art' which appears in the present statute has been changed to the word 'process.' 'Art' in this place in the present statute has a different meaning than the words 'useful art' in the Constitution, and a different meaning than the use of the word 'art' in other places in the statutes, and it is interpreted by the courts to be practically synonymous with process or method. The word 'process' has been used to avoid the necessity of explanation that the word 'art' as used in this place means 'process or method,' and that it does not mean the same thing as the word 'art ' in other places.

The definition of 'process' has been added in section 100 to make it clear that 'process or method' is meant, and also to clarify the present law as to the patentability of certain types of processes or methods as to which some insubstantial doubts have been expressed.

Section 101 sets forth the subject matter that can be patented, 'subject to the conditions and requirements of this title.' The conditions 1nder which a patent may be obtained follow, and section 102 covers the conditions relating to novelty.

A person may have 'invented' a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.

Section 102 in paragraphs (a),(b), and (c) repeats the conditions in the existing law relating to novelty.

Subsection (a) is the language of the existing law, recognizing that the interpretation by the courts excludes various kinds of private knowledge not known to the public.

Paragraph (d) relating to a bar to patentability when the inventor has previously obtained a patent in a foreign country, represents a liberalizing change in the existing law.

Subsection (e) is another well-recognized condition imposed by a decision of the Supreme Court which was not expressed in the existing law; for the purpose of anticipating subsequent inventors, a patent disclosing the subject matter speaks from the filing date of the application disclosing the subject matter.

Subsection (f) merely emphasizes that it is the inventor that applies for the patent.

Subsection (g) relates to the question of priority of invention between rival inventors.

Section 102, in general, may be said to describe the statutory novelty required for patentability, and includes, in effect, an amplification and definition of 'new' in section 101.

Section 103, for the first time in our statute, provides a condition which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts. An invention which has been made, and which is new in the sense that the same thing has not been made before, may still not be patentable if the difference between the new thing and what was known before is not considered sufficiently great to warrant a patent. That has been expressed in a large variety of ways in decisions of the courts and in writings. Section 103 states this requirement in the title. If refers to the difference between the subject matter sought to be patented and the prior art, meaning what was known before as described in section 102. If this difference is such that the subject matter as a whole would have been obvious at the time to a person skilled in the art, then the subject matter cannot be patented.

That provision paraphrases language which has often been used in decisions of the courts, and the section is added to the statute for uniformity and definiteness. This section should have a stabilizing effect and minimize great departures which have appeared in some cases.

The next group of sections relates to the application for a patent.

Sections 116 and 118 introduce a new element in our statutes. The existing statute is very strict in requiring that only the inventor may apply for a patent. These two sections provide for certain types of situations where it may be impossible for the inventor himself to apply, or where, in the case of a joint invention, one of the joint applicants has been inadvertently erroneously included, or a joint inventor inadvertently excluded; the sections provide all the safeguards necessary for the inventor.

Section 119 introduces a minor change.

Sections 120 and 121 express in the statute certain matters which exist in the law today but which had not before been written into the statute, and in so doing make some minor changes in the concepts involved.

Section 122 incorporates into the title the rule of secrecy of patent applications which has existed in the Patent Office for generations.

The next chapter relates to the examination of the application in the Patent Office; rejection by the examiner, the right to reconsideration, and time within which an applicant must reply to actions, time for prosecuting application, appeal to the Board, and interferences between rival claimants for a patent. Very little has been changed in this group of sections except a minor revision in the interference section.

The next chapter relates to the review of Patent Office decisions.

The act of 1836 provided, for the first time, for the refusal of patents by officials known as examiners. The legislature was jealous of the rights of the public and provided adequate means of reviewing the action of the Patent Office. In fact, there are now two types of review. The applicant may appeal to a court of appeals especially provided, or he may file suit in the district court against the Commissioner to have his rights adjudicated by the court.

This group of sections makes no fundamental change in the various appeals and other review of Patent Office action, but has made a few changes in the procedure in various instances to correct some of the problems which have arisen, particularly in section 146. These details are mainly procedural.

Chapter 15 collects the provisions relating to plant patents, the next those relating to designs, and chapter 17 restates the recently enacted statute relating to secrecy of certain inventions.

Part III deals with the patent itself after it has been granted.

The first chapter of this part relates to correcting and amending a patent.

Sections 215 and 252 are a development of the present statute relating to what are called reissues. Under certain circumstances the patentee may obtain a new patent to replace the old one to correct certain kinds of defects that he may have discovered in the patent. These two sections together replace the present one, make a number of clarifications and a few additions in further development of the subject.

Section 253 relates to another form of correction of a patent known as the disclaimer. The patentee files a paper in the Office which is recorded. He disclaims certain things from the scope of his patent or disclaims certain claims. This subject of disclaimers, in the present law, has resulted in a great deal of confusion and uncertainty in certain situations in the law which at times are almost ridiculous. Consequently, the bill in two sections, 253 and 288, has introduced certain changes relating to disclaimers. One of these changes is that only a whole claim can be disclaimed; a patent cannot be rewritten by filing a paper in the Patent Office.

The second change relates to the situation when a patent has two or more claims and one of them may be discovered to be invalid. There is now a provision in the statute under which an invalid claim must be disclaimed without unreasonable delay in order to save the rest of the patent. What delay is unreasonable is presently quite confusing, and the present law does not, as a matter of fact, prevent the patentee from suing again on the invalid claim if he so wishes.

The bill has eliminated that requirement. It has left the situation so that if one claim of a patent is invalid, the patentee may take it out. He may sue on the remaining claims which have whatever validity they may have on their own merits. That is, one bad claim does not affect the other claims, unless they are also bad for similar reasons.

Other provisions of the bill take care at least as well as is done in the present law of the possibility of a patentee suing again after his patent has been held invalid. That can be done today and no change is made in that situation, except that certain provisions tend to deter doing such a thing.

Section 255, which permits the Patent Office to correct by a certificate a merely clerical error made by the patentee, is new.

Section 256 is a new section in the law that is correlated with section 116 and relates to a mistake in joining a person as a joint inventor. Very often two or three people make an invention together. They must apply as joint inventors, they do so at their peril. This provision permits a bona fide mistake in joining a person as inventor or in failing to join a person as an inventor to be corrected.

The next chapter of two sections relates to assignments and ownership.

Section 262 merely states in the statute a peculiarity relating to joint ownership.

The next two sections collect provisions now in the law referring to the Government ownership of patents, making little change except in language.

The next chapter relates to infringements of patents.

Section 271, paragraph (a), is a declaration of what constitutes infringement in the present statute. It is not actually necessary because the granting clause creates certain exclusive rights and infringement would be any violation of those rights.

Paragraphs (b), (c), and (d) relate to the subject referred to as contributory infringement. The doctrine of contributory infringement has been part of our law for about 80 years. It has been applied to enjoin those who sought to cause infringement by supplying someone else with the means and directions for infringing a patent. One who makes a special device constituting the heart of a patented machine and supplies it to others with directions (specific or implied) to complete the machine is obviously appropriating the benefit of the patented invention. It is for this reason that the doctrine of contributory infringement, which prevents appropriating another man's patented invention, has been characterized as 'an expression both of law and morals.' Considerable doubt and confusion as to the scope of contributory infringement has resulted from a number of decisions of the courts in recent years. The purpose of this section is to codify in statutory form principles of contributory infringement and at the same time eliminate this doubt and confusion. Paragraph (b) recites in broad terms that one who aids and abets an infringement is likewise an infringer. The principle of contributory infringement is set forth in the provisions of the next paragraph which is concerned with the usual situation in which contributory infringement arises. This latter paragraph is much more restricted than many proponents of contributory infringement believe should be in the case. The sale of a component of a patented machine, etc., must constitute a material part of the invention and must be known to be especially made or especially adapted for use in the infringement before there can be contributory infringement, and likewise the sale of staple articles of commerce suitable for noninfringement use does not constitute contributory infringement. The last paragraph of this section provides that one who merely does what he is authorized to do by statute is not guilty of misuse of the patent. These paragraphs have as their main purpose clarification and stabilization.

Section 272 is a new section in the law relating to infringement, but it is of relatively little importance and it follows a paragraph in a treaty to which the United States is a party.

Beginning with 281 is a group of sections relating to remedy for infringement of a patent, the suit in the courts. The present statutes on this matter are in confusion because they were written quite some time ago and court procedure and the names of actions and so on have changed since then. So the present sections were substantially reorganized into a group of sections fitting in at this place, with some changes.

Section 281 is a declaration which serves as a preamble to the others.

Section 282 introduces a declaration of the presumption of validity of a patent, which is now a statement made by courts in decisions, but has had no expression in the statute. The defenses to a suit for infringement are states in general terms, changing the language in the present statute, but not materially changing the substance.

The next few sections relate to injunctions, damages, attorney fees, the statute of limitations, and to marking and notice; all of which together replace present statutes on suits, with a good deal of reorganization in language to clarify the statement of the statutes.

Section 288 is the companion section to the disclaimer section, 253.

Section 292 is a criminal statute relating to falsely marking an article as being patented when it was not patented, which is now the present law. But this section revises it and makes a few changes, and also makes it an ordinary criminal action as well as an informer action as in the present statute.

Section 293 is a new section that is needed on some occasions to obtain jurisdiction over foreign patent owners that do not reside in the United States.

The revision notes, which follow and constitute a part of this report, point out in more detail the revisions made by the bill.

The committee is of the opinion that the codification of title 35 is most desirable in order that the laws relating to patents can be readily accessible and understandable. Previous codifications, such as those of titles 18 and 28, have proved their worth, and after a study of the bill H.R. 7794 the committee believes that it should be given favorable consideration.

APPENDIX

* * * *

REVISION NOTES

Notes explaining in detail the revision of the laws relating to patents are set forth in numerical order according to the section numbers of the revised title.

TITLE 35-PATENTS

PART I. PATENT OFFICE

PART II. PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

PART III. PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 1. ESTABLISHMENT, OFFICERS, FUNCTIONS

SECTION 1-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 1 (R.S. 475 and Executive Order 4175, Mar. 17, 1925).

The word 'all' is omitted from the corresponding section of the existing statute and 'except as otherwise provided by law' added, since some old records are kept in the National Archives, see 34 U.S.C., 1946 ed., ch. 8A

The word 'models' has been omitted to remove emphasis on models since they are no longer generally required. They are included by the word 'things.'

The phrase 'and to trade-mark registrations' is added. There is no enactment corresponding to this section in the trade-mark law. The original chapter of the Revised Statutes containing this section deals with the Patent Office as such in its administration of trade-marks as well as patents. This is explicitly brought out in some of the corresponding sections of the present chapter.

Changes in language are made.

SECTION 2-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 3 (R.S. 478).

'Certificates of trade-mark registrations' is added, see note under section 1. Changes in language are made and the specific date eliminated.

SECTION 3-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 2 (R.S. 476, amended (1) Feb. 15, 1916, ch. 22, sec. 1, 39 Stat. 8, (2) Feb. 14, 1927, ch. 139, sec. 1, 44 Stat. 1098, (3) April 11, 1930, ch. 132, sec. 1, 46 Stat. 155).

The temporary designation of the assistant commissioner as Commissioner in case of a vacancy in office is added. This will eliminate complications since present applicable general statutes (5 U.S.C, 1946 ed., sec. 7) permit a vacancy to be temporarily filled only for not more than 30 days.

Changes in language are made. 'Assistant commissioners' is used in the second sentence (and elsewhere in the bill) as referring to all three assistants.

This entire title is subject to Reorganization Plan No. 5 of 1950 (64 Stat. 1263) which vests all functions of the patent Office in the Secretary of Commerce and authorizes delegation by him. It has been found impractical to so word the various sections of the title, and a general provision has been inserted as the second paragraph of this section of the bill, leaving the wording of various sections of the title in terms of officers previously specified and to whom the functions presently stand delegated.

SECTION 4-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 4 (R.S. 480).

The language is revised and inability to apply for a patent, included in the original language, is made explicit.

The period of disability is increased to include one year after leaving the Office.

The further restriction, that no priority date earlier than one year after leaving the Office can be claimed, is added.

The one year period is made inapplicable to applications which may be pending when the revised title goes into effect by section 4(g) of the bill.

SECTION 5-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 5 (R.S. 479).

Specific mention of the office of chief clerk is omitted from the corresponding section of the existing statute, the officers requiring bonds, and the amounts of the bonds are to be designated by the Commissioner.

SECTION 6-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 6 (R.S. 481 and 483).

The two sections are combined into one with some changes in language.

'And the registration of trade-marks' is added, see note under section 1.

SECTION 7-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 7 (R.S. 482, amended (1) Mar. 2, 1927, ch. 273, sec. 3, 44 Stat. 1335, (2) April 11, 1930, ch. 132, sec. 2, 46 Stat. 155, (3) Mar. 4, 1950, ch. 50, 64 Stat. 11).

Some changes in language have been made and the reference to interferences, which are no longer considered by the Board of Appeals, has been deleted. Reference to reissues is omitted in view of the general provision of section 201.

SECTION 8-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 10 (R.S. 486).

Some change in language has been made. 'Purchased' is changed to 'maintained ' to include the existing library and keeping it up by additions. The phrase 'and other' is added to include legal works. The last phrase of the corresponding section of the existing statute is omitted as unnecessary.

SECTION 9-SECTION REVISED

Based on title 35, U.S.C. 1946 ed., sec. 6 note (June 10, 1898, ch. 430, sec. 1, 30 Stat. 440).

Changes in language are made.

SECTION 10-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 14 (Mar. 3, 1891, ch. 541, sec. 1 (part), 26 Stat. 908, 940).

Reference to other records is added. The fee for certification is omitted as it appears in the table of fees.

SECTION 11-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., secs. 13 and 16 (R.S. 489; July 9, 1947, ch. 211, sec. 301 (part), 61 Stat. 299, repeated in prior and subsequent appropriation acts).

Section is amplified to list the publications of the Patent Office, based on 44 U.S.C., 1946 ed., secs. 283, 283a.

The second sentence of item 1 of the revised section is a provision appearing annually in appropriation acts to enable the Patent Office to maintain a small printing press to place headings on drawings before the drawings are reproduced.

Language is changed.

SECTION 12-SECTION REVISED

Based on title 35, U.S.C. 1946 ed., secs. 15 and 78, part (Jan. 14, 1915, 38 Stat. 1221; Feb. 18, 1922, ch. 58, secs. 9, proviso in, 42 Stat. 393).

The first act mentioned applies to Canada only, the second to any country; these are consolidated in one section, specific reference to one country not being necessary.

Language is changed.

SECTION 13-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 78, part (R.S. 4934, Feb. 18, 1922, ch. 58, sec. 9, 42 Stat. 389, 393, amended June 15, 1950, ch. 249, 64 Stat. 215).

The proviso in the schedule of fees of the existing statute is made a separate section and some changes in language are made.

SECTION 14-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec 20 (R.S. 494).

Language is changed. The lists referred to in the corresponding section of existing statute, and which are omitted from the revised section, are the indexes provided for in section 11(a)4. The month of reporting is omitted. The report contemplated by R.S. 494 has been discontinued since 1925 under authority of 44 U.S.C., 1946 ed., sec. 212.

CHAPTER 2. PROCEEDINGS IN THE PATENT OFFICE

SECTION 21-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 21 (Mar. 2, 1927, ch. 273, sec. 14, 44 Stat. 1337).

'Fixed by statute' is omitted from the corresponding section of the existing statute as unnecessary. Saturday is added as a day on which action need not be taken.

SECTION 22-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 12 (R.S. 488).

Language is changed and 'or typewritten' is added after 'printed.'

SECTION 23-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 53 (R.S. 4905).

This section is placed in part 1 since it relates to trade-mark cases in the Patent Office as well as to patent cases.

Language is changed.

SECTION 24-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., secs. 54, 55 and 56 (R.S. 4906, amended Feb. 18, 1922, ch. 58, sec. 7, 42 Stat. 389, 391-2; R.S. 4907; R.S. 4908).

Three sections of the existing statute are combined with some changes in language and placed in part I since they apply to trade-mark cases in the Patent Office as well as to patent cases. Reference to a repealed statute in the first paragraph is replaced by reference to the Federal Rules of Civil Procedure and certain rules are made applicable.

CHAPTER 3. PRACTICE BEFORE PATENT OFFICE

SECTION 31-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 11 (R.S. 487, amended Feb. 18, 1922, ch. 58, sec. 3, 42 Stat. 390).

The present statute is divided into two sections, 31 and 32.

Changes in language are made.

SECTION 32-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 11 (R.S. 487 amended Feb. 18, 1922, ch. 58 sec. 3, 42 Stat. 390).

See note under section 31.

SECTION 33-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 11a (May 9, 1938, ch. 188, 52 Stat. 342).

This is a criminal statute. The language has been considerably simplified and the upper limit of the penalty is increased.

CHAPTER 4. PATENT FEES

SECTION 41-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 78 (R.S. 4934, amended (1) May 27, 1908, ch. 200, sec. 1 (part) 35 Stat. 317, 343; (2) June 25, 1919, ch. 414, sec. 2, 35 Stat. 843; (3) Feb. 18, 1922, ch. 58, sec. 9, 42 Stat. 389, 393; (4) Feb. 14, 1927, ch. 139, sec. 2, 44 Stat. 1098, 1099; (5) Mar. 2, 1927, ch. 273, sec. 13, 44 Stat. 1335, 1337; (6) April 11, 1930, ch. 132, sec. 3, 46 Stat. 155; (7) June 30, 1932, ch. 314, secs. 308 ,309, 47 Stat. 382, 410; (8) Aug. 9, 1939, ch. 619, sec. 3, 53 Stat. 1293; July 5, 1946, ch. 541, sec. 301 (part), 60 Stat. 446, 471.

The items in the schedule of fees are rearranged in a few instances and are numbered for convenient reference.

The obsolete fee for appeal from the examiners of interferences to the Board of Appeals is omitted.

The fee for appeal to the Board of Appeals is changed from $15 to $25.

Two provisos in the corresponding section of the existing statute have been made separate sections, see sections 12 and 13.

The fee for a certificate is changed from 50 cents to $1 to correspond to the same fee in the trade-mark statute.

A new item (8) is added to go with section 205.

An omnibus item to take care of miscellaneous minor fees is added; in view of this, two items in the present schedule are omitted.

The fee for reissue applications is changed slightly.

SECTION 42-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 79 (Mar. 6, 1920, ch. 94, sec. 1 (part), 41 Stat. 503, 512).

Language has been changed.

PART II. PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS

CHAPTER 10. PATENTABILITY OF INVENTIONS

SECTION 100-NEW SECTION

Paragraph (a) is added only to avoid repetition of the phrase 'invention or discovery' and its derivatives throughout the revised title. The present statutes use the phrase 'invention or discovery' and derivatives.

Paragraph (b) is noted under section 101.

Paragraphs (c) and (d) are added to avoid the use of long expressions in various parts of the revised title.

SECTION 101-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 31 (R.S. 4886, amended (1) Mar. 3, 1897, ch. 391, sec. 1, 29 Stat. 692, (2) May 23, 1930, ch. 312, sec. 1, 46 Stat. 376, (3) Aug. 5, 1939, ch. 450, sec. 1, 53 Stat. 1212).

The corresponding section of existing statute is split into two sections, section 101 relating to the subject matter for which patents may be obtained, and section 102 defining statutory novelty and stating other conditions for patentability.

Section 101 follows the wording of the existing statute as to the subject matter for patents, except that reference to plant patents has been omitted for incorporation in section 301 and the word 'art' has replaced by 'process ', which is defined in section 100. The word 'art' in the corresponding section of the existing statute has a different meaning than the same word as used in other places in the statute; it has been interpreted by the courts as being practically synonymous with process or method. 'Process' has been used as its meaning is more readily grasped than 'art' as interpreted, and the definition in section 100(b) makes it clear that 'process or method' is meant. The remainder of the definition clarifies the status of processes or methods which involve merely the new use of a known process, machine, manufacture, composition of matter, or material; they are processes or methods under the statute and may be patented provided the conditions for patentability are satisfied.

SECTION 102-SECTION REVISED

Paragraphs (a), (b), and (c) are based on 35 U.S.C., 1946 ed., sec. 31 (R.S. 4886, amended (1) Mar. 3, 1897, ch. 391, sec. 1, 29 Stat. 692, (2) May 23, 1930, ch. 312, sec. 1, 46 Stat. 376, (3) Aug. 5, 1939, ch. 450, sec. 1, 53 Stat. 1212).

No change is made in these paragraphs other than that due to division into lettered paragraphs. The interpretation by the courts of paragraph (a) as being more restricted than the actual language would suggest (for example, 'known' has been held to mean 'publicly known') is recognized but no change in the language is made at this time. Paragraph (a) together with section 104 contains the substance of title 35 U.S.C., 1946 ed., sec. 72 (R.S. 4923).

Paragraph (d) is based on 35 U.S.C., 1946 ed., sec. 32, first paragraph (R.S. 4887 (first paragraph), amended (1) Mar. 3, 1897, ch. 391, sec. 3, 29 Stat. 692, 693, (2) Mar. 3, 1903, ch. 1019, sec. 1, 32 Stat. 1225, 1226, (3) June 19, 1936, ch. 594, 49 Stat. 1529).

The section has been changed so that the prior foreign patent is not a bar unless it was granted before the filing of the application in the United States.

Paragraph (e) is new and enacts the rule of Milburnv. Davis-Bournonville, 270 U.S. 390, by reason of which a United States patent disclosing an invention dates from the date of filing the application for the purpose of anticipating a subsequent inventor.

Paragraph (f) indicates the necessity for the inventor as the party applying for patent. Subsequent sections permit certain persons to apply in place of the inventor under special circumstances.

Paragraph (g) is derived from title 35, U.S.C., 1946 ed., sec. 69 (R.S. 4920, amended (1) Mar. 3, 1897, ch. 391, sec. 2, 29 Stat. 692, (2) Aug. 5, 1939, ch. 450, sec. 1, 53 Stat. 1212), the second defense recited in this section. This paragraph retains the present rules of law governing the determination of priority of invention.

Language relating specifically to designs is omitted for inclusion in subsequent sections.

SECTION 103-NEW SECTION

There is no provision corresponding to the first sentence explicitly stated in the present statutes, but the refusal of patents by the Patent Office, and the holding of patents invalid by the courts, on the ground of lack of invention or lack of patentable novelty has been followed since at least as early as 1850. This paragraph is added with the view that an explicit statement in the statute may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out.

The second sentence states that patentability as to this requirement is not to be negatived by the manner in which the invention was made, that is, it is immaterial whether it resulted from long toil and experimentation or from a flash of genius.

SECTION 104-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 109 (Aug. 8, 1946, ch. 910, 60 Stat. 943).

Language has been changed and the last sentence has been broadened to refer to persons serving in connection with operations by or on behalf of the United States, instead of soley in connection with the prosecution of the war.

CHAPTER 11. APPLICATION FOR PATENT

SECTION 111-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 33 (R.S. 4888, amended (1) Mar. 3, 1915, ch. 94, sec. 1, 38 Stat. 958; (2) May 23, 1930, ch. 312, sec. 2, 46 Stat. 376).

The corresponding section of existing statute is divided into an introductory section relating to the application generally (this section) and a section on the specification (sec. 112).

The parts of the application are specified and the requirement for signature is placed in this general section so as to insure that only one signature will suffice.

SECTION 112-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 33 (R.S. 4888, amended (1) Mar. 3, 1915, ch. 94, sec. 1, 38 Stat. 958; (2) May 23, 1930, ch. 312, sec. 2, 46 Stat. 376).

The sentence relating to signature of the specification is omitted in view of the general requirement for a signature in section 111.

The last sentence is omitted for inclusion in the chapter relating to plant patents.

The clause relating to machines is omitted as unnecessary and the requirement for disclosing the best mode of carrying out the invention is stated as generally applicable to all types of invention (derived from title 35, U.S.C, 1946 ed., sec. 69, first defense).

The clause relating to the claim is made a separate paragraph to emphasize the distinction between the description and the claim or definition, and the language is modified.

A new paragraph relating to functional claims is added.

SECTION 113-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 34, part (R.S. 4889, amended Mar. 3, 1915, ch. 94, sec. 2, 38 Stat. 958).

The requirement for signature inthe corresponding section of existing statute is omitted; regulations of the Patent Office can take care of any substitute. A redundant clause is omitted.

SECTION 114-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 34, part (R.S. 4890 and 4891).

The change in language in the second paragraph broadens the requirement for specimens.

SECTION 115-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 35 (R.S. 4892, amended (1) Mar. 3, 1903, ch. 1019, sec. 2, 32 Stat. 1225, 1226, (2) May 23, 1930, ch. 312, sec. 3, 46 Stat. 376).

The expression at the end of the second sentence is added to avoid application of the District of Columbia law to oaths taken outside the District.

Changes in language are made.

SECTION 116-NEW SECTION

The first paragraph is implied in the present statutes, and the part of the last paragraph relating to omission of an erroneously joined inventor is in the Patent Office rules. The remainder is new and provides for the correction of a mistake in erroneously joining a person as inventor, and for filing an application when one of several joint inventors cannot be found. This section is ancillary to section 256.

SECTION 117-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 46 (R.S. 4896, amended (1) Feb. 28, 1899, ch. 227, 30 Stat. 915, (2) Mar. 3, 1903, ch. 1019, sec. 3, 32 Stat. 1225, 1226, (3) May 23, 1908, ch. 188, 35 Stat. 245).

The language has been considerably simplified.

SECTION 118-NEW SECTION

This section is new and provides for the filing of an application by another on behalf of the inventor in certain special hardship situations.

SECTION 119-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 32, second paragraph (R.S. 4887, second paragraph, amended (1) Mar. 3, 1903, ch. 1019, sec. 1, 32 Stat. 1225, 1226, (2) June 19, 1936, ch. 594, 49 Stat. 1529, (3) Aug. 5, 1939, ch. 450, sec. 1, 53 Stat. 1212).

The first paragraph is the same as the present law with changes in language. The references to designs have been removed for inclusion in another section and the opening clause has been modified to accord with actual practice and the requirements of the International Convention for the Protection of Industrial Property.

The second paragraph is new, making an additional procedure requirement for obtaining the right of priority is based are required so that the record of the United States patent will be complete in this country.

SECTION 120-NEW SECTION

This section represents present law not expressed in the statute, except for the added requirement that the first application must be specifically mentioned in the second.

SECTION 121-NEW SECTION

This section enacts as law existing practice with respect to division, at the same time introducing a number of changes. Division is made discretionary with the Commissioner. The requirements of section 120 are made applicable and neither of the resulting patents can be held invalid over the other merely because of their being divided in several patents. In some cases a divisional application may be filed by the assignee.

SECTION 122-NEW SECTION

This section enacts the Patent Office rule of secrecy of applications.

CHAPTER 12. EXAMINATION OF APPLICATION

SECTION 131-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 36 (R.S. 4893).

The first part is revised in language and amplified. The phrase 'and thatthe invention is sufficiently useful and important' is omitted as unnecessary, the requirements for patentability being stated in sections 101, 102 and 103.

SECTION 132-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 51 (R.S. 4903, amended Aug. 5, 1939, ch. 452, sec. 1, 53 Stat. 1213).

The first paragraph of the corresponding section of existing statute is revised in language and amplified to incorporate present practice; the second paragraph of the existing statute is placed in section 135.

The last sentence relating to new matter is added but represents no departure from present practice.

SECTION 133-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 37 (R.S. 4894, amended (1) Mar. 3, 1897, ch. 391, sec. 4, 29 Stat. 692, 693, (2) July 6, 1916, ch. 225, sec. 1, 39 Stat. 345, 347-8, (3) Mar. 2, 1927, ch. 273, sec. 1, 44 Stat. 1335, (4) Aug. 7, 1939, ch. 568, 53 Stat. 1264).

The opening clause of the corresponding section of existing statute is omitted as having no present day meaning or value and the last two sentences are omitted for inclusion in section 267. The notice is states as given or mailed. Language is revised.

SECTION 134-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 57 (R.S. 4909 amended (1) Mar. 2, 1927, ch. 273, sec. 5, 44 Stat. 1335, 1336, (2) Aug. 5, 1939, ch. 451, sec. 2, 53 Stat. 1212).

Reference to reissues is omitted in view of the general provision in section 251. Minor changes in language are made.

SECTION 135-SECTION REVISED

The first paragraph is based on title 35, U.S.C., 1946 ed., sec. 52 (R.S. 4904 amended (1) Mar. 2, 1927, ch. 273, sec. 4, 44 Stat. 1335, 1336, (2) Aug. 5, 1939, ch. 451, sec. 1, 53 Stat. 1212).

The first paragraph states the existing corresponding statute with a few changes in language. An explicit statement that the Office decision on priority constitutes a final refusal by the Office of the claims involved, is added. The last sentence is new and provides that judgment adverse to a patentee constitutes cancellation of the claims of the patent involved after the judgment has become final, the patentee has a right of appeal (sec. 141) and is given a right of review by civil action (sec. 146).

The second paragraph is based on title 35, U.S.C., 1946 ed., sec. 51, (R.S. 4903, amended Aug. 5, 1939, ch. 452, sec. 1, 53 Stat. 1213). Changes in language are made.

CHAPTER 13. REVIEW OF PATENT OFFICE DECISIONS

SECTION 141-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 59a (R.S. 4911, amended (1) Mar. 2, 1927, ch. 273, sec. 8, 44 Stat. 1336, (2) Mar. 2, 1929, ch. 4888, sec. 2a, 45 Stat. 1476, (3) Aug. 5, 1939, ch. 451, sec. 3, 53 Stat. 1212).

Changes in language are made.

SECTION 142 -SECTION REVISED

Based on title 35, U.S.C., 1946 ed., Sec. 60 (R.S. 4912 amended(1) Mar. 2, 1927, ch. 273, Sec. 9, 44 Stat. 1336(2) Mar. 2, 1929, ch. 4888, Sec. 2(b), 45 Stat. 1476).

Changes in language are made.

SECTION 143-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 61 (R.S. 4913, amended Mar. 2, 1927, ch. 273, sec. 10, 44 Stat. 1336).

Language is changed. The requirement that the Commissioner notify the parties is omitted and a requirement that the court notify the parties is added. The statement relating to filing the papers and testimony is made more explicit.

SECTION 144-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 62 (R.S. 4914).

Language is changed and the last sentence of the corresponding section of existing statute omitted as superfluous; such a sentence does not appear in the present civil action section, 35 U.S.C. 63 and in either case the validity of the patent may be questioned.

SECTION 145-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 63 (R.S. 4915, amended (1) Mar. 2, 1927, ch. 273, sec. 11, 44 Stat. 1336, (2) Mar. 2, 1929, ch. 488, sec. 2(b), 45 Stat. 1476, (3) Aug. 5, 1939, ch. 451, sec. 4, 53 Stat. 1212).

Bill in equity is changed to civil action and the section is restricted to exclude interferences which are covered by the next section. The time for filing the action is changed to the same as the time for appeal. The requirement for the applicant to file a copy of the decision in the Patent Office is omitted. Language is changed.

SECTION 146-SECTION REVISED

The first paragraph and parts of the second paragraph are based on title 35, U.S.C., 1946 ed., sec. 63 (R.S. 4915, amended (1) Mar. 2, 1927, ch. 273, sec. 11, 44 Stat. 1336, (2) Mar. 2, 1929, ch. 488, sec. 2(b), 45 Stat. 1476, (3) Aug. 5, 1939, ch. 451, sec. 4, 53 Stat. 1212), 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.

The second sentence is based on 35 U.S.C., 1946 ed., sec. 72a (Mar. 3, 1927, ch. 364, 44 Stat. 1394, reenacted Oct. 31, 1951, ch. 655, sec. 53a, 65 Stat. 728) 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.

CHAPTER 14. ISSUE OF PATENT

SECTION 151-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 41 (R.S. 4885, amended (1) May 23, 1908, ch. 189, 35 Stat. 246, (2) Aug. 9, 1939, sec. 2, ch. 619, 53 Stat. 1293).

Language is changed.

SECTION 152-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 44 (R.S. 4895).

Language is changed and the reference to reissues is omitted in view of the general provision in section 251.

SECTION 153-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 39 (R.S. 4883, amended (1) Feb. 18, 1888, ch. 15, 25 Stat. 40, (2) April 11, 1903, ch. 417, 32 Stat. 95, (3) Feb. 18, 1922, ch. 58, sec. 5, 42 Stat. 391).

The phrases referring to the attesting officers and to the recording of the patents are broadened.

SECTION 154-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 40 (R.S. 4884, amended May 23, 1930 ch. 312, sec. 1, 46 Stat. 376).

The reference to plants is omitted for inclusion in another section and the reference to the title is shortened since the title is of no legal significance.

The wording of the granting clause is changed to 'the right to exclude others from making, using, or selling', following language used by the Supreme Court, to render the meaning clearer.

'United States' is defined in section 100.

CHAPTER 15. PLANT PATENTS

SECTION 161-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 31, part (R.S. 4886, amended (1) Mar. 3, 1897, ch. 391, sec. 1, 29 Stat. 692, (2) May 23, 1930, ch. 312, sec. 1, 46 Stat. 376, (3) Aug. 5, 1939, ch. 450, sec. 1, 53 Stat. 1212).

The provision relating to plants in the corresponding section of existing statute is made a separate section.

SECTION 162-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 40, part (R.S. 4884, amended May 23, 1930, ch. 312, sec. 1, 46 Stat. 376).

This provision is from R.S. 4884 (see section 154) amended in language.

SECTION 164-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 56a (May 23, 1930, ch. 312, sec. 4, 46 Stat. 376).

Language is changed.

CHAPTER 16. DESIGNS

SECTION 171-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 73 (R.S. 4929, amended (1) May 9, 1902, ch. 783, 32 Stat. 193, (2) Aug. 5, 1939, ch. 450, sec. 1, 53 Stat. 1212; R.S. 4933).

The list of conditions specified in the corresponding section of existing statute is omitted as unnecessary in view of the general inclusion of all conditions applying to other patents. Language is changed.

SECTION 172-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 32, part (R.S. 4887, amended (1) Mar. 3, 1903, ch. 1019, sec. 1, 32 Stat. 1225, 1226, (2) June 19, 1936, ch. 594, 49 Stat. 1529, (3) Aug. 5, 1939, ch. 450, sec. 1, 53 Stat. 1212).

This provision is taken from R.S. 4887 (see section 119) and made a separate section.

SECTION 173-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 77 (R.S. 4931).

Language is changed slightly.

CHAPTER 17. SECRECY OF CERTAIN INVENTIONS AND FILING APPLICATIONS IN FOREIGN

COUNTRY

SECTION 181-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 151 (Feb. 1, 1952, ch. 4, sec. 1, 66 Stat. 3, 4).

Language is changed.

SECTION 182-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 152 (Feb. 1, 1952, ch. 4, sec. 2, 66 Stat. 4).

Language is changed.

SECTION 183-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 153 (Feb. 1, 1952, ch. 4, sec. 3, 66 Stat. 4, 5).

Language is changed.

SECTION 184-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 154 (Feb. 1, 1952, ch. 4, sec. 4, 66 Stat. 5).

Language is changed.

SECTION 185-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 155 (Feb. 1, 1952, ch. 4, sec. 5, 66 Stat. 5).

Language is changed.

SECTION 186-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 156 (Feb. 1, 1952, ch. 4, sec. 6, 66 Stat. 5, 6).

Language is changed.

SECTION 187-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 157 (Feb. 1, 1952, ch. 4, sec. 7, 66 Stat. 6).

Language is changed.

SECTION 188-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 158 (Feb. 1, 1952, ch. 4, sec. 8, 66 Stat. 6).

Language is changed.

PART III. PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 25. AMENDMENT AND CORRECTION OF PATENTS

SECTION 215-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 64 (R.S. 4916, amended May 24,1928, ch. 730, 45 Stat. 732).

The sentences of the corresponding section of existing statute are rearranged and divided into two sections with some changes in language. The clause at the end of the present statute is omitted as obsolete.

The third paragraph incorporates by reference the requirements of other applications, and adds a new provision relating to application for reissue being made in certain cases by the assignee.

A two year period of limitation on applying for broadened reissues is added, codifying the present rule of decision with a fixed period.

SECTION 252-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 64 (R.S. 4916, amended May 24, 1928, ch. 730, 45 Stat. 732).

The first paragraph follows the present section with some rearrangement in language. The second paragraph adds new provisions for the protection of intervening rights, the court is given discretion to protect legitimate activities which would be adversely affected by the grant of a reissue and things made before the grant of the reissue are not subject to the reissue unless a claim of the original patent which is repeated in the reissue is infringed.

SECTION 253-SECTION REVISED

Based on title 35, U.S.C, 1946 ed., sec. 65 (R.S. 4917).

Language is changed and substantive changes are introduced; (1) only a claim as a whole may be disclaimed, and (2) the provision regarding delay is omitted. See preliminary general description of bill.

See section 288.

The second paragraph is new and provides for the disclaiming or dedication of an entire patent, or any terminal part of the term, for example, a patentee may disclaim the last three years of the term of his patent.

SECTION 254-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 88 (Mar. 4, 1925, ch. 535, sec. 1, 43 Stat. 1268).

The last sentence of the present section is omitted as obsolete. A sentence is added similar to a provision in the corresponding section in the trade-mark law, 15 U.S.C., 1946 ed., sec. 1057 (f), and provides that the Commissioner may issue a corrected patent instead of a certificate of correction.

SECTION 255-NEW SECTION

This section, providing for the correction of minor clerical errors made by the applicant, is new and follows a similar provision in the trade-mark law, 15 U.S.C., 1946 ed., sec. 1057(g).

SECTION 256-NEW SECTION

This section is new and is companion to section 116.

The first two paragraphs provide for the correction of the inadvertent joining or nonjoining of a person as a joint inventor. The third paragraph provides that a patent shall not be invalid for such cause, and also provides that a court may order correction of a patent; the two sentences of this paragraph are independent.

CHAPTER 26. OWNERSHIP AND ASSIGNMENT

SECTION 261-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 47 (R.S. 4898, amended (1) Mar. 3, 1897, ch. 391, sec. 5, 29 Stat. 93, (2) Feb. 18, 1922, ch. 58, sec. 6, 42 Stat. 391, (3) Aug. 18, 1941, ch. 370, 55 Stat. 634).

The first paragraph is new but is declaratory only. The second paragraph is the same as in the corresponding section of existing statute. The third paragraph is from the existing statute, a specific reference to another statute is omitted. The fourth paragraph is the same as the existing statute but language has been changed.

SECTION 262-NEW SECTION

This section states a condition in existing law not expressed in the existing statutes.

CHAPTER 27. GOVERNMENT INTERESTS IN PATENTS

SECTION 266-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 45 (Mar. 3, 1883, ch. 143, 22 Stat. 625, amended April 30, 1928, ch. 460, 45 Stat. 467).

Changes in language are made. The omission of the specific reference to 35 U.S.C., 1946 ed., sec. 31, (r.s. 4886) broadens the section so as to include design patents.

SECTION 267-SECTION REVISED

Based on title 35, U.S.C. 1946 ed., sec. 37 (R.S. 4894, amended (1) Mar. 3, 1897, ch. 391, sec. 4, 29 Stat. 692, 693, (2) July 6, 1916, ch. 225, sec. 1, 39 Stat. 345, 347-8, (3) Mar. 2, 1927, ch. 273, sec. 1, 44 Stat. 1335, (4) Aug. 7, 1939, ch. 568, 53 Stat. 1264).

This provision, which appears as the last two sentences of the corresponding section of the present statute (see note to section 133) is made a separate section and rewritten in simpler form.

CHAPTER 28. INFRINGEMENT OF PATENTS

SECTION 271-NEW SECTION

The first paragraph of this section is declaratory only, defining infringement.

Paragraphs (b) and (c) define and limit contributory infringement of a patent and paragraph (d) is ancillary to these paragraphs, see preliminary general description of bill. One who actively induces infringement as by aiding and abetting the same is liable as an infringer, and so is one who sells a component part of a patented invention or material or apparatus for use therein knowing the same to be especially made or especially adapted for use in the infringement of the patent except in the case of a staple article or commodity of commerce having other uses. A patentee is not deemed to have misused his patent solely by reason of doing anything authorized by the section.

SECTION 272-NEW SECTION

This section follows the requirement of the International Convention for the Protection of Industrial Property, to which the United States is a party, and also codifies the holding of the Supreme Court that use of a patented invention on board a foreign ship does not infringe a patent.

CHAPTER 29. REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

SECTION 281-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., secs. 67 and 70, part (R.S. 4919; R.S. 4921, amended (1) Mar. 3 1897, ch. 391, sec. 6, 29 Stat. 694, (2) Feb. 18, 1922, ch. 58, sec. 8, 42 Stat. 392, (3) Aug. 1, 1946, ch. 726, sec. 1, 60 Stat. 778).

The corresponding two sections so existing law are divided among sections 281, 283, 284, 285, 286 and 289 with some changes in language. Section 281 serves as an introduction or preamble to the following sections, the modern term civil action is used, there would be, of course, a right to a jury trial when no injunction is sought.

SECTION 282-SECTION REVISED

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

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

The five defenses names 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.

SECTION 283-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 70, part (R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, sec. 6, 29 Stat. 694, (2) Feb. 18, 1922, ch. 58, sec. 8, 42 Stat. 392, (3) Aug. 1, 1946, ch. 726, sec. 1, 60 Stat. 778).

This section is the same as the provision which opens R.S. 4921 with minor changes in language.

SECTION 284-SECTION REVISED

Based on title 35, 7.S.C., 1946 ed., secs. 67 and 70, part (R.S. 4919; R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, sec. 6, 29 Stat. 694, (2) Feb. 18, 1922, ch. 58, sec. 8, 42 Stat. 392, (3) Aug. 1, 1946, ch. 726, sec. 1, 60 Stat. 778).

This section consolidates the provisions relating to damages in R.S. 4919 and 4921, with some changes in language.

SECTION 285-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 70, part (R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, sec. 6, 29 Stat. 694, (2) Feb. 18, 1922, ch. 58, sec. 8, 42 Stat. 392, (3) Aug. 1, 1946, ch. 726, sec. 1, 60 Stat. 778).

This section is substantially the same as the corresponding provision in R.S. 4921; 'in exceptional cases' has been added as expressing the intention of the present statute as shown by its legislative history and as interpreted by the courts.

SECTION 286-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 70, part (R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, sec. 6, 29 Stat. 694, (2) Feb. 18, 1922, ch. 58, sec. 8, 42 Stat. 392, (3) Aug. 1, 1946, ch. 726, sec. 1, 60 Stat. 778).

The first paragraph is the same as the provision in R.S. 4921 with minor changes in language, with the added provision relating to the date for counterclaims for infringement.

The second paragraph is new and relates to extending the period of limitations with respect to suits in the Court of Claims in certain instances when administrative consideration is pending.

SECTION 287-SECTION REVISED

Based on title 35, 7.S.C., 1946 ed., sec. 49 (R.S. 4900, amended Feb. 7, 1927, ch. 67, 44 Stat. 1058).

Language is changed. The proviso in the corresponding section of existing statute is omitted as being temporary in character and now obsolete.

SECTION 288-SECTION REVISED

Based on title 35, 7.S.C., 1946 ed., sec. 71 (R.S. 4922).

The necessity for a disclaimer to recover on valid claims is eliminated. See section 253.

Language is changed.

SECTION 289-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., secs. 74, 75 (Feb. 4, 1887, ch. 105, secs. 1, 2, 24 Stat. 387, 388).

Language is changed.

SECTION 290-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 70, part (R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, sec. 6, 29 Stat. 694, (2) Feb. 18, 1922, ch. 58, sec. 8, 42 Stat. 392, (3) Aug. 1, 1946, ch. 726, sec. 1, 60 Stat. 778).

This is the last sentence of R.S. 4921, third paragraph, with minor changes in language.

SECTION 291-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 66 (R.S. 4918, amended Mar. 2, 1927, ch. 273, sec. 12, 44 Stat. 1337).

Language is changed

SECTION 292-SECTION REVISED

Based on title 35, U.S.C., 1946 ed., sec. 50 (R.S. 4901).

This is a criminal provision. The first two paragraphs of the corresponding section of existing statute are consolidated, a new paragraph relating to false marking of 'patent applied for' is added, and false advertising is included in all the offenses. The minimum fine, which has been interpreted by the courts as a maximum, is replaced by a higher maximum. The informer action is included as additional to an ordinary criminal action.

SECTION 293-NEW SECTION

This section provides for service on non-resident patentees.

TABLES

TABLE 1.-REVISED STATUTES AND STATUTES AT LARGE

Showing where the subject matter of the Revised Statutes and Statutes at Large

will be found in revised title 35

Revised Statutes

STATUTES AT LARGE

STATUTES AT LARGE-Continued

STATUTES AT LARGE-Continued

TABLE 2.-UNITED STATES CODE

Showing where sections of the United States Code, 1946 edition, will be found

in revised title 35

TABLE 3.-LAWS OMITTED AND REPEALED

TABLE 4.-LAWS OMITTED BUT NOT REPEALED

Showing laws omitted from this revision but not included in the schedule of

repeals

The following statutes are not included in the revision, since they are mainly of a temporary nature and will be appropriately codified as may be necessary. October 31, 1942, ch. 634, 56 Stat. 1013 (35 U.S.C., 1946 ed., secs. 89-97).

Royalty Adjustment Act, expires by its terms. Aug. 8, 1946, ch. 910, 60 Stat. 990 (35 U.S.C., 1946 ed., secs. 101-114).

Boykin Act; except section 9 (35 U.S.C., 1946 ed. sec. 109) which is in section 104.

The time for taking action under this act has expired. July 23, 1947, ch. 302, 61 Stat. 413. Extension of Boykin Act. August 6, 1947, ch. 511, 61 Stat. 794, relating to peach treaties and patents to citizens of Germany and Japan. June 30, 1950, ch. 444, 64 Stat. 316 (35 U.S.C., 1946 ed., secs. 115-118).

Relates to extensions of patents to veterans of World War II, the time for taking action under this act has expired.