Patents - 35 USC Section 104

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01/19/04

Sec. 104. Invention made abroad

(a) In General. -
(1) Proceedings. - In proceedings in the Patent and Trademark
Office, in the courts, and before any other competent authority,
an applicant for a patent, or a patentee, may not establish a
date of invention by reference to knowledge or use thereof, or
other activity with respect thereto, in a foreign country other
than a NAFTA country or a WTO member country, except as provided
in sections 119 and 365 of this title.
(2) Rights. - If an invention was made by a person, civil or
military -
(A) while domiciled in the United States, and serving in any
other country in connection with operations by or on behalf of
the United States,
(B) while domiciled in a NAFTA country and serving in another
country in connection with operations by or on behalf of that
NAFTA country, or
(C) while domiciled in a WTO member country and serving in
another country in connection with operations by or on behalf
of that WTO member country,
that person shall be entitled to the same rights of priority in
the United States with respect to such invention as if such
invention had been made in the United States, that NAFTA country,
or that WTO member country, as the case may be.
(3) Use of information. - To the extent that any information in
a NAFTA country or a WTO member country concerning knowledge,
use, or other activity relevant to proving or disproving a date
of invention has not been made available for use in a proceeding
in the Patent and Trademark Office, a court, or any other
competent authority to the same extent as such information could
be made available in the United States, the Director, court, or
such other authority shall draw appropriate inferences, or take
other action permitted by statute, rule, or regulation, in favor
of the party that requested the information in the proceeding.
(b) Definitions. - As used in this section -
(1) the term "NAFTA country" has the meaning given that term in
section 2(4) of the North American Free Trade Agreement
Implementation Act; and
(2) the term "WTO member country" has the meaning given that
term in section 2(10) of the Uruguay Round Agreements Act.

AMENDMENTS
2002 - Subsec. (a)(3). Pub. L. 107-273 made technical correction
to directory language of Pub. L. 106-113. See 1999 Amendment note
below.
1999 - Subsec. (a)(3). Pub. L. 106-113, as amended by Pub. L.
107-273, substituted "Director" for "Commissioner".
1994 - Pub. L. 103-465 amended section generally, expanding scope
of section to include WTO member countries along with NAFTA
countries and defining term "WTO member country".
1993 - Pub. L. 103-182 amended section catchline and text
generally. Prior to amendment, text read as follows: "In
proceedings in the Patent and Trademark Office and in the courts,
an applicant for a patent, or a patentee, may not establish a date
of invention by reference to knowledge or use thereof, or other
activity with respect thereto, in a foreign country, except as
provided in sections 119 and 365 of this title. Where an invention
was made by a person, civil or military, while domiciled in the
United States and serving in a foreign country in connection with
operations by or on behalf of the United States, he shall be
entitled to the same rights of priority with respect to such
invention as if the same had been made in the United States."
1984 - Pub. L. 98-622 substituted "Patent and Trademark Office"
for "Patent Office".
1975 - Pub. L. 94-131 inserted in exception provision reference
to section 365 of this title relating to priority of applications
having benefit of filing date of prior applications.
Pub. L. 93-596 substituted "Patent and Trademark Office" for
"Patent Office".
EFFECTIVE DATE OF 1999 AMENDMENT
Amendment by Pub. L. 106-113 effective 4 months after Nov. 29,
1999, see section 1000(a)(9) [title IV, Sec. 4731] of Pub. L.
106-113, set out as a note under section 1 of this title.
EFFECTIVE DATE OF 1994 AMENDMENT
Section 531(b) of Pub. L. 103-465 provided that:
"(1) In general. - Except as provided in paragraph (2), the
amendment made by this section [amending this section] shall apply
to all patent applications that are filed on or after the date that
is 12 months after the date of entry into force of the WTO
Agreement with respect to the United States [Jan. 1, 1995].
"(2) Establishment of date. - An applicant for a patent, or a
patentee, may not establish a date of invention for purposes of
title 35, United States Code, that is earlier than 12 months after
the date of entry into force of the WTO Agreement with respect to
the United States by reference to knowledge or use, or other
activity, in a WTO member country, except as provided in sections
119 and 365 of such title."
EFFECTIVE DATE OF 1993 AMENDMENT
Amendment by Pub. L. 103-182 applicable to all patent
applications filed on or after Dec. 8, 1993, provided that
applicant for a patent, or a patentee, may not establish a date of
invention by reference to knowledge or use thereof, or other
activity with respect thereto, in NAFTA country, except as provided
in sections 119 and 365 of this title, that is earlier than Dec. 8,
1993, see section 335(b) of Pub. L. 103-182, set out as a note
under section 1052 of Title 15, Commerce and Trade.
EFFECTIVE DATE OF 1984 AMENDMENT
Amendment by Pub. L. 98-622 effective on Nov. 8, 1984, see
section 406(a) of Pub. L. 98-622, set out as a note under section
351 of this title.
EFFECTIVE DATE OF 1975 AMENDMENTS
Amendment by Pub. L. 94-131 effective Jan. 24, 1978, and
applicable on and after that date to patent applications filed in
the United States and to international applications, where
applicable, see section 11 of Pub. L. 94-131, set out as an
Effective Date note under section 351 of this title.
Amendment by Pub. L. 93-596 effective Jan. 2, 1975, see section 4
of Pub. L. 93-596, set out as a note under section 1111 of Title
15, Commerce and Trade.

Last modified: April 20, 2006

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Patents - 35 USC Section 104

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