Patents - 35 USC Section 154

01/19/04

Sec. 154. Contents and term of patent; provisional rights

(a) In General. -
(1) Contents. - Every patent shall contain a short title of the
invention and a grant to the patentee, his heirs or assigns, of
the right to exclude others from making, using, offering for
sale, or selling the invention throughout the United States or
importing the invention into the United States, and, if the
invention is a process, of the right to exclude others from
using, offering for sale or selling throughout the United States,
or importing into the United States, products made by that
process, referring to the specification for the particulars
thereof.
(2) Term. - Subject to the payment of fees under this title,
such grant shall be for a term beginning on the date on which the
patent issues and ending 20 years from the date on which the
application for the patent was filed in the United States or, if
the application contains a specific reference to an earlier filed
application or applications under section 120, 121, or 365(c) of
this title, from the date on which the earliest such application
was filed.
(3) Priority. - Priority under section 119, 365(a), or 365(b)
of this title shall not be taken into account in determining the
term of a patent.
(4) Specification and drawing. - A copy of the specification
and drawing shall be annexed to the patent and be a part of such
patent.
(b) Adjustment of Patent Term. -
(1) Patent term guarantees. -
(A) Guarantee of prompt patent and trademark office
responses. - Subject to the limitations under paragraph (2), if
the issue of an original patent is delayed due to the failure
of the Patent and Trademark Office to -
(i) provide at least one of the notifications under section
132 of this title or a notice of allowance under section 151
of this title not later than 14 months after -
(I) the date on which an application was filed under
section 111(a) of this title; or
(II) the date on which an international application
fulfilled the requirements of section 371 of this title;
(ii) respond to a reply under section 132, or to an appeal
taken under section 134, within 4 months after the date on
which the reply was filed or the appeal was taken;
(iii) act on an application within 4 months after the date
of a decision by the Board of Patent Appeals and
Interferences under section 134 or 135 or a decision by a
Federal court under section 141, 145, or 146 in a case in
which allowable claims remain in the application; or
(iv) issue a patent within 4 months after the date on which
the issue fee was paid under section 151 and all outstanding
requirements were satisfied,
the term of the patent shall be extended 1 day for each day
after the end of the period specified in clause (i), (ii),
(iii), or (iv), as the case may be, until the action described
in such clause is taken.
(B) Guarantee of no more than 3-year application pendency. -
Subject to the limitations under paragraph (2), if the issue of
an original patent is delayed due to the failure of the United
States Patent and Trademark Office to issue a patent within 3
years after the actual filing date of the application in the
United States, not including -
(i) any time consumed by continued examination of the
application requested by the applicant under section 132(b);
(ii) any time consumed by a proceeding under section
135(a), any time consumed by the imposition of an order under
section 181, or any time consumed by appellate review by the
Board of Patent Appeals and Interferences or by a Federal
court; or
(iii) any delay in the processing of the application by the
United States Patent and Trademark Office requested by the
applicant except as permitted by paragraph (3)(C),
the term of the patent shall be extended 1 day for each day
after the end of that 3-year period until the patent is issued.
(C) Guarantee or adjustments for delays due to interferences,
secrecy orders, and appeals. - Subject to the limitations under
paragraph (2), if the issue of an original patent is delayed
due to -
(i) a proceeding under section 135(a);
(ii) the imposition of an order under section 181; or
(iii) appellate review by the Board of Patent Appeals and
Interferences or by a Federal court in a case in which the
patent was issued under a decision in the review reversing an
adverse determination of patentability,
the term of the patent shall be extended 1 day for each day of
the pendency of the proceeding, order, or review, as the case
may be.
(2) Limitations. -
(A) In general. - To the extent that periods of delay
attributable to grounds specified in paragraph (1) overlap, the
period of any adjustment granted under this subsection shall
not exceed the actual number of days the issuance of the patent
was delayed.
(B) Disclaimed term. - No patent the term of which has been
disclaimed beyond a specified date may be adjusted under this
section beyond the expiration date specified in the disclaimer.
(C) Reduction of period of adjustment. -
(i) The period of adjustment of the term of a patent under
paragraph (1) shall be reduced by a period equal to the
period of time during which the applicant failed to engage in
reasonable efforts to conclude prosecution of the
application.
(ii) With respect to adjustments to patent term made under
the authority of paragraph (1)(B), an applicant shall be
deemed to have failed to engage in reasonable efforts to
conclude processing or examination of an application for the
cumulative total of any periods of time in excess of 3 months
that are taken to respond to a notice from the Office making
any rejection, objection, argument, or other request,
measuring such 3-month period from the date the notice was
given or mailed to the applicant.
(iii) The Director shall prescribe regulations establishing
the circumstances that constitute a failure of an applicant
to engage in reasonable efforts to conclude processing or
examination of an application.
(3) Procedures for patent term adjustment determination. -
(A) The Director shall prescribe regulations establishing
procedures for the application for and determination of patent
term adjustments under this subsection.
(B) Under the procedures established under subparagraph (A),
the Director shall -
(i) make a determination of the period of any patent term
adjustment under this subsection, and shall transmit a notice
of that determination with the written notice of allowance of
the application under section 151; and
(ii) provide the applicant one opportunity to request
reconsideration of any patent term adjustment determination
made by the Director.
(C) The Director shall reinstate all or part of the
cumulative period of time of an adjustment under paragraph
(2)(C) if the applicant, prior to the issuance of the patent,
makes a showing that, in spite of all due care, the applicant
was unable to respond within the 3-month period, but in no case
shall more than three additional months for each such response
beyond the original 3-month period be reinstated.
(D) The Director shall proceed to grant the patent after
completion of the Director's determination of a patent term
adjustment under the procedures established under this
subsection, notwithstanding any appeal taken by the applicant
of such determination.
(4) Appeal of patent term adjustment determination. -
(A) An applicant dissatisfied with a determination made by
the Director under paragraph (3) shall have remedy by a civil
action against the Director filed in the United States District
Court for the District of Columbia within 180 days after the
grant of the patent. Chapter 7 of title 5 shall apply to such
action. Any final judgment resulting in a change to the period
of adjustment of the patent term shall be served on the
Director, and the Director shall thereafter alter the term of
the patent to reflect such change.
(B) The determination of a patent term adjustment under this
subsection shall not be subject to appeal or challenge by a
third party prior to the grant of the patent.
(c) Continuation. -
(1) Determination. - The term of a patent that is in force on
or that results from an application filed before the date that is
6 months after the date of the enactment of the Uruguay Round
Agreements Act shall be the greater of the 20-year term as
provided in subsection (a), or 17 years from grant, subject to
any terminal disclaimers.
(2) Remedies. - The remedies of sections 283, 284, and 285 of
this title shall not apply to acts which -
(A) were commenced or for which substantial investment was
made before the date that is 6 months after the date of the
enactment of the Uruguay Round Agreements Act; and
(B) became infringing by reason of paragraph (1).
(3) Remuneration. - The acts referred to in paragraph (2) may
be continued only upon the payment of an equitable remuneration
to the patentee that is determined in an action brought under
chapter 28 and chapter 29 (other than those provisions excluded
by paragraph (2)) of this title.
(d) Provisional Rights. -
(1) In general. - In addition to other rights provided by this
section, a patent shall include the right to obtain a reasonable
royalty from any person who, during the period beginning on the
date of publication of the application for such patent under
section 122(b), or in the case of an international application
filed under the treaty defined in section 351(a) designating the
United States under Article 21(2)(a) of such treaty, the date of
publication of the application, and ending on the date the patent
is issued -
(A)(i) makes, uses, offers for sale, or sells in the United
States the invention as claimed in the published patent
application or imports such an invention into the United
States; or
(ii) if the invention as claimed in the published patent
application is a process, uses, offers for sale, or sells in
the United States or imports into the United States products
made by that process as claimed in the published patent
application; and
(B) had actual notice of the published patent application
and, in a case in which the right arising under this paragraph
is based upon an international application designating the
United States that is published in a language other than
English, had a translation of the international application
into the English language.
(2) Right based on substantially identical inventions. - The
right under paragraph (1) to obtain a reasonable royalty shall
not be available under this subsection unless the invention as
claimed in the patent is substantially identical to the invention
as claimed in the published patent application.
(3) Time limitation on obtaining a reasonable royalty. - The
right under paragraph (1) to obtain a reasonable royalty shall be
available only in an action brought not later than 6 years after
the patent is issued. The right under paragraph (1) to obtain a
reasonable royalty shall not be affected by the duration of the
period described in paragraph (1).
(4) Requirements for international applications. -
(A) Effective date. - The right under paragraph (1) to obtain
a reasonable royalty based upon the publication under the
treaty defined in section 351(a) of an international
application designating the United States shall commence on the
date of publication under the treaty of the international
application, or, if the publication under the treaty of the
international application is in a language other than English,
on the date on which the Patent and Trademark Office receives a
translation of the publication in the English language.
(B) Copies. - The Director may require the applicant to
provide a copy of the international application and a
translation thereof.

AMENDMENTS
2002 - Subsec. (b)(4)(A). Pub. L. 107-273, Sec. 13206(a)(8),
struck out ", United States Code," after "title 5".
Subsec. (d)(4)(A). Pub. L. 107-273, Sec. 13204, amended subsec.
(d)(4)(A) as in effect on Nov. 29, 2000, by substituting "the date
of" for "the date on which the Patent and Trademark Office receives
a copy of the" and "publication in the English language" for
"international application in the English language".
1999 - Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec. 4504(1)],
inserted "; provisional rights" after "patent" in section
catchline.
Subsec. (b). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.
4402(a)], amended heading and text of subsec. (b) generally. Prior
to amendment, text provided for interference delay or secrecy
orders, extensions for appellate review, a limitations period, and
a maximum period of 5 years duration for all extensions.
Subsec. (d). Pub. L. 106-113, Sec. 1000(a)(9) [title IV, Sec.
4504(2)], added subsec. (d).
1996 - Subsec. (c)(2). Pub. L. 104-295 substituted "acts" for
"Acts" in introductory provisions.
1994 - Pub. L. 103-465 amended section catchline and text
generally. Prior to amendment, text read as follows: "Every patent
shall contain a short title of the invention and a grant to the
patentee, his heirs or assigns, for the term of seventeen years,
subject to the payment of fees as provided for in this title, of
the right to exclude others from making, using, or selling the
invention throughout the United States and, if the invention is a
process, of the right to exclude others from using or selling
throughout the United States, or importing into the United States,
products made by that process,, referring to the specification for
the particulars thereof. A copy of the specification and drawings
shall be annexed to the patent and be a part thereof."
1988 - Pub. L. 100-418 inserted "and, if the invention is a
process, of the right to exclude others from using or selling
throughout the United States, or importing into the United States,
products made by that process," after "United States".
1980 - Pub. L. 96-517 substituted "payment of fees" for "payment
of issue fees".
1965 - Pub. L. 89-83 added "subject to the payment of issue fees
as provided for in this title".
EFFECTIVE DATE OF 1999 AMENDMENT
Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.
4405(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-560, provided that:
"The amendments made by sections 4402 and 4404 [amending this
section, sections 156 and 282 of this title, and section 1295 of
Title 28, Judiciary and Judicial Procedure] shall take effect on
the date that is 6 months after the date of the enactment of this
Act [Nov. 29, 1999] and, except for a design patent application
filed under chapter 16 of title 35, United States Code, shall apply
to any application filed on or after the date that is 6 months
after the date of the enactment of this Act."
Amendment by section 1000(a)(9) [title IV, Sec. 4504] of Pub. L.
106-113 effective Nov. 29, 2000, applicable only to applications
(including international applications designating the United
States) filed on or after that date, and additionally applicable to
any pending application filed before Nov. 29, 2000, if such pending
application is published pursuant to a request of the applicant
under such procedures as may be established by the Director, see
section 1000(a)(9) [title IV, Sec. 4508] of Pub. L. 106-113, as
amended, set out as a note under section 10 of this title.
EFFECTIVE DATE OF 1994 AMENDMENT
Section 534 of title V of Pub. L. 103-465 provided that:
"(a) In General. - Subject to subsection (b), the amendments made
by this subtitle [subtitle C (Secs. 531-534) of title V of Pub. L.
103-465, amending this section and sections 41, 104, 111, 119, 156,
172, 173, 252, 262, 271, 272, 287, 292, 295, 307, 365, and 373 of
this title] take effect on the date that is one year after the date
on which the WTO Agreement enters into force with respect to the
United States [Jan. 1, 1995].
"(b) Patent Applications. -
"(1) In general. - Subject to paragraph (2), the amendments
made by section 532 [amending this section and sections 41, 111,
119, 156, 172, 173, 365, and 373 of this title] take effect on
the date that is 6 months after the date of the enactment of this
Act [Dec. 8, 1994] and shall apply to all patent applications
filed in the United States on or after the effective date.
"(2) Section 154(a)(1). - Section 154(a)(1) of title 35, United
States Code, as amended by section 532(a)(1) of this Act, shall
take effect on the effective date described in subsection (a).
"(3) Earliest filing. - The term of a patent granted on an
application that is filed on or after the effective date
described in subsection (a) and that contains a specific
reference to an earlier application filed under the provisions of
section 120, 121, or 365(c) of title 35, United States Code,
shall be measured from the filing date of the earliest filed
application."
EFFECTIVE DATE OF 1988 AMENDMENT
Amendment by Pub. L. 100-418 effective 6 months after Aug. 23,
1988, and, subject to enumerated exceptions, applicable only with
respect to products made or imported after such effective date, see
section 9006 of Pub. L. 100-418, set out as a note under section
271 of this title.
EFFECTIVE DATE OF 1980 AMENDMENT
Amendment by Pub. L. 96-517 effective Dec. 12, 1980, see section
8(a) of Pub. L. 96-517, set out as a note under section 41 of this
title.
EFFECTIVE DATE OF 1965 AMENDMENT
Amendment by Pub. L. 89-83 effective three months after July 24,
1965, see section 7(a) of Pub. L. 89-83, set out as a note under
section 41 of this title.
REGULATIONS
Section 532(a)(2) of Pub. L. 103-465 authorized the Commissioner
of Patents and Trademarks to prescribe regulations for further
limited reexamination of applications pending 2 years or longer and
for examination of more than 1 independent and distinct invention
in applications pending 3 years or longer, as of the effective date
of section 154(a)(2) of this title, and to establish appropriate
related fees.

Last modified: April 19, 2006