Part

I. Patent Office.

II. Patentability of Inventions and Grant of Pat

ents

III. Patents and Protection of Patent Rights...... 251 DISTRIBUTION TABLE

Showing distribution of all sections of former

110-114.

Title 35

new

sections

42

Omitted

254

Expired

Omitted

104

Omitted

Omitted

Omitted

22

11

10

Omitted

12

11 (a) 1 Obsolete

Repealed Omitted

14

21

Omitted

Repealed 101, 102, 161

102 (d), 119, 171 Omitted

prec. ch. 1 note

111, 112, 162 113, 114 115

131 133, 267 Repealed

153 154

Section 3 of act July 19, 1952, ch. 950, 66 Stat. 815, provided that: "If any provision of Title 35, as enacted by section 1 hereof, is declared unconstitutional or is held invalid, the validity of the remainder of this title shall not be affected."

EFFECTIVE DATE; SAVINGS CLAUSES

Section 4 of act July 19, 1952, ch. 950, 66 Stat. 815, provided that:

"(a) This Act [this title) shall take effect on January 1, 1953 and shall apply to all applications for patent filed on or after such date and to all patents granted on such applications. It shall apply to further proceedings on applications pending on such date and to patents granted on such applications except as otherwise provided. It shall apply to unexpired patents granted prior to such date except as otherwise provided.

Title 35.

Title 35

former

sections

1.

2

3.

4

5.

6...

7.

10.

11

11a

115-118.

118a

119..

Title 35

151

152

12.

13.

14.

14a

15.

16.

17

18.

19

20

21

22.

23

31

32

32a

32b.

33

34

35.

36.

37

38

39

40

40a to 40d

41

151

Omitted

Omitted

Omitted

24

143

288

146, 291

289

12, 13, 14

"(b) Section 102 (d) of Title 35, as enacted by section 1 hereof, shall not apply to existing patents and pending applications, but the law previously in effect, namely the first paragraph of R. S. 4887 [first paragraph of former section 32 of this title), shall apply to such patents and applications.

"(c) Section 119, second paragraph, of Title 35 as enacted by section 1 hereof shall not apply to existing patents.

"(d) The period of one year specified in section 102 (b) of Title 35 as enacted by section 1 hereof shall not apply in the case of applications filed before August 5, 1940, and patents granted on such applications, and with respect to such applications and patents, said period is two years instead of one year.

"(e) Nothing contained in Title 35, as enacted by section 1 hereof, shall operate to nullify any judicial finding prior to the effective date of this Act on the validity of any patent by a court of competent jurisdiction.

"(f) Nothing in Title 35, as enacted by section 1 hereof, shall affect any provision of the Atomic Energy Act of 1946 (Aug. 1, 1946, ch. 724, 60 Stat. 755 [chapter 23 of Title 42]).

"(g) The period of one year specified in section 4 of Title 35 as enacted by section 1 hereof shall not apply in the case of applications filed before the effective date of this Act.

"(h) The repeal of sections 1-9, 11, 12 of the Act of Congress approved February 1, 1952 (ch. 4, 66 Stat. 3) [former sections 151-159 of this title), shall not affect

any rights or liabilities existing on the date of approval of this Act (July 19, 1952]. An order of secrecy issued under or in effect under the repealed Act and in effect on the date of approval of this Act, shall be considered as issued under this Act, and any claims arising under the repealed Act or subject to presentation and determination pursuant thereto and unsettled as of the effective date of this Act, may be presented and determined pursuant to the provisions of this Act (this title]."

Access to facilities for study, research and illustration in the Patent Office, see section 91 of Title 20, Education. Audit of accounts of salaries and expenses of Patent Office, see section 72 of Title 31, Money and Finance. Constitutional provisions, see Const. Art. 1, § 8, cl. 8. Department of Commerce, jurisdiction and supervision of the Patent Office, see section 1511 of Title 15, Commerce and Trade.

Opinions of Court of Customs and Patent Appeals, record in Patent Office, see section 216 of Title 28, Judiciary and Judicial Procedure.

Records, books, etc., of Patent Office, admissibility of copies as evidence, see section 1744 of Title 28, Judiciary and Judicial Procedure.

§ 1. Establishment.

The Patent Office shall continue as an office in the Department of Commerce, where records, books, drawings, specifications, and other papers and things pertaining to patents and to trade-mark registrations shall be kept and preserved, except as otherwise provided by law. (July 19, 1952, ch. 950, 66 Stat. 792.)

LEGISLATIVE HISTORY

Reviser's Note. Based on Title 35, U. S. C., 1946 ed., §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 44 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.

§ 2. Seal.

The Patent Office shall have a seal with which letters patent, certificates of trade-mark registrations, and papers issued from the Office shall be authenticated. (July 19, 1952, ch. 950, 66 Stat. 792.) LEGISLATIVE HISTORY

Reviser's Note. - Based on Title 35, U. S. C., 1946 ed., $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.

CROSS REFERENCES

Patents issued under seal of Patent Office, see section 153 of this title.

§ 3. Officers and employees.

A Commissioner of Patents, one first assistant commissioner, two assistant commissioners, and not more than fifteen examiners-in-chief, shall be appointed by the President, by and with the advice and consent of the Senate. The assistant commissioners shall perform the duties pertaining to the office of commissioner assigned to them by the Commissioner. The first assistant commissioner, or, in the event of a vacancy in that office, the assistant commissioner senior in date of appointment, shall fill the office of Commissioner during a vacancy in that office until a Commissioner is appointed and takes office. The Secretary of Commerce, upon the nomination of the Commissioner in accordance with law, shall appoint all other officers and employees.

The Secretary of Commerce may vest in himself the functions of the Patent Office and its officers and employees specified in this title and may from time to time authorize their performance by any other officer or employee. The Secretary of Commerce is authorized to fix the per annum rate of basic compensation of each examiner-in-chief in the Patent Office at not in excess of the maximum scheduled rate provided for positions in grade 17 of the General Schedule of the Classification Act of 1949, as amended. (July 19, 1952, ch. 950, 66 Stat. 792; Sept. 6, 1958, Pub. L. 85-933, § 1, 72 Stat. 1793; Sept. 23, 1959, Pub. L. 86-370, §1(a), 73 Stat. 650; Aug. 14, 1964, Pub. L. 88-426, title III, § 305 (26), 78 Stat. 425.)

LEGISLATIVE HISTORY

Reviser's Note. - Based on Title 35, U. S. C., 1946 ed., $2 (R. S. 476, amended (1) Feb. 15, 1916, ch. 22, § 1, 39 Stat. 8, (2) Feb. 14, 1927, ch. 139, § 1, 44 Stat. 1098, (3) Apr. 11, 1930, ch. 132, § 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., §7) permit a vacancy to be temporarily filled only for not more than 30 days.

Changes in language are made. "Assistant commisstoners" 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.

REFERENCES IN TEXT

The Classification Act of 1949, as amended, referred to in the text, is now covered by chapter 51 and subchapter III of chapter 53 of Title 5, Government Organization and Employees.

AMENDMENTS

1964-Pub. L. 88-426 repealed provisions which prescribed the annual rate of compensation of the Commissioner.

1959-Pub. L. 86-370 authorized Secretary of Commerce to fix compensation of examiners-in-chief.

1958-Pub. L. 85-933 increased the number of examiners-in-chief from nine to not more than fifteen and specified the annual compensation of the Commissioner.

EFFECTIVE DATE OF 1964 AMENDMENT

Amendment of section by Pub. L. 88-426 effective on the first day of the first pay period which begins on or after July 1, 1964, except to the extent provided in section 501 (c) of Pub. L. 88-426, see section 501 of Pub. L. 88-426.

EFFECTIVE DATE OF 1959 AMENDMENT

Section 7(b) of Pub. L. 86-370 provided that: "Sections 1 [which amended sections 3 and 7 of this title and is in part set out as a note under section 3 of this title], 3 [which added cl. (46), (47) to subsec. (a) of former section 2205 of Title 5, added cl. (10)-(16) to subsec. (b) of former section 2205 of Title 5 and amended former section 2208(c) (1), (18), (20) of title 5), and 6 [which amended sections 1082 (33), (34) and 2353 (b) of Title 5] of this Act shall become effective on the first day of the first pay period which begins after the date of enactment of this Act [Sept. 23, 1959]."

EXISTING POSITIONS, COMPENSATION, AND APPOINTMENTS UNAFFECTED BY PUB. L. 86-370 UNTIL ACTION TAKEN UNDER AMENDMENTS

Section 1(c) of Pub. L. 86-370 provided that: "The amendments made by this section [to this section and to section 7 of this title) shall not affect

"(1) any position of examiner-in-chief or designated examiner-in-chief existing immediately prior to the effective date of this section [see note set out under this section], or

"(2) any incumbent of any such position, his appointment thereto, his rate of compensation, or his right to receive such compensation,

until appropriate action is taken under authority of such

amendments."

CROSS REFERENCES

Classification and compensation of civil service employees, see section 5101 et seq. of Title 5, Government Organization and Employees.

Compensation of Commissioner, see section 5316 of Title 5.

Employment of clerks and employees in governmental departments, see section 3101 of Title 5.

§ 4. Restrictions on officers and employees as to interest in patents.

Officers and employees of the Patent Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment. (July 19, 1952, ch. 950, 66 Stat. 793.)

LEGISLATIVE HISTORY

Reviser's Note. - Based on Title 35, U. S. C., 1946 ed., § 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.

§ 5. Bond of Commissioner and other officers.

The Commissioner and such other officers as he designates, before entering upon their duties, shall severally give bond, with sureties, the former in the sum of $10,000, and the latter in sums prescribed by the Commissioner, conditioned for the faithful discharge of their respective duties and that they shall render to the proper officers of the Treasury a true account of all money received by virtue of their offices. (July 19, 1952, ch. 950, 66 Stat. 793.) LEGISLATIVE HISTORY

Reviser's Note. Based on Title 35, U. S. C., 1946 ed., §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.

§ 6. Duties of Commissioner.

The Commissioner, under the direction of the Secretary of Commerce, shall superintend or perform all duties required by law respecting the granting and issuing of patents and the registration of trade-marks; and he shall have charge of property belonging to the Patent Office. He may, subject to the approval of the Secretary of Commerce, establish regulations, not inconsistent with law, for the conduct of proceedings in the Patent Office. (July 19, 1952, ch. 950, 66 Stat. 793.)

LEGISLATIVE HISTORY

Reviser's Note. Based on Title 35, U. S. C., 1946 ed., §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.

§ 7. Board of Appeals.

The examiners-in-chief shall be persons of competent legal knowledge and scientific ability. The Commissioner, the assistant commissioners, and the examiners-in-chief shall constitute a Board of Appeals, which, on written appeal of the applicant, shall review adverse decisions of examiners upon applications for patents. Each appeal shall be heard by at least three members of the Board of Appeals, the members hearing such appeal to be designated by the Commissioner. The Board of Appeals has sole power to grant rehearings.

Whenever the Commissioner considers it necessary to maintain the work of the Board of Appeals current, he may designate any patent examiner of the primary examiner grade or higher, having the requisite ability, to serve as examiner-in-chief for periods not exceeding six months each. An examiner so designated shall be qualified to act as a member of the Board of Appeals. Not more than

one such primary examiner shall be a member of the Board of Appeals hearing an appeal. The Secretary of Commerce is authorized to fix the per annum rate of basic compensation of each designated examiner-in-chief in the Patent Office at not in excess of the maximum scheduled rate provided for positions in grade 16 of the General Schedule of the Classification Act of 1949, as amended. The per annum rate of basic compensation of each designated examiner-in-chief shall be adjusted, at the close of the period for which he was designated to act as examiner-in-chief, to the per annum rate of basic compensation which he would have been receiving at the close of such period if such designation had not been made. (July 19, 1952, ch. 950, 66 Stat. 793; Sept. 6, 1958, Pub. L. 85-933, § 2, 72 Stat. 1793; Sept. 23, 1959, Pub. L. 86-370, § 1(b), 73 Stat. 650.)

LEGISLATIVE HISTORY

Reviser's Note.-Based on Title 35, U. S. C., 1946 ed., § 7 (R. S. 482, amended (1) Mar. 2, 1927, ch. 273, § 3, 44 Stat. 1335, (2) April 11, 1930, ch. 132, § 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 in section 201.

REFERENCES IN TEXT

The Classification Act of 1949, as amended, referred to in the text, is now covered by chapter 51 and subchapter III of chapter 53 of Title 5, Government Organization and Employees.

AMENDMENTS

1959-Pub. L. 86-370 authorized Secretary of Commerce to fix compensation of designated examiners-in-chief at rates not higher than the maximum rate for grade 16 of the General Schedule.

1958-Pub. L. 85-933 permitted temporary designees to be paid the salary received by permanent examiners-inchief while so serving and provided for compensation adjustments in their regular classifications following such service.

EFFECTIVE DATE OF 1959 AMENDMENT

Amendment of section by Pub. L. 86-370 effective on the first day of the first pay period which begins after Sept. 23, 1959, see section 7(b) of Pub. L. 86-370, set out as a note under section 3 of this title.

EXISTING POSITIONS

Existing positions, compensation and appointments unaffected by Pub. L. 86-370 amendment of this section until action is taken under such amendment, see note set out under section 3 of this title.

CROSS REFERENCES

Appeal to Board of Appeals, see section 134 of this title.

§ 8. Library.

The Commissioner shall maintain a library of scientific and other works and periodicals, both foreign and domestic, in the Patent Office to aid the officers in the discharge of their duties. (July 19, 1952, ch. 950, 66 Stat. 793.)

LEGISLATIVE HISTORY

Reviser's Note.-Based on Title 35, U. S. C., 1946 ed., § 10 (R. S. 486).

Some change in language has been made. "Purchased" is changed to "maintained" to include the existing 11brary 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.

CROSS REFERENCES

Library of Patent Office, binding of books, see section 501 of Title 44, Public Printing and Documents.

§ 9. Classification of patents.

The Commissioner may revise and maintain the classification by subject matter of United States letters patent, and such other patents and printed publications as may be necessary or practicable, for the purpose of determining with readiness and accuracy the novelty of inventions for which applications for patent are filed. (July 19, 1952, ch. 950, 66 Stat. 794.)

LEGISLATIVE HISTORY

Reviser's Note.-Based on Title 35, U. S. C., 1946 ed., § 6 note (June 10, 1898, ch. 430, § 1, 30 Stat. 440). Changes in language are made.

§ 10. Certified copies of records.

The Commissioner may furnish certified copies of specifications and drawings of patents issued by the Patent Office, and of other records available either to the public or to the person applying therefor. (July 19, 1952, ch. 950, 66 Stat. 794.)

LEGISLATIVE HISTORY

Reviser's Note.-Based on Title 35, U. S. C., 1946 ed., § 14 (Mar. 3, 1891, ch. 541, § 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. CROSS REFERENCES

Fees for certified copies, see section 41 of this title. § 11. Publications.

(a) The Commissioner may print, or cause to be printed, the following:

1. Patents, including specifications and drawings, together with copies of the same. The Patent Office may print the headings of the drawings for patents for the purpose of photolithography.

2. Certificates of trade-mark registrations, including statements and drawings, together with copies of the same.

3. The Official Gazette of the United States Patent Office.

4. Annual indexes of patents and patentees, and of trade-marks and registrants.

5. Annual volumes of decisions in patent and trade-mark cases.

6. Pamphlet copies of the patent laws and rules of practice, laws and rules relating to trade-marks, and circulars or other publications relating to the business of the Office.

(b) The Commissioner may exchange any of the publications specified in items 3, 4, 5, and 6 of subsection (a) of this section for publications desirable for the use of the Patent Office. (July 19, 1952, ch. 950, 66 Stat. 794.)

LEGISLATIVE HISTORY

Reviser's Note.-Based on Title 35, U. S. C., 1946 ed., §§ 13 and 16 (R. S. 489; July 9, 1947, ch. 211, § 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., §§ 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.

AMENDMENTS

1964-Pub. L. 88-292, § 2, Mar. 26, 1964, 78 Stat. 171, added items 25 and 26.

§ 21. Day for taking action falling on Saturday, Sunday, or holiday.

When the day, or the last day, for taking any action or paying any fee in the United States Patent Office falls on Saturday, Sunday, or a holiday within the District of Columbia, the action may be taken, or the fee paid, on the next succeeding secular or business day. (July 19, 1952, ch. 950, 66 Stat. 794.)

LEGISLATIVE HISTORY

Reviser's Note.-Based on Title 35, U. S. C., 1946 ed., § 21 (Mar. 2, 1927, ch. 273, § 14, 44 Stat. 1387). "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.

§ 22. Printing of papers filed.

The Commissioner may require papers filed in the Patent Office to be printed or typewritten. (July 19, 1952, ch. 950, 66 Stat. 795.)

LEGISLATIVE HISTORY

Reviser's Note.-Based on Title 35, U. S. C., 1946 ed., § 12 (R. S. 488).

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

§ 23. Testimony in Patent Office cases.

The Commissioner may establish rules for taking affidavits and depositions required in cases in the Patent Office. Any officer authorized by law to take depositions to be used in the courts of the United States, or of the State where he resides, may take such affidavits and depositions. (July 19, 1952, ch. 950, 66 Stat. 795.)

LEGISLATIVE HISTORY

Reviser's Note.-Based on Title 35, U. S. C., 1946 ed., § 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.

CROSS REFERENCES

Regulations for the conduct of proceedings in Patent Office, establishment of, see section 6 of this title. FEDERAL RULES OF CIVIL PROCEDURE

Persons before whom depositions may be taken, see rule 28, Title 28, Appendix, Judiciary and Judicial Procedure.

§ 24. Subpoenas, witnesses.

The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena. The provisions of the Federal Rules of Civil Procedure relating to the attendance of witnesses and to the production of documents and things shall apply to contested cases in the Patent Office.

Every witness subpoenaed and in attendance shall be allowed the fees and traveling expenses allowed