to witnesses attending the United States district courts.

A judge of a court whose clerk issued a subpoena may enforce obedience to the process or punish disobedience as in other like cases, on proof that a witness, served with such subpoena, neglected or refused to appear or to testify. No witness shall be deemed guilty of contempt for disobeying such subpoena unless his fees and traveling expenses in going to, and returning from, and one day's attendance at the place of examination, are paid or tendered him at the time of the service of the subpoena; nor for refusing to disclose any secret matter except upon appropriate order of the court which issued the subpoena. (July 19, 1952, ch. 950, 66 Stat. 795.)

LEGISLATIVE HISTORY

Reviser's Note. - Based on Title 35, U. S. C., 1946 ed., §§ 54, 55 and 56 (R. S. 4906, amended Feb. 18, 1922, ch. 58, § 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 1 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 Reference to a repealed statute in the first paragraph is replaced by reference to the Federal Rules of Civil Procedure and certain rules are made applicable.

CROSS REFERENCES

Fees of witnesses, see sections 1821, 1823, and 1825 of Title 28, Judiciary and Judicial Procedure.

FEDERAL RULES OF CIVIL PROCEDURE

Subpoena, see rule 45, Title 28, Appendix, Judiciary and Judicial Procedure.

§ 25. Declaration in lieu of oath.

(a) The Commissioner may by rule prescribe that any document to be filed in the Patent Office and which is required by any law, rule, or other regulation to be under oath may be subscribed to by a written declaration in such form as the Commissioner may prescribe, such declaration to be in lieu of the oath otherwise required.

(b) Whenever such written declaration is used, the document must warn the declarant that willful false statements and the like are punishable by fine or imprisonment, or both (18 U.S.C. 1001). (Added Pub. L. 88-292, § 1, Mar. 26, 1964, 78 Stat. 171.)

§ 26. Effect of defective execution.

Any document to be filed in the Patent Office and which is required by any law, rule, or other regulation to be executed in a specified manner may be provisionally accepted by the Commissioner despite a defective execution, provided a properly executed document is submitted within such time as may be prescribed. (Added Pub. L. 88-292, § 1, Mar. 26, 1964, 78 Stat. 171.)

Chapter 3.-PRACTICE BEFORE PATENT OFFICE

Sec.

31. Regulations for agents and attorneys.
32. Suspension or exclusion from practice.
33. Unauthorized representation as practitioner.

CHAPTER REFERRED TO IN OTHER SECTIONS This chapter is referred to in title 5 section 500. § 31. Regulations for agents and attorneys.

The Commissioner, subject to the approval of the Secretary of Commerce, may prescribe regulations governing the recognition and conduct of agents,

attorneys, or other persons representing applicants or other parties before the Patent Office, and may require them, before being recognized as representatives of applicants or other persons, to show that they are of good moral character and reputation and are possessed of the necessary qualifications to render to applicants or other persons valuable service, advice, and assistance in the presentation or prosecution of their applications or other business before the Office. (July 19, 1952, ch. 950, 66 Stat. 795.)

LEGISLATIVE HISTORY

Reviser's Note. - Based on Title 35, U. S. C., 1946 ed., §11 (R. S. 487, amended Feb. 18, 1922, ch. 58, § 3, 42 Stat. 390).

The present statute is divided into two sections, 31 and 32. Changes in language are made.

SECTION REFERRED TO IN OTHER SECTIONS This section is referred to in title 5 section 500.

§ 32. Suspension or exclusion from practice.

The Commissioner may, after notice and opportunity for a hearing, suspend or exclude, either generally or in any particular case, from further practice before the Patent Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 31 of this title, or who shall, by word, circular, letter, or advertising, with intent to defraud in any manner, deceive, mislead, or threaten any applicant or prospective applicant, or other person having immediate or prospective business before the Office. The reasons for any such suspension or exclusion shall be duly recorded. The United States District Court for the District of Columbia, under such conditions and upon such proceedings as it by its rules determines, may review the action of the Commissioner upon the petition of the person so refused recognition or so suspended or excluded. (July 19, 1952, ch. 795, 66 Stat. 795.)

LEGISLATIVE HISTORY

Reviser's Note. - Based on title 35, U. S. C. 1946 ed., § 11 (R. S. 487 amended Feb. 18, 1922, ch. 58, § 3, 42 Stat. 390). See note under section 31.

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in title 5 section 500.

§ 33. Unauthorized representation as practitioner.

Whoever, not being recognized to practice before the Patent Office, holds himself out or permits himself to be held out as so recognized, or as being qualified to prepare or prosecute applications for patent, shall be fined not more than $1,000 for each offense. (July 19, 1952, ch. 950, 66 Stat. 796.)

LEGISLATIVE HISTORY

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

CROSS REFERENCES

Advertising practice before departments or offices of Government, see section 501 of Title 5, Government Organization and Employees.

SECTION REFERRED TO IN OTHER SECTIONS This section is referred to in title 5 section 500.

(c) The fees prescribed by or under this section shall apply to any other Government department or agency, or officer thereof, except that the Commissioner may waive the payment of any fee for services or materials in cases of occasional or incidental requests by a Government department or agency, or officer thereof. (July 19, 1952, ch. 950, 66 Stat. 796; July 24, 1965, Pub. L. 89-83, §§ 1, 2, 79 Stat. 259.)

LEGISLATIVE HISTORY

Reviser's Note.-Based on Title 35, U. S. C., 1946 ed., § 78 (R. S. 4934, amended (1) May 27, 1908, ch. 200, § 1 (part) 35 Stat. 317, 343; (2) June 25, 1910, ch. 414, § 2, 35 Stat. 843; (3) Feb. 18, 1922, ch. 58, § 9, 42 Stat. 389, 393; (4) Feb. 14, 1927, ch. 139, § 2, 44 Stat. 1098, 1099; (5) Mar. 2, 1927, ch. 273, § 13, 44 Stat. 1335, 1337; (6) April 11, 1930, ch. 132, § 3, 46 Stat. 155; (7) June 30, 1932, ch. 314, §§ 308, 309, 47 Stat. 382, 410; (8) Aug. 9, 1939, ch. 619, § 3, 53 Stat. 1293; July 5, 1946, ch. 541, § 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.

AMENDMENTS

1965-Subsec. (a)1. Pub. L. 89-83, § 1, increased the filing fee for original patents from $30 to $65, changed the additional fee from $1 for each claim in excess of twenty to $10 for each claim in independent form which is in excess of one and $2 for each claim (whether independent or dependent) which is in excess of ten, and permitted the rectification of errors in the payment of the additional fees in accordance with regulations of the Commissioner.

Subsec. (a) 2. Pub. L. 89-83, § 1, applied the issue fee to reissue patents as well as to original patents, increased such fee from $30 to $100, and changed the additional fee from $1 for each claim in excess of twenty to $10 for each page (or portion thereof) of specification as printed and $2 for each sheet of drawing.

Subsec. (a) 3. Pub. L. 89-83, § 1, changed the fee structure applicable to design patents from a filing fee of $10, $15, or $30 for terms of 32, 7, or 14 years, respectively, to a filing fee of $20 and an issue fee of $10, $20, or $30 for terms of 31⁄2, 7, or 14 years, respectively.

Subsec. (a) 4. Pub. L. 89-83, § 1, increased the filing fee for reissue patents from $30 to $65, changed the additional fee from $1 for each claim in excess of twenty over and above the number of claims in the original patent to $10 for each claim in independent form which is in excess of the number of independent claims of the original patent and $2 for each claim (whether independent or dependent) which is in excess of ten and also in excess of the number of claims in the original patent, and permitted the rectification of errors in the payment of the additional fees in accordance with regulations of the Commissioner.

Subsec. (a) 5. Pub. L. 89-83, § 1, increased the fee for filing disclaimers from $10 to $15.

Subsec. (a) 6. Pub. L. 89-83, § 1, increased the fee on appeal for the first time from the examiner to the Board of Appeals from $25 to $50, and added the additional $50 fee for filing a brief in support of the appeal.

Subsec. (a) 7. Pub. L. 89-83, § 1, increased the fee for filing a petition for the revival of an abandoned application or for the delayed payment of the issuance fee from $10 to $15.

Subsec. (a) 8. Pub. L. 89-83, § 1, added the fee for the certificate under section 256 of this title, and increased

the fee for a certificate under section 255 of this title from $10 to $15.

Chap.

Sec.

Subsec. (a) 9. Pub. L. 89-83, § 1, increased the fee for copies of specifications and drawings of patents (other than design patents) from 25 cents to 50 cents per copy and the fee for copies of specifications and drawings of design patents from 10 cents to 20 cents per copy, and permitted the Commissioner to establish a charge not to exceed $1 per copy for patents in excess of twenty-five pages of drawings and specifications and for plant patents printed in color and to provide applicants, without charge, with copies of specifications and drawings when referred to in a section 132 notice.

Subsec (a) 10. Pub. L. 89-83, § 1, changed the record ing fee from $3 for every document not exceeding six pages and $1 for each additional two pages or less to a flat $20 fee for every document, and substituted a $3 fee for each additional item where the document relates to more than one patent or application for a 50 cents additional fee for each additional patent or application included in one writing where more than one is so included.

Subsec. (c). Pub. L. 89-83, § 2, added subsec. (c).

EFFECTIVE DATE OF 1965 AMENDMENT

Section 7 of Pub. L. 89-83 provided that: "(a) This Act [amending this section and sections 112, 151, 154 and 282 of this title, and section 1113 of Title 15, and repealing section 266 of this title) shall take effect three months after its enactment (July 24, 1965].

"(b) Items 1, 3, and 4 of section 41(a) of title 35, United States Code, as amended by section 1 of this Act [items 1, 3, and 4 of subsec. (a) of this section), do not apply in further proceedings in applications filed prior to the effective date of this Act.

"(c) Item 2 of section 41(a), as amended by section 1 of this Act (Item 2 of subsec. (a) of this section], and section 4 of this Act [amending section 151 of this title] do not apply in cases in which the notice of allowance of the application was sent, or in which a patent issued, prior to the effective date; and, in such cases, the fee due is the fee specified in this title prior to the effective date of this Act.

"(d) Item 3 of section 31 of the Trademark Act, as amended by section 3 of this Act [item 3 of section 1113 (a) of Title 15], applies only in the case of registrations Issued and registrations published under the provisions of section 12(c) of the Trademark Act (section 1062(c) of Title 15) on or after the effective date of this Act." CROSS REFERENCES

Issue of patents without fee to Government employees, see section 266 of this title.

Payment of final fee, see section 151 of this title.
SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 13 of this title. § 42. Payment of patent fees; return of excess amounts.

All patent fees shall be paid to the Commissioner who shall deposit the same in the Treasury of the United States in such manner as the Secretary of the Treasury directs, and the Commissioner may refund any sum paid by mistake or in excess of the fee required by law. (July 19, 1952, ch. 950, 66 Stat. 796.)

When used in this title unless the context otherwise indicates

(a) The term "invention" means invention or discovery.

(b) The term "process" means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

(c) The terms "United States" and "this country" mean the United States of America, its territories and possessions.

(d) The word "patentee" includes not only the patentee to whom the patent was issued but also the successors in title to the patentee. (July 19, 1952, ch. 950, 66 Stat. 797.)

LEGISLATIVE HISTORY

Reviser's Note.-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. § 101. Inventions patentable.

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. (July 19, 1952, ch. 950, 66 Stat. 797.)

LEGISLATIVE HISTORY

Reviser's Note. - Based on Title 35, U. S. C., 1946 ed., §31 (R. S. 4886, amended (1) Mar. 3, 1897, ch. 391, § 1, 29 Stat. 692, (2) May 23, 1930, ch. 312, § 1, 46 Stat. 376, (3) Aug. 5, 1939, ch. 450, § 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 been 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

So in original. Does not conform to chapter heading. 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.

CROSS REFERENCES

Design patents, see section 171 et seq. of this title. Issue of patent generally, see section 151 et seq. of this title.

Plant patents, see section 161 et seq. of this title.

§ 102. Conditions for patentability; novelty and loss of right to patent.

A person shall be entitled to a patent unless(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application filed more than twelve months before the filing of the application in the United States, or

(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or

(f) he did not himself invent the subject matter sought to be patented, or

(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other. (July 19, 1952, ch. 950, 66 Stat. 797.)

LEGISLATIVE HISTORY

Reviser's Note.-Paragraphs (a), (b), and (c) are based on Title 35, U. S. C., 1946 ed., § 31 (R. S. 4886, amended (1) Mar. 3, 1897, ch. 391, § 1, 29 Stat. 692, (2) May 23, 1930, ch. 312, § 1, 46 Stat. 376, (3) Aug. 5, 1939 ch. 450, § 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., § 72 (R. S. 4923).

Paragraph (d) is based on Title 35, U. S. C., 1946 ed., § 32, first paragraph (R. S. 4887 (first paragraph), amended (1) Mar. 3, 1897, ch. 391, § 3, 29 Stat. 692, 693, (2) Mar. 3, 1903, ch. 1019, § 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 Milburn v. 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., §69 (R. S. 4920, amended (1) Mar. 3, 1897, ch. 391, § 2, 29 Stat. 692, (2) Aug. 5, 1939, ch. 450, § 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.

SAVINGS CLAUSE

Section 4 of act July 19, 1952, ch. 950, 66 Stat. 815, provided that subsection (d) of this section should not apply to existing patents and pending applications, but that the law previously in effect, namely the first paragraph of R. S. 4887 [first paragraph of former section 32 of this title], should apply to such patents and applications. Said paragraph of section 32 provided that:

"No person otherwise entitled thereto shall be debarred from receiving a patent for his invention or discovery, nor shall any patent be declared invalid by reason of its having been first patented or caused to be patented by the inventor or his legal representatives or assigns in a foreign country, unless the application for said foreign patent was filed more than twelve months, in cases within the provisions of section 31 of this title, and six months in cases of designs, prior to the filing of the application in this country, in which case no patent shall be granted in this country."

CROSS REFERENCES

Abandonment of invention for unauthorized disclosure, see section 182 of this title.

Benefit of earlier filing date in foreign country; right of priority, see section 119 of this title.

Filing application in foreign country, see section 184 of this title.

Interferences, see section 135 of this title.

Time of prior use or publication for design patents, see section 172 of this title.

§ 103. Conditions for patentability; non-obvious subject matter.

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. (July 19, 1952, ch. 950, 66 Stat. 798.)

LEGISLATIVE HISTORY

Reviser's Note. 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.

CROSS REFERENCES

Description of invention, see section 112 of this title. § 104. Invention made abroad.

In proceedings in the Patent 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 section 119 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. (July 19, 1952, ch. 950, 66 Stat. 798.)

119.

120.

121.

122.

117. Death or incapacity of inventor.

Benefit of earlier filing date in foreign country;
right of priority.

Benefit of earlier filing date in the United States.
Divisional applications.

Confidential status of applications.

§ 111. Application for patent.

Application for patent shall be made by the inventor, except as otherwise provided in this title, in writing to the Commissioner. Such application shall include: (1) a specification as prescribed by section 112 of this title; (2) a drawing as prescribed by section 113 of this title; and (3) an oath by the applicant as prescribed by section 115 of this title. The application must be signed by the applicant and accompanied by the fee required by law. (July 19, 1952, ch. 950, 66 Stat. 798.)

LEGISLATIVE HISTORY

Reviser's Note. - Based on Title 35, U. S. C., 1946 ed., $33 (R. S. 4888, amended (1) Mar. 3, 1915, ch. 94, § 1, 38 Stat. 958; (2) May 23, 1930, ch. 312, § 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.

CROSS REFERENCES

Fees, see sections 41 and 42 of this title.

Provisions of this chapter applicable to applications for reissue of patents, see section 251 of this title.

§ 112. Specification.

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. A claim may be written in independent or dependent form, and if in dependent form, it shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim.

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. (July 19, 1952, ch. 950, 66 Stat. 798; July 24, 1965, Pub. L. 89-83, § 9, 79 Stat. 261.) LEGISLATIVE HISTORY

Reviser's Note. - Based on Title 35, U. S. C., 1946 ed., §33 (R. S. 4888, amended (1) Mar. 3, 1915, ch. 94, § 1, 38 Stat. 958; (2) May 23, 1930, ch. 312, § 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., § 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. AMENDMENTS

1965-Pub. L. 89-83 permitted a claim to be written in Independent or dependent form, and if in dependent form, required it to be construed to include all the limitations of the claim incorporated by reference into the dependent claim.

EFFECTIVE DATE OF 1965 AMENDMENT

Amendment of section 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.

CROSS REFERENCES

Amendment introducing new matter in disclosure, see section 132 of this title.

Amendments generally, see section 251 et seq. of this

title.

Annexation of specification to issued patent, see section 154 of this title.

Description of plant patents, see section 162 of this

title.

Disclaimer, see section 253 of this title.

Reissue of defective patents, see section 251 of this title.

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 111, 120, 162, 282 of this title.

§ 113. Drawings.

When the nature of the case admits, the applicant shall furnish a drawing. (July 19, 1952, ch. 950, 66 Stat. 799.)