§135. Interferences

(a) Whenever an application is made for a patent which, in the opinion of the Director, would interfere with any pending application, or with any unexpired patent, an interference may be declared and the Director shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be. The Board of Patent Appeals and Interferences shall determine questions of priority of the inventions and may determine questions of patentability. Any final decision, if adverse to the claim of an applicant, shall constitute the final refusal by the Patent and Trademark Office of the claims involved, and the Director may issue a patent to the applicant who is adjudged the prior inventor. A final judgment adverse to a patentee from which no appeal or other review has been or can be taken or had shall constitute cancellation of the claims involved in the patent, and notice of such cancellation shall be endorsed on copies of the patent distributed after such cancellation by the Patent and Trademark Office.

(b)(1) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an issued patent may not be made in any application unless such a claim is made prior to one year from the date on which the patent was granted.

(2) A claim which is the same as, or for the same or substantially the same subject matter as, a claim of an application published under section 122(b) of this title may be made in an application filed after the application is published only if the claim is made before 1 year after the date on which the application is published.

(c) Any agreement or understanding between parties to an interference, including any collateral agreements referred to therein, made in connection with or in contemplation of the termination of the interference, shall be in writing and a true copy thereof filed in the Patent and Trademark Office before the termination of the interference as between the said parties to the agreement or understanding. If any party filing the same so requests, the copy shall be kept separate from the file of the interference, and made available only to Government agencies on written request, or to any person on a showing of good cause. Failure to file the copy of such agreement or understanding shall render permanently unenforceable such agreement or understanding and any patent of such parties involved in the interference or any patent subsequently issued on any application of such parties so involved. The Director may, however, on a showing of good cause for failure to file within the time prescribed, permit the filing of the agreement or understanding during the six-month period subsequent to the termination of the interference as between the parties to the agreement or understanding.

The Director shall give notice to the parties or their attorneys of record, a reasonable time prior to said termination, of the filing requirement of this section. If the Director gives such notice at a later time, irrespective of the right to file such agreement or understanding within the six-month period on a showing of good cause, the parties may file such agreement or understanding within sixty days of the receipt of such notice.

Any discretionary action of the Director under this subsection shall be reviewable under section 10 of the Administrative Procedure Act.

(d) Parties to a patent interference, within such time as may be specified by the Director by regulation, may determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9 to the extent such title is not inconsistent with this section. The parties shall give notice of any arbitration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this subsection shall preclude the Director from determining patentability of the invention involved in the interference.

(July 19, 1952, ch. 950, 66 Stat. 801 ; Pub. L. 87–831, Oct. 15, 1962, 76 Stat. 958 ; Pub. L. 93–596, §1, Jan. 2, 1975, 88 Stat. 1949 ; Pub. L. 98–622, title I, §105, title II, §202, Nov. 8, 1984, 98 Stat. 3385 , 3386; Pub. L. 106–113, div. B, §1000(a)(9) [title IV, §§4507(11), 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536 , 1501A-566, 1501A-582.)

Historical and Revision Notes

The first paragraph is based on Title 35, U.S.C., 1946 ed., §52 (R.S. 4904 amended (1) Mar. 2, 1927, ch. 273, §4, 44 Stat. 1335 , 1336, (2) Aug. 5, 1939, ch. 451, §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., §51, (R.S. 4903, amended Aug. 5, 1939, ch. 452, §1, 53 Stat. 1213 ). Changes in language are made.

References in Text

Section 10 of the Administrative Procedure Act, referred to in subsec. (c), is section 10 of act June 11, 1946, ch. 324, 60 Stat. 243 , which was repealed by Pub. L. 89–554, §8(a), Sept. 6, 1966, 80 Stat. 632 , and reenacted by the first section thereof as chapter 7 (§701 et seq.) of Title 5, Government Organization and Employees.

Amendments

1999-Subsec. (a). Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)], substituted "Director" for "Commissioner" wherever appearing.

Subsec. (b). Pub. L. 106–113, §1000(a)(9) [title IV, §4507(11)], designated existing provisions as par. (1) and added par. (2).

Subsecs. (c), (d). Pub. L. 106–113, §1000(a)(9) [title IV, §4732(a)(10)(A)], substituted "Director" for "Commissioner" wherever appearing.

1984-Subsec. (a). Pub. L. 98–622, §202, amended subsec. (a) generally, substituting ", an interference may be declared and the Commissioner shall give notice of such declaration to the applicants, or applicant and patentee, as the case may be" for "he shall give notice thereof to the applicants, or applicant and patentee, as the case may be" and substituting provisions vesting jurisdiction for determining questions of interference in the Board of Patent Appeals and Interferences for provisions vesting such jurisdiction in a board of patent interferences.

Subsec. (d). Pub. L. 98–622, §105, added subsec. (d).

1975-Subsecs. (a), (c). Pub. L. 93–596 substituted "Patent and Trademark Office" for "Patent Office" wherever appearing.

1962-Pub. L. 87–831 designated first and second pars. as subsecs. (a) and (b) and added subsec. (c).

Effective Date of 1999 Amendment

Amendment by section 1000(a)(9) [title IV, §4507(11)] of Pub. L. 106–113 effective on date that is 1 year after Nov. 29, 1999, and applicable to all applications filed under section 111 of this title on or after that date, and all applications complying with section 371 of this title that resulted from international applications filed on or after that date, see section 1000(a)(9) [title IV, §4508] of Pub. L. 106–113, set out as a note under section 10 of this title.

Amendment by section 1000(a)(9) [title IV, §4732(a)(10)(A)] of Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, §4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Effective Date of 1984 Amendment

Amendment by section 105 of Pub. L. 98–622 applicable to all United States patents granted before, on, or after Nov. 8, 1984, and to all applications for United States patents pending on or filed after that date, except as otherwise provided, see section 106 of Pub. L. 98–622, set out as a note under section 103 of this title.

Amendment by section 202 of Pub. L. 98–622 effective three months after Nov. 8, 1984, see section 207 of Pub. L. 98–622, set out as a note under section 41 of this title.

Effective Date of 1975 Amendment

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.

Cross References

Decision of board of patent interferences-

Appeal to the United States Court of Customs and Patent Appeals, see section 141 of this title.

Civil action, see section 146 of this title.

Equitable relief against interfering patents, see section 291 of this title.

Section Referred to in Other Sections

This section is referred to in sections 6, 102, 111, 154 of this title.