CHAPTER 29 —REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS
Amendments
1992—
1988—
1982—
Chapter Referred to in Other Sections
This chapter is referred to in
1 So in original. Does not conform to section catchline.
§281. Remedy for infringement of patent
A patentee shall have remedy by civil action for infringement of his patent.
(July 19, 1952, ch. 950,
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., §§67 and 70, part (R.S. 4919; R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, §6,
The corresponding two sections of existing law are divided among sections 281, 283, 284, 285, 286 and 289 with some changes in language. Section 281 serves as an introduction or preamble to the following sections, the modern term civil action is used, there would be, of course, a right to a jury trial when no injunction is sought.
Cross References
Action against United States in United States Court of Federal Claims for use and manufacture of invention, see
Jurisdiction, district courts as having original and exclusive jurisdiction of civil actions arising under any Act of Congress relating to patents, see
Power of court to grant injunctions, see
Service of process in infringement action, see
Venue of actions for infringement, see
Section Referred to in Other Sections
This section is referred to in
§282. Presumption of validity; defenses
A patent shall be presumed valid. Each claim of a patent (whether in independent, dependent, or multiple dependent form) shall be presumed valid independently of the validity of other claims; dependent or multiple dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.
The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:
(1) Noninfringement, absence of liability for infringement or unenforceability,
(2) Invalidity of the patent or any claim in suit on any ground specified in part II of this title as a condition for patentability,
(3) Invalidity of the patent or any claim in suit for failure to comply with any requirement of
(4) Any other fact or act made a defense by this title.
In actions involving the validity or infringement of a patent the party asserting invalidity or noninfringement shall give notice in the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the country, number, date, and name of the patentee of any patent, the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in suit or, except in actions in the United States Court of Federal Claims, as showing the state of the art, and the name and address of any person who may be relied upon as the prior inventor or as having prior knowledge of or as having previously used or offered for sale the invention of the patent in suit. In the absence of such notice proof of the said matters may not be made at the trial except on such terms as the court requires. Invalidity of the extension of a patent term or any portion thereof under
(1) by the applicant for the extension, or
(2) by the Commissioner,
to comply with the requirements of such section shall be a defense in any action involving the infringement of a patent during the period of the extension of its term and shall be pleaded. A due diligence determination under section 156(d)(2) is not subject to review in such an action.
(July 19, 1952, ch. 950,
Historical and Revision Notes
Derived from Title 35, U.S.C., 1946 ed., §69 (R.S. 4920, amended (1) Mar. 3, 1897, ch. 391, §2,
The first paragraph declares the existing presumption of validity of patents.
The five defenses named in R.S. 4920 are omitted and replaced by a broader paragraph specifying defenses in general terms.
The third paragraph, relating to notice of prior patents, publications and uses, is based on part of the last paragraph of R.S. 4920 which was superseded by the Federal Rules of Civil Procedure but which is reinstated with modifications.
Amendments
1992—Third par.
1984—
1982—Third par.
1975—First par.
1965—
Effective Date of 1992 Amendment
Amendment by
Effective Date of 1982 Amendment
Amendment by
Effective Date of 1975 Amendment
Amendment by
Effective Date of 1965 Amendment
Amendment by
Cross References
Patentability, prior knowledge or use, public use or sale, and abandonment, see
Time limitation on damages, see
Section Referred to in Other Sections
This section is referred to in
§283. Injunction
The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.
(July 19, 1952, ch. 950,
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., §70, part (R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, §6,
This section is the same as the provision which opens R.S. 4921 with minor changes in language.
Federal Rules of Civil Procedure
Injunctions, see rule 65, Title 28, Appendix, Judiciary and Judicial Procedure.
Cross References
District courts of the United States as having original and exclusive jurisdiction of civil actions arising under any Act of Congress relating to patents, see
Section Referred to in Other Sections
This section is referred to in
§284. Damages
Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.
When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed.
The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances.
(July 19, 1952, ch. 950,
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., §§67 and 70, part (R.S. 4919; R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, §6,
This section consolidates the provisions relating to damages in R.S. 4919 and 4921, with some changes in language.
Section Referred to in Other Sections
This section is referred to in
§285. Attorney fees
The court in exceptional cases may award reasonable attorney fees to the prevailing party.
(July 19, 1952, ch. 950,
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., §70, part (R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, §6,
This section is substantially the same as the corresponding provision in R.S. 4921; "in exceptional cases" has been added as expressing the intention of the present statute as shown by its legislative history and as interpreted by the courts.
Section Referred to in Other Sections
This section is referred to in
§286. Time limitation on damages
Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.
In the case of claims against the United States Government for use of a patented invention, the period before bringing suit, up to six years, between the date of receipt of a written claim for compensation by the department or agency of the Government having authority to settle such claim, and the date of mailing by the Government of a notice to the claimant that his claim has been denied shall not be counted as part of the period referred to in the preceding paragraph.
(July 19, 1952, ch. 950,
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., §70, part (R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, §6,
The first paragraph is the same as the provision in R.S. 4921 with minor changes in language, with the added provision relating to the date for counterclaims for infringement.
The second paragraph is new and relates to extending the period of limitations with respect to suits in the Court of Claims in certain instances when administrative consideration is pending.
Section Referred to in Other Sections
This section is referred to in
§287. Limitation on damages and other remedies; marking and notice
(a) Patentees, and persons making or selling any patented article for or under them, may give notice to the public that the same is patented, either by fixing thereon the word "patent" or the abbreviation "pat.", together with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
(b)(1) An infringer under section 271(g) shall be subject to all the provisions of this title relating to damages and injunctions except to the extent those remedies are modified by this subsection or section 9006 of the Process Patent Amendments Act of 1988. The modifications of remedies provided in this subsection shall not be available to any person who—
(A) practiced the patented process;
(B) owns or controls, or is owned or controlled by, the person who practiced the patented process; or
(C) had knowledge before the infringement that a patented process was used to make the product the importation, use, or sale of which constitutes the infringement.
(2) No remedies for infringement under
(3)(A) In making a determination with respect to the remedy in an action brought for infringement under section 271(g), the court shall consider—
(i) the good faith demonstrated by the defendant with respect to a request for disclosure,
(ii) the good faith demonstrated by the plaintiff with respect to a request for disclosure, and
(iii) the need to restore the exclusive rights secured by the patent.
(B) For purposes of subparagraph (A), the following are evidence of good faith:
(i) a request for disclosure made by the defendant;
(ii) a response within a reasonable time by the person receiving the request for disclosure; and
(iii) the submission of the response by the defendant to the manufacturer, or if the manufacturer is not known, to the supplier, of the product to be purchased by the defendant, together with a request for a written statement that the process claimed in any patent disclosed in the response is not used to produce such product.
The failure to perform any acts described in the preceding sentence is evidence of absence of good faith unless there are mitigating circumstances. Mitigating circumstances include the case in which, due to the nature of the product, the number of sources for the product, or like commercial circumstances, a request for disclosure is not necessary or practicable to avoid infringement.
(4)(A) For purposes of this subsection, a "request for disclosure" means a written request made to a person then engaged in the manufacture of a product to identify all process patents owned by or licensed to that person, as of the time of the request, that the person then reasonably believes could be asserted to be infringed under section 271(g) if that product were imported into, or sold or used in, the United States by an unauthorized person. A request for disclosure is further limited to a request—
(i) which is made by a person regularly engaged in the United States in the sale of the same type of products as those manufactured by the person to whom the request is directed, or which includes facts showing that the person making the request plans to engage in the sale of such products in the United States;
(ii) which is made by such person before the person's first importation, use, or sale of units of the product produced by an infringing process and before the person had notice of infringement with respect to the product; and
(iii) which includes a representation by the person making the request that such person will promptly submit the patents identified pursuant to the request to the manufacturer, or if the manufacturer is not known, to the supplier, of the product to be purchased by the person making the request, and will request from that manufacturer or supplier a written statement that none of the processes claimed in those patents is used in the manufacture of the product.
(B) In the case of a request for disclosure received by a person to whom a patent is licensed, that person shall either identify the patent or promptly notify the licensor of the request for disclosure.
(C) A person who has marked, in the manner prescribed by subsection (a), the number of the process patent on all products made by the patented process which have been sold by that person in the United States before a request for disclosure is received is not required to respond to the request for disclosure. For purposes of the preceding sentence, the term "all products" does not include products made before the effective date of the Process Patent Amendments Act of 1988.
(5)(A) For purposes of this subsection, notice of infringement means actual knowledge, or receipt by a person of a written notification, or a combination thereof, of information sufficient to persuade a reasonable person that it is likely that a product was made by a process patented in the United States.
(B) A written notification from the patent holder charging a person with infringement shall specify the patented process alleged to have been used and the reasons for a good faith belief that such process was used. The patent holder shall include in the notification such information as is reasonably necessary to explain fairly the patent holder's belief, except that the patent holder is not required to disclose any trade secret information.
(C) A person who receives a written notification described in subparagraph (B) or a written response to a request for disclosure described in paragraph (4) shall be deemed to have notice of infringement with respect to any patent referred to in such written notification or response unless that person, absent mitigating circumstances—
(i) promptly transmits the written notification or response to the manufacturer or, if the manufacturer is not known, to the supplier, of the product purchased or to be purchased by that person; and
(ii) receives a written statement from the manufacturer or supplier which on its face sets forth a well grounded factual basis for a belief that the identified patents are not infringed.
(D) For purposes of this subsection, a person who obtains a product made by a process patented in the United States in a quantity which is abnormally large in relation to the volume of business of such person or an efficient inventory level shall be rebuttably presumed to have actual knowledge that the product was made by such patented process.
(6) A person who receives a response to a request for disclosure under this subsection shall pay to the person to whom the request was made a reasonable fee to cover actual costs incurred in complying with the request, which may not exceed the cost of a commercially available automated patent search of the matter involved, but in no case more than $500.
(July 19, 1952, ch. 950,
Amendment of Section
(A) in subsection (a)—
(i) by striking "making or selling" and inserting "making, offering for sale, or selling within the United States"; and
(ii) by inserting "or importing any patented article into the United States," after "under them,"; and
(B) in subsection (b)—
(i) in paragraph (1)(C), by striking "use, or sale" and inserting "use, offer for sale, or sale";
(ii) in paragraph (4)(A), by striking "sold or" and inserting "sold, offered for sale, or" in the matter preceding clause (i);
(iii) in paragraph (4)(A)(ii), by striking "use, or sale" and inserting "use, offer for sale, or sale";
(iv) in paragraph (4)(C), by striking "have been sold" and inserting "have been offered for sale or sold"; and
(v) in paragraph (4)(C), by striking "United States before" and inserting "United States, or imported by the person into the United States, before".
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., §49 (R.S. 4900, amended Feb. 7, 1927, ch. 67,
Language is changed. The proviso in the corresponding section of existing statute is omitted as being temporary in character and now obsolete.
References in Text
Section 9006 of the Process Patent Amendments Act of 1988, referred to in subsec. (b)(1), is section 9006 of title IX of
The effective date of the Process Patent Amendments Act of 1988, referred to in subsec. (b)(4)(C), is the effective date of title IX of
Amendments
1988—
Effective Date of 1994 Amendment
Amendment by
Effective Date of 1988 Amendment
Amendment by
Section Referred to in Other Sections
This section is referred to in
§288. Action for infringement of a patent containing an invalid claim
Whenever, without deceptive intention, a claim of a patent is invalid, an action may be maintained for the infringement of a claim of the patent which may be valid. The patentee shall recover no costs unless a disclaimer of the invalid claim has been entered at the Patent and Trademark Office before the commencement of the suit.
(July 19, 1952, ch. 950,
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., §71 (R.S. 4922).
The necessity for a disclaimer to recover on valid claims is eliminated. See section 253.
Language is changed.
Amendments
1975—
Effective Date of 1975 Amendment
Amendment by
Cross References
Right to disclaim and requisites and effect of disclaimer, see
Section Referred to in Other Sections
This section is referred to in
§289. Additional remedy for infringement of design patent
Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties.
Nothing in this section shall prevent, lessen, or impeach any other remedy which an owner of an infringed patent has under the provisions of this title, but he shall not twice recover the profit made from the infringement.
(July 19, 1952, ch. 950,
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., §§74, 75 (Feb. 4, 1887, ch. 105, §§1, 2,
Language is changed.
Cross References
Damages recoverable in action for copyright infringement, see
Patented articles marked as such and notice of infringement, see
Patents for design generally, see
Section Referred to in Other Sections
This section is referred to in
§290. Notice of patent suits
The clerks of the courts of the United States, within one month after the filing of an action under this title shall give notice thereof in writing to the Commissioner, setting forth so far as known the names and addresses of the parties, name of the inventor, and the designating number of the patent upon which the action has been brought. If any other patent is subsequently included in the action he shall give like notice thereof. Within one month after the decision is rendered or a judgment issued the clerk of the court shall give notice thereof to the Commissioner. The Commissioner shall, on receipt of such notices, enter the same in the file of such patent.
(July 19, 1952, ch. 950,
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., §70, part (R.S. 4921, amended (1) Mar. 3, 1897, ch. 391, §6,
This is the last sentence of R.S. 4921, third paragraph, with minor changes in language.
§291. Interfering patents
The owner of an interfering patent may have relief against the owner of another by civil action, and the court may adjudge the question of the validity of any of the interfering patents, in whole or in part. The provisions of the second paragraph of
(July 19, 1952, ch. 950,
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., §66 (R.S. 4918, amended Mar. 2, 1927, ch. 273, §12,
Language is changed.
Cross References
Appeals in interference cases, see
Civil action in case of interference, see
Proceedings in Patent and Trademark Office on interfering patents, see
§292. False marking
(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, or sold by him, the name or any imitation of the name of the patentee, the patent number, or the words "patent," "patentee," or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made or sold by or with the consent of the patentee; or
Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word "patent" or any word or number importing that the same is patented for the purpose of deceiving the public; or
Whoever marks upon, or affixes to, or uses in advertising in connection with any article, the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public—
Shall be fined not more than $500 for every such offense.
(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.
(July 19, 1952, ch. 950,
Amendment of Subsection (a)
(A) by striking "used, or sold by him" and inserting "used, offered for sale, or sold by such person within the United States, or imported by the person into the United States"; and
(B) by striking "made or sold" and inserting "made, offered for sale, sold, or imported into the United States".
Historical and Revision Notes
Based on Title 35, U.S.C., 1946 ed., §50 (R.S. 4901).
This is a criminal provision. The first two paragraphs of the corresponding section of existing statute are consolidated, a new paragraph relating to false marking of "patent applied for" is added, and false advertising is included in all the offenses. The minimum fine which has been interpreted by the courts as a maximum, is replaced by a higher maximum. The informer action is included as additional to an ordinary criminal action.
Effective Date of 1994 Amendment
Amendment by
Cross References
Jurisdiction of district court of the United States of action for fine, penalty or forfeiture, see
Venue of action for fine, penalty or forfeiture, see
Section Referred to in Other Sections
This section is referred to in
§293. Nonresident patentee; service and notice
Every patentee not residing in the United States may file in the Patent and Trademark Office a written designation stating the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder. If the person designated cannot be found at the address given in the last designation, or if no person has been designated, the United States District Court for the District of Columbia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court.
(July 19, 1952, ch. 950,
Historical and Revision Notes
This section provides for service on non-resident patentees.
Amendments
1975—
Effective Date of 1975 Amendment
Amendment by
§294. Voluntary arbitration
(a) A contract involving a patent or any right under a patent may contain a provision requiring arbitration of any dispute relating to patent validity or infringement arising under the contract. In the absence of such a provision, the parties to an existing patent validity or infringement dispute may agree in writing to settle such dispute by arbitration. Any such provision or agreement shall be valid, irrevocable, and enforceable, except for any grounds that exist at law or in equity for revocation of a contract.
(b) Arbitration of such disputes, awards by arbitrators and confirmation of awards shall be governed by
(c) An award by an arbitrator shall be final and binding between the parties to the arbitration but shall have no force or effect on any other person. The parties to an arbitration may agree that in the event a patent which is the subject matter of an award is subsequently determined to be invalid or unenforceable in a judgment rendered by a court to 1 competent jurisdiction from which no appeal can or has been taken, such award may be modified by any court of competent jurisdiction upon application by any party to the arbitration. Any such modification shall govern the rights and obligations between such parties from the date of such modification.
(d) When an award is made by an arbitrator, the patentee, his assignee or licensee shall give notice thereof in writing to the Commissioner. There shall be a separate notice prepared for each patent involved in such proceeding. Such notice shall set forth the names and addresses of the parties, the name of the inventor, and the name of the patent owner, shall designate the number of the patent, and shall contain a copy of the award. If an award is modified by a court, the party requesting such modification shall give notice of such modification to the Commissioner. The Commissioner shall, upon receipt of either notice, enter the same in the record of the prosecution of such patent. If the required notice is not filed with the Commissioner, any party to the proceeding may provide such notice to the Commissioner.
(e) The award shall be unenforceable until the notice required by subsection (d) is received by the Commissioner.
(Added
Effective Date
Section 17(c) of
1 So in original. Probably should be "of".
§295. Presumption: Product made by patented process
In actions alleging infringement of a process patent based on the importation, sale, or use of a product which is made from a process patented in the United States, if the court finds—
(1) that a substantial likelihood exists that the product was made by the patented process, and
(2) that the plaintiff has made a reasonable effort to determine the process actually used in the production of the product and was unable to so determine,
the product shall be presumed to have been so made, and the burden of establishing that the product was not made by the process shall be on the party asserting that it was not so made.
(Added
Amendment of Section
Effective Date of 1994 Amendment
Amendment by
Effective Date
Section 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
§296. Liability of States, instrumentalities of States, and State officials for infringement of patents
(a)
(b)
(Added
Effective Date
Section effective with respect to violations that occur on or after Oct. 28, 1992, see section 4 of