35 U.S.C. § 291

Current through P.L. 118-106 (published on www.congress.gov on 10/04/2024)

Section 291 - Derived patents

(a) IN GENERAL.-The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section.

(b) FILING LIMITATION.-An action under this section may be filed only before the end of the 1-year period beginning on the date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.

35 U.S.C. § 291

July 19, 1952, ch. 950, 66 Stat. 814; Pub. L. 112-29, §§3(h)(1), Sept. 16, 2011, 20, Sept. 16, 2011, 125 Stat. 288, 335.

HISTORICAL AND REVISION NOTESBased on Title 35, U.S.C., 1946 ed., §66 (R.S. 4918, amended Mar. 2, 1927, ch. 273, §12, 44 Stat. 1337).Language is changed.

EDITORIAL NOTES

AMENDMENTS2011- Pub. L. 112-29, §20(j), struck out "of this title" after "146". Pub. L. 112-29, §3(h)(1), amended section generally. Prior to amendment, text read as follows: "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 section 146 shall apply to actions brought under this section."

STATUTORY NOTES AND RELATED SUBSIDIARIES

EFFECTIVE DATE OF 2011 AMENDMENTAmendment by section 3(h)(1) of Pub. L. 112-29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112-29 set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title.Amendment by section 20(j) of Pub. L. 112-29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112-29 set out as a note under section 2 of this title.

SAVINGS PROVISIONSProvisions of 35 U.S.C. 291, as in effect on the day before the expiration of the 18-month period beginning on Sept. 16, 2011, apply to each claim of certain applications for patent, and certain patents issued thereon, for which the amendments made by section 3 of Pub. L. 112-29 also apply, see section 3(n)(2) of Pub. L. 112-29 set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title.

invention: The term "invention" means invention or discovery.
inventor: The term "inventor" means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.
joint inventor: The terms "joint inventor" and "coinventor" mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.