35 U.S.C. § 294

Current through P.L. 118-107 (published on www.congress.gov on 11/21/2024)

Section 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 title 9, to the extent such title is not inconsistent with this section. In any such arbitration proceeding, the defenses provided for under section 282 shall be considered by the arbitrator if raised by any party to the proceeding.

(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 of 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 Director. 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 Director. The Director 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 Director, any party to the proceeding may provide such notice to the Director.

(e) The award shall be unenforceable until the notice required by subsection (d) is received by the Director.

35 U.S.C. § 294

Added Pub. L. 97-247, §17(b)(1), Aug. 27, 1982, 96 Stat. 322; amended Pub. L. 106-113, div. B, §1000(a)(9) [title IV, §4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A-582; Pub. L. 107-273, div. C, title III, §13206(a)(19), (b) (1)(B), Nov. 2, 2002, 116 Stat. 1905, 1906; Pub. L. 112-29, §20(j), Sept. 16, 2011, 125 Stat. 335.

EDITORIAL NOTES

AMENDMENTS2011-Subsec. (b). Pub. L. 112-29 struck out "of this title" after "282".2002-Subsec. (b). Pub. L. 107-273, §13206(a)(19)(A), struck out "United States Code," after "title 9,".Subsec. (c). Pub. L. 107-273, §13206(a)(19)(B), substituted "rendered by a court of" for "rendered by a court to".Subsecs. (d), (e). Pub. L. 107-273, §13206(b)(1)(B), made technical correction to directory language of Pub. L. 106-113. See 1999 Amendment note below.1999-Subsecs. (d), (e). Pub. L. 106-113 as amended by Pub. L. 107-273, §13206(b)(1)(B), substituted "Director" for "Commissioner" wherever appearing.

STATUTORY NOTES AND RELATED SUBSIDIARIES

EFFECTIVE DATE OF 2011 AMENDMENTAmendment by 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.

EFFECTIVE DATE OF 1999 AMENDMENTAmendment by 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 DATEPub. L. 97-247, §17(c), Aug. 27, 1982, 96 Stat. 323, provided that: "Sections 5, 6, 8 through 12, and 17(b) of this Act [enacting this section and amending sections 21, 111, 116, and 256 of this title and sections 1058, 1063, 1064, 1065, and 1066 of Title 15, Commerce and Trade] shall take effect six months after enactment [Aug. 27, 1982]."

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.
United States: The terms "United States" and "this country" mean the United States of America, its territories and possessions.
patentee: The word "patentee" includes not only the patentee to whom the patent was issued but also the successors in title to the patentee.