32 1 2 3 of the United States, entering the United States temporarily or accidentally, shall not constitute infringement of any patent, if the invention is used exclusively for the needs of the vessel, aircraft or vehicle 4 and is not sold in or used for the manufacture of anything to be sold in or exported from the United States. 5 6 7 "Sec. "Chapter 28.-REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS "281. Remedy for infringement of patent. "282. Defenses. "283. Injunction. 284. Damages. "285. Attorney fees. "286. Time limitation on damages. "287. Mitigation of damages; marking and notice. "288. Action for infringement of a patent containing an invalid claim. "289. Additional remedy for infringement of design patent. "290. Notice of patent suit. "292. False marking. "293. Nonresident applicant and patentee; service and notice. "294. Presumptions and estoppels; cancellation. "A patentee shall have remedy by civil action for infringement of his patent. "§ 282. Defenses "(a) 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. 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 “(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 sections 112 or 251 of this title. “(4) Any other fact or act made a defense by this title. "(b) There is an absence of liability for infringement of a patent by any person who, in the United States, on or before the effective filing date of the application for the patent was, in good faith, manufacturing the product or using the process claimed, or had made substantial preparation for such manufacture or use, and such person shall have the right to continue such manufacture or use despite the 28 patent and to sell the products thereof, but such right shall be personal and nontransferable except with the entire business of the plant at which the manufacture or use began. 25 26 27 29 30 31 32 "(c) In actions involving the validity or infringement of a patent the party asserting invalidity or noninfringement shall give notice in 33 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 the pleadings or otherwise in writing to the adverse party at least thirty days before the trial, of the prior art to be relied upon as affecting the validity or scope of the patent, setting forth specific identification of every exhibit and every witness to be relied upon in proof thereof. 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. "§ 283. Injunction "(a) 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. "(b) No injunction shall be granted with respect to subsequent use or sale of machines, manufactures, or compositions of matter made prior to the grant of the patent and for which damages are awarded under section 284 (b) of this title. "§ 284. Damages "(a) Upon finding for the claimant, the court shall award the claimant damages adequate to compensate for the infringement but in no event less than the infringer's profits attributable to the infringement or 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. "(b) Damages for acts set forth in section 271 (f) of this title shall be awarded only for acts occurring after actual notice to the infringer 24 stating how his acts are considered to infringe a claim of an application laid open to public inspection. 25 26 27 28 29 "(c) When the damages are not found by a jury, the court shall assess them. The court may increase the damages up to three times the amount found or assessed. "(d) The court may receive expert testimony as an aid to the deter30 mination of damages or of what royalty would be reasonable under the "The court in appropriate cases may award reasonable attorney fees to the prevailing party. "§ 286. Time limitation on damages "(a) 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. "(b) In the case of claims against the United States Government for use of a patented invention, the period before bringing suit, up to 34 1 2 3 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 4 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. "§ 287. Mitigation of damages; marking and notice 5 6 7 8 9 10 11 12 "Patentees, applicants, and persons making, using, or selling any invention for or under them that is the subject of a patent or a published application therefor, may give notice to the public thereof either by fixing to an article the word 'patent' or the abbreviation 'pat.' or the words 'patent applied for' or the abbreviation 'pat. app. for,' together with the number of the patent or application related thereto, 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. The failure so to mark may be proved as an element in mitigation of damages or diminution of what royalty would be reasonable prior to the date when the infringer was notified of the infringement. Filing of an action for infringement shall con19 stitute such notice. 13 14 15 16 17 18 "§ 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 Office before the commencement of the suit. "§ 289. Additional remedy for infringement of a design patent "(a) 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 34 $250, recoverable in any United States district court having jurisdiction of the parties. 32 33 35 36 37 38 39 "(b) 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. 1 2 3 4 5 6 35 "S 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 7 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. 8 9 10 11 12 13 14 15 16 17 "§ 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 23 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 32 States. 31 33 34 35 36 "§ 293. Nonresident applicant and patentee; service and notice "Every applicant and every patentee not residing in the United States may file in the Patent Office a written designation stating the name and address of a person residing within the United States on 37 whom may be served process or to whom may be mailed notice of proceedings affecting the application or the patent or rights thereunder. If the person designated cannot be found at the address given 38 39 36 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 24 in the last designation, or if no person has been designated, such process or notice may be served as provided for service of process by publication in civil actions in the District of Columbia and the court or agency concerned shall have the same jurisdiction to take any action respecting the application or patent or rights thereunder that it would have if the applicant or patentee were personally served. "§ 294. Presumptions and estoppels; cancellation "(a) Actions of the Commissioner are administrative in nature and are entitled to the usual presumption that they are correct and legal. Review, re-review, examination, and reexamination of applications, and appeals to the Board of Appeals under chapter 12 of this title involve findings of fact. Appeals to the United States Court of Customs and Patent Appeals shall be governed by the scope of review provided in section 1009 (e) of title 5 United States Code, without trial de novo. In civil actions calling into question the validity of findings of facts by the Patent Office such findings shall not be set aside unless clearly erroneous. "(b) In any civil action in a Federal Court in which the validity or scope of a claim of a patent is drawn into question, the owner of the patent, as shown by the records of the Patent Office, shall have the unconditional right to intervene to defend the validity or scope of such claim and to obtain evidence of knowledge of prior art pertinent 23 thereto in the possession of any person subject to service of process of any court of the United States. The party challenging validity or scope of the claim shall serve upon the patent owner a copy of the earliest pleading asserting such challenge. If the owner cannot be personally served in the exercise of reasonable diligence, service may be made in any manner provided for in the Federal Rules of Civil Procedure and, in addition, notice shall be transmitted to the Patent Office and published in the Official Gazette. 25 26 27 28 29 30 31 32 33 34 35 "(c) In any action as set forth in subsection (b) of this section, a final adjudication, from which no appeal has been or can be taken, limiting the scope of the claim or holding it to be invalid, shall constitute an estoppel against the patentee, and those in privity with him, in any subsequent Federal action, and may constitute an estoppel in such 36 other Federal actions as the latter court may determine, involving such patent. Within thirty days of such adjudication the clerk of the court shall transmit notice thereof to the Commissioner, who shall place the same in the public records of the Patent Office pertaining to such patent, and endorse notice on all copies of the patent thereafter 37 38 39 40 |