« iepriekšējāTurpināt »
classification of patentable subject matter as the Commissioner shall establish and publish. The primary examiner shall be the presiding officer in the examination proceeding. He shall examine the specification and claims therein, or cause them to be examined in the first instance by another examiner, and shall determine whether the subject matter sought to be patented is patentable. The primary examiner may at any time request the Public Counsel to intervene and participate in any proceeding.
"(b) Whenever, in an examination proceeding, the primary examiner grants or rejects any claim of an application, makes any objection or requirement, or renders any other decision, he shall notify all parties of record. If, after service of such decision, any party of record requests reexamination, with or without amendment, the primary examiner shall reexamine the application and render a decision. The examiner may decline to reexamine the application after having once reexamined it at the instance of the party of record requesting such reexamination.
"(c) All decisions by a primary examiner shall be a written part of the record in the Office, and shall include:
"(1) findings and conclusions, and the reasons or basis therefor, on all material issues of fact, law, or discretion presented; and "(2) an appropriate order; and
"(3) such information and references as the primary examiner may deem useful to the applicant in evaluating the desirability of continuing the prosecution of the application; and
"(4) a complete narrative report of all matters discussed in personal meetings, telephone discussions, or other communications between examiner and an applicant, or his representatives, relating to the patent application under examination.
Statements of reasons may be long or short as the nature of the case may require.
"(d) No amendment shall introduce new matter into the disclosure of the invention. Whenever any change is made in the disclosure, the burden shall be on the applicant to persuade the Office that the matter is not new.
"(e) The applicant may present amended or new claims for reexamination of his application, but no such claims shall materially enlarge the scope of the claims of the application. Nothing contained in this subsection shall preclude any applicant from utilizing the procedures permitted by section 120 of this title.
"(f) If the subject matter sought to be patented in an application appears to relate to two or more classes of patentable subject matter, as established pursuant to subsection (a) of this section, or if the needs of administration of the Office otherwise appear so to require, the Commissioner may require examination by two or more primary examiners, for which additional examination the Commissioner may prescribe additional examination fees in accordance with section 41 (a) of this title.
"§ 133. Time for prosecuting application
"Upon failure of the applicant to prosecute the application within six months after any action therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than one month, as fixed by the primary examiner in such action, the application shall be regarded as abandoned, unless it be shown to the satisfaction of the primary examiner that such delay was unavoidable.
"§ 134. Appeal to the Board of Appeals
"(a) The appeal from any final decision of the primary examiner shall be to the Board of Appeals. The Public Counsel shall be responsible for briefing and arguing the case before the Board of Appeals in respect to any appeal taken by any applicant, except in respect to priority of invention contests pursuant to section 136 of this chapter, in which case participation of the Public Counsel shall be at his discretion.
“(b) If any appeal is taken to the Board of Appeals, the primary examiner may, within such time as the Commissioner may by regulation prescribe, prepare a legal opinion elaborating and explaining the decision and statement made by him pursuant to section 132 of this chapter. The primary examiner shall not, in any appeal, otherwise appear before the Board of Appeals.
"(c) In any proceeding before the Board of Appeals, any party may introduce into the record any patents, publications, or other evidence of the state of the art not previously made part of the record; and may seek to reverse L the decision of the primary examiner on the basis thereof. The Board may consider the patentability of any claim in the application, de novo, or remand any proceeding to the primary examiner for reconsideration in the light of such or other further information, including any adduced by the Board, sua sponte.
"(d) Proceedings before the Board of Appeals shall be open to the public and a transcript of any hearing shall be kept. The Board of Appeals shall render a written decision which shall be entered of record and govern further proceedings in the case. The decision of the Board shall constitute final administrative action by the Office.
" 135. Examination or reexamination on the basis of patents, publications, or information cited or funished by others
“(a) Any party or other person may, after an application for patent becomes publicly available under section 122 of this title and until notice of allowance of a patent thereon, notify the Commissioner of patents, publications, other documentary or tangible evidence of the state of the art, or any other information, which may have a bearing on the patentability of any claim of said patent application, together with any explanation thereof which such person deems appropriate.
"(b) The Commissioner shall cause the claims of the patent application to be examined or reexamined by the primary examiner in the light of matter submitted pursuant to subsection (a) of this section, in such proceedings as the Commissioner shall by regulation establish. In any such proceeding, the primary examiner shall determine the patentability of the subject matter, pursuant to section 132 of this chapter.
"(c) The Commissioner shall inform the applicant of the receipt of a notice under this section, not later than one month after the receipt thereof. The applicant may present amended or new claims for such examination or reexamination, but no such claims shall enlarge the scope of the claims of the application. Failure of the applicant to prosecute in accordance with section 133 of this title shall result in the abandonment of his application. No patent shall issue until completion of the examination or reexamination of any such application.
"(d) The party, or other person, making the notification under subsection (a) of this section may participate as a party in the examination or reexamination proceeding, unless he elects not to be identified. In such case, the Patent Office shall give no information concerning the identity of such person, without his authority, unless such information is necessary to carry out the provisions of an Act of Congress or by reason of such special circumstances, as may be determined by the Commissioner to effectuate the purposes of this title.
"§ 136. Procedures in priority of invention contest
"(a) Whenever there are two or more pending applications naming different inventors and claiming the same or substantially the same subject matter, the patent shall ordinarily be issued on the application having the earliest actual filing date in the United States, if such application is otherwise allowable, and any applications having later actual filing dates in the United States with respect to such subject matter shall be rejected on the basis of such patent.
“(b) The priority of invention between or among applications subject to subsection (a) of this section shall be determined by the primary examiner in a proceding in accordance with such rules as the Commissioner shall establish, if:
"(1) the later filed application is otherwise allowable;
"(2) the applicant therefor makes a prima facie showing of invention, as the same is defined pursuant to section 104 of this title, with respect to the date of invention stated pursuant to section 112 (a) of this title; and
"(3) such applicant offers to present evidence in support of such showing, within such time as the Commissioner shall prescribe by rules, after rejection of his claims.
"(c) (1) Subject to paragraph (2) of this subsection, whenever an other wise allowable claim of an application is for the same or substantially the same subject matter as a claim of an issued patent having an actual filing date in the United States later than that of such application, or such appli cation discloses subject matter over which a claim of such patent is unpatentable, the primary examiner shall, on his own or any party's motion, initiate a proceeding to determine priority of invention.
"(2) No claim for the same or substantially the same subject matter as a claim of an issued patent shall be allowed unless such claim is made within one year after the date on which the patent was granted. Nothing contained in this paragraph shall, however, preclude any person from asserting the unpatentability to the patentee of the subject matter of such a claim, by reason of the prior activity of the applicant.
"(d) If two or more otherwise allowable applications claim the same or substantially the same matter and have the same actual filing date in the United States, or one or more otherwise allowable applications and an issued patent claim the same or substantially the same subject matter and have the same actual filing date in the United States, the primary examiner shall initiate a proceeding to determine priority.
"(e) Failure of the applicant to proceed under subsections (b), (c), or (d) within the time specified shall preclude such applicant from asserting priority of invention with respect to the subject matter claimed in the patent for the purpose of obtaining a patent. Failure of the patentee to proceed under subsection (c) or (d) of this section within the time specified shall operate to cancel such claim from the patent, and notice thereof shall be endorsed on copies of the specification of the patent thereafter distributed by the Patent Office.
"(f) In any proceeding under this section, the primary examiner, or any party, may raise the question of the patentability of any claim which is involved in the proceeding, and such question shall be determined in the proceeding.
"§ 137. Participation of parties
"Any party may at any time participate or intervene in any proceeding arising pursuant to this title, or initiate, participate, or intervene in any appeal therefrom, and thereby shall become a party of record.
"§ 138. Effect of proceedings before Patent Office
"(a) A final decision by the Patent Office adverse to a claim of an issued patent from which no appeal or other review has been or can be taken or had shall constitute cancellation of such claim from the patent, and notice thereof shall be endorsed on copies of the specification of the patent thereafter distributed by the Patent Office.
"(b) Except as otherwise provided in this title, no party or other person shall be foreclosed, estopped, or in any way prejudiced with respect to the assertion of any claim or any defense in any proceeding in any court by reason of his, or any other party's or other person's, having proceeded or failed to proceed in accordance with the provisions of this title. Nothing contained in this title shall be construed to supersede the jurisdiction of any Federal court or agency, nor to make any proceeding before such court or agency subject to the primary jurisdiction of the Patent Office.
"$ 139. Settlement agreements
"(a) Any agreement or understanding between parties to a proceeding under this chapter, including any collateral agreements referred to therein, made in connection with or in contemplation of the termination of the proceeding, shall be in writing. A copy thereof shall be filed in the Patent Office before the termination of the proceeding as between such parties. The copy shall be made part of the public record of the proceeding.
"(b) Failure to file such agreement or understanding shall render such agreement or understanding and any patent issued in connection with such proceeding permanently unenforceable.
"§ 140. Burden of persuasion
"In all proceedings in the Patent Office, the applicant shall have the burden of persuading the Office that a claim is patentable.
"CHAPTER 13.-REVIEW OF PATENT OFFICE DECISIONS
"141. Appeal to Court of Customs and Patent Appeals.
"142. Notice of appeal.
"143. Proceedings on appeal.
"144. Decision on appeal.
"145. Civil action.
"147. Appeal to the United States Court of Appeals for the District of Columbia.
"§ 141. Appeal to Court of Customs and Patent Appeals
"An appeal from a final decision of the Board of Appeals may be had by any party to the United States Court of Customs and Patent Appeals. Any such appeal shall be dismissed without prejudice, however, if any other party, within twenty days after the notice of appeal is filed, files notice with the Commissioner that he elects to have all further proceedings conducted as provided in section 145 of this chapter.
"§ 142. Notice of appeal
"When an appeal is taken to the United States Court of Customs and Patent Appeals, the appellant shall file in the Patent Office and serve upon the Public Counsel and all parties of record a written notice of appeal, within such time after the date of the decision appealed from, not less than sixty days, as the Commissioner appoints.
"§ 143. Proceedings on appeal
"The Commissioner shall transmit to the United States Court of Customs and Patent Appeals certified copies of the decision of the Board of Appeals and of all other necessary original papers and evidence in the case specified by the appellant or any other party. The Public Counsel shall be responsible for briefing and arguing the case before the court in respect to any appeal taken by the applicant, except in respect to priority of invention contests pursuant to section 136 of this title, in which case participation of the Public Counsel shall be at his discretion. The court shall, before hearing such appeal, give notice of the time and place of the hearing to the Commissioner, the Public Counsel, and any parties of record.
"S 144. Decision on appeal
"The United States Court of Customs and Patent Appeals shall review the decision appealed from under section 141 of this title. The court may affirm or set aside the decision below, or remand the matter to the Office for further consideration in light of other factors or information that the court deems pertinent. Upon its determination the court shall return to the Commissioner a certificate of its proceedings and decision, which shall be entered of record in the Patent Office and govern further proceedings in the case.
"§ 145. Civil action
"Any final decision of the Board of Appeals shall be subject to judicial review by civil action against the Commissioner by any party in the United States District Court for the District of Columbia. Such action shall be commenced within such time after such decision, not less than sixty days, as the Commissioner appoints. The Public Counsel shall be responsible for briefing and arguing the case before the court in respect to any appeal taken by the applicant, except in respect to priority of invention contests pursuant to section 136 of this title, in which case participation of the Public Counsel shall be at his discretion. In any such proceeding before said district court, any party may introduce into the record any publications, patents, or other evidence of the state of the art, or other information not previously made part of the record; and may seek to reverse the decision of the Board of Appeals. The court may consider patentability, de novo, or remand any proceeding to the Patent Office for reconsideration in light of such further information. The court may affirm the decision below, set aside the rejection of any claims which were rejected in the decision of the Board of Appeals, reject the allowance of any claims previously allowed, or remand the proceeding to the Patent Office for further consideration. Such adjudication shall be entered of record in the Patent Office and govern further proceedings in the
"§ 147. Appeal to the United States Court of Appeals for the District of Columbia
"(a) Any party dissatisfied with the decision of the Court of Customs and Patent Appeals in a proceeding under section 141 of this title may seek a review thereof by the United States Court of Appeals for the District of Columbia Circuit by petition for the allowance of an appeal.
"(b) Said court of appeals may prescribe rules governing time for making such petition, the practice and procedure on such petition, the preparation of and the time for filing the transcript of the record in such cases, and generally to regulate all matters relating to appeals in such cases. If said court of appeals shall allow an appeal, the court shall review the record on appeal and shall affirm, reverse, or modify the decision in accordance with law.
"(c) No party shall file a petition for certiorari, pursuant to section 1256 of title 28, United States Code, unless he has first filed a petition pursuant to subsections (a) and (b) of this section, and it has been denied. If such petition is granted, the provisions of sections 1252 and 1254, title 28, United States Code, shall govern any subsequent appellate review.
"151. Issue of patent.
"152. How issued.
"CHAPTER 14.-ISSUE OF PATENT
"153. Contents and term of patent.
"§ 151. Issue of patent
"(a) If it is determined that an applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee or a portion thereof, which shall be paid within three months thereafter.
"(b) Upon payment of this sum the patent shall issue, but if payment is not timely made, the application shall be regarded as abandoned.
"(c) Any remaining balance of the issue fee shall be paid within three months from the sending of a notice thereof and, if not paid, the patent shall lapse at the termination of the three-month period. In calculating the amount of a remaining balance, charges for a page or less may be disregarded.
"(d) If any payment required by this section is not timely made, but is submitted with the fee for delayed payment and sufficient cause is shown for the late payment, it may be accepted by the Commissioner as though no abandonment or lapse had ever occurred.
"§ 152. How issued
"Patents shall be issued in the name of the United States of America, under the seal of the Patent Office, and shall be signed by the Commissioner or have his signature placed thereon, and shall be recorded in the Patent Office. "§ 153. Contents and term of patent
"(a) Every patent shall contain a grant to the applicant, his heirs or assigns, or, as provided in section 111(d) of this title, to the inventor, his heirs or assigns of the right, during the term of the patent, to exclude others, pursuant to part III of this title, from making, using, or selling the patented subject matter throughout the United States, referring to the specifications for the particulars thereof. A copy of the specification and drawings shall be annexed to the patent and be a part thereof.
"(b) The term of a patent shall expire twelve years from the actual filing date in the United States or, if a prior filing date under section 119 of this title has been claimed, twelve years from such date: Provided, however, That there shall be added to any such twelve-year period the period of time during which the examination of the subject matter of the application was deferred pursuant to chapter 18 of this title. Notice of the term of any patent shall be indicated at the beginning thereof.
"(c) The term of a patent whose issuance has been delayed by reason of the application having been ordered kept secret under section 181 of this title shall be extended for a period equal to such delay in issuance of the patent after the notice of allowability referred to in section 183 of this title. The term of a patent shall be extended for a period of equal to the delay incurred due to review under section 151 or 152 of the Atomic Energy Act of 1954 (68 Stat.