252. Joint owners

"In the absence of any agreement to the contrary recorded in the Patent Office, each of the joint owners of a published application or patent may make use, or have use made for him, of the invention claimed without the consent of and without accounting to the other owners, but, except with the consent of the other owners, the interest of a joint owner of a published application or patent may be transferred only to another joint owner or by inheritance or bequest, and a license or waiver of a right conferred by a jointly-owned patent or application can be made only by all the joint owners.

$253. Determination of title disputes

Title to any invention, application, or patent may be determined by civil action or other appropriate proceeding in any court of competent jurisdication and the Commissioner shall give effect to final judgment in such proceeding as required by law and in accordance with the principles of equity.

"Sec.

"CHAPTER 26.-GOVERNMENT INTERESTS IN PATENTS

-261. Time for taking action in Government applications. "§261. Time for taking action in Government applications

"Notwithstanding the provisions of Chapter 12 of this title, the Commissioner may extend the time for taking any action to three years, when an application has become the property of the United States and the head of the appropriate department or agency of the Government has certified to the Commissioner that the invention disclosed therein is important to the armament or defense of the United States.

"SEC.

"CHAPTER 27.-INFRINGEMENT OF PATENTS

"271. Infringement of patent.

272. Temporary presence in the United States.

"§271. Infringement of patent

"(a) Except as otherwise provided in this title, whoever without authority of the patentee makes use within the United States in the useful arts of any patented invention during the term of the patent therefor infringes the patent. Without limitation on the generality of the foregoing, a person makes use of a patented invention within the United States, inter alia, if he:

"(i) practices within the United States a process defined by a claim of the patent;

"(ii) makes, uses, or sells within the United States a machine, manufacture, or composition of matter defined by a claim of the patent;

"(iii) imports into the United States a product made outside the United States by a process defined by a claim of the patent;

"(iv) makes, uses, or sells within the United States a component of a machine, manufacture, or composition of matter defined by a claim of the patent, or a material or apparatus for practicing a process defined by a claim of the patent, knowing the same to be especially made or adapted for making use within or without the United States of the subject matter so defined if such component or material or apparatus is not a staple article or commodity of commerce suitable for substantial other use. "(b) Whoever actively induces infringement of a patent shall be liable as an infringer.

"(c) No patent owner otherwise entitled to relief under subsections (a) or (b) of this section shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which it performed by another without his consent would establish liability under subsections (a) or (b) of this section; (2) licensed or authorized another to perform acts which if performed without his consent would establish liability under subsections (a) or (b) of this section; (3) sought to enforce his patent rights under subsections (a) or (b) of this section.

"(d) Whoever, during the interim period after an application is laid open to public inspection under section 120 of this title and before issue of a patent, performs acts which, if performed after issue of the patent, would make him

liable for infringement of a valid claim of the patent shall be liable for those acts as an infringer is that claim appears in the application as laid open to public inspection and in the issued patent.

"§272. Temporary presence in the United States

"The use of any invention in any vessel, aircraft, or vehicle of any country which affords similar privileges to vessels, aircraft, or vehicles 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 and is not sold in or used for the manufacture of anything to be sold in or exported from the United States.

"CHAPTER 28.-REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

"Sec.

"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.

"291. False marking.

"292. Nonresident applicant and patentee; service and notice.

"293. Presumptions and estoppels; cancellation.

"$281. Remedy for infringement of patent

"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 unemforceability.

"(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 191 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 commercially manufacturing the product or using the process .claimed, or had made substantial preparation especially for such manufacture or use, and such person shall have the right to continue such manufacture or use despite the patent and to sell the products thereof, but such right shall be personal and nontransferable except with the person's entire business in the manufacture or use involved.

"(e) 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 as required by operation of the Federal Rules of Civil Procedure, but in no event less than 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 said matters may not be made at the trial except on such terms as the court requires.

"(d) A patent though otherwise found valid and infringed shall be unenforceable so long as it is serving as a material aid in effecting a violation of the antitrust laws culpably involving the patentee.

"(e) The burden of establishing invalidity of a patent or any claim thereof, infringement, absence of liability for infringement, or unenforceability shall rest on the party asserting it.

$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 (d) of this title shall be awarded only for acts occurring after actual notice to the infringer stating how his acts are considered to infringe a claim of an application laid open to public inspection.

"(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 determination of damages or of what royalty would be reasonable under the circumstances.

"$285. Attorney fees

"The court in appropriate cases may award reasonable attorney fees to the prevailing party.

Ҥ286. 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 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.

"$287. Mitigation of damages; marking and notice

"Patentees, applicants, and persons making use of any patented 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 constitute such notice. "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 has been entered, or a proceeding under section 191 of this title commenced, in the Patent Office with respect to the invalid claim 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 $250, recoverable in any United States district court having jurisdiction of the parties.

"(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.

"$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.

"§291. 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 of any imitation of the name of the patentee, the patent number, or the words 'patent,' 'patentee,' or the like, with the intent of countterfeiting 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 less than $500 for the first occurrence of every such offense and not more than $500 for each day any such offense is repeated.

"(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.

"$292. Nonresident applicant, patentee, or other party to Patent Office proceed. ing; service and notice

"(a) 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 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 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.

"(b) Every person not residing in the United States who files a demand under section 132 of this title or a petition under section 142 of this title or claims under section 134 of this title shall file therewith a written designation stating the name and address of a person residing within the United States on whom may be served process and to whom may be mailed notice of proceed ings affecting the demand or petition.

"§293. 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, rereview, 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 706 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 any party to such action may obtain evidence of knowledge of prior art pertinent thereto in the possession of any person subject to service of process of any court of the United States. The party questioning validity or scope of the claim must serve upon the patent owner a copy of the earliest pleading raising such question. 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.

(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, delimiting 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 other Federal actions as the court in which they are pending 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 distributed by the Patent Office that the patent is subject to such adjudication.

"(d) In any action as set forth in subsection (b) of this section, upon a final adjudication from which no appeal has been or can be taken that a claim of the patent is invalid, the court may order cancellation of such claim from the patent. Such order shall be included in the notice to the Commissioner specified in subsection (c) of this section, and the notice of cancellation of a claim shall be published by the Commissioner and endorsed on all copies of the patent thereafter distributed by the Patent Office.

"Sec.

"CHAPTER 29.-PRESERVATION OF OTHER RIGHTS

"301. Preservation of other rights; non-preemption. "S301. Preservation of other rights; non-preemption

"This title shall not be construed to preempt or otherwise affect in any manner rights or obligations not expressly arising by operation of this title whether arising by operation of State or Federal law of contracts, of confidential or proprietary information, of trade secrets, of unfair competition, or of other nature.

"Transitional and Supplementary Provisions

"Sec. 2. If any provision of title 35, Patents, United States Code, as amended by this Act, or any other provision of this Act, is declared unconstitutional or is held invalid, the validity of the remaining provisions shall not be affected.

"Sec. 3. (a) This Act shall take effect on the day six months after enactment.

"(b) Applications for patent actually filed in the United States prior to the effective date of this Act shall continue to be governed by the provisions of title 35 in effect immediately prior to the effective date, except that any such application still pending eighteen emonths after its filing date or effective filing date may be laid open for public inspection and published by the Commis sioner in accordance with the provisions of section 120 of title 35 as enacted by this Act.

"(c) Complete applications for patent actually filed in the United States within one year after the effective date of this Act and not relying on a prior preliminary application shall continue to be governed by the provisions of chapter 10, and by the provisions relating to interferences in chapters 12 and 13, of title 35 in effect immediately prior to the effective date.