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"(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 84 (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. "S285. Attorney fees
"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 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. "3289. 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 infringe ment. "$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 subsequentis 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 gire 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 affirpe 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. "S292. 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 it 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 proceedle 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, 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 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.
"CHAPTER 29,- PRESERVATION OF OTHER RIGHTS "Sec. "301. Preservation of other rights; non-preemption. "$301. 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 enact. ment.
“(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 Commissioner 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.
“(a) Assistant commissioners of patents and examiners-in-chief in office on the effective date of this Act shall continue in office under and in accordance with their then existing appointments. “(e) The amendment of title 35, United States Code, by this Act, shall not affect any rights or liabilities existing under title 35 in effect immediately prior to the effective date of this Act.
“(f) Notwithstanding any other provision of this Act, subsection (d) of ser tion 112 of title 35 as amended by this Act shall not apply to patents issued, and applications filed, prior to the effective date of this Act. No such applica. tion shall be held incomplete, and no such patent shall be held invalid, because availability to the public of a deposit of a microorganism recited therein was conditioned upon issuance of a United States patent reciting a deposit of said microorganism.
“Sec. 5. Nothing in title 35 as amended by this Act shall affect any provision of the Atomic Energy Act of 1954 (Aug. 30, 1954, ch. 1073, 68 Stat. 919) as amended or of the National Aeronautics and Space Act (Pub. L. 85–508. July 29, 1958, 72 Stat. 426) except that the functions of a Board of Patent Interfer. ences specified in said Acts may be performed by the Board of Appeals as specified in section 7 of title 35 as amended by this Act.
“Sec. 6. The Clean Air Amendments Act of 1970 is amended by striking out section 308 and inserting in lieu thereof the following:
"If the Administrator determines that the implementation of the purposes and intent of this Act is being significantly retarded by any section of title 35 of the United States Code he shall, after consultation with the Department of Commerce, recommend to the Congress such modification of title 35, as may be necessary.
"Sec. 7. This Act may be cited as "The Patent Act of 1973."
NATIONAL ASSOCIATION OF PLANT PATENT OWNERS.
Washington, D.C., September 17, 1973. Hon. JOHN L. MCCLELLAN, Chairman, Subcommittee on Patents, Trademarks and Copyrights, Committee
on the Judiciary, U.S. Senate, Washington, D.C. DEAR SENATOR MCCLELLAN: The National Association of Plant Patent Owners is a trade association representing members and businesses to whom plant patents have been granted.
A committee of our Association has spent nearly two years studying the portions of the patent laws governing the grant of plant patents. As the result, we have concluded that a minor change in Section 161 and the addition of a new Section 165 would clarify and strengthen these laws and promote their objectives.
Our members hope that these changes can be considered by your Subcommittee during the hearings and review of S. 1321.
The changes we recommend read:
Section 161.-Delete the words “or a plant found in an uncultivated state." Sction 161 would then read as follows:
“Whoever invents or discovers and asexually reproduces a distinct and new variety of plant, including cultivated sports, mutants, hybrids and newly found seedlings, other than a tuber propagated plant, may obtain a patent therefor subject to the conditions and requirements of this title.
“The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided.”
The deletion of the words "or a plant found in an uncultivated state" will eliminate the need for deciding what constitutes an "uncultivated state." For example, a knowledgeable person might find a wild blackberry plant on a river bank, with berries three times larger than normal. Because of his knowledge, he recognizes that this is a superior plant deserving of commercial propaga. tion. He could, under present law, obtain a plant patent only by failing to make full disclosure of where the plant was found, which he would be sorely tempted to do and which might well be undetected in any litigation over a patent for this blackberry plant. Under our proposed change, he could obtain a plant patent just as if he found the plant in his back yard. In short, the change removes the temptation for dishonesty and promotes the incentives of the patent system to make public new botanic discoveries.
The other recommended change is the addition of a new Section 165 which reads:
165 Certificate of Plant Variety Protection. a. For purposes of Section 102 (d) of this title, a certificate of plant variety protection or any grant of exclusive rights in a new plant variety of foreign country shall have the same effect as a patent granted by that country.
b. An application in a foreign country for a certificate of plant variety protection or the grant of exclusive rights in a new plant variety shall have the same effect for the purpose of a right of priority under Section 119 of this title as an application for patent in that country, provided the conditions and requirements of Section 119 for applications for patent are complied with.
Public Law 92-358 of July 28, 1972 grants, under certain circumstances, rights of priority to a U.S. patent application based on an earier filed application for an inventor's certificate in a foreign country. It further provides, under certain circumstances, that an inventor's certificate becomes a statutory bar to the grant of a U.S. Patent. This law was designed to carry into effect provisions of the Stockholm revision of the Paris Convention for the Protection of Industrial Property of 1883 to which we will shortly be bound.
The ratification by the United States recognizes an inventor's certificate as a right tantamount to the grant of a patent. Most foreign countries rather than providing patent protection for plants, have Breeder's Rights or Plant Variety Protection Laws which grant rights in the same manner as patents. In many of these countries, one who has filed for a plant patent in the United States, by virtue of the filing can establish his right of priority under the Breeders Rights or Plant Variety Protection Laws. On the other hand, one who has filed or obtained an exclusive right under Breeders Rights or Plant Variety Protec. tion Laws in foreign countries cannot use that as a basis for a right of priority under U.S. Law—an anomalous situation.
Proposed Section 165 would accord a certificate of plant variety protection or any similar grant of exclusive rights in a plant the same treatment as a patent grant by the country under Sections 102 (d) and 119 of Title 35.
The National Association of Plant Patent Owners strongly recommends adop. tion of the foregoing changes to the patent laws. Sincerely,
L. J. DONAHUE, Administrator.
THE NEW YORK PATENT LAW ASSOCIATION,
New York, N.Y., September 11, 1973. Re Written statement of the position of the New York Patent Law Association
on selected portions of the Patent Reform Act of 1973 (S.1321). Hon. John L. MCCLELLAN Chairman, Subcommittee on Patents, Trademarks and Copyrights, U.S. Scnate,
Senate Office Building, Washington, D.C. DEAR SENATOR MCCLELLAN: The New York Patent Law Association is a professional organization for patent attorneys practicing this legal specialty in the New York metropolitan area. The Association has served the interests of the public and the bar in this field since 1922. The Association, moreover, has a membership of about 1200 patent attorneys. This membership represents most of the patent attorneys engaged in practice in New York City and the surrounding New York, New Jersey and Connecticut areas.
By letter dated August 6, 1973 the Chief Counsel of the Subcommittee on Patents, Trademarks and Copyrights of the United States Senate invited the New York Patent Law Association to submit a report on its position concerning selected portions of The Patent Reform Act of 1973 (S.1321) (hereinafter called the “Hart Bill"). The New York Patent Law Association is grateful for the invitation to comment on the Hart Bill and this letter is respectfully submitted in that connection.
The Hart Bill was closely examined by the New York Patent Law Association through its Subcommittee on Patent Law Revision and this letter represents the position of the Association regarding the Hart Bill.
Our patent system has remained basically unchanged since 1836. It has been reviewed, examined and re-examined several times by presidential commissions, such as the TNEC Hearings of 1938-41; the National Patent Planning