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**CHAPTER 29.-REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS *See. **281. Remedy for infringement of patent. ***282. Presumption of validity; defenses. 283. Injunction. 284. Damages. 285. Attorney fees. 286. Time limitation on damages. *287. Limitation on damages; marking and notice. “288. Action for infringement of a patent containing an invalid claim. **290. Notice of patent suits. 291, Priority of invention between patentees. **292. False marking. **293. Nonresident patentee; service and notice. "§ 281. Remedy for infringement of patent
"A patentee shall have remedy by civil action for infringement of his patent. "§ 282. Presumption of validity; defenses
“(a) A patent shall be presumed valid. Each claim of a patent (whether in independent or dependent form) shall be presumed valid independently of the validity of other claims; dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity.
"(b) 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,
“(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, 115, or 201 of this title,
“(4) any other act or fact made a defense by this title. "(c) In actions involving the validity or infringement of a patent, the patentee or party asserting infringement shall give notice in the pleadings or otherwise in writing to all parties as soon as practicable and at least ninety days before the trial, of the manner in which each of the claims charged to be infringed, element by element, applies to the allegedly infringing process or product, and the elements of the structure thereof. In like manner, the party asserting invalidity or noninfringement shall at some later time give notice to all parties of the country, number, date, and name of the patentee of any patent, and the title, date, and page numbers of any publication to be relied upon as anticipation of the patent in suit, or, except in actions in the United States Court of Claims, as showing the state of the art; and the name and address of any person who may be relied upon as the prior inventor, or as having prior knowledge of, or as having previously used or offered for sale, the subject matter of the patent in suit. In addition, he shall at some still later time (at least thirty days before the trial), apply such prior art, element by element, against the claims charged to be infringed, which he alleges to be invalid. In the absence of such notice and other information, as specified in this subsection, proof of such matters may not be made at the trial except on such terms as the court may require.
"(d) In any action or proceeding involving the patentability, validity, enforceability, or infringement of a patent, whether or not arising under this title, in connection with which a court of the United States orders any party of record or any person in privity with such party to furnish discovery, testimony, or evidence, and such party or person refuses, declines, or fails to comply with such order on the ground that a foreign statute or law prohibits compliance with such order, the court shall enter an order against such party dismissing all his claims, striking all his defenses, and otherwise terminating the proceeding adversely as to him; and if an issued patent owned by such party is involved in such action or proceeding, it shall be canceled (and notice of such cancellation shall be endorsed on copies of the specification of the patent thereafter distributed by the Patent Office).
“8 283. Injunction
"The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the infringement of any claim of a patent, on such terms as the court deems reasonable. "S 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 a reasonable royalty for the use made of the patented subject matter by the infringer, together with interest and cost as fixed by the court.
“(b) When the damages are not found by a jury, the court shall assess them. In either event the court may increase the damages up to three times the amount found or assessed.
"(c) The court may receive expert testimony as an aid to the determination of damages or of what royalty would be reasonable under the circumstances. "§ 285. Attorney fees
“The court in exceptional 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 two 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 patented subject matter, the period before bringing suit, up to four 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 demed shall not be counted as part of the period referred to in the preceding paragraph. “8 287. Limitation on damages; marking and notice
"Patentees, and persons making or selling any patented article (or using any patented process) for or under them, may give notice to the public that the article or process is patented, either by fixing on the article the word 'patent or the abbreviation ‘pat.', together with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patents in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice. “8 288. Action for infringement of a patent containing an invalid claim
"Whenever, through inadvertence, accident, or mistake, and without any willful default or intent to defraud, mislead, or deceive the public, 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 provided the requirements of section 203(a) of this title have been met. "§ 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, Priority of invention between patentees
“(a) Whenever there are two patents naming different inventors and claiming the same or substantially the same subject matter, the owner of either of
the patents may have relief against the owner of the other by civil action, and the court may adjudge the validity of any of such patents, in whole or in part.
"(b) Such suit may be instituted against the party in interest as shown by the records of the Patent Office, but any party may become a party to the action. If there be adverse parties residing in a plurality of districts not embraced within the same State, or an adverse party residing in foreign country, the United States District Court for the District of Columbia shall have jurisdiction and may issue summons against the adverse parties directed to the marshal of any district in which any adverse party resides. Summons against adverse parties residing in foreign countries may be served by publication or otherwise as the court directs. The Commissioner shall not be made a party but he shall be notified of the filing of the suit by the clerk of the court in which it is filed and shall have the right to intervene. “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 purposes or with the necessary effect 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 or with the necessary effect of deceiving the public
“Shall be liable for a civil penalty of not more than $500 for every such violation. Each article so marked shall furnish the basis for finding a separate violation.
“(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. "§ 293. Nonresident patentee; service and notice
"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 notice of proceedings affecting 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, the United States District Court for the District of Columbia shall have jurisdiction and summons shall be served by publication or otherwise as the court directs. The court shall have the same jurisdiction to take any action respecting the patent or rights thereunder that it would have if the patentee were personally within the jurisdiction of the court."
TRANSITITIONAL AND SUPPLEMENTARY PROVISIONS Sec.. 2. Section 1542 of title 28, United States Code, Judicial Code and Judiciary, is amended to read as follows: " 1542. Patent Office decisions
“The Court of Customs and Patent Appeals shall have jurisdiction of appeals from decisions of:
“(1) The Board of Appeals of the Patent Office as to patent applications and patents as provided in chapter 13 of title 35, Patents, United States Code.
“(2) The Commissioner of Patents or the Trademark Trial and Appeals Board as to trademark applications and proceedings as provided in
section 1071 of title 15." Sec. 3. 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. 4. (a) This Act shall take effect on the date six months after enactment. Except as otherwise provided hereafter in this section, it shall apply to all applications filed in the United States on or after such effective da te, whether or not such applications are entitled to the benefit of an earlier filing date; to patents issued on such applications; to applications in respect to which, on or before such effective date, there has been no notice of allowance pursuant to section 151 (a) of title 35, United States Code, as amended by this Act; and to patents issued on such applications.
(b) Except as otherwise provided hereafter in this section, the provisions of title 35, United States Code, in effect immediately prior to the effective date of this Act, shall govern all patents issued before such effective date ; applications filed in the United States before and still pending on such effective date, in respect to which, on or before such effective date, there has been notice of allowance pursuant to section 151 (a) of title 35, amended by this Act; and to patents issued on such applications.
(c) Section 263 of title 35, United States Code, as amended by this Act, shall apply to all applications filed on or after the effective date of this Act, and patents issued on such applications, and it shall apply only to such applications and patents.
(d) The following provisions of title 35 as amended by this Act, shall apply to all unexpired patents, whether issued or applied for before or after the effective date of this Act :
(1) chapter 19 of part II, and
(2) part III (subject to subsection (c) of this section). (e) Section 147 of title 35, United States Code, as amended by this Act, shall apply to all appeals decided on or after the effective date of this Act.
(f) Notwithstanding any other provision of this Act, subsection (e) of section 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 application shall be held incomplete, and no such patent shall be held invalid, because availability to the public of a deposit of a micro-organism recited therein was conditioned upon issuance of a United States patent reciting a deposit of said micro-organism.
(g) 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.
(h) 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.
(i) The Commissioner may exercise any rulemaking power conferred upon him by this Act, upon the date of enactment hereof: Provided, however, That no rule promulgated under any newly conferred authority shall become effective prior to the effective date hereof. The Public Counsel may exercise all the powers this Act confers upon him, on and after the effective date thereof, in respect to any patents, applications, or conduct, whether issued, applied for, filed, or engaged in before or after the effective date hereof.
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 (Public Law 85–568, July 29, 1958; 72 Stat. 426) except that the functions of a Board of Patent Interferences specified in said Acts may be performed by the Board of Appeals as specified in section 5 of title 35 as amended by this Act.
SEC. 6. (a) Section 119(e) of this title shall take effect on the date when articles 1-2 of the Paris Convention of March 20, 1883, for the Protection of Indus. trial Property, as revised at Stockholm, July 14, 1967, come into force with respect to the United States and shall apply only to applications thereafter filed in the United States.
(b) Section 102 (d) of this title, insofar as it applies to inventors' certificates, shall take effect six months from the date when articles 1-12 of the Paris Convention of March 20, 1883, for the Protection of Industrial Property, as revised at Stockholm, July 14, 1967, come into force with respect to the United States and shall apply to applications thereafter filed in the United States.
Sec. 7. Section 31 of the Trademark Act of 1946 (60 Stat. 427, as amended; 15 U.S.C. 1113) is revised to read :
*** 31. Trademark fees
Trademark fees shall be prescribed by the Commissioner under the authority of section 41 of title 35, United States Code. If a fee in connection with examination of a trademark application is not paid within such time as prescribed by the Commissioner, the application shall be regarded as abandoned."
SEC. 8. In the second sentence of section 7(c) of the Trademark Act of 1946 (60 Stat. 427, as amended ; 15 U.S.C. 1057c), "fee herein provided” is changed to "prescribed fee".
SEC. 9. In section 7(e) of the Trademark Act of 1946 (60 Stat. 427, as amended; 15 U.S.C. 1062a), "fee herein provided" is changed to "prescribed fee".
SEC. 10. In section 12(a) of the Trademark Act of 1946 (60 Stat. 427, as amended; 15 U.S.C. 1062a), "fee herein provided” is changed to "prescribed fee".
SEC. 11, Section 5315 of title 5, United States Code, is amended by adding at the end thereof the following: **(95) Commissioner of Patents."
SEC. 12. Section 5316 of title 5, United States Code, is amended by deleting the following: *(48) Commissioner of Patents, Department of Commerce."
SEC. 13. Section 5316 of title 5, United States Code, is amended by adding at the end thereof the following: *(131) Deputy Commissioner of the Patent Office." SEC. 14. This Act may be cited as “The Patent Reform Act of 1973".
Mr. BRENNAN. I again call the attention of all the witnesses to the hearing notice which indicate that this series of hearings is limited to the five issues specified in the hearing notice.
Senator McClellan, however, has indicated that the subcommittee will accept for the record written statements on any issue relevant to S. 1321. For that purpose, it is the intention of the chairman to leave the record open until September 28, and we can incorporate all the statements that are submitted for the record.
Senator Hart. We can enter an order—do I understand Senator McClellan authorizes the entering of an order that any such statement filed before then will be made part of the record ?
Mr. BRENNAN. That is correct.
Mr. Chairman, the first witness this morning is Mr. C. Marshall Dann.
Mr. Dann, would you identify yourself and your associate for the record, please?
Mr. Dann. I am C. Marshall Dann. I'm a patent lawyer and currently president of the American Patent Law Association on whose behalf I am testifying. On my
left is Mr. John T. Kelton, who is currently the presidentelect of the American Patent Law Association.
Mr. BRENNAN. Mr. Dann, I believe you have a prepared statement. Do you wish to have the statement printed in full in the record, and then you may highlight the statement ?
Mr. Dann. I would appreciate that happening.
STATEMENT OF C. MARSHALL DANN, PRESIDENT, AMERICAN PATENT LAW
ASSOCIATION This statement is submitted in behalf of the American Patent Law Association, an organization composed of about 3800 lawyers located throughout the United States who are concerned with the law of patents, trademarks, copyrights and unfair competition.