35 U.S.C. Summary
This chapter governs the powers and duties provided to the USPTO as a federal agency, and explains the scope and authority of its officers and employees. The Patent Trial and Appeal Board (“PTAB”) is also discussed.
This chapter governs the procedure and timing requirements for filing a patent application with the USPTO.
This chapter governs the authority and behavior of both Patent Attorneys and Patent Agents registered to practice with the USPTO.
This chapter governs the current fee structure for filing patent applications. Fees associated with prosecution of patent applications can be found here.
This chapter governs the specific requirements for patentability of inventions, including such criteria as patentability of subject matter, novelty, and non-obviousness.
This chapter governs what a patent application must contain, and also governs claims of priority to earlier filed domestic or foreign patent applications.
This chapter governs the procedure followed by patent examiners during prosecution of patent applications, as well as the procedure for appeals to the PTAB and derivation proceedings.
This chapter contains information governing the appeal of USPTO and PTAB decisions to the Federal Circuit, as well as civil actions to obtain patents and to contest PTAB decisions on derivation proceedings.
This chapter governs the process of issuance once a patent application has been allowed by an examiner, as well as the term of utility patents and patent term adjustments.
This chapter defines and sets forth provisions specifically governing plant patents.
This chapter defines and sets forth provisions specifically governing design patents, including provisions directed towards priority and the term of design patents.
This chapter sets forth the government’s ability to hold certain patents and patent applications in secrecy for either national security or other such reasonable purposes, as well as the penalties for breach of this secrecy. This chapter also governs foreign filing requirements, including the requirement to obtaining a foreign filing license, and compensation to patent applicants whose patents have been held in secret.
This chapter governs the rights of both patent holders and the government where a patent is obtained through federal assistance funding such as a grant.
This chapter prescribes the procedure for amending or correcting patents or patent applications, as well as reissue and supplemental examination proceedings.
This chapter governs the rights associated with ownership of a patent, and the procedure in which a patent can be assigned to another party.
This chapter provides for extension of the time for taking an action on a patent application that has come under government ownership.
This chapter governs infringement of patents, including both direct and indirect infringement, as well as the commercial use defense.
This chapter sets forth the remedies available in civil actions for patent infringement, as well as defenses that may be asserted by an accused infringer regarding liability and the extent of available damages. This chapter further governs the marking of products incorporating patented technology, and false marking.
This chapter prescribes the requirements for filing prior art citations in connection with pending patent applications, and the institution and conduct of reexamination proceedings.
This chapter governs the inter partes review process, and sets forth requirements for both petitions for and conduct of the proceeding.
This chapter governs the post-grant review process, and sets forth requirements for both petitions for and conduct of the proceeding.
These chapters govern the Patent Cooperation Treaty (“PCT”) which is an international patent law treaty that provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. Chapters 35 through 37 of Title 35 comprise requirements and procedures for filing international applications pursuant to the PCT.
This chapter regards The Hague Agreement, an international agreement concerning the international registration of industrial designs. Chapter 38 comprises requirements and procedures for filing international applications claiming such designs .
The Leahy-Smith America Invents Act (“AIA”) is a United States federal statute that was enacted on September 16, 2011. Although the AIA altered many fundamental aspects of the United States patent regime, its most significant impact consisted of transitioning the United States from a “first-to-invent” system to a “first-inventor-to-file” system. Additionally, the AIA introduced new means of challenging the validity of issued patents through proceedings before the Patent Trial and Appeal Board (such as post-grant review and inter partes review).
Because several provisions of the AIA are not retroactive, patents that were filed prior to the enactment of the AIA must still be examined under the pre-AIA law. For example, pre-AIA 35 U.S.C. §§ 102 and 103 still apply to all patent applications that only contain claims to an invention that has an effective filing date prior to March 16, 2013. Otherwise, they will be examined under the new AIA “first-inventor-to-file” system.
An October 5, 2011 USPTO publication categorizing and tabulating the effective dates of the AIA's various provisions and amendments can be accessed through the USPTO's website, linked here.
The Drug Price Competition and Patent Term Restoration Act, known as the Hatch-Waxman Act, is a United States federal law designed to better enable and govern the manufacture of generic drugs by the pharmaceutical industry. The Hatch-Waxman Act governs the process for filing Abbreviated New Drug Applications (“ANDAs”) for approval of generic drugs by the Food and Drug Administration (“FDA”). The patent term restoration portion of the act appears generally in 35 U.S.C. §156, and provides for patent term extension for patents on new drugs that must obtain regulatory approval from the FDA.
The Biologics Price Competition and Innovation Act of 2009 (“BPCIA”) amended the Public Health Service Act to create an abbreviated approval pathway for biological products that are proven to be biosimilar, or interchangeable with, an FDA-licensed reference product. The BPCIA is similar to the Hatch-Waxman act in that the Hatch-Waxman act concerns generic drugs and the BPCIA concerns biological products.
This page briefly summarizes the contents of certain statutes commonly implicated in intellectual property matters and disputes. If you would like to read the text of the statute, please click on any of the underlined titles and you will be linked to the corresponding portion of the statute.
This chapter prescribes the requirements for obtaining a copyright and the subject matter encompassed by copyright protection. Additionally, this chapter contains the exclusive rights associated with a copyrighted work and the various limitations imposed on those rights.
This chapter governs ownership of a copyrighted work and the requirements and procedures for transferring ownership or licensing a work to others.
This chapter governs the duration of copyright for a copyrighted work. Because the copyright term has previously been amended on several occasions, works created during different time periods may be subject to differing copyright terms as prescribed by this chapter.
This chapter prescribes how notice of copyright may be provided and the formal deposit and registration process with the Copyright Office that must be completed as a prerequisite to obtaining certain remedies for infringement.
This chapter includes the standard for determining copyright infringement and the remedies that may be obtained by a copyright holder, including both damages and injunctions.
This chapter contains provisions governing both the importation of infringing copyrighted works into the United States and exportation of infringing copyrighted works to other countries.
This chapter prescribes the powers and duties provided to the Copyright Office as a federal agency and explains the scope and authority of its officers and employees. This chapter also contains information about the storage of copyrighted works and all fees associated with copyright registration.
This chapter governs the Copyright Royalty Board and the panel of judges that are selected to make determinations and adjustments of the reasonable terms and rates of royalty payments for copyrighted works.
This chapter governs the protection of semiconductor chips and, more specifically, their “mask work” as a protected element.
This chapter contains limitations and regulations on digital audio recording devices and digital audio recording mediums. Additionally, this chapter sets forth the royalty rates for the importation and distribution of such devices.
This chapter governs the unauthorized fixation of sounds and images of a live musical performance as a copy and the penalty for transmission or communication of that copy to the public.
This chapter contains provisions prohibiting the circumvention of technological measures used to control access to a copyrighted work. This chapter further discusses the civil remedies and criminal penalties for violation of these provisions.
This chapter governs the protection of original designs, including both the eligibility and scope of protection granted. This chapter also outlines the notice requirements and remedies for infringement of an original design.
The Digital Millennium Copyright Act (“DMCA”) is a United States copyright law that criminalizes the production and dissemination of technology or services intended to circumvent measures that control access to copyrighted works. Additionally, the DMCA heightens penalties for copyright infringement over the internet. Further, the DMCA's "safe harbor" provisions limit liability of certain qualifying service providers. The DMCA also provides procedures for issuing and responding to take-down notices filed by copyright holders who believe a service provider is hosting an infringing work. The DMCA is primarily incorporated into 17 U.S.C. Ch. 12 and 13.
This chapter of Title 28 governs the transfer of copyright ownership in motion pictures that are subject to one or more collective bargaining agreements under United States law. Any subsequent transfers of ownership shall be deemed to incorporate the assumption agreements that are required by any such collective bargaining agreements, as long as the transferee is aware that the collective bargaining agreements are applicable or a court order confirms an arbitration award against the transferor under said collective bargaining agreement.
This sub-chapter governs the eligibility of marks for trademark protection and the trademark registration process in its entirety. This sub-chapter also covers matters such as assignment of trademarks, opposition proceedings, fees associated with registration, and incontestability.
This sub-chapter governs the supplemental, or secondary, register of trademarks maintained by the USPTO. Typically, if a trademark does not qualify for the Principal Register, it will be registered on the supplemental register so it may be registered in other countries. The supplemental register provides only common law trademark rights.
This sub-chapter governs the notice of registration that may be associated with registered trademarks and other miscellaneous information such as the classifications of goods and services, remedies for trademark infringement, defenses to trademark infringement, and regulations for conduct in proceedings before the USPTO.
This sub-chapter prescribes procedures for the international registration of trademarks through the Madrid Protocol. The Madrid Protocol is a filing treaty that provides a cost-effective method for trademark holders to ensure protection for their marks in multiple countries with only one application filing. All correspondence is directed through the World Intellectual Property Organization’s (“WIPO’s”) International Bureau.
The Anti-Cybersquatting and Consumer Protection Act (“ACPA”) establishes a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or dilutive of, a trademark or personal name. The ACPA mainly targets those who register internet domain names containing trademarks with no intention of creating a legitimate website and instead only plan to sell the domain to the rightful trademark owner.
TRADE SECRET &
The Defend Trade Secrets Act (“DTSA”) (codified at 18 U.S.C. § 1836) is a United States federal law that gives rise to a federal cause of action for misappropriation of trade secrets. The DTSA contains seizure provisions and temporary restraining order provisions to effectively combat trade secret theft of sensitive information.
The Uniform Trade Secrets Act (“UTSA”) is a set of model rules promulgated to provide a consistent legal framework to protect trade secrets for companies operating in multiple states. The UTSA provides a uniform definition for what information constitutes a trade secret, and provides clarification on other key definitions as well. While the UTSA sets out a uniform framework for the national enforcement of trade secrets, states are free to enact the UTSA while also amending it if they so choose. As a result, many states that have enacted the UTSA nonetheless have slightly different laws governing trade secrets.
The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) is an international legal agreement between all member nations of the World Trade Organization. In Article 39, paragraph 2, the TRIPS Agreement discusses the international protection of trade secrets by using very similar language to the UTSA and other related trade secret statutes.
The Computer Fraud and Abuse Act (“CFAA”) (codified at 18 U.S.C. § 1030) was enacted as an amendment to existing computer fraud laws in the Comprehensive Crime Control Act (“CCCA”). The CFAA governs a broad spectrum of computer-related activities, including the unauthorized access of and/or misappropriation of information on "protected computers," as well as the distribution of malicious code and denial of service attacks.
The Economic Espionage Act (“EEA”) was enacted to combat industrial espionage, and the theft or misappropriation of trade secrets. Specifically, the EEA makes the misappropriation of trade secrets a federal crime subject to severe penalties. Notably, the EEA only provides for a federal criminal action and does not create a civil cause of action.
The Theft of Trade Secrets Clarification Act of 2012 was enacted to expand the scope of the EEA, and broaden the scope of trade secret protections under the EEA by amending several unclear provisions.
The Foreign and Economic Espionage Penalty Enhancement Act of 2012 was enacted to increase the penalties assessed under the EEA for crimes where the perpetrator knows or intends to benefit a foreign government, instrumentality or agent. The goal of the Act was to strengthen penalties and enhance deterrence of foreign theft.
Trade secrets were, until recently, largely defined and governed by state law (unlike patent and copyright law, which are both exclusively governed by federal law). The enactment of the federal Defend Trade Secrets Act, however, appears to have shifted the balance towards federal enforcement of trade secrets disputes due to its (in some regards) broadened definitions for key terms and unique enforcement mechanisms. The enactment of the DTSA potentially places trade secrets law on a similar footing as trademarks in that they are now governed by overlapping federal and state law, with the federal laws providing greater potential protection and unique remedies not afforded by state law.
However, due to the DTSA's express provision that it does not preempt preexisting state trade secrets law, the manner in which the DTSA's definitions of key terms may interact with conflicting definitions in preexisting state trade secrets regimes remains a subject of potential dispute. Because trade secrets are subject to parallel and overlapping bodies of federal and state law, it is important to consider both in analyzing a trade secrets dispute. For convenience, we have compiled links to each state's trade secrets laws into an interactive map, accessible here:
The Sherman Antitrust Act, or Sherman Act, is a federal statute directed towards the prevention of anti-competitive business activities. The purpose of the Act is to preserve a competitive marketplace to protect consumers from abuse, and makes it a federal offense to monopolize an industry, or conspire to monopolize an industry.
The Clayton Antitrust Act, or Clayton Act, was enacted to supplement United States antitrust laws, with the goal of creating more specificity to stop anti-competitive practices in their incipience. The Clayton Act specifically prohibits acts such as price discrimination that creates a monopolistic effect, conditional sales that lessen competition, mergers and acquisitions that substantially lessen competition, and persons sitting as director of two or more competing corporations.
The Federal Trade Commission Act, or FTC Act, was established the Federal Trade Commission ("FTC") and empowered the FTC it to prevent unfair methods of competition and deceptive acts that affect commerce, seek redress for injuries to consumers, prescribe trade regulation rules defining acts that are deemed to be unfair, and conduct investigations relating to the organization and practices of entities engaged in commerce.