Statutory Basis

35 U.S.C. 102 (pre-AIA)

Conditions for patentability; novelty and

loss of right to patent.

A person shall be entitled to a patent unless —

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(g)(1) during the course of an interference conducted under

section

135

or

section 291

, another

inventor involved therein establishes, to the extent permitted in

section

104

, that before such person’s invention thereof the

invention was made by such other inventor and not abandoned, suppressed, or

concealed, or

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35 U.S.C. 104 (pre-AIA)

Invention made abroad.

(a) IN GENERAL.—

(1) PROCEEDINGS.—In proceedings in the Patent and Trademark

Office, in the courts, and before any other competent authority, an

applicant for a patent, or a patentee, may not establish a date of

invention by reference to knowledge or use thereof, or other activity

with respect thereto, in a foreign country other than a NAFTA country or

a WTO member country, except as provided in

sections

119

and

365

of this

title.

(2) RIGHTS.—If an invention was made by a person, civil or

military—

(A) while domiciled in the United States, and serving

in any other country in connection with operations by or on behalf

of the United States,

(B) while domiciled in a NAFTA country and serving in

another country in connection with operations by or on behalf of

that NAFTA country, or

(C) while domiciled in a WTO member country and

serving in another country in connection with operations by or on

behalf of that WTO member country, that person shall be entitled to

the same rights of priority in the United States with respect to

such invention as if such invention had been made in the United

States, that NAFTA country, or that WTO member country, as the case

may be.

A country, or

(C) while domiciled in a WTO member country and

serving in another country in connection with operations by or on

behalf of that WTO member country, that person shall be entitled to

the same rights of priority in the United States with respect to

such invention as if such invention had been made in the United

States, that NAFTA country, or that WTO member country, as the case

may be.

(3) USE OF INFORMATION.—To the extent that any information

in a NAFTA country or a WTO member country concerning knowledge, use, or

other activity relevant to proving or disproving a date of invention has

not been made available for use in a proceeding in the Patent and

Trademark Office, a court, or any other competent authority to the same

extent as such information could be made available in the United States,

the Director, court, or such other authority shall draw appropriate

inferences, or take other action permitted by statute, rule, or

regulation, in favor of the party that requested the information in the

proceeding.

(b) DEFINITIONS.—As used in this section—

(1) The term “NAFTA country” has the meaning given that term

in section 2(4) of the North American Free Trade Agreement Implementation

Act; and

(2) The term “WTO member country” has the meaning given that

term in section 2(10) of the Uruguay Round Agreements Act.

35 U.S.C. 135 (pre-AIA)

Interferences.

(a) Whenever an application is made for a patent which, in the

opinion of the Director, would interfere with any pending application, or with

any unexpired patent, an interference may be declared and the Director shall

give notice of such declaration to the applicants, or applicant and patentee,

as the case may be. The Board of Patent Appeals and Interferences shall

determine questions of priority of the inventions and may determine questions

of patentability

opinion of the Director, would interfere with any pending application, or with

any unexpired patent, an interference may be declared and the Director shall

give notice of such declaration to the applicants, or applicant and patentee,

as the case may be. The Board of Patent Appeals and Interferences shall

determine questions of priority of the inventions and may determine questions

of patentability. Any final decision, if adverse to the claim of an applicant,

shall constitute the final refusal by the Patent and Trademark Office of the

claims involved, and the Director may issue a patent to the applicant who is

adjudged the prior inventor. A final judgment adverse to a patentee from which

no appeal or other review has been or can be taken or had shall constitute

cancellation of the claims involved in the patent, and notice of such

cancellation shall be endorsed on copies of the patent distributed after such

cancellation by the Patent and Trademark Office.

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