35 U.S.C. § 273 : US Code - Section 273: Defense to infringement based on earlier inventor

Search 35 U.S.C. § 273 : US Code - Section 273: Defense to infringement based on earlier inventor

(a) Definitions. - For purposes of this section -
(1) the terms "commercially used" and "commercial use" mean use
of a method in the United States, so long as such use is in
connection with an internal commercial use or an actual arm's-
length sale or other arm's-length commercial transfer of a
useful end result, whether or not the subject matter at issue is
accessible to or otherwise known to the public, except that the
subject matter for which commercial marketing or use is subject
to a premarketing regulatory review period during which the
safety or efficacy of the subject matter is established,
including any period specified in section 156(g), shall be deemed
"commercially used" and in "commercial use" during such
regulatory review period;
(2) in the case of activities performed by a nonprofit research
laboratory, or nonprofit entity such as a university, research
center, or hospital, a use for which the public is the intended
beneficiary shall be considered to be a use described in
paragraph (1), except that the use -
(A) may be asserted as a defense under this section only for
continued use by and in the laboratory or nonprofit entity; and
(B) may not be asserted as a defense with respect to any
subsequent commercialization or use outside such laboratory or
nonprofit entity;
(3) the term "method" means a method of doing or conducting
business; and
(4) the "effective filing date" of a patent is the earlier of
the actual filing date of the application for the patent or the
filing date of any earlier United States, foreign, or
international application to which the subject matter at issue is
entitled under section 119, 120, or 365 of this title.
(b) Defense to Infringement. -
(1) In general. - It shall be a defense to an action for
infringement under section 271 of this title with respect to any
subject matter that would otherwise infringe one or more claims
for a method in the patent being asserted against a person, if
such person had, acting in good faith, actually reduced the
subject matter to practice at least 1 year before the effective
filing date of such patent, and commercially used the subject
matter before the effective filing date of such patent.
(2) Exhaustion of right. - The sale or other disposition of a
useful end product produced by a patented method, by a person
entitled to assert a defense under this section with respect to
that useful end result shall exhaust the patent owner's rights
under the patent to the extent such rights would have been
exhausted had such sale or other disposition been made by the
patent owner.
(3) Limitations and qualifications of defense. - The defense to
infringement under this section is subject to the following:
(A) Patent. - A person may not assert the defense under this
section unless the invention for which the defense is asserted
is for a method.
(B) Derivation. - A person may not assert the defense under
this section if the subject matter on which the defense is
based was derived from the patentee or persons in privity with
the patentee.
(C) Not a general license. - The defense asserted by a person
under this section is not a general license under all claims of
the patent at issue, but extends only to the specific subject
matter claimed in the patent with respect to which the person
can assert a defense under this chapter, except that the
defense shall also extend to variations in the quantity or
volume of use of the claimed subject matter, and to
improvements in the claimed subject matter that do not infringe
additional specifically claimed subject matter of the patent.
(4) Burden of proof. - A person asserting the defense under
this section shall have the burden of establishing the defense by
clear and convincing evidence.
(5) Abandonment of use. - A person who has abandoned commercial
use of subject matter may not rely on activities performed before
the date of such abandonment in establishing a defense under this
section with respect to actions taken after the date of such
abandonment.
(6) Personal defense. - The defense under this section may be
asserted only by the person who performed the acts necessary to
establish the defense and, except for any transfer to the patent
owner, the right to assert the defense shall not be licensed or
assigned or transferred to another person except as an ancillary
and subordinate part of a good faith assignment or transfer for
other reasons of the entire enterprise or line of business to
which the defense relates.
(7) Limitation on sites. - A defense under this section, when
acquired as part of a good faith assignment or transfer of an
entire enterprise or line of business to which the defense
relates, may only be asserted for uses at sites where the subject
matter that would otherwise infringe one or more of the claims is
in use before the later of the effective filing date of the
patent or the date of the assignment or transfer of such
enterprise or line of business.
(8) Unsuccessful assertion of defense. - If the defense under
this section is pleaded by a person who is found to infringe the
patent and who subsequently fails to demonstrate a reasonable
basis for asserting the defense, the court shall find the case
exceptional for the purpose of awarding attorney fees under
section 285 of this title.
(9) Invalidity. - A patent shall not be deemed to be invalid
under section 102 or 103 of this title solely because a defense
is raised or established under this section.