35 U.S.C. § 146

Civil action in case of derivation proceeding

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Any party to a derivation proceeding dissatisfied with the decision of the Patent Trial and Appeal Board on the derivation proceeding, may have remedy by civil action, if commenced within such time after such decision, not less than sixty days, as the Director appoints or as provided in section 141, unless he has appealed to the United States Court of Appeals for the Federal Circuit, and such appeal is pending or has been decided. In such suits the record in the Patent and Trademark Office shall be admitted on motion of either party upon the terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court imposes, without prejudice to the right of the parties to take further testimony. The testimony and exhibits of the record in the Patent and Trademark Office when admitted shall have the same effect as if originally taken and produced in the suit.

Such suit may be instituted against the party in interest as shown by the records of the Patent and Trademark Office at the time of the decision complained of, but any party in interest 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 a foreign country, the United States District Court for the Eastern District of Virginia 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 Director shall not be a necessary 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. Judgment of the court in favor of the right of an applicant to a patent shall authorize the Director to issue such patent on the filing in the Patent and Trademark Office of a certified copy of the judgment and on compliance with the requirements of law.

Notes of Decisions

Cited in 247 cases (2 in the last 5 years), 1953–2022 · leading case: Winner International Royalty Corporation v. Ching-Rong Wang

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Winner International Royalty Corporation v. Ching-Rong Wang (2000) cafc · cites it 8× “The district court had jurisdiction pursuant to 35 U.S.C. § 146 (1994) because Wu filed suit there after an adverse ruling by the Board in an interference between himself and Wang.”

Abbvie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc. (2014) cafc · cites it 6× “1 In the interference action, Centocor sought the district court’s review under 35 U.S.C. § 146 (2006) of the decisions of the United States Patent and Trademark Office (“PTO”) Board of Patent Appeals and Interferences (the “Board”) in an interference between U.”

Abbott Laboratories, Andrew J. Muetterties and Joseph N. Genese, Plaintiffs/cross-Appellants v. John F. Brennan (1992) cafc · cites it 9× “Abbott brought a civil action in the district court pursuant to 35 U.S.C. § 146 , 2 seeking to set aside the award of priority to Brennan.”

Abbott GmbH & Co. v. Centocor Ortho Biotech, Inc. (2012) mad · cites it 8× “Centocor has petitioned for judicial review of the interference decision pursuant to 35 U.S.C. § 146 . This Court conducted a Markman hearing in the infringement action and issued its final claim construction decision on May 5, 2011, 2011 WL 1791684 .”

Hyatt v. Kappos (2010) cafc · cites it 5× “In our view, since an action under 35 U.S.C. § 146 has the hybrid nature of an appeal and a trial de novo, the statute authorizes the district court to accept all proffered testimony on issues raised by the parties during the proceedings below or by the board’s decision.”

Conservolite, Inc. v. Don F. Widmayer (1994) cafc · cites it 6× “Conservolite sought remedy in the district court pursuant to 35 U.S.C. § 146 (1988). At trial, the court found that “Widmayer did reduce to practice the invention named in the account [sic ] of the interference proceeding,” that ‘Widmayer’s reduction to practice came first,” and…”

Biogen Ma, Inc. v. Japanese Foundation for Cancer Research (2015) cafc · cites it 8× “(“Biogen”) brought suit in district court, pursuant to 35 U.S.C. § 146 , to challenge an interference decision by the Patent Trial and Appeal Board (“PTAB” or the “Board”).”

Standard Oil Company v. Montedison (1980) ded · cites it 7× “This case is an appeal under 35 U.S.C.A. § 146 1 from a Board of Patent Interferences (“Board”) Opinion issued pursuant to 35 U.”

Velsicol Chemical Corporation v. Monsanto Company (1978) ca7 · cites it 7× “*1042 On December 20, 1974, Velsicol filed a civil action in the district court for review of the Board’s decision pursuant to 35 U.S.C. § 146 . In pretrial discovery, Velsicol learned of certain experimental failures experienced by Stoffel which Velsicol believed contradicted…”

University of Massachusetts v. Roslin Institute (2006) dcd · cites it 5× “INTRODUCTION These cases come before the court under 35 U.S.C. § 146 , and involve a district court review of two decisions by the Board of Patent Appeals.”

Kappos v. Hyatt (2012) scotus · cites it 2× “4915, they are now governed by a separate section of the Patent Act, 35 U. S. C. §146 , and therefore do not implicate §145.”

Agilent Technologies, Inc. v. Affymetrix, Inc. (2009) cafc · cites it 3× “(Agilent) brought under 35 U.S.C. § 146 against Affymetrix, Inc. (Affymetrix).”

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