U.S. Code » Title 35 » Part PART III— PATENTS AND PROTECTION OF PATENT RIGHTS › Chapter CHAPTER 29— REMEDIES FOR INFRINGEMENT OF PATENT, AND OTHER ACTIONS

35 U.S.C. § 291

Derived patents

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(a)In General.—The owner of a patent may have relief by civil action against the owner of another patent that claims the same invention and has an earlier effective filing date, if the invention claimed in such other patent was derived from the inventor of the invention claimed in the patent owned by the person seeking relief under this section.(b)Filing Limitation.—An action under this section may be filed only before the end of the 1-year period beginning on the date of the issuance of the first patent containing a claim to the allegedly derived invention and naming an individual alleged to have derived such invention as the inventor or joint inventor.(July 19, 1952, ch. 950, 66 Stat. 814; Pub. L. 112–29, §§ 3(h)(1), 20(j), Sept. 16, 2011, 125 Stat. 288, 335.)Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., § 66 (R.S. 4918, amended Mar. 2, 1927, ch. 273, § 12, 44 Stat. 1337).

Language is changed.

Editorial NotesAmendments

2011—Pub. L. 112–29, § 20(j), struck out “of this title” after “146”.

Pub. L. 112–29, § 3(h)(1), amended section generally. Prior to amendment, text read as follows: “The owner of an interfering patent may have relief against the owner of another by civil action, and the court may adjudge the question of the validity of any of the interfering patents, in whole or in part. The provisions of the second paragraph of section 146 shall apply to actions brought under this section.”

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by section 3(h)(1) of Pub. L. 112–29 effective upon the expiration of the 18-month period beginning on Sept. 16, 2011, and applicable to certain applications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title.

Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Savings Provisions

Provisions of 35 U.S.C. 291, as in effect on the day before the expiration of the 18-month period beginning on Sept. 16, 2011, apply to each claim of certain applications for patent, and certain patents issued thereon, for which the amendments made by section 3 of Pub. L. 112–29 also apply, see section 3(n)(2) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title.

Notes of Decisions
Cited in 67 cases (5 in the last 5 years), 1954–2025 · leading case: Medichem, S.A. v. Rolabo, S.L.
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Medichem, S.A. v. Rolabo, S.L. (2006) cafc · cites it 8× “In the first round, appealed to this court, we remanded to the district court, requiring it to establish an interference-in-fact under 35 U.S.C. § 291 before determining priority.”
Genetics Institute, LLC v. Novartis Vaccines & Diagnostics, Inc. (2011) cafc · cites it 8× “Genetics Institute, LLC, ("Genetics") appeals from the decision of the United States District Court for the District of Delaware dismissing its action under 35 U.S.C. § 291 for lack of an interference in fact between certain claims of its U.”
Creative Compounds, LLC v. Starmark Laboratories (2011) cafc · cites it 3× “According to Starmark, Environ and Slip Track are distinguishable from this case because both cases involved either an action predicated upon 35 U.S.C. § 291 or a judicial delineation of conflicting subject matter.”
Richard D. Albert v. Kevex Corporation, Richard D. Albert v. Kevex Corporation (1984) cafc · cites it 5× “The third count was a type of action now rarely seen, an “interfering patents” suit predicated on 35 U.S.C. § 291 , 1 and has given rise to appeal No.”
Kimberly-Clark Corporation v. The Procter & Gamble Distributing Co., Inc. And the Procter & Gamble Company, Defendants/c (1992) cafc · cites it 3× “K-C also sought a declaration, pursuant to 35 U.S.C. § 291 , that the Enloe patent had priority over the Lawson patent.”
Danisco U.S. Inc. v. Novozymes A/S (2014) cafc · cites it 3× “urrent actions in the United States District Courts for both the Northern District of Iowa and the Northern District of California seeking declaratory judgments that its RSL products did not infringe Novozymes’s '573 patent (Count 1) and that the '573 patent was invalid (Count…”
Mallinckrodt Medical, Inc. v. Sonus Pharmaceuticals, Inc. (1998) dcd · cites it 4× “In addition to its counterclaim against MBI and Mallinckrodt, Nycomed has brought a cross-claim against Sonus seeking a declaration, pursuant to an interfering patent action under 35 U.S.C. § 291 , that either Nycomed’s patent claims preceded those of Sonus or that Sonus’ patent…”
Eli Lilly and Company v. Aradigm Corporation, Defendant-Cross (2004) cafc “To succeed in an interference proceeding, regardless of whether it is conducted in the PTO or a district court under 35 U.S.C. § 291 ,. a party that does not have the earliest effective filing date needs only to demonstrate by a preponderance of the evidence that it was the…”
Medichem, S.A. v. Rolabo, S.L., Defendant-Cross (2003) cafc · cites it 2× “District Court Proceedings Medichem filed a complaint under 35 U.S.C. § 291 against Rolabo in the United States District Court for the Southern District of New York on April 13, 2001.”
Beech Aircraft Corp. v. EDO Corp. (1993) cafc · cites it 2× “Count II sought relief under 35 U.S.C. § 291 , alleging that the JONAS patent and the ABILDSKOV-1 patent were interfering patents.”
Slip Track Systems, Inc. And Todd A. Brady v. Metal Lite, Inc., Thomas R. Herren and Gene N. Carpenter (1998) cafc · cites it 2× “See 35 U.S.C. § 291 . In addition to asserting priority over the Paquette patent, Slip Track alleged in its complaint that Metal Lite had infringed the Brady patent and that certain letters sent by Metal Lite to Slip Track’s customers constituted unfair competition under…”
Advance Transformer Co. v. Melvin L. Levinson (1988) cafc · cites it 2× “3,876,956 and 3,792,369, refused to declare an interference under 35 U.S.C. § 291 , and awarded attorney fees to the declaratory plaintiff Advance Transformer Co.”
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