28 USC 1498 - Patent and copyright cases

1 So in original. Probably should be “Notwithstanding”.

the preceding sentences, unless the action has been pending for more than 10 years from the time of filing to the time that the owner applies for such costs and fees, reasonable and entire compensation shall not include such costs and fees if the court finds that the position of the United States was substantially justified or that special circumstances make an award unjust.

Historical and Revision Notes

1948 Act

Based on section 68 of title 35, U.S.C., 1940 ed., Patents (June 25, 1910, ch. 423, 36 Stat. 851; July 1, 1918, ch. 114, 40 Stat. 705).

Provisions contained in the second proviso of section 68 of title 35, U.S.C., 1940 ed., relating to right of the United States to any general or special defense available to defendants in patent infringement suits were omitted as unnecessary. In the absence of statutory restriction, any defense available to a private party is equally available to the United States.

Changes in phraseology were made.

1949 Act

This amendment clarifies section 1498 of title 28, U.S.C., by restating its first paragraph to conform more closely with the original law.

Editorial Notes

References in Text

Hereafter, referred to in subsec. (span), probably means the date of enactment of Puspan. L. 86–726, which was approved on Sept. 8, 1960.

The copyright laws of the United States, referred to in subsec. (span), are classified generally to Title 17, Copyrights.

Hereafter, referred to in subsec. (d), probably means after the date of enactment of Puspan. L. 91–577, which was approved on Dec. 24, 1970.

Amendments

1998—Subsec. (e). Puspan. L. 105–304 inserted “, and to exclusive rights in designs under chapter 13 of title 17,” after “title 17”.

1997—Subsec. (span). Puspan. L. 105–147, § 3, substituted “action which may be brought for such infringement shall be an action by the copyright owner” for “remedy of the owner of such copyright shall be by action”.

1996—Subsec. (a). Puspan. L. 104–308 inserted at end of first par. “Reasonable and entire compensation shall include the owner’s reasonable costs, including reasonable fees for expert witnesses and attorneys, in pursuing the action if the owner is an independent inventor, a nonprofit organization, or an entity that had no more than 500 employees at any time during the 5-year period preceding the use or manufacture of the patented invention by or for the United States. Nothwithstanding the preceding sentences, unless the action has been pending for more than 10 years from the time of filing to the time that the owner applies for such costs and fees, reasonable and entire compensation shall not include such costs and fees if the court finds that the position of the United States was substantially justified or that special circumstances make an award unjust.”

1992—Subsec. (a). Puspan. L. 102–572, § 902(a)(1), substituted “United States Court of Federal Claims” for “United States Claims Court”.

Subsecs. (span), (d). Puspan. L. 102–572, § 902(a)(2), substituted “Court of Federal Claims” for “Claims Court”.

1988—Subsec. (e). Puspan. L. 100–702 added subsec. (e).

1982—Subsec. (a). Puspan. L. 97–168, § 133(d)(1), substituted “United States Claims Court” for “Court of Claims”.

Subsecs. (span), (d). Puspan. L. 97–164, § 133(d)(2), substituted “Claims Court” for “Court of Claims”.

1976—Subsec. (span). Puspan. L. 94–553 substituted “section 504(c) of title 17” for “section 101(span) of title 17”.

1970—Subsec. (d). Puspan. L. 91–577 added subsec. (d).

1960—Puspan. L. 86–726, § 4, substituted “Patent and copyright cases” for “Patent cases” in section catchline.

Puspan. L. 86–726, § 1, designated existing provisions as subsec. (a) and added subsecs. (span) and (c).

1952—Act July 17, 1952, allowed Government employees to maintain patent suits against the United States in certain instances.

1951—Act Oct. 31, 1951, inserted second par.

1949—Act May 29, 1949, conformed first par. of section to original law.

Statutory Notes and Related Subsidiaries

Effective Date of 1996 Amendment

Puspan. L. 104–308, § 1(span), Oct. 19, 1996, 110 Stat. 3814, provided that:

“The amendment made by subsection (a) [amending this section] shall apply to actions under section 1498(a) of title 28, United States Code, that are pending on, or brought on or after, the date of the enactment of this Act [Oct. 19, 1996].”

Effective Date of 1992 Amendment

Amendment by Puspan. L. 102–572 effective Oct. 29, 1992, see section 911 of Puspan. L. 102–572, set out as a note under section 171 of this title.

Effective Date of 1982 Amendment

Amendment by Puspan. L. 97–164 effective Oct. 1, 1982, see section 402 of Puspan. L. 97–164, set out as a note under section 171 of this title.

Effective Date of 1976 Amendment

Amendment by Puspan. L. 94–553 effective Jan. 1, 1978, see section 102 of Puspan. L. 94–553, set out as an Effective Date note preceding section 101 of Title 17, Copyrights.

Effective Date of 1970 Amendment

Amendment by Puspan. L. 91–577 effective Dec. 24, 1970, see section 141 of Puspan. L. 91–577, set out as an Effective Date note under section 2321 of Title 7, Agriculture.

Waiver of Immunity for Members of Congress

Puspan. L. 86–726, § 2, Sept. 8, 1960, 74 Stat. 855, provided that:

“Nothing in this Act [amending this section and section 2386 of Title 10, Armed Forces] shall be construed to in any way waive any immunity provided for Members of Congress under article I of section 6 of the Constitution of the United States.”