35 U.S.C. 202 (pre-AIA): Disposition of rights

Taken from the 9th Edition of the MPEP, Revision 07.2022, Published February 2023

Current Pre-AIA AIA Redline

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35 U.S.C. 202 (pre-AIA) Disposition of rights.

[Editor Note: pre-AIA 35 U.S.C. 202(c)(2) and (c)(3) as set forth below are not applicable to patent applications subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). See 35 U.S.C. 202(c)(2) and (c)(3) for the law otherwise applicable.]


  • (c) Each funding agreement with a small business firm or nonprofit organization shall contain appropriate provisions to effectuate the following:
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    • (2) That the contractor make a written election within two years after disclosure to the Federal agency (or such additional time as may be approved by the Federal agency) whether the contractor will retain title to a subject invention: Provided, That in any case where publication, on sale, or public use, has initiated the one year statutory period in which valid patent protection can still be obtained in the United States, the period for election may be shortened by the Federal agency to a date that is not more than sixty days prior to the end of the statutory period: And provided further, That the Federal Government may receive title to any subject invention in which the contractor does not elect to retain rights or fails to elect rights within such times.
    • (3) That a contractor electing rights in a subject invention agrees to file a patent application prior to any statutory bar date that may occur under this title due to publication, on sale, or public use, and shall thereafter file corresponding patent applications in other countries in which it wishes to retain title within reasonable times, and that the Federal Government may receive title to any subject inventions in the United States or other countries in which the contractor has not filed patent applications on the subject invention within such times.


(Added Dec. 12, 1980, Public Law 96-517, sec. 6(a), 94 Stat. 3020; subsection (b)(4) added and subsections (a), (b)(1), (b)(2), (c)(4), (c)(5), and (c)(7) amended Nov. 8, 1984, Public Law 98-620, sec. 501, 98 Stat. 3364; subsection (b)(3) amended Dec. 10, 1991, Public Law 102-204, sec. 10, 105 Stat. 1641; subsection (a) amended Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-583 (S. 1948 sec. 4732(a)(12)); subsection (e) amended Nov. 1, 2000, Public Law 106-404, sec. 6(1), 114 Stat. 1745; subsections (b)(4), (c)(4), and (c)(5) amended Nov. 2, 2002, Public Law 107-273, sec. 13206, 116 Stat. 1905; paragraph (d)(4) redesignated as (d)(3) and former paragraph (d)(3) struck Public Law 111-8, div. G, title I, sec. 1301(h), Mar. 11, 2009, 123 Stat. 829; subsection (c)(7)(E)(i) amended Sept. 16, 2011, Public Law 112-29, sec. 13, 125 Stat. 284; subsections (b)(3) and (c)(7)(D) amended by Public Law 112-29, sec. 20(i) (effective Sept. 16, 2012), 125 Stat. 284.)