35 U.S.C. 104 (pre-AIA) — Invention made abroad

Ninth Edition, Revision 01.2024

[Editor Note: Not applicable to any patent application subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ). 35 U.S.C. 104 repealed with regard to such applications).]

• (a) IN GENERAL.—
  • (1) PROCEEDINGS.—In proceedings in the Patent and Trademark Office, in the courts, and before any other competent authority, an applicant for a patent, or a patentee, may not establish a date of invention by reference to knowledge or use thereof, or other activity with respect thereto, in a foreign country other than a NAFTA country or a WTO member country, except as provided in sections 119 and 365.
  • (2) RIGHTS.—If an invention was made by a person, civil or military—
    • (A) while domiciled in the United States, and serving in any other country in connection with operations by or on behalf of the United States,
    • (B) while domiciled in a NAFTA country and serving in another country in connection with operations by or on behalf of that NAFTA country, or
    • (C) while domiciled in a WTO member country and serving in another country in connection with operations by or on behalf of that WTO member country, that person shall be entitled to the same rights of priority in the United States with respect to such invention as if such invention had been made in the United States, that NAFTA country, or that WTO member country, as the case may be.
  • (3) USE OF INFORMATION.—To the extent that any information in a NAFTA country or a WTO member country concerning knowledge, use, or other activity relevant to proving or disproving a date of invention has not been made available for use in a proceeding in the Patent and Trademark Office, a court, or any other competent authority to the same extent as such information could be made available in the United States, the Director, court, or such other authority shall draw appropriate inferences, or take other action permitted by statute, rule, or regulation, in favor of the party that requested the information in the proceeding.
• (b) DEFINITIONS.—As used in this section—
  • (1) The term “NAFTA country” has the meaning given that term in section 2(4) of the North American Free Trade Agreement Implementation Act; and
  • (2) The term “WTO member country” has the meaning given that term in section 2(10) of the Uruguay Round Agreements Act.