28 U.S.C. § 1928
Section 1928 · Patent infringement action; disclaimer not filed
Amended 2 times on record
Applied in 10 court decisions — leading case Marx v. General Revenue Corp. (2013)
Most recently applied in Orlando Garcia v. Gateway Hotel L.P. (September 2023)
How often courts cite this section
Court decisions citing this, by year.Markers show enactment, consequential amendments, and circuit splits over this section — watch for a citation surge after a change or a disagreement. The dip in the last several years is a data-coverage gap, not a real trend — our corpus holds fewer opinions from the most recent years, so recent citations are undercounted.
Whenever a judgment is rendered for the plaintiff in any patent infringement action involving a part of a patent and it appears that the patentee, in his specifications, claimed to be, but was not, the original and first inventor or discoverer of any material or substantial part of the thing patented, no costs shall be included in such judgment, unless the proper disclaimer has been filed in the United States Patent and Trademark Office prior to the commencement of the action.
Editorial notes U.S. Code · Office of the Law Revision Counsel
Historical and Revision Notes
Based on title 28, U.S.C., 1940 ed., §821 (R.S. §973).
Word “action” was substituted for “any suit at law or in equity” to conform with Rule 2 of the Federal Rules of Civil Procedure.
Words “or decree” were omitted after “judgment,” because a judgment under Rule 54(a) of the Federal Rules of Civil Procedure by definition includes a decree.
Changes were made in phraseology.
Amendments
1999—Pub. L. 106–113 substituted “United States Patent and Trademark Office” for “Patent Office”.
Effective Date of 1999 Amendment
Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, §4731] of Pub. L. 106–113, set out as a note under section 1 of Title 35, Patents.
Federal Rules of Civil Procedure
Costs, see rule 54, Appendix to this title.
Cross References
Costs where disclaimer not filed in patent infringement action, see section 288 of Title 35, Patents.