US (United States) Code. Title 35. Part III. Chapter 31: Optional inter partes reexamination procedures

Codificación normativa de EEUU (Estados Unidos). Legislación federal estadounidense # Patents

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publicidad

-CITE-

35 USC CHAPTER 31 - OPTIONAL INTER PARTES REEXAMINATION

PROCEDURES 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 31 - OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

-HEAD-

CHAPTER 31 - OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

-MISC1-

Sec.

311. Request for inter partes reexamination.

312. Determination of issue by Director.

313. Inter partes reexamination order by Director.

314. Conduct of inter partes reexamination proceedings.

315. Appeal.

316. Certificate of patentability, unpatentability, and

claim cancellation.

317. Inter partes reexamination prohibited.

318. Stay of litigation.

AMENDMENTS

2002 - Pub. L. 107-273, div. C, title III, Sec. 13202(c)(1), Nov.

2, 2002, 116 Stat. 1902, made technical correction to directory

language of Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV,

Sec. 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-567, which

enacted this chapter.

-End-

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35 USC Sec. 311 01/06/03

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TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 31 - OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

-HEAD-

Sec. 311. Request for inter partes reexamination

-STATUTE-

(a) In General. - Any third-party requester at any time may file

a request for inter partes reexamination by the Office of a patent

on the basis of any prior art cited under the provisions of section

301.

(b) Requirements. - The request shall -

(1) be in writing, include the identity of the real party in

interest, and be accompanied by payment of an inter partes

reexamination fee established by the Director under section 41;

and

(2) set forth the pertinency and manner of applying cited prior

art to every claim for which reexamination is requested.

(c) Copy. - The Director promptly shall send a copy of the

request to the owner of record of the patent.

-SOURCE-

(Added Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-567; amended Pub. L.

107-273, div. C, title III, Sec. 13202(a)(1), (c)(1), Nov. 2, 2002,

116 Stat. 1901, 1902.)

-MISC1-

AMENDMENTS

2002 - Pub. L. 107-273, Sec. 13202(c)(1), made technical

correction to directory language of Pub. L. 106-113, which enacted

this section.

Subsec. (a). Pub. L. 107-273, Sec. 13202(a)(1)(A), substituted

"third-party requester" for "person".

Subsec. (c). Pub. L. 107-273, Sec. 13202(a)(1)(B), substituted

"The" for "Unless the requesting person is the owner of the patent,

the".

EFFECTIVE DATE

Chapter effective Nov. 29, 1999, and applicable to any patent

issuing from an original application filed in the United States on

or after that date, see section 1000(a)(9) [title IV, Sec. 4608(a)]

of Pub. L. 106-113, set out as an Effective Date of 1999 Amendment

note under section 41 of this title.

REPORT TO CONGRESS

Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, subtitle F,

Sec. 4606], Nov. 29, 1999, 113 Stat. 1536, 1501A-571, provided

that: "Not later than 5 years after the date of the enactment of

this Act [Nov. 29, 1999], the Under Secretary of Commerce for

Intellectual Property and Director of the United States Patent and

Trademark Office shall submit to the Congress a report evaluating

whether the inter partes reexamination proceedings established

under the amendments made by this subtitle [see Short Title of 1999

Amendment note set out under section 1 of this title] are

inequitable to any of the parties in interest and, if so, the

report shall contain recommendations for changes to the amendments

made by this subtitle to remove such inequity."

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 100, 312 of this title.

-End-

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35 USC Sec. 312 01/06/03

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TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 31 - OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

-HEAD-

Sec. 312. Determination of issue by Director

-STATUTE-

(a) Reexamination. - Not later than 3 months after the filing of

a request for inter partes reexamination under section 311, the

Director shall determine whether a substantial new question of

patentability affecting any claim of the patent concerned is raised

by the request, with or without consideration of other patents or

printed publications. The existence of a substantial new question

of patentability is not precluded by the fact that a patent or

printed publication was previously cited by or to the Office or

considered by the Office.

(b) Record. - A record of the Director's determination under

subsection (a) shall be placed in the official file of the patent,

and a copy shall be promptly given or mailed to the owner of record

of the patent and to the third-party requester.

(c) Final Decision. - A determination by the Director under

subsection (a) shall be final and non-appealable. Upon a

determination that no substantial new question of patentability has

been raised, the Director may refund a portion of the inter partes

reexamination fee required under section 311.

-SOURCE-

(Added Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-568; amended Pub. L.

107-273, div. C, title III, Secs. 13105(a), 13202(a)(2), (c)(1),

Nov. 2, 2002, 116 Stat. 1900-1902.)

-MISC1-

AMENDMENTS

2002 - Pub. L. 107-273, Sec. 13202(c)(1), made technical

correction to directory language of Pub. L. 106-113, which enacted

this section.

Subsec. (a). Pub. L. 107-273, Sec. 13202(a)(2)(A), struck out

second sentence which read as follows: "On the Director's

initiative, and at any time, the Director may determine whether a

substantial new question of patentability is raised by patents and

publications."

Pub. L. 107-273, Sec. 13105(a), inserted at end "The existence of

a substantial new question of patentability is not precluded by the

fact that a patent or printed publication was previously cited by

or to the Office or considered by the Office."

Subsec. (b). Pub. L. 107-273, Sec. 13202(a)(2)(B), struck out ",

if any" after "third-party requester".

EFFECTIVE DATE OF 2002 AMENDMENT

Amendment by section 13105(a) of Pub. L. 107-273 applicable with

respect to any determination of the Director of the United States

Patent and Trademark Office that is made on or after Nov. 2, 2002,

see section 13105(b) of Pub. L. 107-273, set out as a note under

section 303 of this title.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 313 of this title.

-End-

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35 USC Sec. 313 01/06/03

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TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 31 - OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

-HEAD-

Sec. 313. Inter partes reexamination order by Director

-STATUTE-

If, in a determination made under section 312(a), the Director

finds that a substantial new question of patentability affecting a

claim of a patent is raised, the determination shall include an

order for inter partes reexamination of the patent for resolution

of the question. The order may be accompanied by the initial action

of the Patent and Trademark Office on the merits of the inter

partes reexamination conducted in accordance with section 314.

-SOURCE-

(Added Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-568; amended Pub. L.

107-273, div. C, title III, Sec. 13202(c)(1), Nov. 2, 2002, 116

Stat. 1902.)

-MISC1-

AMENDMENTS

2002 - Pub. L. 107-273 made technical correction to directory

language of Pub. L. 106-113, which enacted this section.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in sections 315, 317, 318 of this

title.

-End-

-CITE-

35 USC Sec. 314 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 31 - OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

-HEAD-

Sec. 314. Conduct of inter partes reexamination proceedings

-STATUTE-

(a) In General. - Except as otherwise provided in this section,

reexamination shall be conducted according to the procedures

established for initial examination under the provisions of

sections 132 and 133. In any inter partes reexamination proceeding

under this chapter, the patent owner shall be permitted to propose

any amendment to the patent and a new claim or claims, except that

no proposed amended or new claim enlarging the scope of the claims

of the patent shall be permitted.

(b) Response. - (1) With the exception of the inter partes

reexamination request, any document filed by either the patent

owner or the third-party requester shall be served on the other

party. In addition, the Office shall send to the third-party

requester a copy of any communication sent by the Office to the

patent owner concerning the patent subject to the inter partes

reexamination proceeding.

(2) Each time that the patent owner files a response to an action

on the merits from the Patent and Trademark Office, the third-party

requester shall have one opportunity to file written comments

addressing issues raised by the action of the Office or the patent

owner's response thereto, if those written comments are received by

the Office within 30 days after the date of service of the patent

owner's response.

(c) Special Dispatch. - Unless otherwise provided by the Director

for good cause, all inter partes reexamination proceedings under

this section, including any appeal to the Board of Patent Appeals

and Interferences, shall be conducted with special dispatch within

the Office.

-SOURCE-

(Added Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-568; amended Pub. L.

107-273, div. C, title III, Sec. 13202(a)(3), (c)(1), Nov. 2, 2002,

116 Stat. 1901, 1902.)

-MISC1-

AMENDMENTS

2002 - Pub. L. 107-273, Sec. 13202(c)(1), made technical

correction to directory language of Pub. L. 106-113, which enacted

this section.

Subsec. (b). Pub. L. 107-273, Sec. 13202(a)(3), redesignated par.

(2) as (1), substituted "the Office shall send to the third-party

requester a copy" for "the third-party requester shall receive a

copy", redesignated par. (3) as (2), and struck out former par. (1)

which read as follows: "This subsection shall apply to any inter

partes reexamination proceeding in which the order for inter partes

reexamination is based upon a request by a third-party requester."

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 313 of this title.

-End-

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35 USC Sec. 315 01/06/03

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TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 31 - OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

-HEAD-

Sec. 315. Appeal

-STATUTE-

(a) Patent Owner. - The patent owner involved in an inter partes

reexamination proceeding under this chapter -

(1) may appeal under the provisions of section 134 and may

appeal under the provisions of sections 141 through 144, with

respect to any decision adverse to the patentability of any

original or proposed amended or new claim of the patent; and

(2) may be a party to any appeal taken by a third-party

requester under subsection (b).

(b) Third-Party Requester. - A third-party requester -

(1) may appeal under the provisions of section 134, and may

appeal under the provisions of sections 141 through 144, with

respect to any final decision favorable to the patentability of

any original or proposed amended or new claim of the patent; and

(2) may, subject to subsection (c), be a party to any appeal

taken by the patent owner under the provisions of section 134 or

sections 141 through 144.

(c) Civil Action. - A third-party requester whose request for an

inter partes reexamination results in an order under section 313 is

estopped from asserting at a later time, in any civil action

arising in whole or in part under section 1338 of title 28, the

invalidity of any claim finally determined to be valid and

patentable on any ground which the third-party requester raised or

could have raised during the inter partes reexamination

proceedings. This subsection does not prevent the assertion of

invalidity based on newly discovered prior art unavailable to the

third-party requester and the Patent and Trademark Office at the

time of the inter partes reexamination proceedings.

-SOURCE-

(Added Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-569; amended Pub. L.

107-273, div. C, title III, Secs. 13106(a), 13202(a)(4), (c)(1),

Nov. 2, 2002, 116 Stat. 1900-1902.)

-MISC1-

AMENDMENTS

2002 - Pub. L. 107-273, Sec. 13202(c)(1), made technical

correction to directory language of Pub. L. 106-113, which enacted

this section.

Subsec. (b). Pub. L. 107-273, Sec. 13106(a), reenacted heading

without change and amended text generally. Prior to amendment, text

read as follows: "A third-party requester may -

"(1) appeal under the provisions of section 134 with respect to

any final decision favorable to the patentability of any original

or proposed amended or new claim of the patent; or

"(2) be a party to any appeal taken by the patent owner under

the provisions of section 134, subject to subsection (c)."

Subsec. (c). Pub. L. 107-273, Sec. 13202(a)(4), struck out

"United States Code," after "title 28,".

EFFECTIVE DATE OF 2002 AMENDMENT

Amendment by section 13106(a) of Pub. L. 107-273 applicable with

respect to any reexamination proceeding commenced on or after Nov.

2, 2002, see section 13106(d) of Pub. L. 107-273, set out as a note

under section 134 of this title.

ESTOPPEL EFFECT OF REEXAMINATION

Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, subtitle F,

Sec. 4607], Nov. 29, 1999, 113 Stat. 1536, 1501A-571, provided

that: "Any party who requests an inter partes reexamination under

section 311 of title 35, United States Code, is estopped from

challenging at a later time, in any civil action, any fact

determined during the process of such reexamination, except with

respect to a fact determination later proved to be erroneous based

on information unavailable at the time of the inter partes

reexamination decision. If this section is held to be

unenforceable, the enforceability of the remainder of this subtitle

[see Short Title of 1999 Amendment note set out under section 1 of

this title] or of this title [see Tables for classification] shall

not be denied as a result."

-End-

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35 USC Sec. 316 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 31 - OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

-HEAD-

Sec. 316. Certificate of patentability, unpatentability, and claim

cancellation

-STATUTE-

(a) In General. - In an inter partes reexamination proceeding

under this chapter, when the time for appeal has expired or any

appeal proceeding has terminated, the Director shall issue and

publish a certificate canceling any claim of the patent finally

determined to be unpatentable, confirming any claim of the patent

determined to be patentable, and incorporating in the patent any

proposed amended or new claim determined to be patentable.

(b) Amended or New Claim. - Any proposed amended or new claim

determined to be patentable and incorporated into a patent

following an inter partes reexamination proceeding shall have the

same effect as that specified in section 252 of this title for

reissued patents on the right of any person who made, purchased, or

used within the United States, or imported into the United States,

anything patented by such proposed amended or new claim, or who

made substantial preparation therefor, prior to issuance of a

certificate under the provisions of subsection (a) of this section.

-SOURCE-

(Added Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-569; amended Pub. L.

107-273, div. C, title III, Sec. 13202(c)(1), Nov. 2, 2002, 116

Stat. 1902.)

-MISC1-

AMENDMENTS

2002 - Pub. L. 107-273 made technical correction to directory

language of Pub. L. 106-113, which enacted this section.

-SECREF-

SECTION REFERRED TO IN OTHER SECTIONS

This section is referred to in section 317 of this title.

-End-

-CITE-

35 USC Sec. 317 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 31 - OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

-HEAD-

Sec. 317. Inter partes reexamination prohibited

-STATUTE-

(a) Order for Reexamination. - Notwithstanding any provision of

this chapter, once an order for inter partes reexamination of a

patent has been issued under section 313, neither the third-party

requester nor its privies,(!1) may file a subsequent request for

inter partes reexamination of the patent until an inter partes

reexamination certificate is issued and published under section

316, unless authorized by the Director.

(b) Final Decision. - Once a final decision has been entered

against a party in a civil action arising in whole or in part under

section 1338 of title 28,(!1) that the party has not sustained its

burden of proving the invalidity of any patent claim in suit or if

a final decision in an inter partes reexamination proceeding

instituted by a third-party requester is favorable to the

patentability of any original or proposed amended or new claim of

the patent, then neither that party nor its privies may thereafter

request an inter partes reexamination of any such patent claim on

the basis of issues which that party or its privies raised or could

have raised in such civil action or inter partes reexamination

proceeding, and an inter partes reexamination requested by that

party or its privies on the basis of such issues may not thereafter

be maintained by the Office, notwithstanding any other provision of

this chapter. This subsection does not prevent the assertion of

invalidity based on newly discovered prior art unavailable to the

third-party requester and the Patent and Trademark Office at the

time of the inter partes reexamination proceedings.

-SOURCE-

(Added Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-570; amended Pub. L.

107-273, div. C, title III, Sec. 13202(a)(5), (c)(1), Nov. 2, 2002,

116 Stat. 1901, 1902.)

-MISC1-

AMENDMENTS

2002 - Pub. L. 107-273, Sec. 13202(c)(1), made technical

correction to directory language of Pub. L. 106-113, which enacted

this section.

Subsec. (a). Pub. L. 107-273, Sec. 13202(a)(5)(A), substituted

"third-party requester nor its privies" for "patent owner nor the

third-party requester, if any, nor privies of either".

Subsec. (b). Pub. L. 107-273, Sec. 13202(a)(5)(B), struck out

"United States Code," after "title 28,".

-FOOTNOTE-

(!1) So in original. The comma probably should not appear.

-End-

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35 USC Sec. 318 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART III - PATENTS AND PROTECTION OF PATENT RIGHTS

CHAPTER 31 - OPTIONAL INTER PARTES REEXAMINATION PROCEDURES

-HEAD-

Sec. 318. Stay of litigation

-STATUTE-

Once an order for inter partes reexamination of a patent has been

issued under section 313, the patent owner may obtain a stay of any

pending litigation which involves an issue of patentability of any

claims of the patent which are the subject of the inter partes

reexamination order, unless the court before which such litigation

is pending determines that a stay would not serve the interests of

justice.

-SOURCE-

(Added Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, Sec.

4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-570; amended Pub. L.

107-273, div. C, title III, Sec. 13202(c)(1), Nov. 2, 2002, 116

Stat. 1902.)

-MISC1-

AMENDMENTS

2002 - Pub. L. 107-273 made technical correction to directory

language of Pub. L. 106-113, which enacted this section.

-End-

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35 USC PART IV - PATENT COOPERATION TREATY 01/06/03

-EXPCITE-

TITLE 35 - PATENTS

PART IV - PATENT COOPERATION TREATY

-HEAD-

PART IV - PATENT COOPERATION TREATY

-MISC1-

Chap. Sec.

35. Definitions 351

36. International Stage 361

37. National Stage 371

-COD-

CODIFICATION

Analysis of chapters editorially supplied. Part IV added by Pub.

L. 94-131 without adding analysis for chapters 35, 36, and 37.

Pub. L. 96-517 purported to amend the table of chapters of title

35 by adding after the item for chapter 37 the following: "38.

Patent Rights in Inventions Made with Federal Assistance". Title 35

did not contain a table of chapters, and section 6(b) of Pub. L.

96-517 and the purported amendment made by it were repealed by Pub.

L. 97-256. See chapter 18 (Sec. 200 et seq.) of this title.

-End-