Title 35 — Patents
Part III · Chapter 30 — Prior Art Citations to Office and Ex Parte Reexamination of Patents
§ 303. Determination of issue by Director
Statutory text
Within three months following the filing of a request for reexamination under the provisions of section 302, the Director will 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. On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him or cited under the provisions of section 301 or 302. 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.
A record of the Director’s determination under subsection (a) of this section will be placed in the official file of the patent, and a copy promptly will be given or mailed to the owner of record of the patent and to the person requesting reexamination, if any.
A determination by the Director pursuant to subsection (a) of this section that no substantial new question of patentability has been raised will be final and nonappealable. Upon such a determination, the Director may refund a portion of the reexamination fee required under section 302.
Legislative history
Reconstructed from this section’s Code source credit and amendment notes, resolved against the local Statutes at Large. Editorial notes are evidence, not the law that made the change.
Pub. L. 96–517 § 1 · 94 Stat. 3015
Enacted · 35 U.S.C. § 303
Added Pub. L. 96–517, § 1, Dec. 12, 1980, 94 Stat. 3015
Source evidence
Code source credit
Added Pub. L. 96–517, § 1, Dec. 12, 1980, 94 Stat. 3015District of Columbia Appropriations Act, 2000
Pub. L. 106–113 § 1000(a)(9)(tIV)(s4732)(a)(9)(A)(i) · 113 Stat. 1501
Substituted · 35 U.S.C. § 303
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(i)], substituted “Director” for “Commissioner” in section catchline
Source evidence
Code amendment note
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(i)], substituted “Director” for “Commissioner” in section catchline.District of Columbia Appropriations Act, 2000
Pub. L. 106–113 § 1000(a)(9)(tIV)(s4732)(a)(10)(A) · 113 Stat. 1501
Amended · 35 U.S.C. § 303(a)
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B)
Substituted · 35 U.S.C. § 303(a)
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as substituted “Director” for “Commissioner” in two places
Source evidence
Code amendment note
Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted “Director” for “Commissioner” in two places.District of Columbia Appropriations Act, 2000
Pub. L. 106–113 § 1000(a)(9)(tIV)(s4732)(a)(9)(A)(ii) · 113 Stat. 1501
Amended · 35 U.S.C. § 303(b)
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(ii)], as amended by Pub. L. 107–273, § 13206(b)(1)(A)
Substituted · 35 U.S.C. § 303(b)
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(ii)], as substituted “Director’s” for “Commissioner’s”
Source evidence
Code amendment note
Subsec. (b). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(ii)], as amended by Pub. L. 107–273, § 13206(b)(1)(A), substituted “Director’s” for “Commissioner’s”.District of Columbia Appropriations Act, 2000
Pub. L. 106–113 § 1000(a)(9)(tIV)(s4732)(a)(10)(A) · 113 Stat. 1501
Amended · 35 U.S.C. § 303(c)
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B)
Substituted · 35 U.S.C. § 303(c)
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as substituted “Director” for “Commissioner” in two places
Source evidence
Code amendment note
Subsec. (c). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted “Director” for “Commissioner” in two places.Intellectual Property and High Technology Technical Amendments Act of 2002
Pub. L. 107–273 § 13206(b)(1)(B) · 116 Stat. 1758
Changed · 35 U.S.C. § 303(a)
Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below
Source evidence
Code amendment note
Subsec. (a). Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below.Enacted provision · exact public law section
(B) in paragraph (10)(A), by inserting after “title 35, United States Code,” the following: “other than sections 1 through 6 (as amended by chapter 1 of this subtitle),”.Patent and Trademark Office Authorization Act of 2002
Pub. L. 107–273 § 13105(a) · 116 Stat. 1758
Inserted · 35 U.S.C. § 303(a)
Pub. L. 107–273, § 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.”
Target inherited from the preceding amendment note.
Source evidence
Code amendment note
Pub. L. 107–273, § 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.”Enacted provision · exact public law section
(a) In General.— Sections 303(a) and 312(a) of title 35, United States Code, are each amended by adding at the end the following: “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.”.Intellectual Property and High Technology Technical Amendments Act of 2002
Pub. L. 107–273 § 13206(b)(1)(A) · 116 Stat. 1758
Changed · 35 U.S.C. § 303(b)
Pub. L. 107–273, § 13206(b)(1)(A), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(ii)]. See 1999 Amendment note below
Source evidence
Code amendment note
Subsec. (b). Pub. L. 107–273, § 13206(b)(1)(A), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(ii)]. See 1999 Amendment note below.Enacted provision · exact public law section
(A) in paragraph (9)(A)(ii), by inserting “in subsection (b),” after “(ii)”; andIntellectual Property and High Technology Technical Amendments Act of 2002
Pub. L. 107–273 § 13206(b)(1)(B) · 116 Stat. 1758
Changed · 35 U.S.C. § 303(c)
Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below
Source evidence
Code amendment note
Subsec. (c). Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below.Enacted provision · exact public law section
(B) in paragraph (10)(A), by inserting after “title 35, United States Code,” the following: “other than sections 1 through 6 (as amended by chapter 1 of this subtitle),”.Pub. L. 112–29 § 20(j) · 125 Stat. 312
Struck · 35 U.S.C. § 303(a)
Pub. L. 112–29, § 20(j), struck out “of this title” after “section 302”
Source evidence
Code amendment note
Subsec. (a). Pub. L. 112–29, § 20(j), struck out “of this title” after “section 302”.Enacted provision · exact public law section
(j) Unnecessary References.— (1) In general.— Title 35, 35 USC 2, 12, 32, 41, 103, 104, 111, 119–123, 132, 135, 143, 145, 146, 154, 157, 162, 172, 182–186, 207, 210, 257, 267. United States Code, is amended by striking “of this title” each place that term appears. (2) Exception.— The amendment made by paragraph (1) shall not apply to the use of such term in the following sections of title 35, United States Code: (A) Section 1(c). (B) Section 101. (C) Subsections (a) and (b) of section 105. (D) The first instance of the use of such term in section 111(b)(8). (E) Section 161. (F) Section 164. (G) Section 171. (H) Section 251(c), as so designated by this section. (I) Section 261. (J) Subsections (g) and (h) of section 271. (K) Section 287(b)(1). (L) Section 289. (M) The first instance of the use of such term in section 375(a).Effective date note
Pub. L. 112–29, § 6(h)(1)(B), Sept. 16, 2011, 125 Stat. 312, provided that: “The amendment made by this paragraph [amending this section] shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent issued before, on, or after that effective date.” Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.Pub. L. 112–29 § 6(h)(1)(A) · 125 Stat. 312
Substituted · 35 U.S.C. § 303(a)
Pub. L. 112–29, § 6(h)(1)(A), substituted “section 301 or 302” for “section 301 of this title”
Target inherited from the preceding amendment note.
Source evidence
Code amendment note
Pub. L. 112–29, § 6(h)(1)(A), substituted “section 301 or 302” for “section 301 of this title”.Enacted provision · exact public law section
(A) In general.— Section 303(a) of title 35, United States Code, is amended by striking “section 301 of this title” and inserting “section 301 or 302”.Effective date note
Pub. L. 112–29, § 6(h)(1)(B), Sept. 16, 2011, 125 Stat. 312, provided that: “The amendment made by this paragraph [amending this section] shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent issued before, on, or after that effective date.” Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.Pub. L. 112–29 § 20(j) · 125 Stat. 312
Struck · 35 U.S.C. § 303(c)
Pub. L. 112–29, § 20(j), struck out “of this title” after “section 302”
Source evidence
Code amendment note
Subsec. (c). Pub. L. 112–29, § 20(j), struck out “of this title” after “section 302”.Enacted provision · exact public law section
(j) Unnecessary References.— (1) In general.— Title 35, 35 USC 2, 12, 32, 41, 103, 104, 111, 119–123, 132, 135, 143, 145, 146, 154, 157, 162, 172, 182–186, 207, 210, 257, 267. United States Code, is amended by striking “of this title” each place that term appears. (2) Exception.— The amendment made by paragraph (1) shall not apply to the use of such term in the following sections of title 35, United States Code: (A) Section 1(c). (B) Section 101. (C) Subsections (a) and (b) of section 105. (D) The first instance of the use of such term in section 111(b)(8). (E) Section 161. (F) Section 164. (G) Section 171. (H) Section 251(c), as so designated by this section. (I) Section 261. (J) Subsections (g) and (h) of section 271. (K) Section 287(b)(1). (L) Section 289. (M) The first instance of the use of such term in section 375(a).Effective date note
Pub. L. 112–29, § 6(h)(1)(B), Sept. 16, 2011, 125 Stat. 312, provided that: “The amendment made by this paragraph [amending this section] shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent issued before, on, or after that effective date.” Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.
7 of 15 references resolved to an enrolled provision · 8 partial
Editorial Notes
Amendments1999–2011 · 3 rounds
2011
Subsec. (a). Pub. L. 112–29, § 20(j), struck out “of this title” after “section 302”.
Pub. L. 112–29, § 6(h)(1)(A), substituted “section 301 or 302” for “section 301 of this title”.
Subsec. (c). Pub. L. 112–29, § 20(j), struck out “of this title” after “section 302”.
2002
Subsec. (a). Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below.
Pub. L. 107–273, § 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, § 13206(b)(1)(A), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(ii)]. See 1999 Amendment note below.
Subsec. (c). Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below.
1999
Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(i)], substituted “Director” for “Commissioner” in section catchline.
Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted “Director” for “Commissioner” in two places.
Subsec. (b). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(ii)], as amended by Pub. L. 107–273, § 13206(b)(1)(A), substituted “Director’s” for “Commissioner’s”.
Subsec. (c). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted “Director” for “Commissioner” in two places.
Statutory Notes and Related Subsidiaries
Effective Date of 2011 Amendment
Pub. L. 112–29, § 6(h)(1)(B), , 125 Stat. 312, provided that: “The amendment made by this paragraph [amending this section] shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act [] and shall apply to any patent issued before, on, or after that effective date.”
Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on , and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.
Effective Date of 2002 Amendment
Pub. L. 107–273, div. C, title III, § 13105(b), , 116 Stat. 1900, provided that: “The amendments made by this section [amending this section and section 312 of this title] shall apply with respect to any determination of the Director of the United States Patent and Trademark Office that is made under section 303(a) or [former section] 312(a) [see section 314(a)] of title 35, United States Code, on or after the date of enactment of this Act [].”
Effective Date of 1999 Amendment
Amendment by Pub. L. 106–113 effective 4 months after , see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title.
Effective Date
Section effective , and applicable to patents in force as of , or issued thereafter, see section 8(b) of Pub. L. 96–517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.
Credits
1980–2011 · 4 acts
- 1980Added Pub. L. 96–517, § 1, , 94 Stat. 3015
- 1999amended Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(9)(A), (10)(A)], , 113 Stat. 1536, 1501A–582
- 2002Pub. L. 107–273, div. C, title III, §§ 13105(a), 13206(b)(1), , 116 Stat. 1900, 1905, 1906
- 2011Pub. L. 112–29, §§ 6(h)(1)(A), 20(j), , 125 Stat. 312, 335.
Show as published
(Added Pub. L. 96–517, § 1, , 94 Stat. 3015; amended Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(9)(A), (10)(A)], , 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, §§ 13105(a), 13206(b)(1), , 116 Stat. 1900, 1905, 1906; Pub. L. 112–29, §§ 6(h)(1)(A), 20(j), , 125 Stat. 312, 335.)