§ 311. Inter partes review

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.

1. 1999

   District of Columbia Appropriations Act, 2000

   Pub. L. 106–113 div. B § 1000(a)(9)(tIV)(s4604)(a) · 113 Stat. 1501

   Enacted · 35 U.S.C. § 311

   Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–567

   Source evidence

   Code source credit
   Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–567

2. 2002

   Intellectual Property and High Technology Technical Amendments Act of 2002

   Pub. L. 107–273 § 13202(c)(1) · 116 Stat. 1758

   Changed · 35 U.S.C. § 311

   Pub. L. 107–273, § 13202(c)(1), made technical correction to directory language of Pub. L. 106–113, which enacted this section

   Source evidence

   Code amendment note
   Pub. L. 107–273, § 13202(c)(1), made technical correction to directory language of Pub. L. 106–113, which enacted this section.

   Enacted provision · exact public law section
   (1) Section 4604(a) of the Intellectual Property and Communications Omnibus Reform Act of 1999, as enacted by section 1000(a)(9) of Public Law 106-113, is amended by striking “Part 3” and inserting “Part III”.

3. 2002

   Intellectual Property and High Technology Technical Amendments Act of 2002

   Pub. L. 107–273 § 13202(a)(1)(A) · 116 Stat. 1758

   Substituted · 35 U.S.C. § 311(a)

   Pub. L. 107–273, § 13202(a)(1)(A), substituted “third-party requester” for “person”

   Source evidence

   Code amendment note
   Subsec. (a). Pub. L. 107–273, § 13202(a)(1)(A), substituted “third-party requester” for “person”.

   Enacted provision · exact public law section
   (A) in subsection (a), by striking “person” and inserting “third-party requester”; and

4. 2002

   Intellectual Property and High Technology Technical Amendments Act of 2002

   Pub. L. 107–273 § 13202(a)(1)(B) · 116 Stat. 1758

   Substituted · 35 U.S.C. § 311(c)

   Pub. L. 107–273, § 13202(a)(1)(B), substituted “The” for “Unless the requesting person is the owner of the patent, the”

   Source evidence

   Code amendment note
   Subsec. (c). Pub. L. 107–273, § 13202(a)(1)(B), substituted “The” for “Unless the requesting person is the owner of the patent, the”.

   Enacted provision · exact public law section
   (B) in subsection (c), by striking “Unless the requesting person is the owner of the patent, the” and inserting “The”.

5. 2011

   Pub. L. 112–29 § 6(a) · 125 Stat. 299

   Amended · 35 U.S.C. § 311

   Pub. L. 112–29 amended section generally. Prior to amendment, section related to request for inter partes reexamination

   Source evidence

   Code amendment note
   Pub. L. 112–29 amended section generally. Prior to amendment, section related to request for inter partes reexamination.

   Enacted provision · exact public law section
   (a) Inter Partes Review.— Chapter 31 of title 35, United States Code, is amended to read as follows: “CHAPTER 31— INTER PARTES REVIEW “Sec. “311.  Inter partes review. “312.  Petitions. “313.  Preliminary response to petition. “314.  Institution of inter partes review. “315.  Relation to other proceedings or actions. “316.  Conduct of inter partes review. “317.  Settlement. “318.  Decision of the Board. “319.  Appeal. “§ 311. Inter partes review “(a) In General.— Subject Regulations. to the provisions of this chapter, a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent. The Director shall establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review. “(b) Scope.— A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications. “(c) Filing Deadline.— A petition for inter partes review shall be filed after the later of either— “(1) the date that is 9 months after the grant of a patent or issuance of a reissue of a patent; or “(2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review. “§ 312. Petitions “(a) Requirements of Petition.— A petition filed under section 311 may be considered only if— “(1) the petition is accompanied by payment of the fee established by the Director under section 311; “(2) the petition identifies all real parties in interest; “(3) the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including— “(A) copies of patents and printed publications that the petitioner relies upon in support of the petition; and “(B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions; “(4) the petition provides such other information as the Director may require by regulation; and “(5) the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated representative of the patent owner. “(b) Public Availability.— As soon as practicable after the receipt of a petition under section 311, the Director shall make the petition available to the public. “§ 313. Preliminary response to petition   “If an inter partes review petition is filed under section 311, the patent owner shall have the right to file a preliminary response to the petition, within a time period set by the Director, that sets forth reasons why no inter partes review should be instituted based upon the failure of the petition to meet any requirement of this chapter. “§ 314. Institution of inter partes review “(a) Threshold.— The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. “(b) Timing.— The Director shall determine whether to institute an inter partes review under this chapter pursuant to a petition filed under section 311 within 3 months after— “(1) receiving a preliminary response to the petition under section 313; or “(2) if no such preliminary response is filed, the last date on which such response may be filed. “(c) Notice.— The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a), and shall make such notice available to the public as soon as is practicable. Such notice shall include the date on which the review shall commence. “(d) No Appeal.— The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable. “§ 315. Relation to other proceedings or actions “(a) Infringer’s Civil Action.— “(1) Inter partes review barred by civil action.— An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent. “(2) Stay of civil action.— If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for inter partes review of the patent, that civil action shall be automatically stayed until either— “(A) the patent owner moves the court to lift the stay; “(B) the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or “(C) the petitioner or real party in interest moves the court to dismiss the civil action. “(3) Treatment of counterclaim.— A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection. “(b) Patent Owner’s Action.— An Deadline. inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c). “(c) Joinder.— If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. “(d) Multiple Proceedings.— Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding. “(e) Estoppel.— “(1) Proceedings before the office.— The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review. “(2) Civil actions and other proceedings.— The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review. “§ 316. Conduct of inter partes review “(a) Regulations.— The Director shall prescribe regulations— “(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion; “(2) setting forth the standards for the showing of sufficient grounds to institute a review under section 314(a); “(3) establishing procedures for the submission of supplemental information after the petition is filed; “(4) establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title; “(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to— “(A) the deposition of witnesses submitting affidavits or declarations; and “(B) what is otherwise necessary in the interest of justice; “(6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding; “(7) providing for protective orders governing the exchange and submission of confidential information; “(8) providing for the filing by the patent owner of a response to the petition under section 313 after an inter partes review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response; “(9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent; “(10) providing either party with the right to an oral hearing as part of the proceeding; “(11) requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 315(c); “(12) setting a time period for requesting joinder under section 315(c); and “(13) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director. “(b) Considerations.— In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter. “(c) Patent Trial and Appeal Board.— The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each inter partes review instituted under this chapter. “(d) Amendment of the Patent.— “(1) In general.— During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: “(A) Cancel any challenged patent claim. “(B) For each challenged claim, propose a reasonable number of substitute claims. “(2) Additional motions.— Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the Director. “(3) Scope of claims.— An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter. “(e) Evidentiary Standards.— In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence. “§ 317. Settlement “(a) In General.— An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that inter partes review. If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a). “(b) Agreements in Writing.— Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. Confidentiality. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause. “§ 318. Decision of the Board “(a) Final Written Decision.— If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d). “(b) Certificate.— If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal 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 by operation of the certificate any new or amended claim determined to be patentable. “(c) Intervening Rights.— Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review under this chapter shall have the same effect as that specified in section 252 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, before the issuance of a certificate under subsection (b). “(d) Data on Length of Review.— The Public information. Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each inter partes review. “§ 319. Appeal   “A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a) may appeal the decision pursuant to sections 141 through 144. Any party to the inter partes review shall have the right to be a party to the appeal.” .

6. 2013

   Pub. L. 112–274 § 1(d)(2) · 126 Stat. 2456

   Struck · 35 U.S.C. § 311(c)(1)

   Pub. L. 112–274 struck out “or issuance of a reissue of a patent” after “grant of a patent”

   Source evidence

   Code amendment note
   Subsec. (c)(1). Pub. L. 112–274 struck out “or issuance of a reissue of a patent” after “grant of a patent”.

   Enacted provision · exact public law section
   (2) Reissue.— Section 311(c)(1) of title 35, United States Code, is amended by striking “or issuance of a reissue of a patent”.

   Effective date note
   Amendment by Pub. L. 112–274 effective Jan. 14, 2013, and applicable to proceedings commenced on or after such date, see section 1(n) of Pub. L. 112–274, set out as a note under section 5 of this title.

5 of 6 references resolved to an enrolled provision · 1 partial