§318 — Title 35 Patents | U.S. Code

Summary

The Board must issue a final decision in any instituted inter partes review on whether the challenged claims and any new claims under section 316(d) are patentable. After appeals end or appeal period expires, the Director must issue and publish a certificate cancelling unpatentable claims, confirming patentable claims, and adding new or amended claims to the patent. Those added claims have the same effect as reissued claims under section 252 for anyone who made, purchased, used, imported, or substantially prepared to do so in the U.S. before the certificate. The Office must publish how long reviews took.

Title 35, §318

Patents — Source: USLM XML via OLRC

(a)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)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)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)The 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.

Notes & Related Subsidiaries

Editorial Notes

Amendments

2011—Pub. L. 112–29 amended section generally. Prior to amendment, text read as follows: “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.” 2002—Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, which enacted this section.

Statutory Notes and Related Subsidiaries

Effective Date

of 2011 AmendmentAmendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent issued before, on, or after that

Effective Date

, with provisions for graduated implementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title.

Effective Date

Section 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, § 4608(a)] of Pub. L. 106–113, set out as an

Effective Date

of 1999 Amendment note under section 41 of this title.

§318 Decision of the Board

Summary

Title 35, §318

Notes & Related Subsidiaries

Editorial Notes

Amendments

Statutory Notes and Related Subsidiaries

Effective Date

Effective Date

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Citations & Metadata