§316 — Title 35 Patents | U.S. Code

Summary

The Director must create clear rules for how inter partes reviews work. The rules must make the case file public unless someone files a motion to keep a paper sealed while the motion is decided. The rules must say how to start a review, how to add extra information after a petition, how the review fits with other patent matters, and limits on discovery (mainly depositions of people who gave written statements and whatever else is needed in the interest of justice). The rules must allow protective orders for secret info, punish misuse of the process, let the patent owner file a response with affidavits or expert statements, let the patent owner ask once to cancel claims or propose a reasonable number of replacement claims (and make any amendment info public), give either side a right to an oral hearing, set a time to ask to join a case, and give the petitioner at least one chance to file written comments. The final decision must be issued within 1 year after the Director starts the review, but the Director may extend that by up to 6 months for good cause and may change timing for joined cases. The Director must think about the economy, patent system integrity, Office efficiency, and the Office’s ability to finish reviews on time when making the rules. The Patent Trial and Appeal Board will run each review. The patent owner may file only 1 motion to amend during a review unless both sides agree or the rules allow more. Any amendment cannot broaden claims or add new material. The petitioner must prove unpatentability by a preponderance of the evidence (more likely than not).

Title 35, §316

Patents — Source: USLM XML via OLRC

(a)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)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)The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each inter partes review instituted under this chapter.

(d)(1)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 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)An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.

(e)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.

Notes & Related Subsidiaries

Editorial Notes

Amendments

2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to certificate of patentability, unpatentability, and claim cancellation. 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.

§316 Conduct of Inter Partes Review

Summary

Title 35, §316

Notes & Related Subsidiaries

Editorial Notes

Amendments

Statutory Notes and Related Subsidiaries

Effective Date

Effective Date

Effective Date

Effective Date

Citations & Metadata