PRIA, Government Policy, Made Personal

Summary

The Director of the Patent Office must write rules for how inter partes reviews work. The rules must make case files public unless someone asks to seal a document and a judge has not yet decided. The rules must say how to start a review, how to send extra information after a petition, and how these reviews fit with other patent cases. Discovery is limited mostly to taking testimony from people who filed affidavits or declarations and to what is needed for fairness. The rules must allow protective orders for secret information, punish misuse of the process or discovery, let the patent owner answer with evidence and expert statements, let either side ask for an oral hearing, and give the petitioner at least one chance to file written comments. The Director must set a deadline so the final decision comes within 1 year after a review starts, but may extend that by up to 6 months for good cause and may set times for joinder requests. The Patent Trial and Appeal Board must run each review. During a review, the patent owner may file one motion to amend: cancel challenged claims or offer a reasonable number of replacement claims. More amendment motions can be allowed if both sides agree to help settle or if the rules allow it. Any amendment cannot broaden claims or add new subject matter. The petitioner must prove unpatentability by a preponderance of the evidence. The Director must consider how the rules affect the economy, the patent system’s fairness, Office efficiency, and the ability to finish reviews on time.

Title 35, §316

Patents, Source: USLM XML via OLRC

(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.

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