§317 — Title 35 Patents | U.S. Code

Summary

If a petitioner and the patent owner both ask to end an inter partes review, the Patent Office must end the review for that petitioner unless the Office already decided the case on the merits before the request was filed. If the review is ended for that petitioner, estoppel under section 315(e) does not apply to the petitioner or their real party in interest or privy. If no petitioner remains, the Office may end the review or issue a final written decision under section 318(a). Any agreement between the patent owner and a petitioner to end the review must be in writing, and a true copy must be filed with the Office before the review ends. At a party’s request, the agreement will be treated as business confidential, kept separate from the patent file, and shown only to federal agencies by written request or to others who show good cause.

Title 35, §317

Patents — Source: USLM XML via OLRC

(a)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)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. 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.

Notes & Related Subsidiaries

Editorial Notes

Amendments

2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to restriction on subsequent request for inter partes reexamination. 2002—Pub. L. 107–273, § 13202(c)(1), made technical correction to directory language of Pub. L. 106–113, which enacted this section. Subsec. (a). Pub. L. 107–273, § 13202(a)(5)(A), substituted “third-party requester nor its privies” for “patent owner nor the third-party requester, if any, nor privies of either”. Subsec. (b). Pub. L. 107–273, § 13202(a)(5)(B), struck out “United States Code,” after “title 28,”.

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.

§317 Settlement

Summary

Title 35, §317

Notes & Related Subsidiaries

Editorial Notes

Amendments

Statutory Notes and Related Subsidiaries

Effective Date

Effective Date

Effective Date

Effective Date

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