§325 — Title 35 Patents | U.S. Code

Summary

A post-grant review cannot start if the person who asked for it, or someone on their side, already sued in court to challenge the same patent before filing the review. If the court case is filed after the review petition, that court case is automatically paused until the patent owner asks to lift the pause, the patent owner files a suit or counterclaim saying the petitioner infringed, or the petitioner asks the court to dismiss the case. A counterclaim does not count as starting a separate court challenge. If an infringement suit is filed within 3 months after the patent is granted, a court may not delay deciding a patent owner’s request for a temporary injunction just because a post-grant review was filed or begun. If more than one valid petition is filed against the same patent and the Patent Office decides more than one should go forward, the Director may merge them into one review. While a post-grant review is going on, the Director can decide how other Office proceedings about the same patent proceed, including pausing, moving, combining, or ending them, and may refuse to start a new Office proceeding if the same or basically the same prior art or arguments were already shown. If a post-grant review ends with a final written decision, the petitioner and people closely related to them cannot later challenge that claim before the Office, in federal court, or at the International Trade Commission on any ground they raised or could have raised in the review. A review also cannot start if it asks to cancel a claim in a reissue patent that is identical to or narrower than an original claim and the time limit in the rules would have barred a review of the original patent.

Title 35, §325

Patents — Source: USLM XML via OLRC

(a)(1)A post-grant review may not be instituted under this chapter 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)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 post-grant 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)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)If a civil action alleging infringement of a patent is filed within 3 months after the date on which the patent is granted, the court may not stay its consideration of the patent owner’s motion for a preliminary injunction against infringement of the patent on the basis that a petition for post-grant review has been filed under this chapter or that such a post-grant review has been instituted under this chapter.

(c)If more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a post-grant review under section 324, the Director may consolidate such reviews into a single post-grant review.

(d)Notwithstanding section 135(a), 251, and 252, and chapter 30, during the pendency of any post-grant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.

(e)(1)The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(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 post-grant review.

(2)The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(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 post-grant review.

(f)A post-grant review may not be instituted under this chapter if the petition requests cancellation of a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued, and the time limitations in section 321(c) would bar filing a petition for a post-grant review for such original patent.

Notes & Related Subsidiaries

Editorial Notes

References in Text

section 337 of the Tariff Act of 1930, referred to in subsec. (e)(2), is classified to section 1337 of Title 19, Customs Duties.

Statutory Notes and Related Subsidiaries

Effective Date

Section effective upon the expiration of the 1-year period beginning Sept. 16, 2011, and applicable only to patents described in section 3(n)(1) of Pub. L. 112–29 (35 U.S.C. 100 note), with certain exceptions and limitations, see section 6(f)(2), (3) of Pub. L. 112–29, set out as a note under section 321 of this title.

§325 Relation to Other Proceedings or Actions