§327 — Title 35 Patents | U.S. Code

Summary

A post-grant review must end for a petitioner if the petitioner and the patent owner both ask for it, unless the Patent Office already decided the case on the merits. If the review ends that way, the petitioner and their real party in interest or privy will not be subject to estoppel under section 325(e) because they started the review. If no petitioner is left in the review, the Patent Office can either stop the review or go forward and issue a final written decision under section 328(a). Any deal between the patent owner and the petitioner to end the review must be written and filed with the Patent Office before the review ends. If a party asks, the agreement can be treated as confidential business information, kept separate from the patent file, and shown only to federal agencies on written request or to others who show good cause.

Title 35, §327

Patents — Source: USLM XML via OLRC

(a)A post-grant 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 post-grant review is terminated with respect to a petitioner under this section, no estoppel under section 325(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 post-grant review. If no petitioner remains in the post-grant review, the Office may terminate the post-grant review or proceed to a final written decision under section 328(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 a post-grant 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 post-grant 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

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.

§327 Settlement

Summary

Title 35, §327

Notes & Related Subsidiaries

Statutory Notes and Related Subsidiaries

Effective Date

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