35 U.S.C. § 134 — Appeal to the Patent Trial and Appeal

Page 61 TITLE 35—PATENTS § 134 therein, of which notice has been given or mailed to the applicant, or within such shorter time, not less than thirty days, as fixed by the Director in such action, the application shall be regarded as abandoned by the parties thereto. (July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–211, title II, § 202(b)(5), Dec. 18, 2012, 126 Stat. 1536.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 37 (R.S. 4894, amended (1) Mar. 3, 1897, ch. 391, § 4, 29 Stat. 692, 693, (2) July 6, 1916, ch. 225, § 1, 39 Stat. 345, 347–8, (3) Mar. 2, 1927, ch. 273, § 1, 44 Stat. 1335, (4) Aug. 7, 1939, ch. 568, 53 Stat. 1264). The opening clause of the corresponding section of existing statute is omitted as having no present day meaning or value and the last two sentences are omit- ted for inclusion in section 267. The notice is stated as given or mailed. Language is revised. Editorial Notes AMENDMENTS 2012—Pub. L. 112–211 struck out ‘‘, unless it be shown to the satisfaction of the Director that such delay was unavoidable’’ before period at end. 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113. See 1999 Amend- ment note below. 1999—Pub. L. 106–113, as amended by Pub. L. 107–273, substituted ‘‘Director’’ for ‘‘Commissioner’’ in two places. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2012 AMENDMENT Amendment by Pub. L. 112–211 effective on the date that is 1 year after Dec. 18, 2012, applicable to patents issued before, on, or after that effective date and patent applications pending on or filed after that effective date, and not effective with respect to patents in litiga- tion commenced before that effective date, see section 203 of Pub. L. 112–211, set out as an Effective Date note under section 27 of this title. EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title. § 134. Appeal to the Patent Trial and Appeal Board (a) PATENT APPLICANT.—An applicant for a patent, any of whose claims has been twice re- jected, may appeal from the decision of the pri- mary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.—A patent owner in a reex- amination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98–622, title II, § 204(b)(1), Nov. 8, 1984, 98 Stat. 3388; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4605(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A–570; Pub. L. 107–273, div. C, title III, §§ 13106(b), 13202(b)(1), Nov. 2, 2002, 116 Stat. 1901; Pub. L. 112–29, §§ 3(j)(1), (3), 7(b), Sept. 16, 2011, 125 Stat. 290, 313.) HISTORICAL AND REVISION NOTES Based on Title 35, U.S.C., 1946 ed., § 57 (R.S. 4909 amended (1) Mar. 2, 1927, ch. 273, § 5, 44 Stat. 1335, 1336, (2) Aug. 5, 1939, ch. 451, § 2, 53 Stat. 1212). Reference to reissues is omitted in view of the gen- eral provision in section 251. Minor changes in language are made. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29, § 3(j)(3), amended section catch- line generally. Prior to amendment, section catchline read as follows: ‘‘Appeal to the Board of Patent Appeals and Interferences’’. Subsec. (a). Pub. L. 112–29, § 3(j)(1), substituted ‘‘Pat- ent Trial and Appeal Board’’ for ‘‘Board of Patent Ap- peals and Interferences’’. Subsec. (b). Pub. L. 112–29, § 7(b)(1), substituted ‘‘a re- examination’’ for ‘‘any reexamination proceeding’’. Pub. L. 112–29, § 3(j)(1), substituted ‘‘Patent Trial and Appeal Board’’ for ‘‘Board of Patent Appeals and Inter- ferences’’. Subsec. (c). Pub. L. 112–29, § 7(b)(2), struck out subsec. (c). Prior to amendment, text read as follows: ‘‘A third- party requester in an inter partes proceeding may ap- peal to the Board of Patent Appeals and Interferences from the final decision of the primary examiner favor- able to the patentability of any original or proposed amended or new claim of a patent, having once paid the fee for such appeal.’’ 2002—Subsecs. (a), (b). Pub. L. 107–273, § 13202(b)(1), substituted ‘‘primary examiner’’ for ‘‘administrative patent judge’’. Subsec. (c). Pub. L. 107–273, § 13202(b)(1), substituted ‘‘primary examiner’’ for ‘‘administrative patent judge’’. Pub. L. 107–273, § 13106(b), struck out at end ‘‘The third-party requester may not appeal the decision of the Board of Patent Appeals and Interferences.’’ 1999—Pub. L. 106–113 reenacted section catchline without change and amended text generally. Prior to amendment, text read as follows: ‘‘An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Board of Patent Appeals and Interferences, hav- ing once paid the fee for such appeal.’’ 1984—Pub. L. 98–622 substituted ‘‘Patent Appeals and Interferences’’ for ‘‘Appeals’’ in section catchline and text. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by section 3(j)(1), (3) of Pub. L. 112–29 ef- fective upon the expiration of the 18-month period be- ginning on Sept. 16, 2011, and applicable to certain ap- plications for patent and any patents issuing thereon, see section 3(n) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title. Amendment by section 7(b) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, with certain exceptions, see section 7(e) of Pub. L. 112–29, set out as a note under section 6 of this title. EFFECTIVE DATE OF 2002 AMENDMENT Pub. L. 107–273, div. C, title III, § 13106(d), Nov. 2, 2002, 116 Stat. 1901, provided that: ‘‘The amendments made by this section [amending this section and sections 141 and 315 of this title] apply with respect to any reexam- ination proceeding commenced on or after the date of enactment of this Act [Nov. 2, 2002].’’ Page 62 TITLE 35—PATENTS § 135 EFFECTIVE DATE OF 1999 AMENDMENT Pub. L. 107–273, div. C, title III, § 13202(d), Nov. 2, 2002, 116 Stat. 1902, provided that: ‘‘The amendments made by section 4605(b), (c), and (e) of the Intellectual Prop- erty and Communications Omnibus Reform Act, as en- acted by section 1000(a)(9) of Public Law 106–113 [amending this section and sections 141 and 145 of this title], shall apply to any reexamination filed in the United States Patent and Trademark Office on or after the date of enactment of Public Law 106–113 [Nov. 29, 1999].’’ Amendment by Pub. L. 106–113 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 a note under section 41 of this title. EFFECTIVE DATE OF 1984 AMENDMENT Amendment by Pub. L. 98–622 effective three months after Nov. 8, 1984, see section 207 of Pub. L. 98–622, set out as a note under section 41 of this title. § 135. Derivation proceedings (a) INSTITUTION OF PROCEEDING.— (1) IN GENERAL.—An applicant for patent may file a petition with respect to an inven- tion to institute a derivation proceeding in the Office. The petition shall set forth with particularity the basis for finding that an in- dividual named in an earlier application as the inventor or a joint inventor derived such in- vention from an individual named in the peti- tioner’s application as the inventor or a joint inventor and, without authorization, the ear- lier application claiming such invention was filed. Whenever the Director determines that a petition filed under this subsection dem- onstrates that the standards for instituting a derivation proceeding are met, the Director may institute a derivation proceeding. (2) TIME FOR FILING.—A petition under this section with respect to an invention that is the same or substantially the same invention as a claim contained in a patent issued on an earlier application, or contained in an earlier application when published or deemed pub- lished under section 122(b), may not be filed unless such petition is filed during the 1-year period following the date on which the patent containing such claim was granted or the ear- lier application containing such claim was published, whichever is earlier. (3) EARLIER APPLICATION.—For purposes of this section, an application shall not be deemed to be an earlier application with re- spect to an invention, relative to another ap- plication, unless a claim to the invention was or could have been made in such application having an effective filing date that is earlier than the effective filing date of any claim to the invention that was or could have been made in such other application. (4) NO APPEAL.—A determination by the Di- rector whether to institute a derivation pro- ceeding under paragraph (1) shall be final and not appealable. (b) DETERMINATION BY PATENT TRIAL AND AP- PEAL BOARD.—In a derivation proceeding insti- tuted under subsection (a), the Patent Trial and Appeal Board shall determine whether an inven- tor named in the earlier application derived the claimed invention from an inventor named in the petitioner’s application and, without au- thorization, the earlier application claiming such invention was filed. In appropriate cir- cumstances, the Patent Trial and Appeal Board may correct the naming of the inventor in any application or patent at issue. The Director shall prescribe regulations setting forth stand- ards for the conduct of derivation proceedings, including requiring parties to provide sufficient evidence to prove and rebut a claim of deriva- tion. (c) DEFERRAL OF DECISION.—The Patent Trial and Appeal Board may defer action on a petition for a derivation proceeding until the expiration of the 3-month period beginning on the date on which the Director issues a patent that includes the claimed invention that is the subject of the petition. The Patent Trial and Appeal Board also may defer action on a petition for a deriva- tion proceeding, or stay the proceeding after it has been instituted, until the termination of a proceeding under chapter 30, 31, or 32 involving the patent of the earlier applicant. (d) EFFECT OF FINAL DECISION.—The final deci- sion of the Patent Trial and Appeal Board, if ad- verse to claims in an application for patent, shall constitute the final refusal by the Office on those claims. The final decision of the Patent Trial and Appeal Board, if adverse to claims in a patent, shall, if no appeal or other review of the decision has been or can be taken or had, constitute cancellation of those claims, and no- tice of such cancellation shall be endorsed on copies of the patent distributed after such can- cellation. (e) SETTLEMENT.—Parties to a proceeding in- stituted under subsection (a) may terminate the proceeding by filing a written statement reflect- ing the agreement of the parties as to the cor- rect inventor of the claimed invention in dis- pute. Unless the Patent Trial and Appeal Board finds the agreement to be inconsistent with the evidence of record, if any, it shall take action consistent with the agreement. Any written set- tlement or understanding of the parties shall be filed with the Director. At the request of a party to the proceeding, the agreement or under- standing shall be treated as business confiden- tial information, shall be kept separate from the file of the involved patents or applications, and shall be made available only to Government agencies on written request, or to any person on a showing of good cause. (f) ARBITRATION.—Parties to a proceeding in- stituted under subsection (a) may, within such time as may be specified by the Director by reg- ulation, determine such contest or any aspect thereof by arbitration. Such arbitration shall be governed by the provisions of title 9, to the ex- tent such title is not inconsistent with this sec- tion. The parties shall give notice of any arbi- tration award to the Director, and such award shall, as between the parties to the arbitration, be dispositive of the issues to which it relates. The arbitration award shall be unenforceable until such notice is given. Nothing in this sub- section shall preclude the Director from deter- mining the patentability of the claimed inven- tions involved in the proceeding. (July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 87–831, Oct. 15, 1962, 76 Stat. 958; Pub. L. 93–596, § 1, Jan.