35 U.S.C. § 325 — Relation to other proceedings or actions

Page 133 TITLE 35—PATENTS § 325 the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would dem- onstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable. (b) ADDITIONAL GROUNDS.—The determination required under subsection (a) may also be satis- fied by a showing that the petition raises a novel or unsettled legal question that is impor- tant to other patents or patent applications. (c) TIMING.—The Director shall determine whether to institute a post-grant review under this chapter pursuant to a petition filed under section 321 within 3 months after— (1) receiving a preliminary response to the petition under section 323; or (2) if no such preliminary response is filed, the last date on which such response may be filed. (d) NOTICE.—The Director shall notify the peti- tioner and patent owner, in writing, of the Di- rector’s determination under subsection (a) or (b), and shall make such notice available to the public as soon as is practicable. Such notice shall include the date on which the review shall commence. (e) NO APPEAL.—The determination by the Di- rector whether to institute a post-grant review under this section shall be final and nonappeal- able. (Added Pub. L. 112–29, § 6(d), Sept. 16, 2011, 125 Stat. 306.) Statutory Notes and Related Subsidiaries EFFECTIVE DATE Section effective upon the expiration of the 1-year pe- riod beginning Sept. 16, 2011, and applicable only to pat- ents described in section 3(n)(1) of Pub. L. 112–29 (35 U.S.C. 100 note), with certain exceptions and limita- tions, 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 (a) INFRINGER’S CIVIL ACTION.— (1) POST-GRANT REVIEW BARRED BY CIVIL AC- TION.—A post-grant review may not be insti- tuted 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) STAY OF CIVIL ACTION.—If the petitioner or real party in interest files a civil action challenging the validity of a claim of the pat- ent on or after the date on which the peti- tioner files a petition for post-grant review of the patent, that civil action shall be auto- matically 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 pat- ent; or (C) the petitioner or real party in interest moves the court to dismiss the civil action. (3) TREATMENT OF COUNTERCLAIM.—A coun- terclaim 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) PRELIMINARY INJUNCTIONS.—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 consider- ation of the patent owner’s motion for a prelimi- nary injunction against infringement of the pat- ent 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) JOINDER.—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) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a), 251, and 252, and chapter 30, dur- ing the pendency of any post-grant review under this chapter, if another proceeding or matter in- volving the patent is before the Office, the Di- rector 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 Direc- tor may take into account whether, and reject the petition or request because, the same or sub- stantially the same prior art or arguments pre- viously were presented to the Office. (e) ESTOPPEL.— (1) PROCEEDINGS BEFORE THE OFFICE.—The pe- titioner 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 peti- tioner, may not request or maintain a pro- ceeding 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) CIVIL ACTIONS AND OTHER PROCEEDINGS.— The petitioner in a post-grant review of a claim in a patent under this chapter that re- sults 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 sec- tion 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 peti- tioner raised or reasonably could have raised during that post-grant review. (f) REISSUE PATENTS.—A post-grant review may not be instituted under this chapter if the petition requests cancellation of a claim in a re- issue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued, and the time limi- tations in section 321(c) would bar filing a peti- tion for a post-grant review for such original patent. (Added Pub. L. 112–29, § 6(d), Sept. 16, 2011, 125 Stat. 307.) Page 134 TITLE 35—PATENTS § 326 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 pe- riod beginning Sept. 16, 2011, and applicable only to pat- ents described in section 3(n)(1) of Pub. L. 112–29 (35 U.S.C. 100 note), with certain exceptions and limita- tions, see section 6(f)(2), (3) of Pub. L. 112–29, set out as a note under section 321 of this title. § 326. Conduct of post-grant review (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 docu- ment 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 show- ing of sufficient grounds to institute a review under subsections (a) and (b) of section 324; (3) establishing procedures for the submis- sion of supplemental information after the pe- tition is filed; (4) establishing and governing a post-grant 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 evi- dence directly related to factual assertions ad- vanced by either party in the proceeding; (6) prescribing sanctions for abuse of dis- covery, abuse of process, or any other im- proper use of the proceeding, such as to harass or to cause unnecessary delay or an unneces- sary 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 sec- tion 323 after a post-grant review has been in- stituted, 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 can- cel 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 any post-grant review be issued not later than 1 year after the date on which the Director no- tices the institution of a proceeding 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 325(c); and (12) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director. (b) CONSIDERATIONS.—In prescribing regula- tions under this section, the Director shall con- sider 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 pro- ceedings instituted under this chapter. (c) PATENT TRIAL AND APPEAL BOARD.—The Patent Trial and Appeal Board shall, in accord- ance with section 6, conduct each post-grant re- view instituted under this chapter. (d) AMENDMENT OF THE PATENT.— (1) IN GENERAL.—During a post-grant 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 mo- tions 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 327, or upon the re- quest of the patent owner for good cause shown. (3) SCOPE OF CLAIMS.—An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new mat- ter. (e) EVIDENTIARY STANDARDS.—In a post-grant review instituted under this chapter, the peti- tioner shall have the burden of proving a propo- sition of unpatentability by a preponderance of the evidence. (Added Pub. L. 112–29, § 6(d), Sept. 16, 2011, 125 Stat. 308.) Statutory Notes and Related Subsidiaries EFFECTIVE DATE Section effective upon the expiration of the 1-year pe- riod beginning Sept. 16, 2011, and applicable only to pat- ents described in section 3(n)(1) of Pub. L. 112–29 (35 U.S.C. 100 note), with certain exceptions and limita- tions, see section 6(f)(2), (3) of Pub. L. 112–29, set out as a note under section 321 of this title. § 327. Settlement (a) IN GENERAL.—A post-grant review insti- tuted under this chapter shall be terminated with respect to any petitioner upon the joint re- quest of the petitioner and the patent owner, un- less the Office has decided the merits of the pro- ceeding before the request for termination is filed. If the post-grant review is terminated with respect to a petitioner under this section, no es- toppel 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 peti-