35 U.S.C. § 303 — Determination of issue by Director

Page 122 TITLE 35—PATENTS § 302 son explains in writing the pertinency and manner of applying such prior art to at least one claim of the pat- ent, the citation of such prior art and the explanation thereof will become a part of the official file of the pat- ent. At the written request of the person citing the prior art, his or her identity will be excluded from the patent file and kept confidential.’’ Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Pub. L. 112–29, § 6(g)(3), Sept. 16, 2011, 125 Stat. 312, provided that: ‘‘The amendments made by this sub- section [amending this section] shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent issued before, on, or after that effective date.’’ EFFECTIVE DATE Section effective July 1, 1981, and applicable to pat- ents in force as of July 1, 1981, or issued thereafter, see section 8(b) of Pub. L. 96–517, set out as an Effective Date of 1980 Amendment note under section 41 of this title. § 302. Request for reexamination Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301. The request must be in writing and must be accompanied by pay- ment of a reexamination fee established by the Director pursuant to the provisions of section 41. The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested. Un- less the requesting person is the owner of the patent, the Director promptly will send a copy of the request to the owner of record of the pat- ent. (Added Pub. L. 96–517, § 1, Dec. 12, 1980, 94 Stat. 3015; amended Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(8), (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. 112–29, § 20(j), Sept. 16, 2011, 125 Stat. 335.) Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 struck out ‘‘of this title’’ after ‘‘301’’ and after ‘‘41’’. 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below. 1999—Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, sub- stituted ‘‘Director promptly’’ for ‘‘Commissioner promptly’’. Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(8)], sub- stituted ‘‘Director pursuant’’ for ‘‘Commissioner of Patents pursuant’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 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. EFFECTIVE DATE Section effective July 1, 1981, and applicable to pat- ents in force as of July 1, 1981, or issued thereafter, see section 8(b) of Pub. L. 96–517, set out as an Effective Date of 1980 Amendment note under section 41 of this title. § 303. Determination of issue by Director (a) Within three months following the filing of a request for reexamination under the provi- sions of section 302, the Director will determine whether a substantial new question of patent- ability affecting any claim of the patent con- cerned is raised by the request, with or without consideration of other patents or printed publi- cations. On his own initiative, and any time, the Director may determine whether a substantial new question of patentability is raised by pat- ents and publications discovered by him or cited under the provisions of section 301 or 302. The existence of a substantial new question of pat- entability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Of- fice. (b) A record of the Director’s determination under subsection (a) of this section will be placed in the official file of the patent, and a copy promptly will be given or mailed to the owner of record of the patent and to the person requesting reexamination, if any. (c) A determination by the Director pursuant to subsection (a) of this section that no substan- tial new question of patentability has been raised will be final and nonappealable. Upon such a determination, the Director may refund a portion of the reexamination fee required under section 302. (Added Pub. L. 96–517, § 1, Dec. 12, 1980, 94 Stat. 3015; amended Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(9)(A), (10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, §§ 13105(a), 13206(b)(1), Nov. 2, 2002, 116 Stat. 1900, 1905, 1906; Pub. L. 112–29, §§ 6(h)(1)(A), 20(j), Sept. 16, 2011, 125 Stat. 312, 335.) Editorial Notes AMENDMENTS 2011—Subsec. (a). Pub. L. 112–29, § 20(j), struck out ‘‘of this title’’ after ‘‘section 302’’. Pub. L. 112–29, § 6(h)(1)(A), substituted ‘‘section 301 or 302’’ for ‘‘section 301 of this title’’. Subsec. (c). Pub. L. 112–29, § 20(j), struck out ‘‘of this title’’ after ‘‘section 302’’. 2002—Subsec. (a). Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below. Pub. L. 107–273, § 13105(a), inserted at end ‘‘The exist- ence of a substantial new question of patentability is not precluded by the fact that a patent or printed pub- lication was previously cited by or to the Office or con- sidered by the Office.’’ Subsec. (b). Pub. L. 107–273, § 13206(b)(1)(A), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(ii)]. See 1999 Amendment note below. Subsec. (c). Pub. L. 107–273, § 13206(b)(1)(B), made tech- nical correction to directory language of Pub. L. Page 123 TITLE 35—PATENTS § 305 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below. 1999—Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(i)], substituted ‘‘Director’’ for ‘‘Commis- sioner’’ in section catchline. Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted ‘‘Director’’ for ‘‘Commis- sioner’’ in two places. Subsec. (b). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(ii)], as amended by Pub. L. 107–273, § 13206(b)(1)(A), substituted ‘‘Director’s’’ for ‘‘Commis- sioner’s’’. Subsec. (c). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted ‘‘Director’’ for ‘‘Commis- sioner’’ in two places. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Pub. L. 112–29, § 6(h)(1)(B), Sept. 16, 2011, 125 Stat. 312, provided that: ‘‘The amendment made by this para- graph [amending this section] shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent issued before, on, or after that effective date.’’ Amendment by section 20(j) 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, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title. EFFECTIVE DATE OF 2002 AMENDMENT Pub. L. 107–273, div. C, title III, § 13105(b), Nov. 2, 2002, 116 Stat. 1900, provided that: ‘‘The amendments made by this section [amending this section and section 312 of this title] shall apply with respect to any determina- tion of the Director of the United States Patent and Trademark Office that is made under section 303(a) or [former section] 312(a) [see section 314(a)] of title 35, United States Code, on or after the date of enactment of this Act [Nov. 2, 2002].’’ 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. EFFECTIVE DATE Section effective July 1, 1981, and applicable to pat- ents in force as of July 1, 1981, or issued thereafter, see section 8(b) of Pub. L. 96–517, set out as an Effective Date of 1980 Amendment note under section 41 of this title. § 304. Reexamination order by Director If, in a determination made under the provi- sions of subsection 303(a), the Director finds that a substantial new question of patentability af- fecting any claim of a patent is raised, the de- termination will include an order for reexamina- tion of the patent for resolution of the question. The patent owner will be given a reasonable pe- riod, not less than two months from the date a copy of the determination is given or mailed to him, within which he may file a statement on such question, including any amendment to his patent and new claim or claims he may wish to propose, for consideration in the reexamination. If the patent owner files such a statement, he promptly will serve a copy of it on the person who has requested reexamination under the pro- visions of section 302. Within a period of two months from the date of service, that person may file and have considered in the reexamina- tion a reply to any statement filed by the patent owner. That person promptly will serve on the patent owner a copy of any reply filed. (Added Pub. L. 96–517, § 1, Dec. 12, 1980, 94 Stat. 3016; amended 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. 112–29, § 20(j), Sept. 16, 2011, 125 Stat. 335.) Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 struck out ‘‘of this title’’ after ‘‘303(a)’’ and after ‘‘302’’. 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 section catchline and text. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2011 AMENDMENT Amendment by Pub. L. 112–29 effective upon the expi- ration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 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. EFFECTIVE DATE Section effective July 1, 1981, and applicable to pat- ents in force as of July 1, 1981, or issued thereafter, see section 8(b) of Pub. L. 96–517, set out as an Effective Date of 1980 Amendment note under section 41 of this title. § 305. Conduct of reexamination proceedings After the times for filing the statement and reply provided for by section 304 have expired, reexamination will be conducted according to the procedures established for initial examina- tion under the provisions of sections 132 and 133. In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of section 301, or in re- sponse to a decision adverse to the patentability of a claim of a patent. No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination pro- ceeding under this chapter. All reexamination proceedings under this section, including any appeal to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office. (Added Pub. L. 96–517, § 1, Dec. 12, 1980, 94 Stat. 3016; amended Pub. L. 98–622, title II, § 204(c), Nov. 8, 1984, 98 Stat. 3388; Pub. L. 112–29, §§ 3(j)(1), 20(j), Sept. 16, 2011, 125 Stat. 290, 335.)