35 U.S.C. § 317 — Settlement

Page 129 TITLE 35—PATENTS § 317 (A) the deposition of witnesses submitting affidavits or declarations; and (B) what is otherwise necessary in the in- terest of justice; (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 313 after an inter partes review has been instituted, and requiring that the patent owner file with such response, through affida- vits or declarations, any additional factual evidence and expert opinions on which the pat- ent 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 an inter partes review be issued not later than 1 year after the date on which the Director no- tices the institution of a review 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 315(c); (12) setting a time period for requesting join- der under section 315(c); and (13) 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 inter partes review instituted under this chapter. (d) AMENDMENT OF THE PATENT.— (1) IN GENERAL.—During an inter partes re- view 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 317, or as permitted by regulations prescribed by the Director. (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 an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponder- ance of the evidence. (Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–569; amended Pub. L. 107–273, div. C, title III, § 13202(c)(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 302.) Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to certificate of patent- ability, unpatentability, and claim cancellation. 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113, which enacted this section. 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 any patent issued before, on, or after that effective date, with provisions for graduated im- plementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title. EFFECTIVE DATE Section 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 an Effective Date of 1999 Amendment note under sec- tion 41 of this title. § 317. Settlement (a) IN GENERAL.—An inter partes 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 inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that peti- tioner’s institution of that inter partes review. If no petitioner remains in the inter partes re- view, the Office may terminate the review or proceed to a final written decision under section 318(a). (b) AGREEMENTS IN WRITING.—Any agreement or understanding between the patent owner and a petitioner, including any collateral agree- ments referred to in such agreement or under- standing, made in connection with, or in con- templation of, the termination of an inter partes review under this section shall be in writ- ing and a true copy of such agreement or under- standing shall be filed in the Office before the termination of the inter partes review as be- tween the parties. At the request of a party to the proceeding, the agreement or understanding Page 130 TITLE 35—PATENTS § 318 shall be treated as business confidential infor- mation, shall be kept separate from the file of the involved patents, and shall be made avail- able only to Federal Government agencies on written request, or to any person on a showing of good cause. (Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–570; amended Pub. L. 107–273, div. C, title III, § 13202(a)(5), (c)(1), Nov. 2, 2002, 116 Stat. 1901, 1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 303.) Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to restriction on subse- quent request for inter partes reexamination. 2002—Pub. L. 107–273, § 13202(c)(1), made technical cor- rection to directory language of Pub. L. 106–113, which enacted this section. Subsec. (a). Pub. L. 107–273, § 13202(a)(5)(A), sub- stituted ‘‘third-party requester nor its privies’’ for ‘‘patent owner nor the third-party requester, if any, nor privies of either’’. Subsec. (b). Pub. L. 107–273, § 13202(a)(5)(B), struck out ‘‘United States Code,’’ after ‘‘title 28,’’. 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 any patent issued before, on, or after that effective date, with provisions for graduated im- plementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title. EFFECTIVE DATE Section 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 an Effective Date of 1999 Amendment note under sec- tion 41 of this title. § 318. Decision of the Board (a) FINAL WRITTEN DECISION.—If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d). (b) CERTIFICATE.—If the Patent Trial and Ap- peal Board issues a final written decision under subsection (a) and the time for appeal has ex- pired or any appeal has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the pat- ent determined to be patentable, and incor- porating in the patent by operation of the cer- tificate any new or amended claim determined to be patentable. (c) INTERVENING RIGHTS.—Any proposed amended or new claim determined to be patent- able and incorporated into a patent following an inter partes review under this chapter shall have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, any- thing patented by such proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate under subsection (b). (d) DATA ON LENGTH OF REVIEW.—The Office shall make available to the public data describ- ing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each inter partes re- view. (Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–570; amended Pub. L. 107–273, div. C, title III, § 13202(c)(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 303.) Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, text read as follows: ‘‘Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending deter- mines that a stay would not serve the interests of jus- tice.’’ 2002—Pub. L. 107–273 made technical correction to di- rectory language of Pub. L. 106–113, which enacted this section. 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 any patent issued before, on, or after that effective date, with provisions for graduated im- plementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title. EFFECTIVE DATE Section 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 an Effective Date of 1999 Amendment note under sec- tion 41 of this title. § 319. Appeal A party dissatisfied with the final written de- cision of the Patent Trial and Appeal Board under section 318(a) may appeal the decision pursuant to sections 141 through 144. Any party to the inter partes review shall have the right to be a party to the appeal. (Added Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 304.) Statutory Notes and Related Subsidiaries EFFECTIVE DATE Section effective upon the expiration of the 1-year pe- riod beginning on Sept. 16, 2011, and applicable to any patent issued before, on, or after that effective date, with provisions for graduated implementation, see sec- tion 6(c)(2) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment note under section 311 of this title. CHAPTER 32—POST-GRANT REVIEW Sec. 321. Post-grant review.