35 U.S.C. § 315 — Relation to other proceedings or actions

Page 127 TITLE 35—PATENTS § 315 Editorial Notes AMENDMENTS 2011—Pub. L. 112–29, § 6(c)(3)(A)(ii), which directed substitution of ‘‘it has been shown that there is a rea- sonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request’’ for ‘‘a substantial new question of patent- ability affecting a claim of the patent is raised’’, was executed by making the substitution for ‘‘a substantial new question of patentability affecting a claim of a patent is raised’’, to reflect the probable intent of Con- gress. Pub. L. 112–29, § 6(a), amended section generally. Prior to amendment, text read as follows: ‘‘If, in a deter- mination made under section 312(a), the Director finds that it has been shown that there is a reasonable likeli- hood that the requester would prevail with respect to at least 1 of the claims challenged in the request, the determination shall include an order for inter partes reexamination of the patent for resolution of the ques- tion. The order may be accompanied by the initial ac- tion of the Patent and Trademark Office on the merits of the inter partes reexamination conducted in accord- ance with section 314.’’ 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 section 6(a) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent issued be- fore, on, or after that effective date, with provisions for graduated implementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title. Amendment by section 6(c)(3)(A)(ii) of Pub. L. 112–29 effective Sept. 16, 2011, and applicable to requests for inter partes reexamination filed on or after Sept. 16, 2011, but before the effective date set forth in section 6(c)(2)(A) of Pub. L. 112–29, with continued applicability of prior provisions, see section 6(c)(3)(B), (C) of Pub. L. 112–29, set out as a note under section 312 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. § 314. Institution of inter partes review (a) THRESHOLD.—The Director may not author- ize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the pe- titioner would prevail with respect to at least 1 of the claims challenged in the petition. (b) TIMING.—The Director shall determine whether to institute an inter partes review under this chapter pursuant to a petition filed under section 311 within 3 months after— (1) receiving a preliminary response to the petition under section 313; or (2) if no such preliminary response is filed, the last date on which such response may be filed. (c) NOTICE.—The Director shall notify the peti- tioner and patent owner, in writing, of the Di- rector’s determination under subsection (a), 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. (d) NO APPEAL.—The determination by the Di- rector whether to institute an inter partes re- view under this section shall be final and non- appealable. (Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–568; amended Pub. L. 107–273, div. C, title III, § 13202(a)(3), (c)(1), Nov. 2, 2002, 116 Stat. 1901, 1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 300.) Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to conduct of inter partes reexamination proceedings. 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. (b). Pub. L. 107–273, § 13202(a)(3), redesignated par. (2) as (1), substituted ‘‘the Office shall send to the third-party requester a copy’’ for ‘‘the third-party re- quester shall receive a copy’’, redesignated par. (3) as (2), and struck out former par. (1) which read as fol- lows: ‘‘This subsection shall apply to any inter partes reexamination proceeding in which the order for inter partes reexamination is based upon a request by a third-party requester.’’ 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. § 315. Relation to other proceedings or actions (a) INFRINGER’S CIVIL ACTION.— (1) INTER PARTES REVIEW BARRED BY CIVIL AC- TION.—An inter partes review may not be in- stituted if, before the date on which the peti- tion 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 pat- ent. (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 inter partes 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 Page 128 TITLE 35—PATENTS § 316 (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) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition re- questing the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a re- quest for joinder under subsection (c). (c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a pe- tition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314. (d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a), 251, and 252, and chapter 30, dur- ing the pendency of an inter partes review, if an- other proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, includ- ing providing for stay, transfer, consolidation, or termination of any such matter or pro- ceeding. (e) ESTOPPEL.— (1) PROCEEDINGS BEFORE THE OFFICE.—The pe- titioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(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 inter partes review. (2) CIVIL ACTIONS AND OTHER PROCEEDINGS.— The petitioner in an inter partes review of a claim in a patent under this chapter that re- sults in a final written decision under section 318(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 inter partes review. (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, §§ 13106(a), 13202(a)(4), (c)(1), Nov. 2, 2002, 116 Stat. 1900–1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 300.) 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. AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to appeals. 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. (b). Pub. L. 107–273, § 13106(a), reenacted head- ing without change and amended text generally. Prior to amendment, text read as follows: ‘‘A third-party re- quester may— ‘‘(1) appeal under the provisions of section 134 with respect to any final decision favorable to the patent- ability of any original or proposed amended or new claim of the patent; or ‘‘(2) be a party to any appeal taken by the patent owner under the provisions of section 134, subject to subsection (c).’’ Subsec. (c). Pub. L. 107–273, § 13202(a)(4), 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 OF 2002 AMENDMENT Amendment by section 13106(a) of Pub. L. 107–273 ap- plicable with respect to any reexamination proceeding commenced on or after Nov. 2, 2002, see section 13106(d) of Pub. L. 107–273, set out as a note under section 134 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. ESTOPPEL EFFECT OF REEXAMINATION Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, subtitle F, § 4607], Nov. 29, 1999, 113 Stat. 1536, 1501A–571, provided for estoppel from challenging certain facts determined during inter partes reexamination under former section 311 of this title and contained a severability provision. § 316. Conduct of inter partes 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 section 314(a); (3) establishing procedures for the submis- sion of supplemental information after the pe- tition is filed; (4) establishing and governing inter partes 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—