35 U.S.C. § 301 — Citation of prior art and written state-

Page 121 TITLE 35—PATENTS § 301 action or trial in which an act of infringement under section 271(e)(2) has been pled, parties that are accused infringers may be joined in one action as defendants or counterclaim defend- ants, or have their actions consolidated for trial, only if— (1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of trans- actions or occurrences relating to the making, using, importing into the United States, offer- ing for sale, or selling of the same accused product or process; and (2) questions of fact common to all defend- ants or counterclaim defendants will arise in the action. (b) ALLEGATIONS INSUFFICIENT FOR JOINDER.— For purposes of this subsection, accused infring- ers may not be joined in one action as defend- ants or counterclaim defendants, or have their actions consolidated for trial, based solely on al- legations that they each have infringed the pat- ent or patents in suit. (c) WAIVER.—A party that is an accused in- fringer may waive the limitations set forth in this section with respect to that party. (Added Pub. L. 112–29, § 19(d)(1), Sept. 16, 2011, 125 Stat. 332; amended Pub. L. 112–274, § 1(c), Jan. 14, 2013, 126 Stat. 2456.) Editorial Notes AMENDMENTS 2013—Subsec. (a). Pub. L. 112–274 substituted ‘‘only if’’ for ‘‘or counterclaim defendants only if’’ in introduc- tory provisions. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 2013 AMENDMENT Amendment by Pub. L. 112–274 effective Jan. 14, 2013, and applicable to proceedings commenced on or after such date, see section 1(n) of Pub. L. 112–274, set out as a note under section 5 of this title. EFFECTIVE DATE Section applicable to any civil action commenced on or after Sept. 16, 2011, see section 19(e) of Pub. L. 112–29, set out as an Effective Date of 2011 Amendment note under section 1295 of Title 28, Judiciary and Judicial Procedure. CHAPTER 30—PRIOR ART CITATIONS TO OF- FICE AND EX PARTE REEXAMINATION OF PATENTS Sec. 301. Citation of prior art and written statements. 302. Request for reexamination. 303. Determination of issue by Director. 304. Reexamination order by Director. 305. Conduct of reexamination proceedings. 306. Appeal. 307. Certificate of patentability, unpatentability, and claim cancellation. Editorial Notes AMENDMENTS 2011—Pub. L. 112–29, § 6(g)(2), Sept. 16, 2011, 125 Stat. 312, amended item 301 generally, substituting ‘‘Citation of prior art and written statements’’ for ‘‘Citation of prior art’’. 2002—Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906, made technical correction to directory language of Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582. See 1999 Amendment note below. 1999—Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582, as amended by Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906, substituted ‘‘Director’’ for ‘‘Commissioner’’ in item 304. Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4602, 4732(a)(9)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–567, 1501A–582, inserted ‘‘EX PARTE’’ before ‘‘REEXAMINA- TION’’ in chapter heading and substituted ‘‘Director’’ for ‘‘Commissioner’’ in item 303. § 301. Citation of prior art and written state- ments (a) IN GENERAL.—Any person at any time may cite to the Office in writing— (1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent; or (2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent. (b) OFFICIAL FILE.—If the person citing prior art or written statements pursuant to sub- section (a) explains in writing the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of the official file of the patent. (c) ADDITIONAL INFORMATION.—A party that submits a written statement pursuant to sub- section (a)(2) shall include any other documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement. (d) LIMITATIONS.—A written statement sub- mitted pursuant to subsection (a)(2), and addi- tional information submitted pursuant to sub- section (c), shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a pro- ceeding that is ordered or instituted pursuant to section 304, 314, or 324. If any such written state- ment or additional information is subject to an applicable protective order, such statement or information shall be redacted to exclude infor- mation that is subject to that order. (e) CONFIDENTIALITY.—Upon the written re- quest of the person citing prior art or written statements pursuant to subsection (a), that per- son’s identity shall be excluded from the patent file and kept confidential. (Added Pub. L. 96–517, § 1, Dec. 12, 1980, 94 Stat. 3015; amended Pub. L. 112–29, § 6(g)(1), Sept. 16, 2011, 125 Stat. 311.) Editorial Notes AMENDMENTS 2011—Pub. L. 112–29 amended section generally. Prior to amendment, text read as follows: ‘‘Any person at any time may cite to the Office in writing prior art consisting of patents or printed publications which that person believes to have a bearing on the patent- ability of any claim of a particular patent. If the per- 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.