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[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[S. 2341 Introduced in Senate (IS)]

103d CONGRESS
  2d Session
                                S. 2341

 To amend chapter 30 of title 35, United States Code, to afford third 
   parties an opportunity for greater participation in reexamination 
 proceedings before the United States Patent and Trademark Office, and 
                          for other purposes.

_______________________________________________________________________

                   IN THE SENATE OF THE UNITED STATES

                July 29 (legislative day, July 20), 1994

 Mr. DeConcini introduced the following bill; which was read twice and 
               referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL

 
 To amend chapter 30 of title 35, United States Code, to afford third 
   parties an opportunity for greater participation in reexamination 
 proceedings before the United States Patent and Trademark Office, and 
                          for other purposes.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Patent Reexamination Reform Act of 
1994''.

SEC. 2. DEFINITIONS.

    Section 100 of title 35, United States Code, is amended by adding 
at the end thereof the following new subsection:
    ``(e) The term `third-party requester' means a person requesting 
reexamination under section 302 of this title who is not the patent 
owner.''.

SEC. 3. REEXAMINATION PROCEDURES.

    (a) Request for Reexamination.--Section 302 of title 35, United 
States Code, is amended to read as follows:
``Sec. 302. Request for reexamination
    ``Any person at any time may file a request for reexamination by 
the Office of a patent on the basis of any prior art cited under the 
provisions of section 301 of this title or on the basis of the 
requirements of section 112 of this title except for the best mode 
requirement. The request must be in writing and must be accompanied by 
payment of a reexamination fee established by the Commissioner of 
Patents and Trademarks pursuant to the provisions of section 41 of this 
title. The request must set forth the pertinency and manner of applying 
cited prior art to every claim for which reexamination is requested or 
the manner in which the patent specification or claims fail to comply 
with the requirements of section 112 of this title. Unless the 
requesting person is the owner of the patent, the Commissioner promptly 
will send a copy of the request to the owner of record of the 
patent.''.
    (b) Determination of Issue by Commissioner.--Section 303 of title 
35, United States Code, is amended to read as follows:
``Sec. 303. Determination of issue by Commissioner
    ``(a) Within three months following the filing of a request for 
reexamination under the provisions of section 302 of this title, the 
Commissioner will determine whether a substantial new question of 
patentability affecting any claim of the patent concerned is raised by 
the request, with or without consideration of other patents or printed 
publications. On his own initiative, and at any time, the Commissioner 
may determine whether a substantial new question of patentability is 
raised by patents and publications discovered by him or cited under the 
provisions of section 301 of this title or by the failure of the patent 
specification or claims to comply with the requirements of section 112 
of this title except for the best mode requirement.
    ``(b) A record of the Commissioner'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 third-party requester, if any.
    ``(c) A determination by the Commissioner pursuant to subsection 
(a) of this section will be final and nonappealable. Upon a 
determination that no substantial new question of patentability has 
been raised, the Commissioner may refund a portion of the reexamination 
fee required under section 302 of this title.''.
    (c) Reexamination Order by Commissioner.--Section 304 of title 35, 
United States Code, is amended to read as follows:
``Sec. 304. Reexamination order by Commissioner
    ``If, in a determination made under the provisions of section 
303(a) of this title, the Commissioner finds that a substantial new 
question of patentability affecting any claim of a patent is raised, 
the determination will include an order for reexamination of the patent 
for resolution of the question. The order may be accompanied by the 
initial Office action on the merits of the reexamination conducted in 
accordance with section 305 of this title.''.
    (d) Conduct of Reexamination Proceedings.--Section 305 of title 35, 
United States Code, is amended to read as follows:
``Sec. 305. Conduct of reexamination proceedings
    ``(a) Subject to subsection (b) of this section, reexamination will 
be conducted according to the procedures established for initial 
examination under the provisions of sections 132 and 133 of this title. 
In any reexamination proceeding under this chapter, the patent owner 
will be permitted to propose any amendment to the patent and a new 
claim or claims thereto in response to a decision adverse to the 
patentability of a claim of a patent. No proposed amended or new claim 
enlarging the scope of the claims of the patent will be permitted in a 
reexamination proceeding under this chapter.
    ``(b)(1) This subsection shall apply to any reexamination 
proceeding in which the order for reexamination is based upon a third-
party reexamination request.
    ``(2) Any document (other than the reexamination request) filed in 
a reexamination proceeding by either the patent owner or the third-
party requester shall be served on any other party.
    ``(3)(A) If the patent owner files a response to any Office action 
on the merits, the third-party requester may once file written comments 
within a reasonable period. At a minimum, such comments may be filed 
within 1 month after the date of service of the patent owner's 
response.
    ``(B) Comments filed under this paragraph shall be limited to 
issues covered by the Office action or the patent owner's response.
    ``(c) Unless otherwise provided by the Commissioner for good cause, 
all reexamination proceedings under this section, including any appeal 
to the Board of Patent Appeals and Interferences, will be conducted 
with special dispatch within the Office.''.
    (e) Appeal.--Section 306 of title 35, United States Code, is 
amended to read as follows:
``Sec. 306. Appeal
    ``(a) The patent owner involved in a reexamination proceeding under 
this chapter may--
            ``(1) appeal under the provisions of section 134 of this 
        title, and may appeal under the provisions of sections 141 
        through 144 of this title, with respect to any decision adverse 
        to the patentability of any original or proposed amended or new 
        claim of the patent; or
            ``(2) be a party to any appeal taken by a third-party 
        requester under subsection (b) of this section.
    ``(b) A third-party requester may--
            ``(1) appeal under the provisions of section 134 of this 
        title, and may appeal under the provisions of sections 141 
        through 144 of this title, with respect to any final decision 
        favorable to the patentability 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, 
        subject to subsection (c) of this section.
    ``(c) A third-party requester who files a notice of appeal or who 
participates as a party to an appeal by the patent owner under the 
provisions of sections 141 through 144 of this title is estopped from 
later asserting, in any forum, the invalidity of any claim determined 
to be patentable on appeal on any ground which the third-party 
requester raised or could have raised during the reexamination 
proceedings. A third-party requester is deemed not to have participated 
as a party to an appeal by the patent owner unless, within twenty days 
after the patent owner has filed notice of appeal, the third-party 
requester files notice with the Commissioner electing to 
participate.''.
    (f) Reexamination Prohibited.--(1) Chapter 30 of title 35, United 
States Code, is amended by adding the following section at the end 
thereof:
``Sec. 308. Reexamination prohibited
    ``(a) Notwithstanding any provision of this chapter, once an order 
for reexamination of a patent has been issued under section 304 of this 
title, neither the patent owner nor the third-party requester, if any, 
nor privies of either, may file a subsequent request for reexamination 
of the patent until a reexamination certificate is issued and published 
under section 307 of this title, unless authorized by the Commissioner.
    ``(b) Once a final decision has been entered against a party in a 
civil action arising in whole or in part under section 1338 of title 28 
that the party has not sustained its burden of proving the invalidity 
of any patent claim in suit, then neither that party nor its privies 
may thereafter request reexamination of any such patent claim on the 
basis of issues which that party or its privies raised or could have 
raised in such civil action, and a reexamination requested by that 
party or its privies on the basis of such issues may not thereafter be 
maintained by the Office, notwithstanding any provision of this 
chapter.''.
    (2) The table of sections for chapter 30 of title 35, United States 
Code, is amended by adding the following at the end thereof:

``308. Reexamination prohibited.''.

SEC. 4. CONFORMING AMENDMENTS.

    (a) Board of Patent Appeals and Interferences.--The first sentence 
of section 7(b) of title 35, United States Code, is amended to read as 
follows: ``The Board of Patent Appeals and Interferences shall, on 
written appeal of an applicant, or a patent owner or a third-party 
requester in a reexamination proceeding, review adverse decisions of 
examiners upon applications for patents and decisions of examiners in 
reexamination proceedings, and shall determine priority and 
patentability of invention in interferences declared under section 
135(a) of this title.''.
    (b) Patent Fees; Patent and Trademark Search Systems.--Section 
41(a)(7) of title 35, United States Code, is amended by inserting ``or 
for an unintentionally delayed response by the patent owner in a re-
examination proceeding,'' after ``issuing each patent,''.
    (c) Appeal to the Board of Patent Appeals and Interferences.--
Section 134 of title 35, United States Code, is amended to read as 
follows:
``Sec. 134. Appeal to the Board of Patent Appeals and Interferences
    ``(a) An applicant for a patent, any of whose claims has been twice 
rejected, may appeal from the decision of the primary examiner to the 
Board of Patent Appeals and Interferences, having once paid the fee for 
such appeal.
    ``(b) A patent owner in a reexamination proceeding may appeal from 
the final rejection of any claim by the primary examiner to the Board 
of Patent Appeals and Interferences, having once paid the fee for such 
appeal.
    ``(c) A third-party requester may appeal to the Board of Patent 
Appeals and Interferences from the final decision of the primary 
examiner favorable to the patentability of any original or proposed 
amended or new claim of a patent, having once paid the fee for such 
appeal.''.
    (d) Appeal to Court of Appeals for the Federal Circuit.--Section 
141 of title 35, United States Code, is amended by amending the first 
sentence to read as follows: ``An applicant, a patent owner or a third-
party requester, dissatisfied with the final decision in an appeal to 
the Board of Patent Appeals and Interferences under section 134 of this 
title, may appeal the decision to the United States Court of Appeals 
for the Federal Circuit.''.
    (e) Proceedings on Appeal.--Section 143 of title 35, United States 
Code, is amended by amending the third sentence to read as follows: 
``In ex parte and reexamination cases, the Commissioner shall submit to 
the court in writing the grounds for the decision of the Patent and 
Trademark Office, addressing all the issues involved in the appeal.''.

SEC. 5. EFFECTIVE DATES.

    (a) In General.--Sections 2 and 4 and subsections (a), (b), (c), 
(d), and (e) of section 3 of this Act shall take effect six months 
after the date of enactment of this Act and shall apply to all 
reexamination requests filed on or after such effective date.
    (b) Reexamination Prohibition Provision.--Section 1 and subsections 
(f) and (g) of section 3 of this Act shall take effect on the date of 
enactment of this Act.
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