II

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.

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled,

3 SECTION 1. SHORT TITLE.

4 This Act may be cited as the ‘‘Patent Reexamination

5 Reform Act of 1994’’.
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1 SEC. 2. DEFINITIONS.

2 Section 100 of title 35, United States Code, is

3 amended by adding at the end thereof the following new

4 subsection:

5 ‘‘(e) The term ‘third-party requester’ means a person

6 requesting reexamination under section 302 of this title

7 who is not the patent owner.’’.

8 SEC. 3. REEXAMINATION PROCEDURES.

9 (a) REQUEST FOR REEXAMINATION.—Section 302 of

10 title 35, United States Code, is amended to read as fol11 lows:

12 ‘‘§ 302. Request for reexamination

13 ‘‘Any person at any time may file a request for reex14 amination by the Office of a patent on the basis of any

15 prior art cited under the provisions of section 301 of this

16 title or on the basis of the requirements of section 112

17 of this title except for the best mode requirement. The

18 request must be in writing and must be accompanied by

19 payment of a reexamination fee established by the Com20 missioner of Patents and Trademarks pursuant to the pro21 visions of section 41 of this title. The request must set

22 forth the pertinency and manner of applying cited prior

23 art to every claim for which reexamination is requested

24 or the manner in which the patent specification or claims

25 fail to comply with the requirements of section 112 of this

26 title. Unless the requesting person is the owner of the pat-
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1 ent, the Commissioner promptly will send a copy of the

2 request to the owner of record of the patent.’’.

3 (b) DETERMINATION OF ISSUE BY COMMISSIONER.—

4 Section 303 of title 35, United States Code, is amended

5 to read as follows:

6 ‘‘§ 303. Determination of issue by Commissioner

7 ‘‘(a) Within three months following the filing of a re8 quest for reexamination under the provisions of section

9 302 of this title, the Commissioner will determine whether

10 a substantial new question of patentability affecting any

11 claim of the patent concerned is raised by the request,

12 with or without consideration of other patents or printed

13 publications. On his own initiative, and at any time, the

14 Commissioner may determine whether a substantial new

15 question of patentability is raised by patents and publica16 tions discovered by him or cited under the provisions of

17 section 301 of this title or by the failure of the patent

18 specification or claims to comply with the requirements of

19 section 112 of this title except for the best mode require20 ment.

21 ‘‘(b) A record of the Commissioner’s determination

22 under subsection (a) of this section will be placed in the

23 official file of the patent, and a copy promptly will be given

24 or mailed to the owner of record of the patent and to the

25 third-party requester, if any.
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1 ‘‘(c) A determination by the Commissioner pursuant

2 to subsection (a) of this section will be final and

3 nonappealable. Upon a determination that no substantial

4 new question of patentability has been raised, the Com5 missioner may refund a portion of the reexamination fee

6 required under section 302 of this title.’’.

7 (c) REEXAMINATION ORDER BY COMMISSIONER.—

8 Section 304 of title 35, United States Code, is amended

9 to read as follows:

10 ‘‘§ 304. Reexamination order by Commissioner

11 ‘‘If, in a determination made under the provisions of

12 section 303(a) of this title, the Commissioner finds that

13 a substantial new question of patentability affecting any

14 claim of a patent is raised, the determination will include

15 an order for reexamination of the patent for resolution of

16 the question. The order may be accompanied by the initial

17 Office action on the merits of the reexamination conducted

18 in accordance with section 305 of this title.’’.

19 (d) CONDUCT OF REEXAMINATION PROCEEDINGS.—

20 Section 305 of title 35, United States Code, is amended

21 to read as follows:

22 ‘‘§ 305. Conduct of reexamination proceedings

23 ‘‘(a) Subject to subsection (b) of this section, reexam24 ination will be conducted according to the procedures es25 tablished for initial examination under the provisions of
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1 sections 132 and 133 of this title. In any reexamination

2 proceeding under this chapter, the patent owner will be

3 permitted to propose any amendment to the patent and

4 a new claim or claims thereto in response to a decision

5 adverse to the patentability of a claim of a patent. No

6 proposed amended or new claim enlarging the scope of the

7 claims of the patent will be permitted in a reexamination

8 proceeding under this chapter.

9 ‘‘(b)(1) This subsection shall apply to any reexamina10 tion proceeding in which the order for reexamination is

11 based upon a third-party reexamination request.

12 ‘‘(2) Any document (other than the reexamination re13 quest) filed in a reexamination proceeding by either the

14 patent owner or the third-party requester shall be served

15 on any other party.

16 ‘‘(3)(A) If the patent owner files a response to any

17 Office action on the merits, the third-party requester may

18 once file written comments within a reasonable period. At

19 a minimum, such comments may be filed within 1 month

20 after the date of service of the patent owner’s response.

21 ‘‘(B) Comments filed under this paragraph shall be

22 limited to issues covered by the Office action or the patent

23 owner’s response.

24 ‘‘(c) Unless otherwise provided by the Commissioner

25 for good cause, all reexamination proceedings under this
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1 section, including any appeal to the Board of Patent Ap2 peals and Interferences, will be conducted with special dis3 patch within the Office.’’.

4 (e) APPEAL.—Section 306 of title 35, United States

5 Code, is amended to read as follows:

6 ‘‘§ 306. Appeal

7 ‘‘(a) The patent owner involved in a reexamination

8 proceeding under this chapter may—

9 ‘‘(1) appeal under the provisions of section 134

10 of this title, and may appeal under the provisions of

11 sections 141 through 144 of this title, with respect

12 to any decision adverse to the patentability of any

13 original or proposed amended or new claim of the

14 patent; or

15 ‘‘(2) be a party to any appeal taken by a third16 party requester under subsection (b) of this section.

17 ‘‘(b) A third-party requester may—

18 ‘‘(1) appeal under the provisions of section 134

19 of this title, and may appeal under the provisions of

20 sections 141 through 144 of this title, with respect

21 to any final decision favorable to the patentability of

22 any original or proposed amended or new claim of

23 the patent; or

24 ‘‘(2) be a party to any appeal taken by the pat25 ent owner, subject to subsection (c) of this section.
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1 ‘‘(c) A third-party requester who files a notice of ap2 peal or who participates as a party to an appeal by the

3 patent owner under the provisions of sections 141 through

4 144 of this title is estopped from later asserting, in any

5 forum, the invalidity of any claim determined to be patent6 able on appeal on any ground which the third-party re7 quester raised or could have raised during the reexamina8 tion proceedings. A third-party requester is deemed not

9 to have participated as a party to an appeal by the patent

10 owner unless, within twenty days after the patent owner

11 has filed notice of appeal, the third-party requester files

12 notice with the Commissioner electing to participate.’’.

13 (f) REEXAMINATION PROHIBITED.—(1) Chapter 30

14 of title 35, United States Code, is amended by adding the

15 following section at the end thereof:

16 ‘‘§ 308. Reexamination prohibited

17 ‘‘(a) Notwithstanding any provision of this chapter,

18 once an order for reexamination of a patent has been is19 sued under section 304 of this title, neither the patent

20 owner nor the third-party requester, if any, nor privies of

21 either, may file a subsequent request for reexamination

22 of the patent until a reexamination certificate is issued

23 and published under section 307 of this title, unless au24 thorized by the Commissioner.
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1 ‘‘(b) Once a final decision has been entered against

2 a party in a civil action arising in whole or in part under

3 section 1338 of title 28 that the party has not sustained

4 its burden of proving the invalidity of any patent claim

5 in suit, then neither that party nor its privies may there6 after request reexamination of any such patent claim on

7 the basis of issues which that party or its privies raised

8 or could have raised in such civil action, and a reexamina9 tion requested by that party or its privies on the basis

10 of such issues may not thereafter be maintained by the

11 Office, notwithstanding any provision of this chapter.’’.

12 (2) The table of sections for chapter 30 of title 35,

13 United States Code, is amended by adding the following

14 at the end thereof:

‘‘308. Reexamination prohibited.’’.

15 SEC. 4. CONFORMING AMENDMENTS.

16 (a) BOARD OF PATENT APPEALS AND INTER17 FERENCES.—The first sentence of section 7(b) of title 35,

18 United States Code, is amended to read as follows: ‘‘The

19 Board of Patent Appeals and Interferences shall, on writ20 ten appeal of an applicant, or a patent owner or a third21 party requester in a reexamination proceeding, review ad22 verse decisions of examiners upon applications for patents

23 and decisions of examiners in reexamination proceedings,

24 and shall determine priority and patentability of invention
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1 in interferences declared under section 135(a) of this

2 title.’’.

3 (b) PATENT FEES; PATENT AND TRADEMARK

4 SEARCH SYSTEMS.—Section 41(a)(7) of title 35, United

5 States Code, is amended by inserting ‘‘or for an uninten6 tionally delayed response by the patent owner in a re-ex7 amination proceeding,’’ after ‘‘issuing each patent,’’.

8 (c) APPEAL TO THE BOARD OF PATENT APPEALS

9 AND INTERFERENCES.—Section 134 of title 35, United

10 States Code, is amended to read as follows:

11 ‘‘§ 134. Appeal to the Board of Patent Appeals and

12 Interferences

13 ‘‘(a) An applicant for a patent, any of whose claims

14 has been twice rejected, may appeal from the decision of

15 the primary examiner to the Board of Patent Appeals and

16 Interferences, having once paid the fee for such appeal.

17 ‘‘(b) A patent owner in a reexamination proceeding

18 may appeal from the final rejection of any claim by the

19 primary examiner to the Board of Patent Appeals and

20 Interferences, having once paid the fee for such appeal.

21 ‘‘(c) A third-party requester may appeal to the Board

22 of Patent Appeals and Interferences from the final deci23 sion of the primary examiner favorable to the patentability

24 of any original or proposed amended or new claim of a

25 patent, having once paid the fee for such appeal.’’.
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1 (d) APPEAL TO COURT OF APPEALS FOR THE FED2 ERAL CIRCUIT.—Section 141 of title 35, United States

3 Code, is amended by amending the first sentence to read

4 as follows: ‘‘An applicant, a patent owner or a third-party

5 requester, dissatisfied with the final decision in an appeal

6 to the Board of Patent Appeals and Interferences under

7 section 134 of this title, may appeal the decision to the

8 United States Court of Appeals for the Federal Circuit.’’.

9 (e) PROCEEDINGS ON APPEAL.—Section 143 of title

10 35, United States Code, is amended by amending the third

11 sentence to read as follows: ‘‘In ex parte and reexamina12 tion cases, the Commissioner shall submit to the court in

13 writing the grounds for the decision of the Patent and

14 Trademark Office, addressing all the issues involved in the

15 appeal.’’.

16 SEC. 5. EFFECTIVE DATES.

17 (a) IN GENERAL.—Sections 2 and 4 and subsections

18 (a), (b), (c), (d), and (e) of section 3 of this Act shall

19 take effect six months after the date of enactment of this

20 Act and shall apply to all reexamination requests filed on

21 or after such effective date.

22 (b) REEXAMINATION PROHIBITION PROVISION.—

23 Section 1 and subsections (f) and (g) of section 3 of this

24 Act shall take effect on the date of enactment of this Act.

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