Calendar No. 682

103D CONGRESS

2D SESSION S. 2341

A BILL

To amend chapter 30 of title 35, United States

mark Office, and for other purposes.ings before the United States Patent and Tradegreater participation in reexamination proceedCode, to afford third parties an opportunity for

SEPTEMBER 28 (legislative day, SEPTEMBER 12), 1994

Reported with an amendment
II

Calendar No. 682

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

SEPTEMBER 28 (legislative day, SEPTEMBER 12), 1994

Reported by Mr. BIDEN, with an amendment

[Strike out all after the enacting clause and insert the part printed in italic]

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,
2

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1 SECTION 1. SHORT TITLE.

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

3 Reform Act of 1994’’.

4 SEC. 2. DEFINITIONS.

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

6 amended by adding at the end thereof the following new

7 subsection:

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

9 requesting reexamination under section 302 of this title

10 who is not the patent owner.’’.

11 SEC. 3. REEXAMINATION PROCEDURES.

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

13 title 35, United States Code, is amended to read as fol14 lows:

15 ‘‘§ 302. Request for reexamination

16 ‘‘Any person at any time may file a request for reex17 amination by the Office of a patent on the basis of any

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

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

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

21 request must be in writing and must be accompanied by

22 payment of a reexamination fee established by the Com23 missioner of Patents and Trademarks pursuant to the pro24 visions of section 41 of this title. The request must set

25 forth the pertinency and manner of applying cited prior

26 art to every claim for which reexamination is requested
3

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1 or the manner in which the patent specification or claims

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

3 title. Unless the requesting person is the owner of the pat4 ent, the Commissioner promptly will send a copy of the

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

6 (b) DETERMINATION OF ISSUE BY COMMISSIONER.—

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

8 to read as follows:

9 ‘‘§ 303. Determination of issue by Commissioner

10 ‘‘(a) Within three months following the filing of a re11 quest for reexamination under the provisions of section

12 302 of this title, the Commissioner will determine whether

13 a substantial new question of patentability affecting any

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

15 with or without consideration of other patents or printed

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

17 Commissioner may determine whether a substantial new

18 question of patentability is raised by patents and publica19 tions discovered by him or cited under the provisions of

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

21 specification or claims to comply with the requirements of

22 section 112 of this title except for the best mode require23 ment.

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

25 under subsection (a) of this section will be placed in the
4

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

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

3 third-party requester, if any.

4 ‘‘(c) A determination by the Commissioner pursuant

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

6 nonappealable. Upon a determination that no substantial

7 new question of patentability has been raised, the Com8 missioner may refund a portion of the reexamination fee

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

10 (c) REEXAMINATION ORDER BY COMMISSIONER.—

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

12 to read as follows:

13 ‘‘§ 304. Reexamination order by Commissioner

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

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

16 a substantial new question of patentability affecting any

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

18 an order for reexamination of the patent for resolution of

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

20 Office action on the merits of the reexamination conducted

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

22 (d) CONDUCT OF REEXAMINATION PROCEEDINGS.—

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

24 to read as follows:
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1 ‘‘§ 305. Conduct of reexamination proceedings

2 ‘‘(a) Subject to subsection (b) of this section, reexam3 ination will be conducted according to the procedures es4 tablished for initial examination under the provisions of

5 sections 132 and 133 of this title. In any reexamination

6 proceeding under this chapter, the patent owner will be

7 permitted to propose any amendment to the patent and

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

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

10 proposed amended or new claim enlarging the scope of the

11 claims of the patent will be permitted in a reexamination

12 proceeding under this chapter.

13 ‘‘(b)(1) This subsection shall apply to any reexamina14 tion proceeding in which the order for reexamination is

15 based upon a third-party reexamination request.

16 ‘‘(2) Any document (other than the reexamination re17 quest) filed in a reexamination proceeding by either the

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

19 on any other party.

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

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

22 once file written comments within a reasonable period. At

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

24 after the date of service of the patent owner’s response.
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1 ‘‘(B) Comments filed under this paragraph shall be

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

3 owner’s response.

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

5 for good cause, all reexamination proceedings under this

6 section, including any appeal to the Board of Patent Ap7 peals and Interferences, will be conducted with special dis8 patch within the Office.’’.

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

10 Code, is amended to read as follows:

11 ‘‘§ 306. Appeal

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

13 proceeding under this chapter may—

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

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

16 sections 141 through 144 of this title, with respect

17 to any decision adverse to the patentability of any

18 original or proposed amended or new claim of the

19 patent; or

20 ‘‘(2) be a party to any appeal taken by a third21 party requester under subsection (b) of this section.

22 ‘‘(b) A third-party requester may—

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

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

25 sections 141 through 144 of this title, with respect
7

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1 to any final decision favorable to the patentability of

2 any original or proposed amended or new claim of

3 the patent; or

4 ‘‘(2) be a party to any appeal taken by the pat5 ent owner, subject to subsection (c) of this section.

6 ‘‘(c) A third-party requester who files a notice of ap7 peal or who participates as a party to an appeal by the

8 patent owner under the provisions of sections 141 through

9 144 of this title is estopped from later asserting, in any

10 forum, the invalidity of any claim determined to be patent11 able on appeal on any ground which the third-party re12 quester raised or could have raised during the reexamina13 tion proceedings. A third-party requester is deemed not

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

15 owner unless, within twenty days after the patent owner

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

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

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

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

20 following section at the end thereof:

21 ‘‘§ 308. Reexamination prohibited

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

23 once an order for reexamination of a patent has been is24 sued under section 304 of this title, neither the patent

25 owner nor the third-party requester, if any, nor privies of
8

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1 either, may file a subsequent request for reexamination

2 of the patent until a reexamination certificate is issued

3 and published under section 307 of this title, unless au4 thorized by the Commissioner.

5 ‘‘(b) Once a final decision has been entered against

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

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

8 its burden of proving the invalidity of any patent claim

9 in suit, then neither that party nor its privies may there10 after request reexamination of any such patent claim on

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

12 or could have raised in such civil action, and a reexamina13 tion requested by that party or its privies on the basis

14 of such issues may not thereafter be maintained by the

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

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

17 United States Code, is amended by adding the following

18 at the end thereof:

‘‘308. Reexamination prohibited.’’.

19 SEC. 4. CONFORMING AMENDMENTS.

20 (a) BOARD OF PATENT APPEALS AND INTER21 FERENCES.—The first sentence of section 7(b) of title 35,

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

23 Board of Patent Appeals and Interferences shall, on writ24 ten appeal of an applicant, or a patent owner or a third25 party requester in a reexamination proceeding, review ad-
9

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1 verse decisions of examiners upon applications for patents

2 and decisions of examiners in reexamination proceedings,

3 and shall determine priority and patentability of invention

4 in interferences declared under section 135(a) of this

5 title.’’.

6 (b) PATENT FEES; PATENT AND TRADEMARK

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

8 States Code, is amended by inserting ‘‘or for an uninten9 tionally delayed response by the patent owner in a re-ex10 amination proceeding,’’ after ‘‘issuing each patent,’’.

11 (c) APPEAL TO THE BOARD OF PATENT APPEALS

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

13 States Code, is amended to read as follows:

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

15 Interferences

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

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

18 the primary examiner to the Board of Patent Appeals and

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

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

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

22 primary examiner to the Board of Patent Appeals and

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

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

25 of Patent Appeals and Interferences from the final deci-
10

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1 sion of the primary examiner favorable to the patentability

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

3 patent, having once paid the fee for such appeal.’’.

4 (d) APPEAL TO COURT OF APPEALS FOR THE FED5 ERAL CIRCUIT.—Section 141 of title 35, United States

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

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

8 requester, dissatisfied with the final decision in an appeal

9 to the Board of Patent Appeals and Interferences under

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

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

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

13 35, United States Code, is amended by amending the third

14 sentence to read as follows: ‘‘In ex parte and reexamina15 tion cases, the Commissioner shall submit to the court in

16 writing the grounds for the decision of the Patent and

17 Trademark Office, addressing all the issues involved in the

18 appeal.’’.

19 SEC. 5. EFFECTIVE DATES.

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

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

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

23 Act and shall apply to all reexamination requests filed on

24 or after such effective date.
11

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1 (b) REEXAMINATION PROHIBITION PROVISION.—

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

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

4 SECTION 1. SHORT TITLE.

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

6 Reform Act of 1994’’.

7 SEC. 2. DEFINITIONS.

8 Section 100 of title 35, United States Code, is amended

9 by adding at the end thereof the following new subsection:

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

11 requesting reexamination under section 302 of this title who

12 is not the patent owner.’’.

13 SEC. 3. REEXAMINATION PROCEDURES.

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

15 title 35, United States Code, is amended to read as follows:

16 ‘‘§ 302. Request for reexamination

17 ‘‘Any person at any time may file a request for reex18 amination by the Office of a patent on the basis of any

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

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

21 this title except for the best mode requirement. The request

22 must be in writing and must be accompanied by payment

23 of a reexamination fee established by the Commissioner of

24 Patents and Trademarks pursuant to the provisions of sec25 tion 41 of this title. The request must set forth the
12

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1 pertinency and manner of applying cited prior art to every

2 claim for which reexamination is requested or the manner

3 in which the patent specification or claims fail to comply

4 with the requirements of section 112 of this title. Unless

5 the requesting person is the owner of the patent, the Com6 missioner promptly will send a copy of the request to the

7 owner of record of the patent.’’.

8 (b) DETERMINATION OF ISSUE BY COMMISSIONER.—

9 Section 303 of title 35, United States Code, is amended to

10 read as follows:

11 ‘‘§ 303. Determination of issue by Commissioner

12 ‘‘(a) Within three months following the filing of a re13 quest for reexamination under the provisions of section 302

14 of this title, the Commissioner will determine whether a sub15 stantial new question of patentability affecting any claim

16 of the patent concerned is raised by the request, with or

17 without consideration of other patents or printed publica18 tions. On his own initiative, and at any time, the Commis19 sioner may determine whether a substantial new question

20 of patentability is raised by patent or printed publications

21 or by the failure of the patent specification or claims to

22 comply with the requirements of section 112 of this title

23 except for the best mode requirement.

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

25 under subsection (a) of this section will be placed in the
13

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

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

3 third-party requester, if any.

4 ‘‘(c) A determination by the Commissioner pursuant

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

6 nonappealable. Upon a determination that no substantial

7 new question of patentability has been raised, the Commis8 sioner may refund a portion of the reexamination fee re9 quired under section 302 of this title.’’.

10 (c) REEXAMINATION ORDER BY COMMISSIONER.—Sec11 tion 304 of title 35, United States Code, is amended to read

12 as follows:

13 ‘‘§ 304. Reexamination order by Commissioner

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

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

16 substantial new question of patentability affecting any

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

18 an order for reexamination of the patent for resolution of

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

20 Office action on the merits of the reexamination conducted

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

22 (d) CONDUCT OF REEXAMINATION PROCEEDINGS.—

23 Section 305 of title 35, United States Code, is amended to

24 read as follows:
14

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1 ‘‘§ 305. Conduct of reexamination proceedings

2 ‘‘(a) Subject to subsection (b) of this section, reexam3 ination will be conducted according to the procedures estab4 lished for initial examination under the provisions of sec5 tions 132 and 133 of this title. In any reexamination pro6 ceeding under this chapter, the patent owner will be per7 mitted to propose any amendment to the patent and a new

8 claim or claims thereto. No proposed amended or new claim

9 enlarging the scope of the claims of the patent will be per10 mitted in a reexamination proceeding under this chapter.

11 ‘‘(b)(1) This subsection shall apply to any reexamina12 tion proceeding in which the order for reexamination is

13 based upon a third-party reexamination request.

14 ‘‘(2) Any document (other than the reexamination re15 quest) filed in a reexamination proceeding by either the pat16 ent owner or the third-party requester shall be served on

17 any other party.

18 ‘‘(3)(A) If the patent owner files a response to any Of19 fice action on the merits, the third-party requester may once

20 file written comments within a reasonable period. At a min21 imum, such comments may be filed within 1 month after

22 the date of service of the patent owner’s response.

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

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

25 owner’s response.
15

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

2 for good cause, all reexamination proceedings under this

3 section, including any appeal to the Board of Patent Ap4 peals and Interferences, will be conducted with special dis5 patch within the Office.’’.

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

7 Code, is amended to read as follows:

8 ‘‘§ 306. Appeal

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

10 proceeding under this chapter may—

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

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

13 sections 141 through 144 of this title, with respect to

14 any decision adverse to the patentability of any origi15 nal or proposed amended or new claim of the patent;

16 or

17 ‘‘(2) be a party to any appeal taken by a third18 party requester under subsection (b) of this section.

19 ‘‘(b) A third-party requester may—

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

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

22 sections 141 through 144 of this title, with respect to

23 any final decision favorable to the patentability of

24 any original or proposed amended or new claim of

25 the patent; or
16

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1 ‘‘(2) be a party to any appeal taken by the pat2 ent owner, subject to subsection (c) of this section.

3 ‘‘(c) A third-party requester who files a notice of ap4 peal or who participates as a party to an appeal by the

5 patent owner under the provisions of sections 141 through

6 144 of this title is estopped from later asserting, in any

7 forum, the invalidity of any claim determined to be patent8 able on appeal on any ground which the third-party re9 quester raised or could have raised during the reexamina10 tion proceedings. A third-party requester is deemed not to

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

12 owner unless, within twenty days after the patent owner

13 has filed notice of appeal, the third-party requester files no14 tice with the Commissioner electing to participate.’’.

15 (f) REEXAMINATION PROHIBITED.—(1) Chapter 30 of

16 title 35, United States Code, is amended by adding the fol17 lowing section at the end thereof:

18 ‘‘§ 308. Reexamination prohibited

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

20 once an order for reexamination of a patent has been issued

21 under section 304 of this title, neither the patent owner nor

22 the third-party requester, if any, nor privies of either, may

23 file a subsequent request for reexamination of the patent

24 until a reexamination certificate is issued and published
17

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1 under section 307 of this title, unless authorized by the

2 Commissioner.

3 ‘‘(b) Once a final decision has been entered against a

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

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

6 its burden of proving the invalidity of any patent claim

7 in suit, then neither that party nor its privies may there8 after request reexamination of any such patent claim on

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

10 or could have raised in such civil action, and a reexamina11 tion requested by that party or its privies on the basis of

12 such issues may not thereafter be maintained by the Office,

13 notwithstanding any provision of this chapter.’’.

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

15 United States Code, is amended by adding the following

16 at the end thereof:

‘‘308. Reexamination prohibited.’’.

17 SEC. 4. CONFORMING AMENDMENTS.

18 (a) BOARD OF PATENT APPEALS AND INTER19 FERENCES.—The first sentence of section 7(b) of title 35,

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

21 Board of Patent Appeals and Interferences shall, on written

22 appeal of an applicant, or a patent owner or a third-party

23 requester in a reexamination proceeding, review adverse de24 cisions of examiners upon applications for patents and de25 cisions of examiners in reexamination proceedings, and
18

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1 shall determine priority and patentability of invention in

2 interferences declared under section 135(a) of this title.’’.

3 (b) PATENT FEES; PATENT AND TRADEMARK SEARCH

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

5 is amended by inserting ‘‘or for an unintentionally delayed

6 response by the patent owner in a reexamination proceed7 ing,’’ after ‘‘issuing each patent,’’.

8 (c) APPEAL TO THE BOARD OF PATENT APPEALS AND

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

10 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 decision

23 of the primary examiner favorable to the patentability of

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

25 having once paid the fee for such appeal.’’.
19

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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 sec7 tion 134 of this title, may appeal the decision to the United

8 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 reexamination

12 cases, the Commissioner shall submit to the court in writing

13 the grounds for the decision of the Patent and Trademark

14 Office, addressing all the issues involved in the appeal.’’.

15 (f) CIVIL ACTION TO OBTAIN PATENT.—Section 145

16 of title 35, United States Code, is amended in the first sen17 tence by inserting ‘‘(a)’’ after ‘‘section 134’’.

18 SEC. 5. EFFECTIVE DATES.

19 This Act shall take effect six months after the date of

20 enactment of this Act and shall apply to all reexamination

21 requests filed on or after such date.

S 2341 RS——2