IA

103D CONGRESS

2D SESSION S. 2341

IN THE HOUSE OF REPRESENTATIVES

OCTOBER 5, 1994

Referred to the Committee on the Judiciary

AN ACT

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’’.

6 SEC. 2. DEFINITIONS.

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

8 amended by adding at the end thereof the following new

9 subsection:
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1 ‘‘(e) The term ‘third-party requester’ means a person

2 requesting reexamination under section 302 of this title

3 who is not the patent owner.’’.

4 SEC. 3. REEXAMINATION PROCEDURES.

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

6 title 35, United States Code, is amended to read as fol7 lows:

8 ‘‘§ 302. Request for reexamination

9 ‘‘Any person at any time may file a request for reex10 amination by the Office of a patent on the basis of any

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

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

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

14 request must be in writing and must be accompanied by

15 payment of a reexamination fee established by the Com16 missioner of Patents and Trademarks pursuant to the pro17 visions of section 41 of this title. The request must set

18 forth the pertinency and manner of applying cited prior

19 art to every claim for which reexamination is requested

20 or the manner in which the patent specification or claims

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

22 title. Unless the requesting person is the owner of the pat23 ent, the Commissioner promptly will send a copy of the

24 request to the owner of record of the patent.’’.
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1 (b) DETERMINATION OF ISSUE BY COMMISSIONER.—

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

3 to read as follows:

4 ‘‘§ 303. Determination of issue by Commissioner

5 ‘‘(a) Within three months following the filing of a re6 quest for reexamination under the provisions of section

7 302 of this title, the Commissioner will determine whether

8 a substantial new question of patentability affecting any

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

10 with or without consideration of other patents or printed

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

12 Commissioner may determine whether a substantial new

13 question of patentability is raised by patent or printed

14 publications or by the failure of the patent specification

15 or claims to comply with the requirements of section 112

16 of this title except for the best mode requirement.

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

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

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

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

21 third-party requester, if any.

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

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

24 nonappealable. Upon a determination that no substantial

25 new question of patentability has been raised, the Com-
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1 missioner may refund a portion of the reexamination fee

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

3 (c) REEXAMINATION ORDER BY COMMISSIONER.—

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

5 to read as follows:

6 ‘‘§ 304. Reexamination order by Commissioner

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

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

9 a substantial new question of patentability affecting any

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

11 an order for reexamination of the patent for resolution of

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

13 Office action on the merits of the reexamination conducted

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

15 (d) CONDUCT OF REEXAMINATION PROCEEDINGS.—

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

17 to read as follows:

18 ‘‘§ 305. Conduct of reexamination proceedings

19 ‘‘(a) Subject to subsection (b) of this section, reexam20 ination will be conducted according to the procedures es21 tablished for initial examination under the provisions of

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

23 proceeding under this chapter, the patent owner will be

24 permitted to propose any amendment to the patent and

25 a new claim or claims thereto. No proposed amended or
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1 new claim enlarging the scope of the claims of the patent

2 will be permitted in a reexamination proceeding under this

3 chapter.

4 ‘‘(b)(1) This subsection shall apply to any reexamina5 tion proceeding in which the order for reexamination is

6 based upon a third-party reexamination request.

7 ‘‘(2) Any document (other than the reexamination re8 quest) filed in a reexamination proceeding by either the

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

10 on any other party.

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

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

13 once file written comments within a reasonable period. At

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

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

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

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

18 owner’s response.

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

20 for good cause, all reexamination proceedings under this

21 section, including any appeal to the Board of Patent Ap22 peals and Interferences, will be conducted with special dis23 patch within the Office.’’.

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

25 Code, is amended to read as follows:
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1 ‘‘§ 306. Appeal

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

3 proceeding under this chapter may—

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

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

6 sections 141 through 144 of this title, with respect

7 to any decision adverse to the patentability of any

8 original or proposed amended or new claim of the

9 patent; or

10 ‘‘(2) be a party to any appeal taken by a third11 party requester under subsection (b) of this section.

12 ‘‘(b) A third-party requester may—

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

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

15 sections 141 through 144 of this title, with respect

16 to any final decision favorable to the patentability of

17 any original or proposed amended or new claim of

18 the patent; or

19 ‘‘(2) be a party to any appeal taken by the pat20 ent owner, subject to subsection (c) of this section.

21 ‘‘(c) A third-party requester who files a notice of ap22 peal or who participates as a party to an appeal by the

23 patent owner under the provisions of sections 141 through

24 144 of this title is estopped from later asserting, in any

25 forum, the invalidity of any claim determined to be patent26 able on appeal on any ground which the third-party re-
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1 quester raised or could have raised during the reexamina2 tion proceedings. A third-party requester is deemed not

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

4 owner unless, within twenty days after the patent owner

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

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

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

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

9 following section at the end thereof:

10 ‘‘§ 308. Reexamination prohibited

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

12 once an order for reexamination of a patent has been is13 sued under section 304 of this title, neither the patent

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

15 either, may file a subsequent request for reexamination

16 of the patent until a reexamination certificate is issued

17 and published under section 307 of this title, unless au18 thorized by the Commissioner.

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

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

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

22 its burden of proving the invalidity of any patent claim

23 in suit, then neither that party nor its privies may there24 after request reexamination of any such patent claim on

25 the basis of issues which that party or its privies raised
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1 or could have raised in such civil action, and a reexamina2 tion requested by that party or its privies on the basis

3 of such issues may not thereafter be maintained by the

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

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

6 United States Code, is amended by adding the following

7 at the end thereof:

‘‘308. Reexamination prohibited.’’.

8 SEC. 4. CONFORMING AMENDMENTS.

9 (a) BOARD OF PATENT APPEALS AND INTER10 FERENCES.—The first sentence of section 7(b) of title 35,

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

12 Board of Patent Appeals and Interferences shall, on writ13 ten appeal of an applicant, or a patent owner or a third14 party requester in a reexamination proceeding, review ad15 verse decisions of examiners upon applications for patents

16 and decisions of examiners in reexamination proceedings,

17 and shall determine priority and patentability of invention

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

19 title.’’.

20 (b) PATENT FEES; PATENT AND TRADEMARK

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

22 States Code, is amended by inserting ‘‘or for an uninten23 tionally delayed response by the patent owner in a reexam24 ination proceeding,’’ after ‘‘issuing each patent,’’.
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1 (c) APPEAL TO THE BOARD OF PATENT APPEALS

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

3 States Code, is amended to read as follows:

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

5 Interferences

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

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

8 the primary examiner to the Board of Patent Appeals and

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

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

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

12 primary examiner to the Board of Patent Appeals and

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

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

15 of Patent Appeals and Interferences from the final deci16 sion of the primary examiner favorable to the patentability

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

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

19 (d) APPEAL TO COURT OF APPEALS FOR THE FED20 ERAL CIRCUIT.—Section 141 of title 35, United States

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

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

23 requester, dissatisfied with the final decision in an appeal

24 to the Board of Patent Appeals and Interferences under
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1 section 134 of this title, may appeal the decision to the

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

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

4 35, United States Code, is amended by amending the third

5 sentence to read as follows: ‘‘In ex parte and reexamina6 tion cases, the Commissioner shall submit to the court in

7 writing the grounds for the decision of the Patent and

8 Trademark Office, addressing all the issues involved in the

9 appeal.’’.

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

11 of title 35, United States Code, is amended in the first

12 sentence by inserting ‘‘(a)’’ after ‘‘section 134’’.

13 SEC. 5. EFFECTIVE DATES.

14 This Act shall take effect six months after the date

15 of enactment of this Act and shall apply to all reexamina16 tion requests filed on or after such date.

Passed the Senate October 4 (legislative day, September 12), 1994.

Attest: MARTHA S. POPE,

Secretary.