103D CONGRESS

2D SESSION S. 2341

AN ACT

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
103D CONGRESS

2D SESSION S. 2341

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’’.
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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 patent or printed

16 publications or by the failure of the patent specification

17 or claims to comply with the requirements of section 112

18 of this title except for the best mode requirement.

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

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

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

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

23 third-party requester, if any.

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

25 to subsection (a) of this section will be final and
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1 nonappealable. Upon a determination that no substantial

2 new question of patentability has been raised, the Com3 missioner may refund a portion of the reexamination fee

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

5 (c) REEXAMINATION ORDER BY COMMISSIONER.—

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

7 to read as follows:

8 ‘‘§ 304. Reexamination order by Commissioner

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

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

11 a substantial new question of patentability affecting any

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

13 an order for reexamination of the patent for resolution of

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

15 Office action on the merits of the reexamination conducted

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

17 (d) CONDUCT OF REEXAMINATION PROCEEDINGS.—

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

19 to read as follows:

20 ‘‘§ 305. Conduct of reexamination proceedings

21 ‘‘(a) Subject to subsection (b) of this section, reexam22 ination will be conducted according to the procedures es23 tablished for initial examination under the provisions of

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

25 proceeding under this chapter, the patent owner will be
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1 permitted to propose any amendment to the patent and

2 a new claim or claims thereto. No proposed amended or

3 new claim enlarging the scope of the claims of the patent

4 will be permitted in a reexamination proceeding under this

5 chapter.

6 ‘‘(b)(1) This subsection shall apply to any reexamina7 tion proceeding in which the order for reexamination is

8 based upon a third-party reexamination request.

9 ‘‘(2) Any document (other than the reexamination re10 quest) filed in a reexamination proceeding by either the

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

12 on any other party.

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

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

15 once file written comments within a reasonable period. At

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

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

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

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

20 owner’s response.

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

22 for good cause, all reexamination proceedings under this

23 section, including any appeal to the Board of Patent Ap24 peals and Interferences, will be conducted with special dis25 patch within the Office.’’.
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1 (e) APPEAL.—Section 306 of title 35, United States

2 Code, is amended to read as follows:

3 ‘‘§ 306. Appeal

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

5 proceeding under this chapter may—

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

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

8 sections 141 through 144 of this title, with respect

9 to any decision adverse to the patentability of any

10 original or proposed amended or new claim of the

11 patent; or

12 ‘‘(2) be a party to any appeal taken by a third13 party requester under subsection (b) of this section.

14 ‘‘(b) A third-party requester may—

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

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

17 sections 141 through 144 of this title, with respect

18 to any final decision favorable to the patentability of

19 any original or proposed amended or new claim of

20 the patent; or

21 ‘‘(2) be a party to any appeal taken by the pat22 ent owner, subject to subsection (c) of this section.

23 ‘‘(c) A third-party requester who files a notice of ap24 peal or who participates as a party to an appeal by the

25 patent owner under the provisions of sections 141 through
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1 144 of this title is estopped from later asserting, in any

2 forum, the invalidity of any claim determined to be patent3 able on appeal on any ground which the third-party re4 quester raised or could have raised during the reexamina5 tion proceedings. A third-party requester is deemed not

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

7 owner unless, within twenty days after the patent owner

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

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

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

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

12 following section at the end thereof:

13 ‘‘§ 308. Reexamination prohibited

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

15 once an order for reexamination of a patent has been is16 sued under section 304 of this title, neither the patent

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

18 either, may file a subsequent request for reexamination

19 of the patent until a reexamination certificate is issued

20 and published under section 307 of this title, unless au21 thorized by the Commissioner.

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

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

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

25 its burden of proving the invalidity of any patent claim
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1 in suit, then neither that party nor its privies may there2 after request reexamination of any such patent claim on

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

4 or could have raised in such civil action, and a reexamina5 tion requested by that party or its privies on the basis

6 of such issues may not thereafter be maintained by the

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

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

9 United States Code, is amended by adding the following

10 at the end thereof:

‘‘308. Reexamination prohibited.’’.

11 SEC. 4. CONFORMING AMENDMENTS.

12 (a) BOARD OF PATENT APPEALS AND INTER13 FERENCES.—The first sentence of section 7(b) of title 35,

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

15 Board of Patent Appeals and Interferences shall, on writ16 ten appeal of an applicant, or a patent owner or a third17 party requester in a reexamination proceeding, review ad18 verse decisions of examiners upon applications for patents

19 and decisions of examiners in reexamination proceedings,

20 and shall determine priority and patentability of invention

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

22 title.’’.

23 (b) PATENT FEES; PATENT AND TRADEMARK

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

25 States Code, is amended by inserting ‘‘or for an uninten-
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1 tionally delayed response by the patent owner in a reexam2 ination proceeding,’’ after ‘‘issuing each patent,’’.

3 (c) APPEAL TO THE BOARD OF PATENT APPEALS

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

5 States Code, is amended to read as follows:

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

7 Interferences

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

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

10 the primary examiner to the Board of Patent Appeals and

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

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

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

14 primary examiner to the Board of Patent Appeals and

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

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

17 of Patent Appeals and Interferences from the final deci18 sion of the primary examiner favorable to the patentability

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

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

21 (d) APPEAL TO COURT OF APPEALS FOR THE FED22 ERAL CIRCUIT.—Section 141 of title 35, United States

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

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

25 requester, dissatisfied with the final decision in an appeal
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1 to the Board of Patent Appeals and Interferences under

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

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

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

5 35, United States Code, is amended by amending the third

6 sentence to read as follows: ‘‘In ex parte and reexamina7 tion cases, the Commissioner shall submit to the court in

8 writing the grounds for the decision of the Patent and

9 Trademark Office, addressing all the issues involved in the

10 appeal.’’.

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

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

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

14 SEC. 5. EFFECTIVE DATES.

15 This Act shall take effect six months after the date

16 of enactment of this Act and shall apply to all reexamina17 tion requests filed on or after such date.

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

Attest:

Secretary.