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(ii) by inserting ‘‘the publication of the
application or’’ after ‘‘withhold’’; and
(D) in the fourth undesignated paragraph
by inserting ‘‘the publication of an application
or’’ after ‘‘and’’ in the first sentence.
(8) Section 252 is amended in the first undesig-
nated paragraph by inserting ‘‘substantially’’ before
‘‘identical’’ each place it appears.
(9) Section 284 is amended by adding at the end
of the second undesignated paragraph the following:
‘‘Increased damages under this paragraph shall not
apply to provisional rights under section 154(d) of
this title.’’.
(10) Section 374 is amended to read as follows:
‘‘§ 374. Publication of international application
‘‘The publication under the treaty defined in section
351(a) of this title, of an international application desig-
nating the United States shall confer the same rights and
shall have the same effect under this title as an application
for patent published under section 122(b), except as pro-
vided in sections 102(e) and 154(d) of this title.’’.
(11) Section 135(b) is amended—
(A) by inserting ‘‘(1)’’ after ‘‘(b)’’; and
(B) by adding at the end the following:
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‘‘(2) A claim which is the same as, or for the same
or substantially the same subject matter as, a claim of an
application published pursuant to section 122(b) of this
title may be made in an application filed after the applica-
tion is published only if the claim is made before 1 year
after the date on which the application is published.’’.
SEC. 508. EFFECTIVE DATE.
Sections 502 through 507, and the amendments made
by such sections, shall take effect on the date that is 1 year
after the date of enactment of this Act and shall apply to
all applications filed under section 111 of title 35, United
States Code, on or after that date, and all applications com-
plying with section 371 of title 35, United States Code, that
resulted from international applications filed on or after
that date. The amendments made by sections 504 and 505
shall apply to any such application voluntarily published
by the applicant under procedures established under this
title that is pending on the date that is 1 year after the
date of the enactment of this Act. The amendment made
by section 504 shall also apply to international applica-
tions designating the United States that are filed on or after
the date that is 1 year after the date of the enactment of
this Act.
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TITLE 
VI—OPTIONAL 
INTER
PARTES 
REEXAMINATION
PROCEDURE
SEC. 601. SHORT TITLE.
This title may be cited as the ‘‘Optional Inter Partes
Reexamination Procedure Act of 1999’’.
SEC. 602. EX PARTE REEXAMINATION OF PATENTS.
Chapter 30 of title 35, United States Code, is amended
in the title by inserting ‘‘EX PARTE’’ before ‘‘REEX-
AMINATION OF PATENTS’’.
SEC. 603. DEFINITIONS.
Section 100 of title 35, United States Code, is amended
by adding at the end the following new subsection:
‘‘(e) The term ‘third-party requester’ means a person
requesting ex parte reexamination under section 302 or
inter partes reexamination under section 311 who is not
the patent owner.’’.
SEC. 604. OPTIONAL INTER PARTES REEXAMINATION PRO-
CEDURES.
(a) IN GENERAL.—Part 3 of title 35, United States
Code, is amended by adding after chapter 30 the following
new chapter:
‘‘CHAPTER 31—OPTIONAL INTER PARTES
REEXAMINATION PROCEDURES
‘‘Sec.
‘‘311. Request for inter partes reexamination.
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‘‘312. Determination of issue by Commissioner.
‘‘313. Inter partes reexamination order by Commissioner.
‘‘314. Conduct of inter partes reexamination proceedings.
‘‘315. Appeal.
‘‘316. Certificate of patentability, unpatentability, and claim cancellation.
‘‘317. Inter partes reexamination prohibited.
‘‘318. Stay of litigation.
‘‘§ 311. Request for inter partes reexamination
‘‘(a) IN GENERAL.—Any person at any time may file
a request for inter partes reexamination by the Office of
a patent on the basis of any prior art cited under the provi-
sions of section 301.
‘‘(b) REQUIREMENTS.—The request shall—
‘‘(1) be in writing, include the identity of the
real party in interest, and be accompanied by pay-
ment of an inter partes reexamination fee established
by the Commissioner under section 41; and
‘‘(2) set forth the pertinency and manner of ap-
plying cited prior art to every claim for which reex-
amination is requested.
‘‘(c) COPY.—Unless the requesting person is the
owner of the patent, the Commissioner promptly shall
send a copy of the request to the owner of record of
the patent.
‘‘§ 312. Determination of issue by Commissioner
‘‘(a) REEXAMINATION.—Not later than 3 months after
the filing of a request for inter partes reexamination under
section 311, the Commissioner shall determine whether a
substantial new question of patentability affecting any
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claim of the patent concerned is raised by the request, with
or without consideration of other patents or printed publi-
cations. On the Commissioner’s initiative, and at any time,
the Commissioner may determine whether a substantial
new question of patentability is raised by patents and pub-
lications.
‘‘(b) RECORD.—A record of the Commissioner’s deter-
mination under subsection (a) shall be placed in the official
file of the patent, and a copy shall be promptly given or
mailed to the owner of record of the patent and to the third-
party requester, if any.
‘‘(c) FINAL DECISION.—A determination by the Com-
missioner pursuant to subsection (a) shall be final and non-
appealable. Upon a determination that no substantial new
question of patentability has been raised, the Commissioner
may refund a portion of the inter partes reexamination fee
required under section 311.
‘‘§ 313. Inter partes reexamination order by Commis-
sioner
‘‘If, in a determination made under section 312(a), the
Commissioner finds that a substantial new question of pat-
entability affecting a claim of a patent is raised, the deter-
mination shall include an order for inter partes reexamina-
tion of the patent for resolution of the question. The order
may be accompanied by the initial action of the Patent and
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‘‘(3) Each time that the patent owner files a response
to an action on the merits from the Patent and Trademark
Office, the third-party requester shall have one opportunity
to file written comments addressing issues raised by the ac-
tion of the Office or the patent owner’s response thereto, if
those written comments are received by the Office within
30 days after the date of service of the patent owner’s re-
sponse.
‘‘(c) SPECIAL DISPATCH.—Unless otherwise provided
by the Commissioner for good cause, all inter partes reex-
amination proceedings under this section, including any
appeal to the Board of Patent Appeals and Interferences,
shall be conducted with special dispatch within the Office.
‘‘§ 315. Appeal
‘‘(a) PATENT OWNER.—The patent owner involved in
an inter partes reexamination proceeding under this
chapter—
‘‘(1) may appeal under the provisions of section
134 and may appeal under the provisions of sections
141 through 144, with respect to any decision adverse
to the patentability of any original or proposed
amended or new claim of the patent; and
‘‘(2) may be a party to any appeal taken by a
third-party requester under subsection (b).
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‘‘(b) THIRD-PARTY REQUESTER.—A third-party re-
quester may—
‘‘(1) appeal under the provisions of section 134
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 pat-
ent owner under the provisions of section 134, subject
to subsection (c).
‘‘(c) CIVIL ACTION.—A third-party requester whose re-
quest for an inter partes reexamination results in an order
under section 313 is estopped from asserting at a later time,
in any civil action arising in whole or in part under sec-
tion 1338 of title 28, the invalidity of any claim finally
determined to be valid and patentable on any ground which
the third-party requester raised or could have raised during
the inter partes reexamination proceedings. This subsection
does not prevent the assertion of invalidity based on newly
discovered prior art unavailable to the third-party requester
and the Patent and Trademark Office at the time of the
inter partes reexamination proceedings.
‘‘§ 316. Certificate of patentability, unpatentability,
and claim cancellation
‘‘(a) IN GENERAL.—In an inter partes reexamination
proceeding under this chapter, when the time for appeal has
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expired or any appeal proceeding has terminated, the Com-
missioner shall issue and publish a certificate canceling any
claim of the patent finally determined to be unpatentable,
confirming any claim of the patent determined to be patent-
able, and incorporating in the patent any proposed amend-
ed or new claim determined to be patentable.
‘‘(b) AMENDED
OR
NEW
CLAIM.—Any proposed
amended or new claim determined to patentable and incor-
porated into a patent following an inter partes reexamina-
tion proceeding shall have the same effect as that specified
in section 252 of this title for reissued patents on the right
of any person who made, purchased, or used within the
United States, or imported into the United States, anything
patented by such proposed amended or new claim, or who
made substantial preparation for the same, prior to
issuance of a certificate under the provisions of subsection
(a) of this section.
‘‘§ 317. Inter partes reexamination prohibited
‘‘(a) ORDER FOR REEXAMINATION.—Notwithstanding
any provision of this chapter, once an order for inter partes
reexamination of a patent has been issued under section
313, neither the patent owner nor the third-party requester,
if any, nor privies of either, may file a subsequent request
for inter partes reexamination of the patent until an inter
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partes reexamination certificate is issued and published
under section 316, unless authorized by the Commissioner.
‘‘(b) FINAL DECISION.—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 or if a final decision in an inter
partes reexamination proceeding instituted by a third-
party requester is favorable to the patentability of any
original or proposed amended or new claim of the patent
then neither that party nor its privies may thereafter re-
quest inter partes 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 or inter partes
reexamination proceeding, and an inter partes reexamina-
tion requested by that party or its privies on the basis of
such issues may not thereafter be maintained by the Office,
notwithstanding any other provision of this chapter. This
subsection does not prevent the assertion of invalidity based
on newly discovered prior art unavailable to the third-party
requester and the Patent and Trademark Office at the time
of the inter partes reexamination proceedings.
‘‘§ 318. Stay of litigation
‘‘Once an order for inter partes reexamination of a
patent has been issued under section 313, the patent owner
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may obtain a stay of any pending litigation which involves
an issue of patentability of any claims of the patent which
are the subject of the inter partes reexamination order, un-
less the court before which such litigation is pending deter-
mines that a stay would not serve the interests of justice.’’.
(b) CONFORMING AMENDMENTS.—The table of chapters
for part III of title 25, United States Code, is amended by
striking the item relating to chapter 30 and inserting the
following:
‘‘30. Prior Art Citations to Office and Ex Parte Reexam-
ination of Patents ......................................................
301
‘‘31. Optional Inter Partes Reexamination of Patents ..........
311’’.
SEC. 605. CONFORMING AMENDMENTS.
(a) PATENT FEES; PATENT SEARCH SYSTEMS.—Sec-
tion 41(a)(7) of title 35, United States Code, is amended
to read as follows:
‘‘(7) On filing each petition for the revival of an
unintentionally abandoned application for a patent,
for the unintentionally delayed payment of the fee for
issuing each patent, or for an unintentionally delayed
response by the patent owner in any reexamination
proceeding, $1,210, unless the petition is filed under
section 133 or 151 of this title, in which case the fee
shall be $110.’’.
(b) APPEAL TO THE BOARD OF PATENTS APPEALS AND
INTERFERENCES.—Section 134 of title 35, United States
Code, is amended to read as follows:
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‘‘§ 134. Appeal to the Board of Patent Appeals and
Interferences
‘‘(a) PATENT APPLICANT.—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) PATENT OWNER.—A patent owner in any reex-
amination proceeding may appeal from the final rejection
of any claim by the primary examiner to the Board of Pat-
ent Appeals and Interferences, having once paid the fee for
such appeal.
‘‘(c) THIRD-PARTY.—A third-party requester in an
inter partes proceeding may appeal to the Board of Patent
Appeals and Interferences from the final decision of the pri-
mary examiner favorable to the patentability of any origi-
nal or proposed amended or new claim of a patent, having
once paid the fee for such appeal. The third-party requester
may not appeal the decision of the Board of Patent Appeals
and Interferences.’’.
(c) APPEAL TO COURT OF APPEALS FOR THE FEDERAL
CIRCUIT.—Section 141 of title 35, United States Code, is
amended by adding the following after the second sentence:
‘‘A patent owner in any reexamination proceeding dissatis-
fied with the final decision in an appeal to the Board of
Patent Appeals and Interferences under section 134 may
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appeal the decision only to the United States Court of Ap-
peals for the Federal Circuit.’’.
(d) PROCEEDINGS ON APPEAL.—Section 143 of title
35, United States Code, is amended by amending the third
sentence to read as follows: ‘‘In any reexamination cases,
the Commissioner shall submit to the court in writing the
grounds for the decision of the Patent and Trademark Of-
fice, addressing all the issues involved in the appeal.’’.
(e) CIVIL ACTION TO OBTAIN PATENT.—Section 145
of title 35, United States Code, is amended in the first sen-
tence by inserting ‘‘(a)’’ after ‘‘section 134’’.
SEC. 606. REPORT TO CONGRESS.
Not later than 5 years after the effective date of this
title, the Commissioner of Patents and Trademarks shall
submit to the Congress a report evaluating whether the inter
partes reexamination proceedings established under the
amendments made by this title are inequitable to any of
the parties in interest and, if so, the report shall contain
recommendations for changes to the amendments made by
this title to remove such inequity.
SEC. 607. ESTOPPEL EFFECT OF REEXAMINATION.
Any party who requests an inter partes reexamination
under section 311 of title 35, United States Code, is es-
topped from challenging at a later time, in any civil action,
any fact determined during the process of such reexamina-