I
104TH CONGRESS
1ST SESSION
H. R. 1732
To amend chapter 30 of title 35, United States Code, to afford third parties
an opportunity for greater participation in reexamination proceedings
before the Patent and Trademark Office, and for other purposes.
IN THE HOUSE OF REPRESENTATIVES
MAY 25, 1995
Mr. MOORHEAD (for himself and Mrs. SCHROEDER) introduced the following
bill; which was 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 participa-
tion in reexamination proceedings before the Patent and
Trademark Office, and for other purposes.
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ‘‘Patent Reexamination
Reform Act of 1995’’.
ent, the Commissioner promptly will send a copy of the
request to the owner of record of the patent.’’.
(b) DETERMINATION OF ISSUE BY COMMISSIONER.—
Section 303 of title 35, United States Code, is amended
to read as follows:
‘‘§ 303. Determination of issue by Commissioner
‘‘(a) Within 3 months following the filing of a request
for reexamination under the provisions of section 302 of
this title, the Commissioner shall determine whether a
substantial new question of patentability affecting any
claim of the patent concerned is raised by the request,
with or without consideration of other patents or printed
publications. On his own initiative, and any time, the Com-
missioner may determine whether a substantial new ques-
tion of patentability is raised by patents and publications
or by the failure of the patent specification or claims to
comply with the requirements of section 112 of this title
except for the best mode requirement.
‘‘(b) A record of the Commissioner’s determination
under subsection (a) of this section will be placed in the
official file of the patent, and a copy promptly will be given
or mailed to the owner of record of the patent and to the
third-party requester, if any.
‘‘(c) A determination by the Commissioner pursuant
to subsection (a) of this section will be final and
nonappealable. Upon a determination that no substantial
new question of patentability has been raised, the Com-
missioner may refund a portion of the reexamination fee
required under section 302 of this title.’’.
(c) REEXAMINATION ORDER BY COMMISSIONER.—
Section 304 of title 35, United States Code, is amended
to read as follows:
‘‘§ 304. Reexamination order by Commissioner
‘‘If, in a determination made under the provisions of
section 303(a) of this title, the Commissioner finds that
a substantial new question of patentability affecting any
claim of a patent is raised, the determination will include
an order for reexamination of the patent for resolution of
the question. The order may be accompanied by the initial
Office action on the merits of the reexamination conducted
in accordance with section 305 of this title.’’.
(d) CONDUCT OF REEXAMINATION PROCEEDINGS.—
Section 305 of title 35, United States Code, is amended
to read as follows:
‘‘§ 305. Conduct of reexamination proceedings
‘‘(a) Subject to subsection (b) of this section, reexam-
ination will be conducted according to the procedures es-
tablished for initial examination under the provisions of
sections 132 and 133 of this title. In any reexamination
proceeding under this chapter, the patent owner will be
permitted to propose any amendment to the patent and
a new claim or claims thereto. No proposed amended or
new claim enlarging the scope of the claims of the patent
will be permitted in a reexamination proceeding under this
chapter.
‘‘(b)(1) This subsection shall apply to any reexamina-
tion proceeding in which the order for reexamination is
based upon a request by a third-party requester.
‘‘(2) With the exception of the reexamination request,
any document filed by either the patent owner or the
third-party requester shall be served on the other party.
‘‘(3) If the patent owner files a response to any Office
action on the merits, the third-party requester may once
file written comments within a reasonable period not less
than 1 month from the date of service of the patent own-
er’s response. Written comments provided under this para-
graph shall be limited to issues covered by the Office ac-
tion or the patent owner’s response.
‘‘(c) Unless otherwise provided by the Commissioner
for good cause, all reexamination proceedings under this
section, including any appeal to the Board of Patent Ap-
peals and Interferences, will be conducted with special dis-
patch within the Office.’’.
(e) APPEAL.—Section 306 of title 35, United States
Code, is amended to read as follows:
‘‘§ 306. Appeal
‘‘(a) The patent owner involved in a reexamination
proceeding under this chapter may—
‘‘(1) appeal under the provisions of section 134
of this title, and may appeal under the provisions of
sections 141 to 144 of this title, with respect to any
decision adverse 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 a third-
party requester pursuant to subsection (b) of this
section.
‘‘(b) A third-party requester may—
‘‘(1) appeal under the provisions of section 134
of this title, and may appeal under the provisions of
sections 141 to 144 of this title, 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, subject to subsection (c) of this section.
‘‘(c) A third-party requester who, under the provi-
sions of sections 141 to 144 of this title, files a notice
of appeal or who participates as a party to an appeal by
the patent owner is estopped from later asserting, in any
forum, the invalidity of any claim determined to be patent-
able on appeal on any ground which the third-party re-
quester raised or could have raised during the reexamina-
tion proceedings. A third-party requester is deemed not
to have participated as a party to an appeal by the patent
owner unless, within 20 days after the patent owner has
filed notice of appeal, the third-party requester files notice
with the Commissioner electing to participate.’’.
(f) REEXAMINATION PROHIBITED.—(1) Chapter 30
of title 35, United States Code, is amended by adding the
following section at the end thereof:
‘‘§ 308. Reexamination prohibited
‘‘(a) Notwithstanding any provision of this chapter,
once an order for reexamination of a patent has been is-
sued under section 304 of this title, neither the patent
owner nor the third-party requester, if any, nor privies of
either, may file a subsequent request for reexamination
of the patent until a reexamination certificate is issued
and published under section 307 of this title, unless au-
thorized by the Commissioner.
‘‘(b) 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, then neither that party nor its privies may there-
after request 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, and a 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 provision of this chapter.’’.
(2) The table of sections for chapter 30 of title 35,
United States Code, is amended by adding the following
at the end thereof:
‘‘308. Reexamination prohibited.’’.
SEC. 4. CONFORMING AMENDMENTS.
(a) BOARD
OF
PATENT
APPEALS
AND
INTER-
FERENCES.—The first sentence of section 7(b) of title 35,
United States Code, is amended to read as follows: ‘‘The
Board of Patent Appeals and Interferences shall, on writ-
ten appeal of an applicant, or a patent owner or a third-
party requester in a reexamination proceeding, review ad-
verse decisions of examiners upon applications for patents
and decisions of examiners in reexamination proceedings,
and shall determine priority and patentability of invention
in interferences declared under section 135(a) of this
title.’’.
(b) PATENT
FEES; PATENT
AND
TRADEMARK
SEARCH SYSTEMS.—Section 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