Restoring the America Invents Act – Proposed Title 35 Changes

Restoring the America Invents Act

Restoring the America Invents Act

On September 29, 2021, Senator Patrick Leahy (D-Vt.) and Senator John Cornyn (R-Texas) introduced the Restoring the America Invents Act. According to Senator Leahy’s official press release, the goal of the bill is “to address problems for small businesses and ordinary Americans caused by poor-quality patent.”

To promote clarity of the changes proposed to title 35, United States Code, relating to the USPTO Patent Trial and Appeal Board, Founders Legal has highlighted the act’s amendments below.

Proposed amendments

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35 U.S.C 6  Patent Trial and Appeal Board.

(a) IN GENERAL.—There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary, in consultation with the Director. Any reference in any Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Board of Patent Appeals and Interferences is deemed to refer to the Patent Trial and Appeal Board.

(b) DUTIES.—The Patent Trial and Appeal Board shall—

(1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a);

(2) review appeals of reexaminations pursuant to section 134(b);

(3) conduct derivation proceedings pursuant to section 135; and

(4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31  and 32.

(c) 3-MEMBER PANELS.—Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be designated by the Director. Only the The Patent Trial and Appeal Board may grant rehearings. After the constitution of a panel of the Patent Trial and Appeal Board under this subsection has been made public, any changes to the constitution of that 9 panel shall be noted in the record.

(d) REVIEW BY DIRECTOR

‘‘(1) IN GENERAL.—With respect to a final decision of the Patent Trial and Appeal Board—

‘‘(A) the Director may, on the initiative of the Director, review, and modify or set aside,

 the decision; and 

‘‘(B) if the decision is issued under section 318 or 328, a party to the applicable inter partes or post-grant review may request that the Director review, and modify or set aside, the decision.

‘‘(2) REQUIREMENT.—Any review by the Director under paragraph (1) shall be issued in a separate written opinion that—

‘‘(A) is made part of the public record; and

‘‘(B) sets forth the reasons for the review, modification, or setting aside of the final decision of the Patent Trial and Appeal Board.

‘‘(3) TIMELINE AND BASES FOR REVIEW.—Not later than 18 months after the date of enactment of the Restoring the America Invents Act, the Director shall promulgate rules addressing the following issues:

‘‘(A) With respect to review of a decision on the initiative of the Director under paragraph (1)(A)—

‘(i) the timeline under which the Director may review the decision, which shall be consistent with the requirements under section 318(e) or 328(e), if applicable; and‘

‘(ii) the bases on which the Director may review the decision.

‘(B) With respect to a request by a party under paragraph (1)(B)—

‘‘(i) the timeline for submitting such a request;

‘‘(ii) the content that the party is required to include in such a request;

‘‘(iii) the bases on which the party may submit such a request; and

‘‘(iv) the timeline for any response or reply to such a request such that the request can be decided within the deadline imposed under section 318(e) or 328(e), as applicable.

‘‘(4) RULE  OF  CONSTRUCTION.—For  the  purposes of an appeal permitted under section 141, any decision on review issued by the Director under this subsection shall  be  deemed  a  final  decision  of  the Patent Trial and Appeal Board

(d e) TREATMENT OF PRIOR APPOINTMENTS.—The Secretary of Commerce may, in the Secretary’s discretion, deem the appointment of an administrative patent judge who, before the date of the enactment of this subsection of the Restoring the America Invents Act, held office pursuant to an appointment by the Director or the Secretary to take effect on the date on which the Director or the Secretary initially appointed the administrative patent judge. It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge’s having been originally appointed by the Director or, before the date of enactment of the  Restoring the America Invents Act, having performed duties no longer performed by administrative patent judges, that the administrative patent judges, so appointed that the applicable administrative patent judge was acting as a de facto officer.

35 U.S.C 302 Request for reexamination.

Any person including a governmental entity at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited under the provisions of section 301. The request must be in writing and must be accompanied by payment of a reexamination fee established by the Director pursuant to the provisions of section 41. The request must set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested. Unless the requesting person is the owner of the patent, the Director promptly will send a copy of the request to the owner of record of the patent.

35 USC 311 Inter partes review.

(a) IN GENERAL.—Subject to the provisions of this chapter, a person including a governmental entity who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent. The Director shall establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review.

(b) SCOPE.—A petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section 102  or 103  and only on the basis of prior art consisting of patents or printed publications

(1) section 102 or 103 and only on the basis of—

‘(A) prior art consisting of patents or printed publications; or

‘‘(B) admissions in the patent specification, drawings, or claims; or

(2) statutory or obviousness-type double patenting on the basis of—

(A) patents or printed publications; or

(B) admissions in the patent specification, drawings, or claims.’’;

(c) FILING DEADLINE.*—A petition for inter partes review shall be filed after the later of either—

(1) the date that is 9 months after the grant of a patent; or

(2) if a post-grant review is instituted under chapter 32, the date of the termination of such post-grant review.

35 USC 314 Institution of inter partes review.

(a) THRESHOLD.—The Director may not authorize an inter partes review to be instituted unless Subject only to the discretion of the Director under section 325(d)(4), a petition that meets the requirements of this chapter shall be instituted if the Director determines that the information presented in the petition filed under section 311  and any response filed under section 313  shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.

(b) TIMING.—The Director shall determine whether to institute an inter partes review under this chapter pursuant to a petition filed under section 311  within 3 months after—

(1) receiving a preliminary response to the petition under section 313; or

(2) if no such preliminary response is filed, the last date on which such response may be filed.

(c) NOTICE.—The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a), and shall make such notice available to the public as soon as is practicable. Such notice shall include the date on which the review shall commence.

(d) NO APPEAL.—The determination by the Director whether to institute or maintain an inter partes review under this section chapter shall be final and nonappealable.

35 USC 315 Relation to other proceedings or actions.

(a) INFRINGER’S CIVIL ACTION.—

(1) INTER PARTES REVIEW BARRED BY CIVIL ACTION.—An inter partes 

(A) In General— An inter partes review may not be instituted if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent. 

(B) RULE OF CONSTRUCTION.—Subparagraph (A) may not be construed to prevent an inter partes review from being instituted if a complaint in a civil action described in that subparagraph has been dismissed without prejudice.

(2) STAY OF CIVIL ACTION.—If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for inter partes review of the patent, that civil action shall be automatically stayed until either—

(A) the patent owner moves the court to lift the stay;

(B) the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or

(b) PATENT OWNER’S ACTION.— (1) IN GENERAL.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in  the  preceding  sentence  shall  be  subject  to the following limitations:

(A) The time limitation shall not apply—

(i) to a request for joinder under subsection (c); or

(ii) if the complaint is dismissed without prejudice.

(B) If new or amended claims issue from reexamination after the petitioner, real party in interest, or privy of the petitioner is served with the complaint,  an inter partes review of those claims may be instituted if the petition requesting the review is filed not later than 1 year after the date on which the challenged claims are asserted in the action.

(2) REQUEST FOR STAY.—

(A) IN GENERAL.—If a party seeks a stay of a civil action brought under section 281 alleging infringement of a patent that is also subject to an inter partes review, the court shall decide whether to stay the civil action based on whether—

(i) the outcome of the inter partes review will  likely  simplify  the  issues  in question in the civil action and streamline the proceedings in the civil action;

(ii) as of the date on which the stay is requested, discovery in the civil action is complete;

(iii) a stay, or the denial thereof, would—

(I) unduly prejudice the nonmoving party; or

(II) present a clear tactical advantage for the moving party; and

(iv) a stay, or the denial thereof, will reduce the burden of litigation on the parties to the civil action and the court.

(B) REVIEW.—A party may take an immediate interlocutory appeal from the decision of a district court of the United States under subparagraph (A). The United States Court of Appeals for the Federal Circuit shall review the district court’s decision to ensure consistent application of established precedent, and such review shall be de novo.’’;

(C) the petitioner or real party in interest moves the court to dismiss the civil action.

(3) TREATMENT OF COUNTERCLAIM.—A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection.

(b) PATENT OWNER’S ACTION.—An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The time limitation set forth in the preceding sentence shall not apply to a request for joinder under subsection (c).

(c) JOINDER.—If the Director

(1)IN GENERAL. If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311  that the Director, after receiving a preliminary response under section 313  or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.

(2) ESTOPPEL.—Any person joined as a party to an inter partes review, and any real party in interest or privy of such person,  shall be estopped under subsection (e) to the same extent as if that person, real party in interest, or privy had been the first petitioner in that inter partes review.

(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a)  , 251, and 252, and chapter 30, during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the inter partes review or other proceeding or matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.

(d) MULTIPLE PROCEEDINGS.—

(1) IN   GENERAL.—Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of an inter partes review, if another proceeding or matter involving the patent is before the Office, or if there is a pending application claiming the benefit of  a  common filing date to the patent under section 120 or 121—

(A) the parties shall notify the Director; and

(B) the Director shall issue a decision determining the manner in which the other proceeding or matter may proceed, including providing for stay,  transfer,  consolidation,  or termination of any such proceeding or matter.

(2) NO EXTENSION.—A decision of the Director under paragraph (1)(B) may not—

(A) extend any statutory deadline under this chapter; or1 ‘‘(B) terminate an inter partes proceeding in favor of an ex parte proceeding. 

(3) PRESUMPTION.—For the purposes of this subsection, if the multiple proceedings described in paragraph (1) are of like type and are filed reasonably close in time, there shall be a rebuttable presumption that the Director shall consolidate the proceedings under that paragraph.

(e) ESTOPPEL.—

(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in

(A) Estoppel Against Petitoner.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a), or the real party in interest or privy of the petitioner, may not after the time for appeal of the decision has expired or any such appeal has terminated, request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

(B) ESTOPPEL AGAINST PATENT OWNER.—The Office may not issue to a patent owner any claim that is not patentably distinct from a claim that was issued and was subsequently—

(i) found to be unpatentable; or

(ii) canceled in any proceeding before the Office,  including under section  135, 251, 253, 301, 311, or 321.

(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a) that the claim is not unpatentable, or the real party in interest or privy of the petitioner, may not, after the time for appeal of the decision has expired or any such appeal has terminated, assert either in a civil action arising in whole or in part under section 1338  or 1498 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

35 USC 316 Conduct of inter partes review.

(a) REGULATIONS.—The Director shall prescribe regulations—

(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion;

(2) setting forth the standards for the showing of sufficient grounds to institute a review under section 314(a);

(3) establishing procedures for the submission of supplemental information after the petition is filed;

(4) establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title;

(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to—

(A) the deposition of witnesses submitting affidavits or declarations; and

(B) what is otherwise necessary in the interest of justice;

(6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding;

(7) providing for protective orders governing the exchange and submission of confidential information;

(8) providing for the filing by the patent owner of a response to the petition under section 313  after an inter partes review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response;

(9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent;

(10) providing either party with the right to an oral hearing as part of the proceeding;

(11) requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 315(c) or consolidation under section 315(d) ;

(12) setting a time period for requesting joinder under section 315(c); and

(13) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director.

(b) CONSIDERATIONS.—In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.

(c) PATENT TRIAL AND APPEAL BOARD.—The Patent

(1) IN GENERAL.—The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each inter partes review instituted under this chapter.

(2) EX PARTE   COMMUNICATION.—An officer who has review authority, supervisory authority, or disciplinary authority with respect to an administrative patent judge of the Patent Trial and Appeal Board (or a delegate of such an officer), and who is not a member of a panel described in section 6(c), shall refrain from ex parte communication with such a judge who is a member of that panel concerning any pending matter before that panel, except as allowed under the Code of Conduct for United States Judges.

(d) AMENDMENT OF THE PATENT.—

(1) IN GENERAL.—During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:

(A) Cancel any challenged patent claim.

(B) For each challenged claim, propose a reasonable number of substitute claims.

(2) ADDITIONAL MOTIONS.—Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the Director.

(3) SCOPE OF CLAIMS.—An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.

(e) EVIDENTIARY STANDARDS.—In an

(1) IN GENERAL.—In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability of challenged patent claims by a preponderance of the evidence.

(2) CLAIM AMENDMENT.—For any substitute claim proposed under subsection (d)—

(A) the patent owner shall have the burden of proving patentability, including under sections 101, 102, 103, and 112, by a preponderance of the evidence;

(B) the Patent Trial and Appeal Board shall—

(i) examine the substitute claim; or

(ii) notwithstanding subsection (c)(2), refer the substitute claim to the Director, who shall cause an examination of the substitute claim to be made within the time limits for the applicable inter partes review; and

(C) the Director may establish, by regulation, fees for examination of the substitute claim in such amounts as the Director determines to be reasonable,  taking into consideration the aggregate costs of examination.

35 USC 318 Decision of the Board.

(a) FINAL WRITTEN DECISION.—If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).

(b) CERTIFICATE.—If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall, not later than 60 days after the date on which the parties to the inter partes review have informed the Director that the time for appeal has expired or any appeal has terminated, 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 patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.

(c) INTERVENING RIGHTS.—Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review under this chapter shall have the same effect as that specified in section 252  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 therefor, before the issuance of a certificate under subsection (b).

(d) DATA ON LENGTH OF REVIEW.—The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each inter partes review.

(e) REHEARING.—Not later than 120 days after the date on which the Patent Trial and Appeal Board issues a final written decision under subsection (a), the Board or the Director shall finally decide any request for reconsideration, rehearing, or review that is submitted with respect to the decision, except that the Director may, for good cause shown, extend that 120-day period by not more than 60 days.

35 USC 319 Appeal.

A party (a) IN GENERAL.—A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 318(a)  may appeal the decision pursuant to sections 141  through 144. Any party to the inter partes review shall have the right to be a party to the appeal.

(b) STANDING.—

(1) INJURY IN FACT.—For the purposes of an appeal described in subsection (a), injury in fact shall be presumed if  the party appealing the decision—

(A) reasonably expects that another person will assert estoppel against the party under section 315(e) as a result of the final written decision that is the subject of the appeal; or

(B) suffers any other concrete and particularized injury that—

(i) is  fairly  traceable  to  the  final written decision that is the subject of the appeal; and

(ii) could be redressed through appellate review.

(2) ESTOPPEL.—If a court finds that a party lacks standing to bring an appeal described in subsection (a) under article III of the Constitution of the United States, that party shall not be estopped under section 315(e) with respect to the underlying inter partes review.

35 USC 321 Post-grant review.

(a) IN GENERAL.—Subject to the provisions of this chapter, a person, including a governmental entity, who is not the owner of a patent may file with the Office a petition to institute a post-grant review of the patent. The Director shall establish, by regulation, fees to be paid by the person requesting the review, in such amounts as the Director determines to be reasonable, considering the aggregate costs of the post-grant review.

(b) SCOPE.—A petitioner in a post-grant review may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b)  (relating to invalidity of the patent or any claim).

(c) FILING DEADLINE.—A petition for a post-grant review may only be filed not later than the date that is 9 months after the date of the grant of the patent or of the issuance of a reissue patent (as the case may be).

35 USC 324 Institution of post-grant review.

35 U.S.C. 324  Institution of post-grant review.

(a) THRESHOLD.—The Director may not authorize a post-grant review to be instituted unless Subject only to the dis cretion of the Director under section 325(d)(4), a  petition filed under section 321 that meets the requirements of this chapter shall be instituted if the Director determines that the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.

(b) ADDITIONAL GROUNDS.—The determination required under subsection (a) may also be satisfied by a showing that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.

(c) TIMING.—The Director shall determine whether to institute a post-grant review under this chapter pursuant to a petition filed under section 321  within 3 months after—

(1) receiving a preliminary response to the petition under section 323; or

(2) if no such preliminary response is filed, the last date on which such response may be filed.

(d) NOTICE.—The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a) or (b), and shall make such notice available to the public as soon as is practicable. Such notice shall include the date on which the review shall commence.

(e) NO APPEAL.—The determination by the Director whether to institute or maintain a post-grant review under this section chapter shall be final and nonappealable.

35 USC 325  Relation to other proceedings or actions.

(a) INFRINGER’S CIVIL ACTION.—

(1) POST-GRANT REVIEW BARRED BY CIVIL ACTION.—A post-grant review may not be instituted under this chapter if, before the date on which the petition for such a review is filed, the petitioner or real party in interest filed a civil action challenging the validity of a claim of the patent.

(2) STAY OF CIVIL ACTION.—If the petitioner or real party in interest files a civil action challenging the validity of a claim of the patent on or after the date on which the petitioner files a petition for post-grant review of the patent, that civil action shall be automatically stayed until either—

(A) the patent owner moves the court to lift the stay;

(B) the patent owner files a civil action or counterclaim alleging that the petitioner or real party in interest has infringed the patent; or

(C) the petitioner or real party in interest moves the court to dismiss the civil action.

(3) TREATMENT OF COUNTERCLAIM.—A counterclaim challenging the validity of a claim of a patent does not constitute a civil action challenging the validity of a claim of a patent for purposes of this subsection.

(4) REQUEST FOR STAY.—

(A) IN GENERAL.—If a party seeks a stay of a civil action brought under section 281 alleging infringement of a patent that is also subject to a post-grant review, the court shall decide whether to stay the civil action based on whether—

 (i) the outcome of the post-grant review will likely simplify the issues in question in the civil action and streamline the proceedings in the civil action;

(ii) as of the date on which the stay is requested, discovery in the civil action is

 complete;

(iii) a stay, or the denial thereof, would—

(I) unduly prejudice the nonmoving party; or

(II) present a clear tactical advantage for the moving party; and

(iv) a stay, or the denial thereof, will reduce the burden of litigation on the parties to the civil action and the court.

(B) REVIEW.—A party may take an immediate interlocutory appeal from the decision of a district court of the United States under subparagraph (A). The United States Court of Appeals for the Federal Circuit shall review the district court’s decision to ensure consistent application of established precedent, and such review shall be de novo.

(b) PRELIMINARY INJUNCTIONS.—If a civil action alleging infringement of a patent is filed within 3 months after the date on which the patent is granted, the court may not stay its consideration of the patent owner’s motion for a preliminary injunction against infringement of the patent on the basis that a petition for post-grant review has been filed under this chapter or that such a post-grant review has been instituted under this chapter.

(c) JOINDER.—If more (1) IN GENERAL.—If more than 1 petition for a post-grant review under this chapter is properly filed against the same patent and the Director determines that more than 1 of these petitions warrants the institution of a post-grant review under section 324, the Director may consolidate such reviews into a single post-grant review.

(2) ESTOPPEL.—Any person joined as a party to a post-grant review, and any real party in interest or privy of such person, shall be estopped under subsection (e) to the same extent as if that person, real party in interest, or privy had been the first petitioner in that post-grant review.

(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections 135(a)  , 251, and 252, and chapter 30, during the pendency of any post- grant review under this chapter, if another proceeding or matter involving the patent is before the Office, the Director may determine the manner in which the post-grant review or other proceeding or matter may proceed, including providing for the stay, transfer, consolidation, or termination of any such matter or proceeding. In determining whether to institute or order a proceeding under this chapter, chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.

(d) MULTIPLE PROCEEDINGS.—(1) IN   GENERAL.—Notwithstanding sections 135(a), 251, and 252, and chapter 30, during the pendency of any post-grant review under this chapter, if another proceeding or matter involving the patent is before the Office, or if there is a pending application claiming the benefit of a common filing date to the patent under section 120 or 121—

(A) the parties shall notify the Director; and

(B) the Director shall issue a decision determining the manner in which the other proceeding or matter may proceed, including providing for stay,  transfer,  consolidation,  or termination of any such proceeding or matter.

(2) NO EXTENSION.—A decision of the Director under paragraph (1)(B) may not—

(A) extend any statutory deadline under this chapter; or

(B) terminate an inter partes proceeding in favor of an ex parte proceeding.

(3) PRESUMPTION.—For the purposes of this subsection, if the multiple proceedings described in paragraph (1) are of like type and are filed reasonably close in time, there shall be a rebuttable presumption that the Director shall consolidate the proceedings under that paragraph.

(4) CONSIDERATIONS.—In determining whether to institute or order a proceeding under this chapter, chapter  30,  or chapter  31,  the  Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.

(e) ESTOPPEL.—

(1) PROCEEDINGS BEFORE THE OFFICE.—The petitioner in  

(A) ESTOPPEL  AGAINST  PETITIONER.— The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a), or the real party in interest or privy of the petitioner, may not, after the time for appeal of the decision has expired or any such appeal has terminated,  request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.

(B) ESTOPPEL AGAINST PATENT OWNER.—The Office may not issue to a patent owner any claim that is not patentably distinct from a claim that was issued and was subsequently—

(i) found to be unpatentable; or

(ii) canceled in any proceeding before the Office,  including under section  135, 251, 253, 301, 311, or 321.

(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The petitioner in a post-grant review of a claim in a patent under this chapter that results in a final written decision under section 328(a) that the claim is not unpatentable, or the real party in interest or privy of the petitioner, may not, after the time for appeal of the decision has expired or any such appeal has terminated, assert either in a civil action arising in whole or in part under section 1338  or 1498 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that post-grant review.

(f) REISSUE PATENTS.—A post-grant review may not be instituted under this chapter if the petition requests cancellation of a claim in a reissue patent that is identical to or narrower than a claim in the original patent from which the reissue patent was issued, and the time limitations in section 321(c)  would bar filing a petition for a post-grant review for such original patent.

35 USC 326 Conduct of post-grant review.

(a) REGULATIONS.—The Director shall prescribe regulations—

(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion;

(2) setting forth the standards for the showing of sufficient grounds to institute a review under subsections (a) and (b) of section 324;

(3) establishing procedures for the submission of supplemental information after the petition is filed;

(4) establishing and governing a post-grant review under this chapter and the relationship of such review to other proceedings under this title;

(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to evidence directly related to factual assertions advanced by either party in the proceeding;

(6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding;

(7) providing for protective orders governing the exchange and submission of confidential information;

(8) providing for the filing by the patent owner of a response to the petition under section 323  after a post-grant review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response;

(9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent;

(10) providing either party with the right to an oral hearing as part of the proceeding;

(11) requiring that the final determination in any post-grant review be issued not later than 1 year after the date on which the Director notices the institution of a proceeding under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 325(c) or consolidation under 325(d); and

(12) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director.

(b) CONSIDERATIONS.—In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.

(c) PATENT TRIAL AND APPEAL BOARD.—The Patent (1) IN GENERAL.—The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each post-grant review instituted under this chapter.

(2) EX PARTE   COMMUNICATION.—An officer who has review authority, supervisory authority, or disciplinary authority with respect to an administrative patent judge of the Patent Trial and Appeal Board (or a delegate of such an officer), and who is not a member of a panel described in section 6(c), shall refrain from ex parte communication with such a judge who is a member of that panel concerning any pending matter before that panel, except as allowed under the Code of Conduct for United States Judges.

(d) AMENDMENT OF THE PATENT.—

(1) IN GENERAL.—During a post-grant review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:

(A) Cancel any challenged patent claim.

(B) For each challenged claim, propose a reasonable number of substitute claims.

(2) ADDITIONAL MOTIONS.—Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 327, or upon the request of the patent owner for good cause shown.

(3) SCOPE OF CLAIMS.—An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.

(e) EVIDENTIARY STANDARDS.—In a

(1) IN GENERAL.—In a post-grant review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability of challenged patent claims by a preponderance of the evidence.

(2) CLAIM AMENDMENT.—For any substitute claim proposed under subsection (d)— ‘‘(A) the patent owner shall have the burden of proving patentability, including under sections 101, 102, 103, and 112, by a preponderance of the evidence;

(B) the Patent Trial and Appeal Board shall—

(i) examine the substitute claim; or notwithstanding subsection (c)(2), refer the substitute claim to the Director, who shall cause an examination of the substitute claim to be made within the time limits for the applicable inter partes review; and (C) the Director may establish, by regulation, fees for examination of the substitute claim in such amounts as the Director determines to be reasonable, taking into consideration the aggregate costs of examination.

35 USC 328 Decision of the Board.

(a) FINAL WRITTEN DECISION.—If a post-grant review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 326(d).

(b) CERTIFICATE.—If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall not later than 60 days after the date on which the parties to the post-grant review have informed the Director that the time for appeal has expired or any appeal has terminated, 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 patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.

(c) INTERVENING RIGHTS.—Any proposed amended or new claim determined to be patentable and incorporated into a patent following a post-grant review under this chapter shall have the same effect as that specified in section 252  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 therefor, before the issuance of a certificate under subsection (b).

(d) DATA ON LENGTH OF REVIEW.—The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each post-grant review.

(e) REHEARING.—Not later than 120 days after the date on which the Patent Trial and Appeal Board issues a final written decision under subsection (a), the Board or the Director shall finally decide any request for reconsideration, rehearing, or review that is submitted with respect to the decision, except that the Director may, for good cause shown, extend that 120-day period by not more than 60 days.

35 USC 329 Appeal.

A party (a) IN GENERAL.—A party dissatisfied with the final written decision of the Patent Trial and Appeal Board under section 328(a)  may appeal the decision pursuant to sections 141  through 144. Any party to the post-grant review shall have the right to be a party to the appeal.

(b) STANDING.—

(1) INJURY IN FACT.—For the purposes of an appeal described in subsection (a), injury in fact shall be presumed if the party appealing the decision—

(A) reasonably expects that another person will assert estoppel against the party under section 325(e) as a result of the final written decision that is the subject of the appeal; or 

(B) suffers any other concrete and particularized injury that—

(i) is  fairly  traceable  to  the  final written decision that is the subject of the appeal; and

(ii) could be redressed through appellate review.

(2) ESTOPPEL.—If a court finds that a party lacks standing to bring an appeal described in subsection (a) under article III of the Constitution of the United States, that party shall not be estopped under section 325(e) with respect to the underlying post-grant review.’’.

John DeStefano, Technical Advisor

John is a patent and technology technical advisor at Founders Legal. John performs patent prosecution assistance for the Intellectual Property practice.

He received his Bachelor’s Degree in Electrical Engineering from Missouri University of Science and Technology and is pursuing a law degree through the University of New Hampshire.

Prior to joining Founders Legal, John was a Technology Transfer Intern for the Missouri University of Science and Technology, providing intellectual property support in a university setting.

Founders Legal (Bekiares Eliezer LLP) is a boutique Corporate & Intellectual Property Law Firm based in Atlanta, Georgia USA, and trusted by thousands of companies nationwide. Founders Legal focuses exclusively on complex matters in the areas of Intellectual Property, Corporate, Transactional, and Securities law.

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