[Congressional Bills 103th Congress]
[From the U.S. Government Publishing Office]
[S. 2341 Engrossed in Senate (ES)]
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.
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.
Be it enacted by the Senate and House of Representatives 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
1994''.
SEC. 2. DEFINITIONS.
Section 100 of title 35, United States Code, is amended by adding
at the end thereof the following new subsection:
``(e) The term `third-party requester' means a person requesting
reexamination under section 302 of this title who is not the patent
owner.''.
SEC. 3. REEXAMINATION PROCEDURES.
(a) Request for Reexamination.--Section 302 of title 35, United
States Code, is amended to read as follows:
``Sec. 302. Request for reexamination
``Any person at any time may file a request for reexamination by
the Office of a patent on the basis of any prior art cited under the
provisions of section 301 of this title or on the basis of the
requirements of section 112 of this title except for the best mode
requirement. The request must be in writing and must be accompanied by
payment of a reexamination fee established by the Commissioner of
Patents and Trademarks pursuant to the provisions of section 41 of this
title. The request must set forth the pertinency and manner of applying
cited prior art to every claim for which reexamination is requested or
the manner in which the patent specification or claims fail to comply
with the requirements of section 112 of this title. Unless the
requesting person is the owner of the patent, 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:
``Sec. 303. Determination of issue by Commissioner
``(a) Within three months following the filing of a request for
reexamination under the provisions of section 302 of this title, the
Commissioner will 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 at any time, the Commissioner
may determine whether a substantial new question of patentability is
raised by patent or printed 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 Commissioner 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:
``Sec. 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:
``Sec. 305. Conduct of reexamination proceedings
``(a) Subject to subsection (b) of this section, reexamination will
be conducted according to the procedures established 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 reexamination
proceeding in which the order for reexamination is based upon a third-
party reexamination request.
``(2) Any document (other than the reexamination request) filed in
a reexamination proceeding by either the patent owner or the third-
party requester shall be served on any other party.
``(3)(A) 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. At a minimum, such comments may be filed
within 1 month after the date of service of the patent owner's
response.
``(B) Comments filed under this paragraph shall be limited to
issues covered by the Office action 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 Appeals and Interferences, will be conducted
with special dispatch within the Office.''.
(e) Appeal.--Section 306 of title 35, United States Code, is
amended to read as follows:
``Sec. 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
through 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 under 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
through 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 patent owner,
subject to subsection (c) of this section.
``(c) A third-party requester who files a notice of appeal or who
participates as a party to an appeal by the patent owner under the
provisions of sections 141 through 144 of this title is estopped from
later asserting, in any forum, the invalidity of any claim determined
to be patentable on appeal on any ground which the third-party
requester raised or could have raised during the reexamination
proceedings. A third-party requester is deemed not to have participated
as a party to an appeal by the patent owner unless, within twenty 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:
``Sec. 308. Reexamination prohibited
``(a) Notwithstanding any provision of this chapter, once an order
for reexamination of a patent has been issued 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 authorized 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 thereafter 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 reexamination 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 Interferences.--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
written appeal of an applicant, or a patent owner or a third-party
requester in a reexamination proceeding, review adverse 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 by inserting ``or
for an unintentionally delayed response by the patent owner in a
reexamination proceeding,'' after ``issuing each patent,''.
(c) Appeal to the Board of Patent Appeals and Interferences.--
Section 134 of title 35, United States Code, is amended to read as
follows:
``Sec. 134. Appeal to the Board of Patent Appeals and Interferences
``(a) 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) A patent owner in a reexamination proceeding may appeal from
the final rejection of any claim by the primary examiner to the Board
of Patent Appeals and Interferences, having once paid the fee for such
appeal.
``(c) A third-party requester may appeal to the Board of Patent
Appeals and Interferences from the final decision of the primary
examiner favorable to the patentability of any original or proposed
amended or new claim of a patent, having once paid the fee for such
appeal.''.
(d) Appeal to Court of Appeals for the Federal Circuit.--Section
141 of title 35, United States Code, is amended by amending the first
sentence to read as follows: ``An applicant, a patent owner or a third-
party requester, dissatisfied with the final decision in an appeal to
the Board of Patent Appeals and Interferences under section 134 of this
title, may appeal the decision to the United States Court of Appeals
for the Federal Circuit.''.
(e) Proceedings on Appeal.--Section 143 of title 35, United States
Code, is amended by amending the third sentence to read as follows:
``In ex parte and reexamination cases, the Commissioner shall submit to
the court in writing the grounds for the decision of the Patent and
Trademark Office, addressing all the issues involved in the appeal.''.
(f) Civil Action To Obtain Patent.--Section 145 of title 35, United
States Code, is amended in the first sentence by inserting ``(a)''
after ``section 134''.
SEC. 5. EFFECTIVE DATES.
This Act shall take effect six months after the date of enactment
of this Act and shall apply to all reexamination requests filed on or
after such date.
Passed the Senate October 4 (legislative day, September
12), 1994.
Attest:
Secretary.