Relevant Statutes and Regulations

• Author: Erika Harmon Arner - Kathleen A. Daley - Michael J. Flibbert
• Pages: 237-315

237

Chapter 6

Relevant Statutes and Regulations

This chapter provides a copy of applicable statute and regulations for trials

and appeals, current through the May 2015 update, including the un-codied

section 18 text.

Part 1: PTAB Trials

I. Statutes

35 U.S.C. § 311: Inter partes review

(a) In General—Subject to the provisions of this chapter, a person

who is not the owner of a patent may le with the Ofce 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 can-

cel as unpatentable one 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.

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CHAPTER 6

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(c) Filing Deadline—A petition for inter partes review shall be led

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 U.S.C. § 312: Petitions

(a) Requirements of Petition—A petition led under section 311 may

be considered only if

(1) the petition is accompanied by payment of the fee established

by the Director under section 311;

(2) the petition identies all real parties in interest;

(3) the petition identies, in writing and with particularity, each

claim challenged, the grounds on which the challenge to each

claim is based, and the evidence that supports the grounds for

the challenge to each claim, including

(A) copies of patents and printed publications that the peti-

tioner relies upon in support of the petition; and

(B) afdavits or declarations of supporting evidence and

opinions, if the petitioner relies on expert opinions;

(4) the petition provides such other information as the Director

may require by regulation; and

(5) the petitioner provides copies of any of the documents

required under paragraphs (2), (3), and (4) to the patent owner

or, if applicable, the designated representative of the patent

owner.

(b) Public Availability—As soon as practicable after the receipt of a

petition under section 311, the Director shall make the petition avail-

able to the public.

35 U.S.C. § 313: Preliminary respon se to petition

If an inter partes review petition is led under section 311, the patent owner

shall have the right to le a preliminary response to the petition, within a

time period set by the Director, that sets forth reasons why no inter partes

review should be instituted based upon the failure of the petition to meet

any requirement of this chapter.

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RELEVANT STATUTES AND REGULATIONS

35 U.S.C. § 314: Institution of inter partes review

(a) Threshold—The Director may not authorize an inter partes review to

be instituted unless the Director determines that the information presented

in the petition led under section 311 and any response led under section

313 shows that there is a reasonable likelihood that the petitioner would

prevail with respect to at least one 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 led under

section 311 within 3 months after

(1) receiving a preliminary response to the petition under sec-

tion 313; or

(2) if no such preliminary response is led, the last date on which

such response may be led.

(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 an inter partes review under this section shall be nal and

nonappealable.

35 U.S.C. § 315: Relation to other pr oceedings or actions

(a) Infringer’s Civil Action

(1) Inter partes review barred by civil action—An inter partes

review may not be instituted if, before the date on which the peti-

tion for such a review is led, the petitioner or real party in interest

led a civil action challenging the validity of a claim of the patent.

(2) Stay of civil action—If the petitioner or real party in inter-

est les a civil action challenging the validity of a claim of the

patent on or after the date on which the petitioner les a peti-

tion 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 les a civil action or counterclaim

alleging that the petitioner or real party in interest has

infringed the patent; or

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