35 U.S.C. 311 — (note) Inter partes review applicability provisions
Statute text
Copy text35 U.S.C. · MPEP Appendix L (Revision 01.2024)
35 U.S.C. 311 — (note) Inter partes review applicability provisions.
The post-grant review provisions of the Leahy-Smith America Invents Act (AIA) apply only to proceedings commenced on or after Sept. 16, 2012, except that— (1) the extension of jurisdiction to the United States Court of Appeals for the Federal Circuit to entertain appeals of decisions of the Patent Trial and Appeal Board in reexaminations under the amendment made by subsection (c)(2) of the AIA shall be deemed to take effect on Sept. 16, 2011 and shall extend to any decision of the Board of Patent Appeals and Interferences with respect to a reexamination that is entered before, on, or after Sept. 16, 2011;
(2) the provisions of 35 U.S.C. 6 (pre-AIA) , 134 (pre-AIA) , and 141 (pre-AIA) as in effect on Sept. 15, 2012 shall continue to apply to inter partes reexaminations that are requested under 35 U.S.C. 311 (pre-AIA) before Sept. 16, 2012;
(3) the Patent Trial and Appeal Board may be deemed to be the Board of Patent Appeals and Interferences for purposes of appeals of inter partes reexaminations that are requested under 35 U.S.C. 311 (pre-AIA) before Sept. 16, 2012; and
(4) the Director’s right under the fourth sentence of 35 U.S.C. 143, to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board shall be deemed to extend to inter partes reexaminations that are requested under 35 U.S.C. 311 before Sept. 16, 2012.
(Sept. 16, 2011, Public Law 112-29, sec. 7(e) (effective Sept. 16, 2012), 125 Stat. 284.)
[top]
Prior versions
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 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) 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.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (c) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901; amended Sept. 16, 2011, Public Law 112-29, sec. 6(a) (effective Sept. 16, 2012), 125 Stat. 284.)
* NOTE: Pursuant to Public Law 112-274, sec. 1(d), 126 Stat. 2456, Jan. 14, 2013, the filing deadlines of subsection (c) do not apply to patents not subject to the first inventor to file provisions of the AIA ( 35 U.S.C. 100 (note) ).
[top]
35 U.S.C. 311 (pre-AIA) Request for inter partes reexamination.
[Editor Note: Applicable only to a request for inter partes reexamination filed prior to September 16, 2012.]
(a) IN GENERAL.— Any third-party requester 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 provisions of section 301 .
(1) be in writing, include the identity of the real party in interest, and be accompanied by payment of an inter partes reexamination fee established by the Director under section 41 ; and
(2) set forth the pertinency and manner of applying cited prior art to every claim for which reexamination is requested.
(c) COPY.— The Director promptly shall send a copy of the request to the owner of record of the patent.
(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)); subsections (a) and (c) amended Nov. 2, 2002, Public Law 107-273, sec. 13202, 116 Stat. 1901.)
[top]