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35 U.S.C. § 317Settlement

submitted 27 years ago by Pub. L. 106-113 to r/title-35-PATENTS · 252 words · no verdicts yet

in plain englishAI-generated · not legal advice

A patent owner and a petitioner can jointly end an inter partes review early. This isn't allowed once the Office has already decided the case's merits. Ending the review this way removes any estoppel against that petitioner. Settlement agreements must be filed in writing with the Office.

This section lets parties settle and end an inter partes review, and sets rules for that settlement. (a) Ending the review by agreement. Once an inter partes review has started, it can be ended for any one petitioner if that petitioner and the patent owner jointly ask for termination. This isn't allowed anymore once the Patent Office has already decided the merits of the case before the termination request is filed. If a petitioner's part of the review is terminated this way, the estoppel rule in section 315(e) does not apply to that petitioner, or to anyone in privity with them or who shares their real interest — meaning they are not blocked later from raising the same arguments elsewhere. If terminating a petitioner leaves no petitioners left in the case, the Office can either end the whole review or continue on to a final written decision under section 318(a). (b) Written agreements. Any agreement or understanding between the patent owner and a petitioner connected to ending the review this way — including any side agreements that go along with it — must be in writing. A true copy has to be filed with the Office before the review is terminated as to those parties. If a party asks, the Office must treat the agreement as confidential business information: keep it separate from the patent's public file, and only release it to federal agencies that request it in writing, or to any other person who shows good cause.
the actual law source: uscode.house.gov ↗public domain
(a)In General.—

An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed. If the inter partes review is terminated with respect to a petitioner under this section, no estoppel under section 315(e) shall attach to the petitioner, or to the real party in interest or privy of the petitioner, on the basis of that petitioner’s institution of that inter partes review. If no petitioner remains in the inter partes review, the Office may terminate the review or proceed to a final written decision under section 318(a).

(b)Agreements in Writing.—

Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.

Source credit: (Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–570; amended Pub. L. 107–273, div. C, title III, § 13202(a)(5), (c)(1), Nov. 2, 2002, 116 Stat. 1901, 1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 303.)

history & why it existsrecord from the source credit
  • 1999Enacted · Pub. L. 106-113 · 113 Stat. 1536, 1501
  • 2002Amended · Pub. L. 107-273 · 116 Stat. 1901, 1902
  • 2011Amended · Pub. L. 112-29 · 125 Stat. 303

A history note hasn’t been published yet. The record shows enactment by Pub. L. 106-113 on 1999-11-29.

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