35 U.S.C. § 326 — Conduct of post-grant review

submitted 15 years ago by Pub. L. 112-29 to r/title-35-PATENTS · 662 words · no verdicts yet

in plain englishAI-generated · not legal advice

This law tells the Patent Office Director how to write rules for post-grant review of patents. The rules must cover public access, evidence, deadlines, and how patent owners can amend their patents. The petitioner must prove a patent claim is invalid by a preponderance of the evidence.

(a) Regulations — The Director must write rules that: (1) make the file of every post-grant review case public, except that a party can ask to seal a document by filing a motion to seal, and it stays sealed until the motion is decided; (2) set the standard for how strong a petition's grounds must be to start a review under section 324(a) and (b); (3) allow parties to submit extra information after filing the petition; (4) set up how post-grant review works and how it relates to other patent proceedings; (5) set standards for gathering evidence ("discovery"), limited to evidence that directly relates to the facts each side is arguing; (6) create penalties for abusing discovery or the process — for example, using it to harass the other side or cause needless delay or expense; (7) allow protective orders to keep confidential information safe when it's shared or filed; (8) let the patent owner file a response to the petition after a review starts, backed by sworn statements and evidence; (9) set standards for letting the patent owner move to amend the patent — canceling a challenged claim or proposing a reasonable number of replacement claims — and make sure any evidence the owner submits to support the amendment becomes public as part of the patent's history; (10) give both sides the right to an oral hearing; (11) require a final decision within 1 year of when the Director starts the review, though the Director can extend that by up to 6 months for good cause, and can adjust the timing when cases are joined under section 325(c); and (12) give the petitioner at least one chance to file written comments within a deadline the Director sets. (b) Considerations — When writing these rules, the Director must think about how they affect the economy, the fairness of the patent system, how efficiently the Patent Office runs, and whether the Office can finish reviews on time. (c) Patent Trial and Appeal Board — The Board runs every post-grant review, following section 6. (d) Amendment of the Patent — (1) In general: During a review, the patent owner can file one motion to amend the patent by canceling any challenged claim, or by proposing a reasonable number of new claims to replace each challenged one. (2) Additional motions: The owner can file more amendment motions if both sides jointly ask, to help settle the case under section 327, or if the owner shows good cause on their own. (3) Scope of claims: An amendment can't make the patent's claims broader or add new material that wasn't there before. (e) Evidentiary Standards — The petitioner (the person challenging the patent) has to prove the patent is invalid by a "preponderance of the evidence" — meaning it's more likely than not that they're right.

the actual law source: uscode.house.gov ↗public domain

(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); 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 Trial and Appeal Board shall, in accordance with section 6, conduct each post-grant review instituted under this chapter.

(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 post-grant review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.

Source credit: (Added Pub. L. 112–29, § 6(d), Sept. 16, 2011, 125 Stat. 308.)

history & why it existsrecord from the source credit

2011Enacted · Pub. L. 112-29 · 125 Stat. 308

A history note hasn’t been published yet. The record shows enactment by Pub. L. 112-29 on 2011-09-16.

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