35 U.S.C. § 318 — Decision of the Board
submitted 27 years ago by Pub. L. 106-113 to r/title-35-PATENTS · 256 words · no verdicts yet
If a review goes forward, the Board must issue a final written decision. It covers every challenged patent claim. Once that decision is final, the Director issues a certificate canceling or confirming claims. People who used the invention before that certificate get intervening rights, similar to reissued patents. The Office must publish data on how long reviews take.
This section governs how an inter partes review ends and what happens afterward.
(a) Final written decision. If an inter partes review is instituted and not dismissed, the Patent Trial and Appeal Board must issue a final written decision. That decision covers whether every patent claim the petitioner challenged is valid, and also covers any new claim added during the review under section 316(d).
(b) Certificate. Once the Board issues that final decision, and either the time to appeal has run out or any appeal has ended, the Director must issue and publish a certificate. The certificate cancels any claim finally found unpatentable, confirms any claim found patentable, and adds into the patent any new or amended claim found patentable.
(c) Intervening rights. Suppose a new or amended claim is found patentable and added to the patent this way. Anyone who made, bought, used, or imported into the United States* something covered by that claim — or made substantial preparations to do so — before the certificate issued, gets the same protection given to people in that position under section 252, which covers reissued patents.
(d) Public data on review length. The Office must publish data showing how long it takes, on average, between starting an inter partes review and issuing the final written decision under subsection (a).
If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).
If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.
Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review under this chapter shall have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States*, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate under subsection (b).
The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each inter partes review.
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(c)(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 303.)
- 1999Enacted · Pub. L. 106-113 · 113 Stat. 1536, 1501
- 2002Amended · Pub. L. 107-273 · 116 Stat. 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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