35 U.S.C. 313, Preliminary response to petition Inter partes reexamination order by Director - Patent Laws

Executive summary:

Potential for Errors: This document contains one section of the U.S. Patent Act (found in Title 35 of the United States Code) as amended by the Leahy-Smith America Invents Act. This page was last updated in November 2011. While the page has been edited to help ensure that the changes made by the AIA to this section are reflected in this document, errors are possible. If you notice such errors, please contact Dan Tysver at (dtysver@bitlaw.com).

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35 U.S.C. 313 Preliminary response to petition Inter partes reexamination order by Director

If an inter partes review petition is filed under section 311, the patent owner shall have the right to file 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.

If, in a determination made under section 312(a), the Director finds that a substantial new question of patentability affecting a claim of a patent is raised, the determination shall include an order for inter partes reexamination of the patent for resolution of the question. The order may be accompanied by the initial action of the Patent and Trademark Office on the merits of the inter partes reexamination conducted in accordance with section 314.

(Added Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-570 (S. 1948 sec. 4604(a)).)

TEMPORARY ALTERATION OF SECTION 313

If, in a determination made under section 312(a), the Director finds that it has been shown that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request a substantial new question of patentability affecting a claim of a patent is raised, the determination shall include an order for inter partes reexamination of the patent for resolution of the question. The order may be accompanied by the initial action of the Patent and Trademark Office on the merits of the inter partes reexamination conducted in accordance with section 314.

Effective Dates for Changes Made to this Section

POST-GRANT REVIEW CHANGES
Section 6 of the America Invents Act

FOR PRIMARY CHANGE:

(1) REGULATIONS.--The Director shall, not later than the date that is 1 year after the date of the enactment of this Act, issue regulations to carry out chapter 31 of title 35, United States Code, as amended by subsection (a) of this section.

(2) APPLICABILITY.--

(A) IN GENERAL.--The amendments made by subsection (a) shall take effect upon the expiration of the 1–year period beginning on the date of the enactment of this Act and shall apply to any patent issued before, on, or after that effective date.

(B) GRADUATED IMPLEMENTATION.--The Director may impose a limit on the number of inter partes reviews that may be instituted under chapter 31 of title 35, United States Code, during each of the first 4 1–year periods in which the amendments made by subsection (a) are in effect, if such number in each year equals or exceeds the number of inter partes reexaminations that are ordered under chapter 31 of title 35, United States Code, in the last fiscal year ending before the effective date of the amendments made by subsection (a).

FOR TEMPORARY CHANGE

(B) APPLICATION.--The amendments made by this paragraph--

(i) shall take effect on the date of the enactment of this Act; and

(ii) shall apply to requests for inter partes reexamination that are filed on or after such date of enactment, but before the effective date set forth in paragraph (2)(A) of this subsection.