Act § 6(c)(3) – Inter partes reexamination, transition

Act § 6(c)(3) TRANSITION

(A) IN GENERAL.—Chapter 31 of title 35, United States Code, is amended[as follows]—

§ 312. Determination of issue by Director [current, as amended]

(a) REEXAMINATION.— Not later than 3 months after the filing of a request for inter partes reexamination under section 311, the Director shall determine whether [a substantial new question of patentability affecting any claim of the patent concerned is raised by the request,] the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request, with or without consideration of other patents or printed publications. [The existence of a substantial new question of patentability] A showing that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.

(b) RECORD.—A record of the Director’s determination under subsection (a) shall be placed in the official file of the patent, and a copy shall be promptly given or mailed to the owner of record of the patent and to the third-party requester.

(c) FINAL DECISION.—A determination by the Director under subsection (a) shall be final and non-appealable. Upon a determination that [no substantial new question of patentability has been raised], the showing required by subsection (a) has not been made, the Director may refund a portion of the inter partes reexamination fee required under section 311.

Source: Pub. L. No. 112-29, § 6(c)(3)(A), 125 Stat. 305 (Sept. 16, 2011)

§ 313. Inter partes reexamination order by Director [current]

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] 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, 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.

Source: Pub. L. No. 112-29, § 6(c)(3)(A), 125 Stat. 305 (Sept. 16, 2011)

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

(i) shall take effect on the date of the enactment of this Act [Sept. 16, 2011]; 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 [Sept. 16, 2012].

(C) CONTINUED APPLICABILITY OF PRIOR PROVISIONS.—The provisions of chapter 31 of title 35, United States Code, as amended by this paragraph, shall continue to apply to requests for inter partes reexamination that are filed before the effective date set forth in paragraph (2)(A) [Sept. 16, 2012] as if subsection (a) had not been enacted.

Source:

Pub. L. No. 112-29, § 6(c)(3), 125 Stat. 305 (Sept. 16, 2011)