§ 315. — Appeal.
[Laws in effect as of January 24, 2002]
[Document not affected by Public Laws enacted between
January 24, 2002 and December 19, 2002]
[CITE: 35USC315]
TITLE 35--PATENTS
PART III--PATENTS AND PROTECTION OF PATENT RIGHTS
CHAPTER 31--OPTIONAL INTER PARTES REEXAMINATION PROCEDURES
Sec. 315. Appeal
(a) Patent Owner.--The patent owner involved in an inter partes
reexamination proceeding under this chapter--
(1) may appeal under the provisions of section 134 and may
appeal under the provisions of sections 141 through 144, with
respect to any decision adverse to the patentability of any original
or proposed amended or new claim of the patent; and
(2) may be a party to any appeal taken by a third-party
requester under subsection (b).
(b) Third-Party Requester.--A third-party requester--
(1) may appeal under the provisions of section 134, and may
appeal under the provisions of sections 141 through 144, with
respect to any final decision favorable to the patentability of any
original or proposed amended or new claim of the patent; and
(2) may, subject to subsection (c), be a party to any appeal
taken by the patent owner under the provisions of section 134 or
sections 141 through 144.
(c) Civil Action.--A third-party requester whose request for an
inter partes reexamination results in an order under section 313 is
estopped from asserting at a later time, in any civil action arising in
whole or in part under section 1338 of title 28, the invalidity of any
claim finally determined to be valid and patentable on any ground which
the third-party requester raised or could have raised during the inter
partes reexamination proceedings. This subsection does not prevent the
assertion of invalidity based on newly discovered prior art unavailable
to the third-party requester and the Patent and Trademark Office at the
time of the inter partes reexamination proceedings.
(Added Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV,
Sec. 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A-569; amended Pub. L.
107-273, div. C, title III, Secs. 13106(a), 13202(a)(4), (c)(1), Nov. 2,
2002, 116 Stat. 1900-1902.)
Amendments
2002--Pub. L. 107-273, Sec. 13202(c)(1), made technical correction
to directory language of Pub. L. 106-113, which enacted this section.
Subsec. (b). Pub. L. 107-273, Sec. 13106(a), reenacted heading
without change and amended text generally. Prior to amendment, text read
as follows: ``A third-party requester may--
``(1) appeal under the provisions of section 134 with respect to
any final decision favorable to the patentability of any original or
proposed amended or new claim of the patent; or
``(2) be a party to any appeal taken by the patent owner under
the provisions of section 134, subject to subsection (c).''
Subsec. (c). Pub. L. 107-273, Sec. 13202(a)(4), struck out ``United
States Code,'' after ``title 28,''.
Effective Date of 2002 Amendment
Amendment by section 13106(a) of Pub. L. 107-273 applicable with
respect to any reexamination proceeding commenced on or after Nov. 2,
2002, see section 13106(d) of Pub. L. 107-273, set out as a note under
section 134 of this title.
Estoppel Effect of Reexamination
Pub. L. 106-113, div. B, Sec. 1000(a)(9) [title IV, subtitle F,
Sec. 4607], Nov. 29, 1999, 113 Stat. 1536, 1501A-571, provided that:
``Any party who requests an inter partes reexamination under section 311
of title 35, United States Code, is estopped from challenging at a later
time, in any civil action, any fact determined during the process of
such reexamination, except with respect to a fact determination later
proved to be erroneous based on information unavailable at the time of
the inter partes reexamination decision. If this section is held to be
unenforceable, the enforceability of the remainder of this subtitle [see
Short Title of 1999 Amendment note set out under section 1 of this
title] or of this title [see Tables for classification] shall not be
denied as a result.''
