[Congressional Bills 107th Congress]
[From the U.S. Government Publishing Office]
[H.R. 2231 Introduced in House (IH)]







107th CONGRESS
  1st Session
                                H. R. 2231

     To amend title 35, United States Code, with respect to patent 
                       reexamination proceedings.


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                             June 19, 2001

 Ms. Lofgren introduced the following bill; which was referred to the 
                       Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
     To amend title 35, United States Code, with respect to patent 
                       reexamination proceedings.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Patent Reexamination Enhancement Act 
of 2001''.

SEC. 2. REQUESTS FOR INTER PARTES REEXAMINATION.

    (a) Scope of Reexamination Authority.--Section 311 of title 35, 
United States Code, is amended--
            (1) by amending subsection (a) to read as follows:
    ``(a) Requests for Reexamination.--
            ``(1) At any time.--Any person may at any time file a 
        request for inter partes reexamination by the Office of a 
        patent on the basis of any prior art cited under the provisions 
        of section 301.
            ``(2) Within limited period after issue of a patent.--Any 
        person, within 12 months after the date on which a patent is 
        issued, may file a request for an inter partes reexamination by 
        the Office of the patent on the basis of evidence of subject 
        matter described in section 102(a) or (b), alone or in 
        combination with prior art that may be cited under section 301, 
        or on the basis of evidence showing that one or more claims of 
        the patent do not comply with the first or second paragraph of 
        section 112 (other than the best mode requirement).'';
            (2) in subsection (b)--
                    (A) by striking ``The request'' and inserting ``Any 
                request under subsection (a)'';
                    (B) in paragraph (1), by striking ``and'' after the 
                semicolon;
                    (C) in paragraph (2)--
                            (i) by inserting after ``(2)'' the 
                        following: ``in the case of a request made 
                        under subsection (a)(1),''; and
                            (ii) by striking the period and inserting 
                        ``; and''; and
                    (D) by adding at the end the following new 
                paragraph:
            ``(3) in the case of a request made under subsection 
        (a)(2), set forth reasons demonstrating that, in view of the 
        evidence provided, a substantial new question of patentability 
        exists in light of the requirements of section 102(a), (b), or 
        (e), section 103, or the first or second paragraph of section 
        112 (other than the best mode requirement), as the case may be, 
        for each claim of the patent for which reexamination is 
        requested.''.
    (b) Reexaminations Ordered by the Director.--Section 312(a) of 
title 35, United States Code, is amended in the first sentence by 
inserting after ``patents or printed publications'' the following: ``, 
or, within 12 months after the date of issue of the patent, on the 
grounds specified in section 311(a)(2)''.
    (c) Basis for Appeal.--Section 315(c) of title 35, United States 
Code, is amended--
            (1) in the first sentence, by striking ``an order under 
        section 313'' and inserting ``a final decision in an inter 
        partes reexamination proceeding that is favorable to the 
        patentability of any original or proposed amended or new claim 
        of the patent''; and
            (2) in the second sentence--
                    (A) by inserting ``or information'' after ``prior 
                art''; and
                    (B) by inserting after ``Patent and Trademark 
                Office'' the following: ``, or upon evidence and 
                reasons set forth in section 311(a)(2) and 311(b)(3), 
                respectively, which were not known to the third party 
                requester,''.
    (d) Repeal.--Section 4607 of the Intellectual Property and 
Communications Omnibus Reform Act of 1999, as enacted by section 
1000(a)(9) of Public Law 106-113, is repealed.

SEC. 3. EFFECTIVE DATE.

    (a) In General.--Subject to subsections (b) and (c), the amendments 
made by this Act shall apply to any patent in force on the date of the 
enactment of this Act, and to any patent issued on or after such date.
    (b) Special Rule.--In the case of any patent covered by subsection 
(a) which was issued before the date of the enactment of this Act and 
with respect to which the 12-month period provided in section 311(a)(2) 
of title 35, United States Code, as added by section 2 of this Act, has 
expired as of such date of enactment, a request for inter partes 
reexamination under such section 311(a)(2) shall be valid if it is 
filed not later than 6 months after such date of enactment.
    (c) Applicability of Appeal Provisions.--The amendments made by 
section 2(c) and the repeal made by section 2(d) shall apply only to 
inter partes reexamination proceedings for which a request under 
section 311 of title 35, United States Code, is made on or after the 
date of the enactment of this Act.
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