[Congressional Record Volume 140, Number 142 (Tuesday, October 4, 1994)]
[Senate]
[Page S]
From the Congressional Record Online through the Government Printing Office [www.gpo.gov]


[Congressional Record: October 4, 1994]
From the Congressional Record Online via GPO Access [wais.access.gpo.gov]

 
              THE PATENT REEXAMINATION REFORM ACT OF 1994

  Mr. FORD. Mr. President, I ask unanimous consent that the Senate 
proceed to the immediate consideration of Calendar No. 682, S. 2341, 
relating to third party participation in patent and trademark cases, 
that the committee substitute be agreed to; that the bill be read a 
third time and passed, and the motion to reconsider be laid upon the 
table, and that any statements appear at the appropriate place in the 
Record as if read.
  The PRESIDING OFFICER. Without objection, it is to ordered.
  There being no objection, the Senate proceeded to consider the bill 
(S. 2341) to amend chapter 30 of title 35, United States Code, to 
afford third parties an opportunity for greater participation in 
reexamination proceedings before the U.S. Patent and Trademark Office, 
and for other purposes, which had been reported from the Committee on 
the Judiciary, with an amendment to strike all after the enacting 
clause and insert in lieu thereof the following:

     SECTION 1. SHORT TITLE.

       This Act may be cited as the ``Patent Reexamination Reform 
     Act of 1994''.

     SEC. 2. DEFINITIONS.

       Section 100 of title 35, United States Code, is amended by 
     adding at the end thereof the following new subsection:
       ``(e) The term `third-party requester' means a person 
     requesting reexamination under section 302 of this title who 
     is not the patent owner.''.

     SEC. 3. REEXAMINATION PROCEDURES.

       (a) Request for Reexamination.--Section 302 of title 35, 
     United States Code, is amended to read as follows:

     ``Sec. 302. Request for reexamination

       ``Any person at any time may file a request for 
     reexamination by the Office of a patent on the basis of any 
     prior art cited under the provisions of section 301 of this 
     title or on the basis of the requirements of section 112 of 
     this title except for the best mode requirement. The request 
     must be in writing and must be accompanied by payment of a 
     reexamination fee established by the Commissioner of Patents 
     and Trademarks pursuant to the provisions of section 41 of 
     this title. The request must set forth the pertinency and 
     manner of applying cited prior art to every claim for which 
     reexamination is requested or the manner in which the patent 
     specification or claims fail to comply with the requirements 
     of section 112 of this title. Unless the requesting person is 
     the owner of the patent, the Commissioner promptly will send 
     a copy of the request to the owner of record of the 
     patent.''.
       (b) Determination of Issue by Commissioner.--Section 303 of 
     title 35, United States Code, is amended to read as follows:

     ``Sec. 303. Determination of issue by Commissioner

       ``(a) Within three months following the filing of a request 
     for reexamination under the provisions of section 302 of this 
     title, the Commissioner will determine whether a substantial 
     new question of patentability affecting any claim of the 
     patent concerned is raised by the request, with or without 
     consideration of other patents or printed publications. On 
     his own initiative, and at any time, the Commissioner may 
     determine whether a substantial new question of patentability 
     is raised by patent or printed publications or by the failure 
     of the patent specification or claims to comply with the 
     requirements of section 112 of this title except for the best 
     mode requirement.
       ``(b) A record of the Commissioner's determination under 
     subsection (a) of this section will be placed in the official 
     file of the patent, and a copy promptly will be given or 
     mailed to the owner of record of the patent and to the third-
     party requester, if any.
       ``(c) A determination by the Commissioner pursuant to 
     subsection (a) of this section will be final and 
     nonappealable. Upon a determination that no substantial new 
     question of patentability has been raised, the Commissioner 
     may refund a portion of the reexamination fee required under 
     section 302 of this title.''.
       (c) Reexamination Order by Commissioner.--Section 304 of 
     title 35, United States Code, is amended to read as follows:

     ``Sec. 304. Reexamination order by Commissioner

       ``If, in a determination made under the provisions of 
     section 303(a) of this title, the Commissioner finds that a 
     substantial new question of patentability affecting any claim 
     of a patent is raised, the determination will include an 
     order for reexamination of the patent for resolution of the 
     question. The order may be accompanied by the initial Office 
     action on the merits of the reexamination conducted in 
     accordance with section 305 of this title.''.
       (d) Conduct of Reexamination Proceedings.--Section 305 of 
     title 35, United States Code, is amended to read as follows:

     ``Sec. 305. Conduct of reexamination proceedings

       ``(a) Subject to subsection (b) of this section, 
     reexamination will be conducted according to the procedures 
     established for initial examination under the provisions of 
     sections 132 and 133 of this title. In any reexamination 
     proceeding under this chapter, the patent owner will be 
     permitted to propose any amendment to the patent and a new 
     claim or claims thereto. No proposed amended or new claim 
     enlarging the scope of the claims of the patent will be 
     permitted in a reexamination proceeding under this chapter.
       ``(b)(1) This subsection shall apply to any reexamination 
     proceeding in which the order for reexamination is based upon 
     a third-party reexamination request.
       ``(2) Any document (other than the reexamination request) 
     filed in a reexamination proceeding by either the patent 
     owner or the third-party requester shall be served on any 
     other party.
       ``(3)(A) If the patent owner files a response to any Office 
     action on the merits, the third-party requester may once file 
     written comments within a reasonable period. At a minimum, 
     such comments may be filed within 1 month after the date of 
     service of the patent owner's response.
       ``(B) Comments filed under this paragraph shall be limited 
     to issues covered by the Office action or the patent owner's 
     response.
       ``(c) Unless otherwise provided by the Commissioner for 
     good cause, all reexamination proceedings under this section, 
     including any appeal to the Board of Patent Appeals and 
     Interferences, will be conducted with special dispatch within 
     the Office.''.
       (e) Appeal.--Section 306 of title 35, United States Code, 
     is amended to read as follows:

     ``Sec. 306. Appeal

       ``(a) The patent owner involved in a reexamination 
     proceeding under this chapter may--
       ``(1) appeal under the provisions of section 134 of this 
     title, and may appeal under the provisions of sections 141 
     through 144 of this title, with respect to any decision 
     adverse 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 a third-party 
     requester under subsection (b) of this section.
       ``(b) A third-party requester may--
       ``(1) appeal under the provisions of section 134 of this 
     title, and may appeal under the provisions of sections 141 
     through 144 of this title, 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, 
     subject to subsection (c) of this section.
       ``(c) A third-party requester who files a notice of appeal 
     or who participates as a party to an appeal by the patent 
     owner under the provisions of sections 141 through 144 of 
     this title is estopped from later asserting, in any forum, 
     the invalidity of any claim determined to be patentable on 
     appeal on any ground which the third-party requester raised 
     or could have raised during the reexamination proceedings. A 
     third-party requester is deemed not to have participated as a 
     party to an appeal by the patent owner unless, within twenty 
     days after the patent owner has filed notice of appeal, the 
     third-party requester files notice with the Commissioner 
     electing to participate.''.
       (f) Reexamination Prohibited.--(1) Chapter 30 of title 35, 
     United States Code, is amended by adding the following 
     section at the end thereof:

     ``Sec. 308. Reexamination prohibited

       ``(a) Notwithstanding any provision of this chapter, once 
     an order for reexamination of a patent has been issued under 
     section 304 of this title, neither the patent owner nor the 
     third-party requester, if any, nor privies of either, may 
     file a subsequent request for reexamination of the patent 
     until a reexamination certificate is issued and 
     published under section 307 of this title, unless 
     authorized by the Commissioner.
       ``(b) Once a final decision has been entered against a 
     party in a civil action arising in whole or in part under 
     section 1338 of title 28 that the party has not sustained its 
     burden of proving the invalidity of any patent claim in suit, 
     then neither that party nor its privies may thereafter 
     request reexamination of any such patent claim on the basis 
     of issues which that party or its privies raised or could 
     have raised in such civil action, and a reexamination 
     requested by that party or its privies on the basis of such 
     issues may not thereafter be maintained by the Office, 
     notwithstanding any provision of this chapter.''.
       (2) The table of sections for chapter 30 of title 35, 
     United States Code, is amended by adding the following at the 
     end thereof:

       ``308. Reexamination prohibited.''.

     SEC. 4. CONFORMING AMENDMENTS.

       (a) Board of Patent Appeals and Interferences.--The first 
     sentence of section 7(b) of title 35, United States Code, is 
     amended to read as follows: ``The Board of Patent Appeals and 
     Interferences shall, on written appeal of an applicant, or a 
     patent owner or a third-party requester in a reexamination 
     proceeding, review adverse decisions of examiners upon 
     applications for patents and decisions of examiners in 
     reexamination proceedings, and shall determine priority and 
     patentability of invention in interferences declared under 
     section 135(a) of this title.''.
       (b) Patent Fees; Patent and Trademark Search Systems.--
     Section 41(a)(7) of title 35, United States Code, is amended 
     by inserting ``or for an unintentionally delayed response by 
     the patent owner in a reexamination proceeding,'' after 
     ``issuing each patent,''.
       (c) Appeal to the Board of Patent Appeals and 
     Interferences.--Section 134 of title 35, United States Code, 
     is amended to read as follows:

     ``Sec. 134. Appeal to the Board of Patent Appeals and 
       Interferences

       ``(a) An applicant for a patent, any of whose claims has 
     been twice rejected, may appeal from the decision of the 
     primary examiner to the Board of Patent Appeals and 
     Interferences, having once paid the fee for such appeal.
       ``(b) A patent owner in a reexamination proceeding may 
     appeal from the final rejection of any claim by the primary 
     examiner to the Board of Patent Appeals and Interferences, 
     having once paid the fee for such appeal.
       ``(c) A third-party requester may appeal to the Board of 
     Patent Appeals and Interferences from the final decision of 
     the primary examiner favorable to the patentability of any 
     original or proposed amended or new claim of a patent, having 
     once paid the fee for such appeal.''.
       (d) Appeal to Court of Appeals for the Federal Circuit.--
     Section 141 of title 35, United States Code, is amended by 
     amending the first sentence to read as follows: ``An 
     applicant, a patent owner or a third-party requester, 
     dissatisfied with the final decision in an appeal to the 
     Board of Patent Appeals and Interferences under section 134 
     of this title, may appeal the decision to the United States 
     Court of Appeals for the Federal Circuit.''.
       (e) Proceedings on Appeal.--Section 143 of title 35, United 
     States Code, is amended by amending the third sentence to 
     read as follows: ``In ex parte and reexamination cases, the 
     Commissioner shall submit to the court in writing the grounds 
     for the decision of the Patent and Trademark Office, 
     addressing all the issues involved in the appeal.''.
       (f) Civil Action To Obtain Patent.--Section 145 of title 
     35, United States Code, is amended in the first sentence by 
     inserting ``(a)'' after ``section 134''.

     SEC. 5. EFFECTIVE DATES.

       This Act shall take effect six months after the date of 
     enactment of this Act and shall apply to all reexamination 
     requests filed on or after such date.

  So the bill (S. 2341) was deemed read the third time, and passed.

                                S. 2341

       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 Reform 
     Act of 1994''.

     SEC. 2. DEFINITIONS.

       Section 100 of title 35, United States Code, is amended by 
     adding at the end thereof the following new subsection:
       ``(e) The term `third-party requester' means a person 
     requesting reexamination under section 302 of this title who 
     is not the patent owner.''.

     SEC. 3. REEXAMINATION PROCEDURES.

       (a) Request for Reexamination.--Section 302 of title 35, 
     United States Code, is amended to read as follows:

     ``Sec. 302. Request for reexamination

       ``Any person at any time may file a request for 
     reexamination by the Office of a patent on the basis of any 
     prior art cited under the provisions of section 301 of this 
     title or on the basis of the requirements of section 112 of 
     this title except for the best mode requirement. The request 
     must be in writing and must be accompanied by payment of a 
     reexamination fee established by the Commissioner of Patents 
     and Trademarks pursuant to the provisions of section 41 of 
     this title. The request must set forth the pertinency and 
     manner of applying cited prior art to every claim for which 
     reexamination is requested or the manner in which the patent 
     specification or claims fail to comply with the requirements 
     of section 112 of this title. Unless the requesting person is 
     the owner of the patent, the Commissioner promptly will send 
     a copy of the request to the owner of record of the 
     patent.''.
       (b) Determination of Issue by Commissioner.--Section 303 of 
     title 35, United States Code, is amended to read as follows:

     ``Sec. 303. Determination of issue by Commissioner

       ``(a) Within three months following the filing of a request 
     for reexamination under the provisions of section 302 of this 
     title, the Commissioner will determine whether a substantial 
     new question of patentability affecting any claim of the 
     patent concerned is raised by the request, with or without 
     consideration of other patents or printed publications. On 
     his own initiative, and at any time, the Commissioner may 
     determine whether a substantial new question of patentability 
     is raised by patent or printed publications or by the failure 
     of the patent specification or claims to comply with the 
     requirements of section 112 of this title except for the best 
     mode requirement.
       ``(b) A record of the Commissioner's determination under 
     subsection (a) of this section will be placed in the official 
     file of the patent, and a copy promptly will be given or 
     mailed to the owner of record of the patent and to the third-
     party requester, if any.
       ``(c) A determination by the Commissioner pursuant to 
     subsection (a) of this section will be final and 
     nonappealable. Upon a determination that no substantial new 
     question of patentability has been raised, the Commissioner 
     may refund a portion of the reexamination fee required under 
     section 302 of this title.''.
       (c) Reexamination Order by Commissioner.--Section 304 of 
     title 35, United States Code, is amended to read as follows:

     ``Sec. 304. Reexamination order by Commissioner

       ``If, in a determination made under the provisions of 
     section 303(a) of this title, the Commissioner finds that a 
     substantial new question of patentability affecting any claim 
     of a patent is raised, the determination will include an 
     order for reexamination of the patent for resolution of the 
     question. The order may be accompanied by the initial Office 
     action on the merits of the reexamination conducted in 
     accordance with section 305 of this title.''.
       (d) Conduct of Reexamination Proceedings.--Section 305 of 
     title 35, United States Code, is amended to read as follows:

     ``Sec. 305. Conduct of reexamination proceedings

       ``(a) Subject to subsection (b) of this section, 
     reexamination will be conducted according to the procedures 
     established for initial examination under the provisions of 
     sections 132 and 133 of this title. In any reexamination 
     proceeding under this chapter, the patent owner will be 
     permitted to propose any amendment to the patent and a new 
     claim or claims thereto. No proposed amended or new claim 
     enlarging the scope of the claims of the patent will be 
     permitted in a reexamination proceeding under this chapter.
       ``(b)(1) This subsection shall apply to any reexamination 
     proceeding in which the order for reexamination is based upon 
     a third-party reexamination request.
       ``(2) Any document (other than the reexamination request) 
     filed in a reexamination proceeding by either the patent 
     owner or the third-party requester shall be served on any 
     other party.
       ``(3)(A) If the patent owner files a response to any Office 
     action on the merits, the third-party requester may once file 
     written comments within a reasonable period. At a minimum, 
     such comments may be filed within 1 month after the date of 
     service of the patent owner's response.
       ``(B) Comments filed under this paragraph shall be limited 
     to issues covered by the Office action or the patent owner's 
     response.
       ``(c) Unless otherwise provided by the Commissioner for 
     good cause, all reexamination proceedings under this section, 
     including any appeal to the Board of Patent Appeals and 
     Interferences, will be conducted with special dispatch within 
     the Office.''.
       (e) Appeal.--Section 306 of title 35, United States Code, 
     is amended to read as follows:

     ``Sec. 306. Appeal

       ``(a) The patent owner involved in a reexamination 
     proceeding under this chapter may--
       ``(1) appeal under the provisions of section 134 of this 
     title, and may appeal under the provisions of sections 141 
     through 144 of this title, with respect to any decision 
     adverse 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 a third-party 
     requester under subsection (b) of this section.
       ``(b) A third-party requester may--
       ``(1) appeal under the provisions of section 134 of this 
     title, and may appeal under the provisions of sections 141 
     through 144 of this title, 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, 
     subject to subsection (c) of this section.
       ``(c) A third-party requester who files a notice of appeal 
     or who participates as a party to an appeal by the patent 
     owner under the provisions of sections 141 through 144 of 
     this title is estopped from later asserting, in any forum, 
     the invalidity of any claim determined to be patentable on 
     appeal on any ground which the third-party requester raised 
     or could have raised during the reexamination proceedings. A 
     third-party requester is deemed not to have participated as a 
     party to an appeal by the patent owner unless, within twenty 
     days after the patent owner has filed notice of appeal, the 
     third-party requester files notice with the Commissioner 
     electing to participate.''.
       (f) Reexamination Prohibited.--(1) Chapter 30 of title 35, 
     United States Code, is amended by adding the following 
     section at the end thereof:

     ``Sec. 308. Reexamination prohibited

       ``(a) Notwithstanding any provision of this chapter, once 
     an order for reexamination of a patent has been issued under 
     section 304 of this title, neither the patent owner nor the 
     third-party requester, if any, nor privies of either, may 
     file a subsequent request for reexamination of the patent 
     until a reexamination certificate is issued and published 
     under section 307 of this title, unless authorized by the 
     Commissioner.
       ``(b) Once a final decision has been entered against a 
     party in a civil action arising in whole or in part under 
     section 1338 of title 28 that the party has not sustained its 
     burden of proving the invalidity of any patent claim in suit, 
     then neither that party nor its privies may thereafter 
     request reexamination of any such patent claim on the basis 
     of issues which that party or its privies raised or could 
     have raised in such civil action, and a reexamination 
     requested by that party or its privies on the basis of such 
     issues may not thereafter be maintained by the Office, 
     notwithstanding any provision of this chapter.''.
       (2) The table of sections for chapter 30 of title 35, 
     United States Code, is amended by adding the following at the 
     end thereof:

``308. Reexamination prohibited.''.

     SEC. 4. CONFORMING AMENDMENTS.

       (a) Board of Patent Appeals and Interferences.--The first 
     sentence of section 7(b) of title 35, United States Code, is 
     amended to read as follows: ``The Board of Patent Appeals and 
     Interferences shall, on written appeal of an applicant, or a 
     patent owner or a third-party requester in a reexamination 
     proceeding, review adverse decisions of examiners upon 
     applications for patents and decisions of examiners in 
     reexamination proceedings, and shall determine priority and 
     patentability of invention in interferences declared under 
     section 135(a) of this title.''.
       (b) Patent Fees; Patent and Trademark Search Systems.--
     Section 41(a)(7) of title 35, United States Code, is amended 
     by inserting ``or for an unintentionally delayed response by 
     the patent owner in a reexamination proceeding,'' after 
     ``issuing each patent,''.
       (c) Appeal to the Board of Patent Appeals and 
     Interferences.--Section 134 of title 35, United States Code, 
     is amended to read as follows:

     ``Sec. 134. Appeal to the Board of Patent Appeals and 
       Interferences

       ``(a) An applicant for a patent, any of whose claims has 
     been twice rejected, may appeal from the decision of the 
     primary examiner to the Board of Patent Appeals and 
     Interferences, having once paid the fee for such appeal.
       ``(b) A patent owner in a reexamination proceeding may 
     appeal from the final rejection of any claim by the primary 
     examiner to the Board of Patent Appeals and Interferences, 
     having once paid the fee for such appeal.
       ``(c) A third-party requester may appeal to the Board of 
     Patent Appeals and Interferences from the final decision of 
     the primary examiner favorable to the patentability of any 
     original or proposed amended or new claim of a patent, having 
     once paid the fee for such appeal.''.
       (d) Appeal to Court of Appeals for the Federal Circuit.--
     Section 141 of title 35, United States Code, is amended by 
     amending the first sentence to read as follows: ``An 
     applicant, a patent owner or a third-party requester, 
     dissatisfied with the final decision in an appeal to the 
     Board of Patent Appeals and Interferences under section 134 
     of this title, may appeal the decision to the United States 
     Court of Appeals for the Federal Circuit.''.
       (e) Proceedings on Appeal.--Section 143 of title 35, United 
     States Code, is amended by amending the third sentence to 
     read as follows: ``In ex parte and reexamination cases, the 
     Commissioner shall submit to the court in writing the grounds 
     for the decision of the Patent and Trademark Office, 
     addressing all the issues involved in the appeal.''.
       (f) Civil Action To Obtain Patent.--Section 145 of title 
     35, United States Code, is amended in the first sentence by 
     inserting ``(a)'' after ``section 134''.

     SEC. 5. EFFECTIVE DATES.

       This Act shall take effect six months after the date of 
     enactment of this Act and shall apply to all reexamination 
     requests filed on or after such date.

                          ____________________