2012 US Code
Title 35 - Patents
Part III - PATENTS AND PROTECTION OF PATENT RIGHTS (§§ 251 - 329)
Chapter 32 - POST-GRANT REVIEW (§§ 321 - 329)
Section 321 - Post-grant review
Publication Title | United States Code, 2012 Edition, Title 35 - PATENTS |
Category | Bills and Statutes |
Collection | United States Code |
SuDoc Class Number | Y 1.2/5: |
Contained Within | Title 35 - PATENTS PART III - PATENTS AND PROTECTION OF PATENT RIGHTS CHAPTER 32 - POST-GRANT REVIEW Sec. 321 - Post-grant review |
Contains | section 321 |
Date | 2012 |
Laws in Effect as of Date | January 15, 2013 |
Positive Law | Yes |
Disposition | standard |
Source Credit | Added Pub. L. 112-29, §6(d), Sept. 16, 2011, 125 Stat. 306. |
Statutes at Large References | 125 Stat. 306, 311, 329 126 Stat. 2456 |
Public Law References | Public Law 112-29, Public Law 112-274 |
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(a)
(b)
(c)
(Added Pub. L. 112–29, §6(d), Sept. 16, 2011, 125 Stat. 306.)
Effective DatePub. L. 112–29, §6(f)(2), (3), Sept. 16, 2011, 125 Stat. 311, provided that:
“(2)
“(A)
“(B)
“(3)
“(A)
“(i) is to be dismissed without prejudice to the filing of a petition for a post-grant review under chapter 32 of title 35, United States Code; or
“(ii) is to proceed as if this Act [see Short Title of 2011 Amendment note set out under section 1 of this title] had not been enacted.
“(B)
“(C)
Pub. L. 112–29, §6(f)(1), Sept. 16, 2011, 125 Stat. 311, provided that: “The Director [Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office] shall, not later than the date that is 1 year after the date of the enactment of this Act [Sept. 16, 2011], issue regulations to carry out chapter 32 of title 35, United States Code, as added by subsection (d) of this section.”
Transitional Program for Covered Business Method PatentsPub. L. 112–29, §18, Sept. 16, 2011, 125 Stat. 329, as amended by Pub. L. 112–274, §1(b), Jan. 14, 2013, 126 Stat. 2456, provided that:
“(a)
“(1)
“(A) Section 321(c) of title 35, United States Code, and subsections (b), (e)(2), and (f) of section 325 of such title shall not apply to a transitional proceeding.
“(B) A person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person's real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent.
“(C) A petitioner in a transitional proceeding who challenges the validity of 1 or more claims in a covered business method patent on a ground raised under section 102 or 103 of title 35, United States Code, as in effect on the day before the effective date set forth in section 3(n)(1) [set out as an Effective Date of 2011 Amendment; Savings Provisions note under section 100 of this title], may support such ground only on the basis of—
“(i) prior art that is described by section 102(a) of such title (as in effect on the day before such effective date); or
“(ii) prior art that—
“(I) discloses the invention more than 1 year before the date of the application for patent in the United States; and
“(II) would be described by section 102(a) of such title (as in effect on the day before the effective date set forth in section 3(n)(1)) if the disclosure had been made by another before the invention thereof by the applicant for patent.
“(D) The petitioner in a transitional proceeding that results in a final written decision under section 328(a) of title 35, United States Code, with respect to a claim in a covered business method patent, or the petitioner's real party in interest, may not assert, either in a civil action arising in whole or in part under section 1338 of title 28, United States Code, or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337), that the claim is invalid on any ground that the petitioner raised during that transitional proceeding.
“(E) The Director may institute a transitional proceeding only for a patent that is a covered business method patent.
“(2)
“(3)
“(A)
“(B)
“(b)
“(1)
“(A) whether a stay, or the denial thereof, will simplify the issues in question and streamline the trial;
“(B) whether discovery is complete and whether a trial date has been set;
“(C) whether a stay, or the denial thereof, would unduly prejudice the nonmoving party or present a clear tactical advantage for the moving party; and
“(D) whether a stay, or the denial thereof, will reduce the burden of litigation on the parties and on the court.
“(2)
“(c)
“(d)
“(1)
“(2)
“(e)
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