Page:United States Statutes at Large Volume 113 Part 2.djvu/1086

 113 STAT. 1501A-568 PUBLIC LAW 106-113—APPENDIX I "(2) set forth the pertinency and manner of applying cited prior art to every claim for which rexamination is requested. "(c) COPY. — Unless the requesting person is the owner of the patent, the Director promptly shall send a copy of the request to the owner of record of the patent. "§ 312. Determination of issue by Director " (a) REXAMINATION.—Not later than 3 months after the filing of a request for inter partes rexamination 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, with or without consideration of other patents or printed publications. On the Director's initiative, and at any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications. "(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, if any. "(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 Director may refund a portion of the inter partes rexamination fee required under section 311. '^§ 313. Inter partes rexamination order by Director "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, the determination shall include an order for inter partes rexamination 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 rexamination conducted in accordance with section 314. '^§314. Conduct of inter partes rexamination proceedings "(a) IN GENERAL.—Except as otherwise provided in this section, rexamination shall be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any inter partes rexamination proceeding under this chapter, the patent owner shall be permitted to propose any amendment to the patent and a new claim or claims, except that no proposed amended or new claim enlarging the scope of the claims of the patent shall be permitted. "(b) RESPONSE.—(1) This subsection shall apply to any inter partes rexamination proceeding in which the order for inter partes rexamination is based upon a request by a third-party requester. "(2) With the exception of the inter partes rexamination request, any document filed by either the patent owner or the third-party requester shall be served on the other party. In addition, the third-party requester shall receive a copy of any communication sent by the Office to the patent owner concerning the patent subject to the inter partes rexamination proceeding. "(3) Each time that the patent owner files a response to an action on the merits from the Patent and Trademark Office, the third-party requester shall have one opportunity to file written comments addressing issues raised by the action of the Office or

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