Page:United States Statutes at Large Volume 113 Part 2.djvu/1088

 113 STAT. 1501A-570 PUBLIC LAW 106-113—APPENDIX I "§317. Inter partes rexamination prohibited "(a) ORDER FOR REXAMINATION. —Notwithstanding any provision of this chapter, once an order for inter partes rexamination of a patent has been issued under section 313, neither the patent owner nor the third-party requester, if any, nor privies of either, may file a subsequent request for inter partes rexamination of the patent until an inter partes rexamination certificate is issued and published under section 316, unless authorized by the Director. "(b) FINAL DECISION.— 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, United States Code, that the party has not sustained its burden of proving the invalidity of any patent claim in suit or if a final decision in an inter partes rexamination proceeding instituted by a third-party requester is favorable to the patentability of any original or proposed amended or new claim of the patent, then neither that party nor its privies may thereafter request an inter partes rexamination 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 or inter partes rexamination proceeding, and an inter partes rexamination requested by that party or its privies on the basis of such issues may not thereafter be maintained by the Office, notwithstanding any other provision of this chapter. 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 rexamination proceedings. "§ 318. Stay of litigation "Once an order for inter partes rexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes rexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice.". (b) CONFORMING AMENDMENT. — The table of chapters for part III of title 25, United States Code, is amended by striking the item relating to chapter 30 and inserting the following: "30. Prior Art Citations to Office and Ex Parte Rexamination of Patents 301 "31. Optional Inter Partes Rexamination of Patents 311". SEC. 4605. CONFORMING AMENDMENTS. (a) PATENT FEES; PATENT SEARCH SYSTEMS. — Section 41(a)(7) of title 35, United States Code, is amended to read as follows: "(7) On filing each petition for the revival of an unintentionally abandoned application for a patent, for the unintentionally delayed payment of the fee for issuing each patent, or for an unintentionally delayed response by the patent owner in any rexamination proceeding, $1,210, unless the petition is filed under section 133 or 151 of this title, in which case the fee shall be $110.". (b) APPEAL TO THE BOARD OF PATENT APPEALS AND INTER- FERENCES. —Section 134 of title 35, United States Code, is amended to read as follows:

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