Page:United States Statutes at Large Volume 113 Part 2.djvu/1089

 PUBLIC LAW 106-113—APPENDIX I 113 STAT. 1501A-571 "§134. Appeal to the Board of Patent Appeals and Interferences "(a) PATENT APPLICANT. — An applicant for a patent, any of whose claims has been twice rejected, may appejil from the decision of the administrative patent judge to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal. "(b) PATENT OWNER.— ^A patent owner in any rexamination proceeding may appeal from the final rejection of any claim by the administrative patent judge to the Board of Patent Appeals and Interferences, having once paid the fee for such appeal. "(c) THIRD-PARTY.—A third-party requester in an inter partes proceeding may appeal to the Board of Patent Appeals and Interferences from the final decision of the administrative patent judge favorable to the patentability of any original or proposed amended or new claim of a patent, having once paid the fee for such appeal. The third-party requester may not appeal the d(jcision of the Board of Patent Appeals and Interferences.". (c) APPEAL TO COURT OF APPEALS FOR THE FEDERAL CIRCUIT. — Section 141 of title 35, United States Code, is amended by adding the following after the second sentence: "A psitent owner in any rexamination proceeding dissatisfied with the final decision in an appeal to the Board of Patent Appeals and Interferences under section 134 may appeal the decision only to the United States Court of Appeals for the Federal Circuit.". (d) PROCEEDINGS ON APPEAL. —Section 143 of title 35, United States Code, is amended by amending the third sentence to read as follows: "In any rexamination case, the Director 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.". (e) 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. 4606. REPORT TO CONGRESS. Not later than 5 years after the date of the enactment of this Act, the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office shall submit to the Congress a report evaluating whether the inter partes rexamination proceedings established under the amendments made by this subtitle are inequitable to any of the parties in interest and, if so, the report shall contain recommendations for changes to the amendments made by this subtitle to remove such inequity. SEC. 4607. ESTOPPEL EFFECT OF REXAMINATION. Any party who requests an inter partes rexamination under section 311 of title 35, United States Code, is estopped from challenging at a later time, in any civil action, any fact determined during the process of such rexamination, except with respect to a fact determination later proved to be erroneous based on information unavailable at the time of the inter partes rexamination decision. If this section is held to be unenforceable, the enforceability of the remainder of this subtitle or of this title shall not be denied as a result. 69-194 -01-35:QL3Pan2

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