U.S. Code » Title 35 » Part PART III— PATENTS AND PROTECTION OF PATENT RIGHTS › Chapter CHAPTER 30— PRIOR ART CITATIONS TO OFFICE AND EX PARTE REEXAMINATION OF PATENTS

35 U.S.C. § 303

Determination of issue by Director

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(a) Within three months following the filing of a request for reexamination under the provisions of section 302, the Director 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 any time, the Director may determine whether a substantial new question of patentability is raised by patents and publications discovered by him or cited under the provisions of section 301 or 302. The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.(b) A record of the Director’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 person requesting reexamination, if any.(c) A determination by the Director pursuant to subsection (a) of this section that no substantial new question of patentability has been raised will be final and nonappealable. Upon such a determination, the Director may refund a portion of the reexamination fee required under section 302.(Added Pub. L. 96–517, § 1, Dec. 12, 1980, 94 Stat. 3015; amended Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(a)(9)(A), (10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–582; Pub. L. 107–273, div. C, title III, §§ 13105(a), 13206(b)(1), Nov. 2, 2002, 116 Stat. 1900, 1905, 1906; Pub. L. 112–29, §§ 6(h)(1)(A), 20(j), Sept. 16, 2011, 125 Stat. 312, 335.)Editorial NotesAmendments

2011—Subsec. (a). Pub. L. 112–29, § 20(j), struck out “of this title” after “section 302”.

Pub. L. 112–29, § 6(h)(1)(A), substituted “section 301 or 302” for “section 301 of this title”.

Subsec. (c). Pub. L. 112–29, § 20(j), struck out “of this title” after “section 302”.

2002—Subsec. (a). Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below.

Pub. L. 107–273, § 13105(a), inserted at end “The existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.”

Subsec. (b). Pub. L. 107–273, § 13206(b)(1)(A), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(ii)]. See 1999 Amendment note below.

Subsec. (c). Pub. L. 107–273, § 13206(b)(1)(B), made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below.

1999—Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(i)], substituted “Director” for “Commissioner” in section catchline.

Subsec. (a). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted “Director” for “Commissioner” in two places.

Subsec. (b). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(9)(A)(ii)], as amended by Pub. L. 107–273, § 13206(b)(1)(A), substituted “Director’s” for “Commissioner’s”.

Subsec. (c). Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, § 13206(b)(1)(B), substituted “Director” for “Commissioner” in two places.

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Pub. L. 112–29, § 6(h)(1)(B), Sept. 16, 2011, 125 Stat. 312, provided that: “The amendment made by this paragraph [amending this section] shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to any patent issued before, on, or after that effective date.”

Amendment by section 20(j) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 2002 Amendment

Pub. L. 107–273, div. C, title III, § 13105(b), Nov. 2, 2002, 116 Stat. 1900, provided that: “The amendments made by this section [amending this section and section 312 of this title] shall apply with respect to any determination of the Director of the United States Patent and Trademark Office that is made under section 303(a) or [former section] 312(a) [see section 314(a)] of title 35, United States Code, on or after the date of enactment of this Act [Nov. 2, 2002].”

Effective Date of 1999 Amendment

Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Effective Date

Section effective July 1, 1981, and applicable to patents in force as of July 1, 1981, or issued thereafter, see section 8(b) of Pub. L. 96–517, set out as an Effective Date of 1980 Amendment note under section 41 of this title.

Notes of Decisions
Cited in 75 cases (9 in the last 5 years), 1983–2025 · leading case: In Re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015).
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In Re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015). · cites it 7× “There, even absent a provision comparable to § 314(d), 3 we held that a flawed decision to institute reexamination under 35 U.S.C. § 303 was not a basis for setting aside a final decision.”
In Re Swanson, 540 F.3d 1368 (Fed. Cir. 2008). · cites it 6× “We hold that under 35 U.S.C. § 303 (a), as amended in 2002, despite consideration of U.”
Patlex Corp. v. Gerald J. Mossinghoff, 771 F.2d 480 (Fed. Cir. 1985). · cites it 10× “The PTO’s initial determination whether to grant a request for reexamination is required by 35 U.S.C. § 303 , which provides in part: Within three months following the filing of a request for reexamination .”
In Re Cuozzo Speed Tech., LLC, 778 F.3d 1271 (Fed. Cir. 2015). · cites it 8× “There, even absent a provision comparable to § 314(d), 3 we held that a flawed decision to institute reexamination under 35 U.S.C. § 303 was not a basis for setting aside a final decision.”
Virtualagility Inc. v. salesforce.com, Inc., 759 F.3d 1307 (Fed. Cir. 2014). · cites it 2× “As a preliminary matter, Congress made post- grant review more difficult to obtain than reexamination by raising the standard from “a substantial new question of patentability,” 35 U.S.C. § 303 (a) (2012), to “more likely than not .”
Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018). · cites it 2× “And 35 U.S.C. § 303 (c) provides that, “[a] determination by the Director .”
In Re Basell Poliolefine Italia S.P.A., 547 F.3d 1371 (Fed. Cir. 2008). · cites it 6× “The Board held that, even though the PTO previously cited Vandenberg, that reference raised a substantial new question of patentability under the previous 35 U.S.C. § 303 (a) based on the particular facts of this case.”
Heinl v. Godici, 143 F. Supp. 2d 593 (E.D. Va. 2001). · cites it 8× “90/005,-809 (“the ’809 Reexamination”) on the ground that the second reexamination does not present a substantial new question of patentability, as required by 35 U.S.C. § 303 . I. The ’691 patent claims a set of surgical instruments for joining bone fragments.”
Thryv, Inc. v. Click-To-Call Tech., LP, 140 S. Ct. 1367 (2020). “" 35 U.S.C. § 303 (c) (emphasis added) (governing ex parte reexamination).”
Patlex Corp. v. Gerald J. Mossinghoff, Etc., 758 F.2d 594 (Fed. Cir. 1985). · cites it 2× “530 (a), which provides that no statement by a patentee shall be considered by the PTO during the three-month period set in 35 U.S.C. § 303 wherein the PTO is required to decide whether any substantial new question of patentability is raised.”
Celgene Corp. v. Peter, 931 F.3d 1342 (Fed. Cir. 2019). “" 35 U.S.C. § 303 (a). In IPRs, the Director has discretion to institute IPR if there is "a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”
Quad Env't Tech. Corp. v. Union Sanitary Dist., & A.P.T., Inc., a California Corp. D/B/A Calvert Env't, Inc., 946 F.2d 870 (Fed. Cir. 1991). · cites it 2× “By granting reexamination the examiner determined, in the words of 35 U.S.C. § 303 , that “a substantial new question of patentability” was raised.”
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