35 U.S.C. § 312

Petitions

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(a)Requirements of Petition.—A petition filed under section 311 may be considered only if—(1) the petition is accompanied by payment of the fee established by the Director under section 311;(2) the petition identifies all real parties in interest;(3) the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim, including—(A) copies of patents and printed publications that the petitioner relies upon in support of the petition; and(B) affidavits or declarations of supporting evidence and opinions, if the petitioner relies on expert opinions;(4) the petition provides such other information as the Director may require by regulation; and(5) the petitioner provides copies of any of the documents required under paragraphs (2), (3), and (4) to the patent owner or, if applicable, the designated representative of the patent owner.(b)Public Availability.—As soon as practicable after the receipt of a petition under section 311, the Director shall make the petition available to the public.(Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–568; amended Pub. L. 107–273, div. C, title III, §§ 13105(a), 13202(a)(2), (c)(1), Nov. 2, 2002, 116 Stat. 1900–1902; Pub. L. 112–29, § 6(a), (c)(3)(A)(i), Sept. 16, 2011, 125 Stat. 300, 305.)Editorial NotesAmendments

2011—Pub. L. 112–29, § 6(a), amended section generally. Prior to amendment, section related to determination of issue by Director.

Subsec. (a). Pub. L. 112–29, § 6(c)(3)(A)(i)(I), substituted “the information presented in the request shows that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request,” for “a substantial new question of patentability affecting any claim of the patent concerned is raised by the request,” and “A showing that there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request” for “The existence of a substantial new question of patentability”.

Subsec. (c). Pub. L. 112–29, § 6(c)(3)(A)(i)(II), substituted “the showing required by subsection (a) has not been made,” for “no substantial new question of patentability has been raised,”.

2002—Pub. L. 107–273, § 13202(c)(1), made technical correction to directory language of Pub. L. 106–113, which enacted this section.

Subsec. (a). Pub. L. 107–273, § 13202(a)(2)(A), struck out second sentence which read as follows: “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.”

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, § 13202(a)(2)(B), struck out “, if any” after “third-party requester”.

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by section 6(a) of Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to any patent issued before, on, or after that effective date, with provisions for graduated implementation, see section 6(c)(2) of Pub. L. 112–29, set out as a note under section 311 of this title.

Pub. L. 112–29, § 6(c)(3)(B), (C), Sept. 16, 2011, 125 Stat. 305, provided that:“(B)Application.—The amendments made by this paragraph [amending this section and section 313 of this title]—“(i) shall take effect on the date of the enactment of this Act [Sept. 16, 2011]; and“(ii) shall apply to requests for inter partes reexamination that are filed on or after such date of enactment, but before the effective date set forth in paragraph (2)(A) of this subsection [set out as a note under section 311 of this title].“(C)Continued applicability of prior provisions.—The provisions of chapter 31 of title 35, United States Code, as amended by this paragraph [amending this section and section 313 of this title], shall continue to apply to requests for inter partes reexamination that are filed before the effective date set forth in paragraph (2)(A) as if subsection (a) [enacting section 319 of this title and amending this section and sections 312 to 318 of this title] had not been enacted.”

Effective Date of 2002 Amendment

Amendment by section 13105(a) of Pub. L. 107–273 applicable with respect to any determination of the Director of the United States Patent and Trademark Office that is made on or after Nov. 2, 2002, see section 13105(b) of Pub. L. 107–273, set out as a note under section 303 of this title.

Effective Date

Section effective Nov. 29, 1999, and applicable to any patent issuing from an original application filed in the United States on or after that date, see section 1000(a)(9) [title IV, § 4608(a)] of Pub. L. 106–113, set out as an Effective Date of 1999 Amendment note under section 41 of this title.

Notes of Decisions

Cited in 113 cases (52 in the last 5 years), 2008–2026 · leading case: Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018).

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Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018). · cites it 7× “” 35 U.S.C. § 312 (a)(3). Section 313 provides that the patent owner may file a preliminary response to the petition.”

Sas Inst., Inc. v. Complementsoft, LLC., 825 F.3d 1341 (Fed. Cir. 2016). · cites it 4× “35 U.S.C. § 312 . Petitions for review Section 312 sets the requirements for petitions for post-grant review.”

Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017). · cites it 2× “Applying these principles, the Court held that the Federal Circuit may not review a Board decision to insti- tute IPR proceedings on the basis that the petition did not satisfy the requirements of 35 U.S.C. § 312 (a)(3), which states that the petition must identify the grounds…”

Corephotonics, Ltd. v. Apple Inc., 84 F.4th 990 (Fed. Cir. 2023). · cites it 3× “1348, 1357 (2018); see also 35 U.S.C. § 312 (a)(4). The IPR petition, thus, must provide an understandable explanation of the element-by- element specifics of the patentability challenges, including the identification of particular portions of prior art on which the petitioner…”

Esip Series 2, LLC v. Puzhen Life USA, LLC, 958 F.3d 1378 (Fed. Cir. 2020). · cites it 4× “ESIP also contends that the Board should not have instituted inter partes review be- cause appellee Puzhen failed to identify “all real parties in interest” as required by 35 U.S.C. § 312 . We find no error in the Board’s obviousness determination, and the Board’s decision to…”

Husky Injection Molding Sys. Ltd. v. Athena Automation Ltd., 838 F.3d 1236 (Fed. Cir. 2016). · cites it 4× “with particu- larity” in the petition, as set forth in 35 U.S.C. § 312 (a)(3). Id. at 1272–73. We declined to review Cuozzo’s challenge, noting that § 314(d) broadly “exclude[s] all review of the decision whether to institute,” and is not just “directed to precluding review only…”

Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018). · cites it 5× “A Under 35 U.S.C. § 312 (a)(2), an IPR petition "may be considered only if .”

In Re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015). · cites it 2× “” 35 U.S.C. § 312 (a)(3). Cuozzo argues that the PTO may only institute IPR based on grounds identified in the petition because “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition…”

Ethicon Endo-Surgery, Inc. v. Covidien Lp, 812 F.3d 1023 (Fed. Cir. 2016). · cites it 2× “” 35 U.S.C. § 312 (a). Reexamination then proceeded similarly to initial examination, including the right of amendment; appeal could be taken to the Patent Office Board of Ap- peals and Interferences and then to the courts.”

Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018). · cites it 3× “The Institution Decisions The Board instituted IPRs over AIT's real party in interest challenges, which it construed as being premised on 35 U.S.C. § 312 (a), 37 C.F.R. § 42.8 (b)(1), and § 315(b).”

Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir. 2016). “” 35 U.S.C. § 312 (a)(3). “All arguments for the relief requested in a motion must be made in the motion.”

Regents of the Univ. of Minn. v. Lsi Corp., 926 F.3d 1327 (Fed. Cir. 2019). · cites it 2× “35 U.S.C. § 312 (2002). However, significantly, unlike ex parte reexamination, inter partes reexamination allowed the third-party requestor to participate throughout the proceeding.”

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