U.S. Code » Title 35 » Part PART III— PATENTS AND PROTECTION OF PATENT RIGHTS › Chapter CHAPTER 31— INTER PARTES REVIEW

35 U.S.C. § 314

Institution of inter partes review

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(a)Threshold.—The Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.(b)Timing.—The Director shall determine whether to institute an inter partes review under this chapter pursuant to a petition filed under section 311 within 3 months after—(1) receiving a preliminary response to the petition under section 313; or(2) if no such preliminary response is filed, the last date on which such response may be filed.(c)Notice.—The Director shall notify the petitioner and patent owner, in writing, of the Director’s determination under subsection (a), and shall make such notice available to the public as soon as is practicable. Such notice shall include the date on which the review shall commence.(d)No Appeal.—The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.(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, § 13202(a)(3), (c)(1), Nov. 2, 2002, 116 Stat. 1901, 1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 300.)Editorial NotesAmendments

2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to conduct of inter partes reexamination proceedings.

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

Subsec. (b). Pub. L. 107–273, § 13202(a)(3), redesignated par. (2) as (1), substituted “the Office shall send to the third-party requester a copy” for “the third-party requester shall receive a copy”, redesignated par. (3) as (2), and struck out former par. (1) which read as follows: “This subsection shall apply to any inter partes reexamination proceeding in which the order for inter partes reexamination is based upon a request by a third-party requester.”

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by 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.

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 244 cases (124 in the last 5 years), 2007–2026 · leading case: Cuozzo Speed Tech., LLC v. Lee, 195 L. Ed. 2d 423 (2016).
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Cuozzo Speed Tech., LLC v. Lee, 195 L. Ed. 2d 423 (2016). · cites it 13× “shall be final and non-appealable,” 35 U. S. C. §314 (d), and grants the Patent Office authority to issue “regulations .”
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016). · cites it 18× “35 U.S.C. § 314 (a). The Board denied the petition with respect to claims 10, 12– 15, 20–27, and 30–33, finding that there was no reasona- ble likelihood of invalidity because Synopsys had not shown, for example, how any prior art disclosed “local variable assignment…”
Ethicon Endo-Surgery, Inc. v. Covidien Lp, 812 F.3d 1023 (Fed. Cir. 2016). · cites it 20× “We first hold that 35 U.S.C. § 314 (d) does not preclude us from hearing Ethicon’s challenge to the authority of the Board to render a final decision.”
Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). · cites it 8× “See 35 U.S.C. § 314 (a). Following institution by the Director and a trial before the Board, the Director may “cancel any claim that the agency finds to be unpatentable” under 35 U.”
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017). · cites it 6× “2131 (2016), the Supreme Court considered the parallel “no appeal” statute for inter partes review (“IPR”) proceedings, 35 U.S.C. § 314 (d), and held that Board decisions are nonappealable “where the grounds for attacking the decision to institute inter partes review consist of…”
Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016). · cites it 6× “3d at 1376 ; see also 35 U.S.C. § 314 (d) (“The deter- mination by the Director whether to institute an inter partes review under this section shall be final and nonap- pealable.”
Sas Inst., Inc. v. Complementsoft, LLC., 825 F.3d 1341 (Fed. Cir. 2016). · cites it 6× “We found it significant that § 318(a) describes “claims challenged by the petitioner,” whereas the institution decision statutory subsection, 35 U.S.C. § 314 , describes “claims challenged in the petition.”
In Re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015). · cites it 6× “” 35 U.S.C. § 314 (d). The PTO argues that § 314(d) precludes review of a determination to institute IPR.”
Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018). · cites it 6× “” 35 U.S.C. § 314 (a); see Cuozzo, 136 S. Ct.”
SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018). · cites it 2× “” 35 U. S. C. §314 (a). Once the Director institutes an inter partes review, the matter proceeds before the Board with many of the usual trappings of litigation.”
Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350 (Fed. Cir. 2017). · cites it 6× “Both cases interpreted the scope of 35 U.S.C. § 314 (d), an analogous no-appeal provision for the IPR program.”
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015). · cites it 4× “” 35 U.S.C. § 314 (d). We held that this provision “bar[s] review of all institution decisions, even after the Board issues a final decision.”
Show all 244 citing cases →
— 35 U.S.C. § 314(a) — 1 case
Click-To-Call Tech., Lp v. Oracle Corp. (Fed. Cir. 2016).
— 35 U.S.C. § 314(d) — 1 case
Wi-Fi One, LLC v. Broadcom Corp., 878 F.3d 1364 (Fed. Cir. 2018). “” 35 U.S.C. § 314 (a); see Cuozzo, 136 S. Ct.”
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