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

35 U.S.C. § 316

Conduct of inter partes review

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(a)Regulations.—The Director shall prescribe regulations—(1) providing that the file of any proceeding under this chapter shall be made available to the public, except that any petition or document filed with the intent that it be sealed shall, if accompanied by a motion to seal, be treated as sealed pending the outcome of the ruling on the motion;(2) setting forth the standards for the showing of sufficient grounds to institute a review under section 314(a);(3) establishing procedures for the submission of supplemental information after the petition is filed;(4) establishing and governing inter partes review under this chapter and the relationship of such review to other proceedings under this title;(5) setting forth standards and procedures for discovery of relevant evidence, including that such discovery shall be limited to—(A) the deposition of witnesses submitting affidavits or declarations; and(B) what is otherwise necessary in the interest of justice;(6) prescribing sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding, such as to harass or to cause unnecessary delay or an unnecessary increase in the cost of the proceeding;(7) providing for protective orders governing the exchange and submission of confidential information;(8) providing for the filing by the patent owner of a response to the petition under section 313 after an inter partes review has been instituted, and requiring that the patent owner file with such response, through affidavits or declarations, any additional factual evidence and expert opinions on which the patent owner relies in support of the response;(9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent;(10) providing either party with the right to an oral hearing as part of the proceeding;(11) requiring that the final determination in an inter partes review be issued not later than 1 year after the date on which the Director notices the institution of a review under this chapter, except that the Director may, for good cause shown, extend the 1-year period by not more than 6 months, and may adjust the time periods in this paragraph in the case of joinder under section 315(c);(12) setting a time period for requesting joinder under section 315(c); and(13) providing the petitioner with at least 1 opportunity to file written comments within a time period established by the Director.(b)Considerations.—In prescribing regulations under this section, the Director shall consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings instituted under this chapter.(c)Patent Trial and Appeal Board.—The Patent Trial and Appeal Board shall, in accordance with section 6, conduct each inter partes review instituted under this chapter.(d)Amendment of the Patent.—(1)In general.—During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways:(A) Cancel any challenged patent claim.(B) For each challenged claim, propose a reasonable number of substitute claims.(2)Additional motions.—Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the Director.(3)Scope of claims.—An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.(e)Evidentiary Standards.—In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.(Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–569; amended Pub. L. 107–273, div. C, title III, § 13202(c)(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 112–29, § 6(a), Sept. 16, 2011, 125 Stat. 302.)Editorial NotesAmendments

2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to certificate of patentability, unpatentability, and claim cancellation.

2002—Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, which enacted this section.

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 176 cases (85 in the last 5 years), 2013–2026 · leading case: Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
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Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). · cites it 91× “Specifically, we consider how the AIA’s statutory language in 35 U.S.C. § 316 (e), which places “the burden of proving a proposition of unpatentability by a preponderance of the evidence” onto the petitioner in an IPR, applies to claim amendments authorized by 35 U.”
Cuozzo Speed Tech., LLC v. Lee, 195 L. Ed. 2d 423 (2016). · cites it 8× “” 35 U. S. C. §316 (a)(4). The Court of Appeals held that this statute gives the Patent Office the legal author- ity to issue its broadest reasonable construction regulation.”
In Re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015). · cites it 14× “” 35 U.S.C. § 316 (a)(2), (a)(4). Pursuant to this authority, the PTO has promulgated 37 C.”
Ethicon Endo-Surgery, Inc. v. Covidien Lp, 812 F.3d 1023 (Fed. Cir. 2016). · cites it 10× “35 U.S.C. § 316 (b). Ethicon contends that this combination of 1 The relevant portions of the Leahy-Smith America Invents Act, Pub.”
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016). · cites it 8× “See 35 U.S.C. § 316 (a)(8); 37 C.F.R. § 42.120 .”
Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435 (Fed. Cir. 2015). · cites it 8× “See 35 U.S.C. § 316 (a)(3) — (4) (“The Director shall prescribe regulations .”
Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016). · cites it 5× “35 U.S.C. § 316 . For example, in Liberty Mutual Insurance Co.”
In Re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016). · cites it 4× “” 35 U.S.C. § 316 (e). “[T]he burden of proof is on the petitioner to prove unpatentable those issued claims that were actually challenged in the petition for review and for which the Board instituted review.”
Regents of the Univ. of Minn. v. Lsi Corp., 926 F.3d 1327 (Fed. Cir. 2019). · cites it 6× “A patent owner may respond to the petition after IPR is instituted, 35 U.S.C. § 316 (a)(8), but the petitioner bears the burden of proving "unpatentability by a preponderance of the evidence," id.”
In Re Cuozzo Speed Tech., LLC, 778 F.3d 1271 (Fed. Cir. 2015). · cites it 16× “” 35 U.S.C. § 316 (a)(2), (a)(4). Pursuant to this authority, the PTO has promulgated 37 C.”
Nike, Inc. v. Adidas Ag, 812 F.3d 1326 (Fed. Cir. 2016). · cites it 4× “Burden of Proof When Congress created IPR proceedings, it also enacted 35 U.S.C. § 316 , which directs the PTO to “prescribe regulations” governing a considerable number of different aspects of these new proceedings.”
Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016). · cites it 4× “” 35 U.S.C. § 316 (a)(2), (4). The AIA also requires the PTO to “consider the effect of any such regulation on the economy, the integrity of the patent system, the efficient administration of the Office, and the ability of the Office to timely complete proceedings.”
Show all 176 citing cases →
— 35 U.S.C. § 316(a)(10) — 1 case
Sas Inst., Inc. v. Complementsoft, LLC., 825 F.3d 1341 (Fed. Cir. 2016).
— 35 U.S.C. § 316(a)(11) — 1 case
CyWee Grp. Ltd. v. HTC Corp. (W.D. Wash. 2019).
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