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

35 U.S.C. § 318

Decision of the Board

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(a)Final Written Decision.—If an inter partes review is instituted and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).(b)Certificate.—If the Patent Trial and Appeal Board issues a final written decision under subsection (a) and the time for appeal has expired or any appeal has terminated, the Director shall issue and publish a certificate canceling any claim of the patent finally determined to be unpatentable, confirming any claim of the patent determined to be patentable, and incorporating in the patent by operation of the certificate any new or amended claim determined to be patentable.(c)Intervening Rights.—Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes review under this chapter shall have the same effect as that specified in section 252 for reissued patents on the right of any person who made, purchased, or used within the United States, or imported into the United States, anything patented by such proposed amended or new claim, or who made substantial preparation therefor, before the issuance of a certificate under subsection (b).(d)Data on Length of Review.—The Office shall make available to the public data describing the length of time between the institution of, and the issuance of a final written decision under subsection (a) for, each inter partes review.(Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4604(a)], Nov. 29, 1999, 113 Stat. 1536, 1501A–570; 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. 303.)Editorial NotesAmendments

2011—Pub. L. 112–29 amended section generally. Prior to amendment, text read as follows: “Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which involves an issue of patentability of any claims of the patent which are the subject of the inter partes reexamination order, unless the court before which such litigation is pending determines that a stay would not serve the interests of justice.”

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 107 cases (35 in the last 5 years), 2007–2026 · 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 8× “” 35 U.S.C. § 318 (a). AQUA PRODUCTS, INC. v.”
Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016). · cites it 10× “” 35 U.S.C. § 318 (a). 3 The decision of the Board to institute inter partes re- view cannot be appealed.”
SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018). · cites it 3× “” 35 U. S. C. §318 (a) (emphasis added). In this context, as in so many others, “any” means “every.”
Sas Inst., Inc. v. Complementsoft, LLC., 825 F.3d 1341 (Fed. Cir. 2016). · cites it 4× “19 dress every patent claim challenged in an IPR petition?5 The petitioner argued, as does SAS, that the text of the final written decision statutory subsection, 35 U.S.C. § 318 (a), compels the Board to address every petition- challenged claim.”
In Re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015). · cites it 4× “It simply author- izes the Board to issue “a final written decision with respect to the patentability of any patent claim challenged by the petitioner and any new claim added under section 316(d).”
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017). · cites it 2× “The court also explained that 35 U.S.C. § 318 (a) (which is identical in all relevant aspects to § 328(a)) “only requires the Board to address claims as to which review was granted” in a final written decision.”
Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). · cites it 2× “See 35 U.S.C. § 318 (a). The government itself has recognized that there is a “functional resemblance between inter partes review and litigation,” and that the Board uses “trial-type procedures in inter partes review.”
Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018). · cites it 4× “A further conflict arises in the PTAB’s issuance of this “final decision,” for final decision on inter partes review, as authorized by 35 U.S.C. § 318 , applies upon PTAB trial of patentability, a trial that cannot occur when trial is not “instituted.”
Ethicon Endo-Surgery, Inc. v. Covidien Lp, 812 F.3d 1023 (Fed. Cir. 2016). · cites it 2× “See 35 U.S.C. § 318 (requiring that “the Patent Trial and Appeal Board shall issue a final written deci- sion with respect to the patentability of any patent claim challenged by the petitioner”).”
Fresenius Usa, Inc. v. Baxter Int'l, Inc., 582 F.3d 1288 (Fed. Cir. 2009). · cites it 2× “With respect to inter partes reexamination, 35 U.S.C. §318 commits the grant of a stay to the district court’s discretion with special heed to the concerns of the patentee: Once an order for inter partes reexamination of a patent has been issued under section 313, the patent…”
Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842 (Fed. Cir. 2008). · cites it 2× “STAY At the outset, P & G argues that the district court’s stay order violated 35 U.S.C. § 318 . Section 318 reads: Once an order for inter partes reexamination of a patent has been issued under section 313, the patent owner may obtain a stay of any pending litigation which…”
United States v. Arthrex, Inc., 594 U.S. 1 (2021). “See 35 U. S. C. §318 (b). The Government and Smith & Nephew also note that early Patent Acts authorized the Secretary of State to ap- point two types of officials who made final decisions on questions of patent law.”
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— 35 U.S.C. § 318(a) — 1 case
Pers. Audio, LLC v. CBS Corp., 946 F.3d 1348 (Fed. Cir. 2020).
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