U.S. Code » Title 35 » Part PART III— PATENTS AND PROTECTION OF PATENT RIGHTS › Chapter CHAPTER 32— POST-GRANT REVIEW

35 U.S.C. § 328

Decision of the Board

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(a)Final Written Decision.—If a post-grant 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 326(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 a post-grant 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 post-grant review.(Added and amended Pub. L. 112–29, §§ 6(d), 20(j), Sept. 16, 2011, 125 Stat. 310, 335.)Editorial NotesAmendments

2011—Subsec. (c). Pub. L. 112–29, § 20(j), struck out “of this title” after “252”.

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

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

Section effective upon the expiration of the 1-year period beginning Sept. 16, 2011, and applicable only to patents described in section 3(n)(1) of Pub. L. 112–29 (35 U.S.C. 100 note), with certain exceptions and limitations, see section 6(f)(2), (3) of Pub. L. 112–29, set out as a note under section 321 of this title.

Notes of Decisions
Cited in 5 cases, 2015–2020 · leading case: Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
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Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017). · cites it 8× “3 Under those PGR procedures, a CBM review proceeds in stages: first, the Board decides whether to institute a review, and second, if review is instituted, the proceeding enters a trial stage and the Board later issues a “final written decision” under 35 U.S.C. § 328 (a). Once…”
Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350 (Fed. Cir. 2017). “AIA § 18(a)(1)(D) provides: The petitioner in a transitional proceeding that results in a final written decision under [ 35 U.S.C. § 328 (a)] with respect to a claim in a [CBM] patent, or the petitioner’s real party in interest, may not assert, either in a civil action arising…”
Sightsound Tech., LLC v. Apple Inc., 809 F.3d 1307 (Fed. Cir. 2015). “After CBM review is instituted, CBM review proceeds before the Board, and concludes with the Board’s “final written decision” pursuant to 35 U.S.C. § 328 (a). Section 329 provides for appeal of that decision to this court.”
Progressive Cas. Ins. v. Liberty Mut. Liberty Mut. Ins., 625 F. App'x 552 (Fed. Cir. 2015). “See 35 U.S.C. §§ 328 , 329. We affirm. We need not address Liberty’s cross-appeal in one proceeding, because that cross-appeal concerns claims held invalid in another proceeding whose result we affirm.”
Samsung Elec. Am. v. Prisua Eng'g Corp. (Fed. Cir. 2020). “See 35 U.S.C. § 328 (“[T]he Patent Trial and Appeal Board shall issue a final written decision with respect to the patentability of any pa- tent claim challenged by the petitioner and any new claim added under section 326(d).”
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