35 U.S.C. § 6

Patent Trial and Appeal Board

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(a)In General.—There shall be in the Office a Patent Trial and Appeal Board. The Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges shall constitute the Patent Trial and Appeal Board. The administrative patent judges shall be persons of competent legal knowledge and scientific ability who are appointed by the Secretary, in consultation with the Director. Any reference in any Federal law, Executive order, rule, regulation, or delegation of authority, or any document of or pertaining to the Board of Patent Appeals and Interferences is deemed to refer to the Patent Trial and Appeal Board.(b)Duties.—The Patent Trial and Appeal Board shall—(1) on written appeal of an applicant, review adverse decisions of examiners upon applications for patents pursuant to section 134(a);(2) review appeals of reexaminations pursuant to section 134(b);(3) conduct derivation proceedings pursuant to section 135; and(4) conduct inter partes reviews and post-grant reviews pursuant to chapters 31 and 32.(c) 3-Member Panels.—Each appeal, derivation proceeding, post-grant review, and inter partes review shall be heard by at least 3 members of the Patent Trial and Appeal Board, who shall be designated by the Director. Only the Patent Trial and Appeal Board may grant rehearings.(d)Treatment of Prior Appointments.—The Secretary of Commerce may, in the Secretary’s discretion, deem the appointment of an administrative patent judge who, before the date of the enactment of this subsection, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administrative patent judge. It shall be a defense to a challenge to the appointment of an administrative patent judge on the basis of the judge’s having been originally appointed by the Director that the administrative patent judge so appointed was acting as a de facto officer.(Added Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4717(2)], Nov. 29, 1999, 113 Stat. 1536, 1501A–580; amended Pub. L. 107–273, div. C, title III, § 13203(a)(2), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 110–313, § 1(a)(1), Aug. 12, 2008, 122 Stat. 3014; Pub. L. 112–29, § 7(a)(1), Sept. 16, 2011, 125 Stat. 313.)Editorial NotesReferences in Text

The date of the enactment of this subsection, referred to in subsec. (d), probably means the date of enactment of Pub. L. 112–29, which amended this section generally and was approved Sept. 16, 2011.

Constitutionality

For information regarding the constitutionality of provisions of subsection (c) of this section, see the Table of Laws Held Unconstitutional in Whole or in Part by the Supreme Court on the Constitution Annotated website, constitution.congress.gov.

Prior Provisions

A prior section 6, acts July 19, 1952, ch. 950, 66 Stat. 793; Pub. L. 92–132, Oct. 5, 1971, 85 Stat. 364; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 94–131, § 2, Nov. 14, 1975, 89 Stat. 690; Pub. L. 97–247, §§ 7, 13, Aug. 27, 1982, 96 Stat. 320, 321; Pub. L. 102–204, § 8, Dec. 10, 1991, 105 Stat. 1641, related to duties of Commissioner, prior to repeal by Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4715(a), 4731], Nov. 29, 1999, 113 Stat. 1536, 1501A–580, 1501A–581, effective 4 months after Nov. 29, 1999.

Amendments

2011—Pub. L. 112–29 amended section generally. Prior to amendment, section related to the establishment, composition, and function of the Board of Patent Appeals and Interferences and to the appointment of administrative patent judges.

2008—Subsec. (a). Pub. L. 110–313, § 1(a)(1)(A), (B), substituted “Deputy Director” for “Deputy Commissioner” in second sentence and “Secretary of Commerce, in consultation with the Director” for “Director” in last sentence.

Subsecs. (c), (d). Pub. L. 110–313, § 1(a)(1)(C), which directed addition of subsecs. (c) and (d) at end of subsec. (a), was executed by adding subsecs. (c) and (d) at end of section to reflect the probable intent of Congress.

2002—Subsec. (a). Pub. L. 107–273, which directed amendment of subsec. (a) by inserting “the Deputy Commissioner,” after “Commissioner,”, was executed by making the insertion after “The Director,” to reflect the probable intent of Congress.

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Pub. L. 112–29, § 7(e), Sept. 16, 2011, 125 Stat. 315, provided that: “The amendments made by this section [amending this section, sections 134, 141, and 143 of this title, section 1295 of Title 28, Judiciary and Judicial Procedure, section 2182 of Title 42, The Public Health and Welfare, and section 20135 of Title 51, National and Commercial Space Programs] shall take effect upon the expiration of the 1-year period beginning on the date of the enactment of this Act [Sept. 16, 2011] and shall apply to proceedings commenced on or after that effective date, except that—“(1) the extension of jurisdiction to the United States Court of Appeals for the Federal Circuit to entertain appeals of decisions of the Patent Trial and Appeal Board in reexaminations under the amendment made by subsection (c)(2) [amending section 1295 of Title 28] shall be deemed to take effect on the date of the enactment of this Act and shall extend to any decision of the Board of Patent Appeals and Interferences with respect to a reexamination that is entered before, on, or after the date of the enactment of this Act;“(2) the provisions of sections 6, 134, and 141 of title 35, United States Code, as in effect on the day before the effective date of the amendments made by this section shall continue to apply to inter partes reexaminations that are requested under section 311 of such title before such effective date;“(3) the Patent Trial and Appeal Board may be deemed to be the Board of Patent Appeals and Interferences for purposes of appeals of inter partes reexaminations that are requested under section 311 of title 35, United States Code, before the effective date of the amendments made by this section; and“(4) the Director’s [Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office] right under the fourth sentence of section 143 of title 35, United States Code, as amended by subsection (c)(3) of this section, to intervene in an appeal from a decision entered by the Patent Trial and Appeal Board shall be deemed to extend to inter partes reexaminations that are requested under section 311 of such title before the effective date of the amendments made by this section.”

Effective Date

Section effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as an Effective Date of 1999 Amendment note under section 1 of this title.

Notes of Decisions

Cited in 142 cases (34 in the last 5 years), 1931–2026 · leading case: Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019).

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Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). · cites it 10× “” 35 U.S.C. § 6 (a). The Director of the USPTO is “appointed by the President, by and with the advice and consent of the Senate.”

United States v. Arthrex, Inc., 594 U.S. 1 (2021). · cites it 5× “35 U. S. C. §§6 (a), (c). The Secretary of Commerce appoints all members of the PTAB— including 200-plus APJs—except for the Director, who is nominated by the President and confirmed by the Senate.”

Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015). · cites it 4× “Compare 35 U.S.C. § 6 (2006) (concerning the BPAI) with 35 U.”

In Re Kuriappan P. Alappat, Edward E. Averill & James G. Larsen, 33 F.3d 1526 (Fed. Cir. 1994). · cites it 6× “The Commissioner also may establish regulations not inconsistent with the law, with the approval of the Secretary of Commerce, 35 U.S.C. § 6 (1988), cause an examination to be made of an application, 35 U.”

Perry W. Guinn, Gary N. Mills, Robert A. Bedient & Martin O. Greeley v. Henry B. Kopf, 96 F.3d 1419 (Fed. Cir. 1996). · cites it 11× “On November 14, 1994, Kopf filed a response to Guinn’s response to the order to show cause asserting that the Commissioner had the authority under the broad jurisdiction over patent matters granted to him by Congress in 35 U.S.C. § 6 to promulgate 37 C.F.R. § 1.”

In re Ornum, 686 F.2d 937 (C.C.P.A. 1982). · cites it 8× “321(b) is invalid, (a) as beyond the rulemaking authority of the Commissioner of Patents and Trademarks under 35 U.S.C. § 6 (a) and (b) because it is contrary to statutory and case law.”

Return Mail, Inc. v. U.S. Postal Serv., 139 S. Ct. 1853 (2019). · cites it 2× “First, the "inter partes review" provision permits "a person" other than the patent owner to petition for the review and cancellation of a patent on the grounds that the invention lacks novelty or nonobviousness in light of "patents or printed publications" existing at the time…”

Arthrex, Inc. v. Smith & Nephew, Inc., 953 F.3d 760 (Fed. Cir. 2020). · cites it 6× “” United 1 To the extent that the dissents suggest otherwise, it is the Secretary of Commerce, not the Director, who ap- points ( 35 U.S.C. § 6 (c)) and thus can remove APJs.”

In Re Dbc, 545 F.3d 1373 (Fed. Cir. 2008). · cites it 3× “Under 35 U.S.C. § 6 (b), the Director has authority to designate the members of Board panels.”

Ethicon Endo-Surgery, Inc. v. Covidien Lp, 826 F.3d 1366 (Fed. Cir. 2016). · cites it 2× “35 U.S.C. § 6 (b)(4). Ignoring this statutory division of responsibilities, the PTO has assigned the institution decision to the PTAB, 37 C.”

Phillip W. Berman, Timothy J. Gregory, Laurence A. Lasky, Gerald R. Nakamura, Eric J. Patzer, John S. Patton, & Ellen S. Vitetta v. Gerard M. Housey, 291 F.3d 1345 (Fed. Cir. 2002). · cites it 5× “Ber-man argues that 35 U.S.C. § 6 supports this conclusion, as it provides that the Board “shall determine priority and pat-entability of invention in interferences declared under section 135(a).”

Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328 (Fed. Cir. 2022). · cites it 2× “The Court held, however, that the appropriate remedy was to (1) exempt the Director from 35 U.S.C. § 6 (c), which pre- cludes anyone but the Board from granting rehearing of a Board decision, and (2) “remand to the Acting Director for him to decide whether to rehear” the case.”

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