Mr. Chairman:
I am pleased to have the opportunity to present the views of the American Intellectual Property Law Association (AIPLA) on the question of improving patent quality, specifically by establishing a post-grant opposition system in order to create a quick, relatively inexpensive, and effective means of challenging patents of questionable validity.
AIPLA is a national bar association whose nearly 15,000 members are primarily lawyers in private and corporate practice, in government service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies, and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of patents, and have a keen interest in achieving an efficient and effective post-grant opposition system.
Introduction
AIPLA commends you, Mr. Chairman, for taking a fresh look at how patent procedures can be improved to strengthen the quality of U.S. patents and enhance the confidence of inventors, businesses, and the investment community in the patent system. Any time patents are issued which, on their face, appear to be of questionable validity, it reflects negatively on the patent system and undermines the confidence of business and consumers. While the validity of such patents may be tested through litigation or ex parte or inter partes reexamination, these proceedings all suffer substantial disadvantages.
Litigation is very expensive. AIPLA conducts an Economic Survey of our membership every two years to collect data on a number of aspects of the practice of intellectual property law. According to the most recent Economic Survey, the average cost of patent litigation, including the costs of discovery, ranges between $500,000 and $3,995,000 per party, depending on the amount at risk.
In addition, it is only possible to test a patent’s validity through litigation if the patentee brings an infringement action against a competitor or provides the competitor with standing to bring a declaratory judgment action based on threats by the patentee. Thus, a competitor cannot challenge a patent in litigation before the competitor incurs the costs and risks of developing and marketing a product.
Even where litigation is available to test the validity of a patent, the recent National Academy of Sciences (NAS) report, A Patent System for the 21st Century, reported that such litigation typically does not occur until 7 to 10 years after the patent is issued and final decision is not reached for another 2 to 3 years. Until the litigation has been concluded, there is uncertainty in the marketplace and uncertainty in the technology as to the scope of the patent right.
Another method of challenging patents is through reexamination in the United States Patent and Trademark Office (PTO), either ex parte or inter partes. While a reexamination can be initiated by a competitor promptly after patent grant, both types of reexamination suffer significant deficiencies. Both types of reexamination are limited to challenges based on patents and printed publications and are decided by patent examiners rather than by Administrative Patent Judges (APJs).
Ex parte reexamination, as its name implies, involves only the patentee and the examiner after it is initiated. Thus, a third-party requestor is denied any meaningful participation, allowing the patentee the exclusive right to argue the case to the examiner and to appeal any decisions adverse to the patentee. Moreover, the PTO has not succeeded in handling ex parte reexamination proceedings with the “special dispatch” required by the statute; one witness at the recent PTO Roundtable Regarding Inter Partes Reexamination reported that, based on a limited review, he found that ex parte reexaminations that went to the Court of Appeals for the Federal Circuit (CAFC) took 9.5 years from filing until issuance of the reexamination certificate (see Wegner, Transcript from Round Table Meeting, www.USPTO.GOV)
Inter partes reexamination was conceived to provide a more balanced procedure for the public by permitting greater participation by third-party requestors, but limitations added during the legislative process destroyed that balance. For example, unlike ex parte reexamination, which applied to all patents in force on the date of its enactment, the inter partes reexamination procedure only applies to patents issued on applications filed on or after November 29, 1999.
Also, the name of the real party in interest has to be revealed upon requesting inter partes reexamination. This creates a chilling effect by requiring requestors to essentially identify themselves as litigation targets under the challenged patent. A further chilling effect arises from the stringent estoppel provisions that were added during the legislative process even though third-party requestors have no recourse to discovery to aid in presenting their cases.
The Time for Post-Grant Opposition Has Come
In view of the absence of an effective and inexpensive means to challenge patents, AIPLA, the PTO, the Federal Trade Commission (FTC), the NAS, and, just last week, the Intellectual Property Law Section of the ABA have all put forth suggestions for post-grant opposition proceedings as a means of permitting a more meaningful, timely and cost-effective opportunity for the public to challenge patents that may be of questionable validity.
In 1996, AIPLA proposed the establishment of a post-grant opposition system to provide parties with an efficient, effective, and relatively inexpensive procedure to evaluate whether the claims of an issued patent are too broad or simply should not have been issued at all. The PTO, as part of its 21st Century Strategic Plan released in 2002, called for the post-grant review of patents. Last October, the FTC, in its report entitled “To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy,” also recommended the establishment of an effective post-grant opposition system. Earlier this year, the NAS, in its report mentioned earlier, recommended the creation of an “Open Review procedure” to provide “more timely, lower cost, and more efficient review of granted patents” to replace the current reexamination procedures. The resolution adopted by the IPL Section of the ABA is generally supportive of a post-grant proceeding along the lines of the proposal AIPLA has developed. The call for an effective, efficient post-grant system to review patents has reached a crescendo. It is time to act.
AIPLA Proposal for Post-Grant Opposition
In November 2003, AIPLA President Rick Nydegger created a Special Committee on Patent Legislative Strategies to focus on legislative changes that are desirable and achievable for the U.S. patent system. The Special Committee was co-chaired by two former AIPLA Presidents and included as members a former U.S. District Court judge, a former PTO Commissioner, five other AIPLA Past Presidents, and several other distinguished patent attorneys. Among the many topics reviewed by the Special Committee was post-grant review. Building on the earlier proposal of AIPLA and the more recent recommendations of the PTO, the FTC, and the NAS, the Special Committee developed what is believed to be an effective and carefully balanced post-grant opposition proposal. That proposal was approved by the AIPLA Board of Directors following additional deliberation during several meetings. The challenge is significant because, in the view of many, no country has truly achieved an optimal opposition system.
In a perfect world, one would desire a post-grant opposition system in which every issue relevant to patentability could be raised and resolved quickly and inexpensively. Both opposer and patentee would have the opportunity to obtain discovery, be able to present affidavits and declarations, present live testimony, cross-examine the opposing party’s witnesses and affiants, conclude the proceeding in no more than twelve months, accomplish this inexpensively, and protect the patentee from harassment. In other words, we would have the equivalent of a district court trial, but quickly and inexpensively and in the PTO.
In the real world in which we live, however, this is not possible. In designing a post-grant opposition system, compromises are inevitable. We must seek the appropriate balance of procedures to accomplish the competing objectives, noted above, in a fair, effective, relatively inexpensive, and reasonably prompt review process.
The proceeding must be sufficiently attractive for the public – largely competitors of the patentee – so that they will be willing to request an opposition. The grounds for challenging patents must be those which the PTO can effectively handle. Both opposer and patentee must have reasonable access to procedures to present evidence in support of their case and to challenge that presented by the other party, but without the time-consuming, expensive discovery that accompanies patent infringement suits. And patentees, especially small business and independent inventors, must be protected against harassment from multiple sequential challenges, and against undue delay in resolving questions of patent scope and validity. We believe that the new proposal we have developed for a post-grant opposition proceeding addresses these competing goals in a fair and balanced manner.
The principal features of our proposal for a new post-grant opposition proceeding are the following:
We believe that the draft post-grant opposition proposal appended to our statement accomplishes these goals. The Special Committee held numerous meetings, prepared, debated, and revised several drafts, all the while receiving constant guidance from the Board of Directors and the substantive Standing Committees of AIPLA. As we worked to develop the details of a post-grant opposition procedure, we continually discovered new issues, the resolution of which has made our proposal more effective and balanced. Indeed, the varied background of the participants – attorneys representing independent inventors, large and small businesses, and universities – contributed to this balance.
As previously noted, the present proposal has been approved by AIPLA’s Board and we believe it is a commendable beginning. I say beginning because we recognize, based on our recent experience, that achieving a fair balance between the competing objectives of a well-designed post-grant opposition proceeding is challenging, and new ideas and perspectives can always improve the product. I also say beginning because the success of any opposition procedure only can be proven in practice, and achieving a fair balance may well require adjusting the procedure or its relationship to ex parte and inter partes reexamination based on experience. I would like to outline for the Subcommittee the major features of our proposal, which is attached as an Appendix.
Any person would be permitted to file a request for opposition to an issued patent. The opposition request must be made not later than nine months after the patent is granted. However, the patent owner may consent to the filing of a request at anytime during the life of the patent. The requester would be required to provide a complete disclosure of the basis for the opposition together with the request. Copies of any patents and printed publications relied upon must be provided. If the requester relies on factual evidence or expert opinions in support of the opposition, the requester must provide all such evidence and opinions in the form of affidavits or declarations at the time of filing the request.
As with inter partes reexamination, the real party in interest must be identified. However, recognizing that this could discourage the filing of an opposition by a party fearful of identifying itself as a target for an infringement action, a real party in interest can request that its identity be kept separate from the file of the opposition. In such cases, the identity of the opposer would be made available only to government agencies or to persons demonstrating good cause.
The need for protecting the identity of the opposer is balanced, however, by the interests of justice and fairness in certain circumstances. For example, under our proposal, a request cannot be made for keeping the identity of the real party in interest separate from the opposition file where the opposer relies upon factual evidence or expert opinions in the form of affidavits or declarations. The patentee must be able in such a situation to learn the opposer’s identify in order to effectively cross-examine the opposer’s affiants and declarants. Similarly, if an appeal is taken from a final decision of the PTO, the identity of the real party in interest must become part of the opposition file.
AIPLA’s proposed opposition proceeding would allow a broader range of issues to be raised than the existing reexamination proceedings, but they would not be coextensive with the issues of patent validity that could be raised in the courts. The issues in the opposition proceeding would essentially be co-extensive with the issues that a patent examiner considers in deciding whether to permit an application for patent to issue as a patent. We would exclude certain issues because they depend upon the state of mind of the inventors and are not susceptible to resolution in such an administrative proceeding without the availability of extensive discovery that would render the proceeding excessively expensive and lengthy. These include issues such as “best mode” in section 112 and priority of invention in section 102(g). The proceeding would permit consideration of issues under section 101 (patentable subject matter), sections 102(a) (known or used by others) and (b) (public use or sale), section 112 (¶¶ 1 & 2 - written description and enablement), section 251 (¶ 4 – no broadened reissue claims) and double patenting (only one patent per invention).
An opposition would be instituted upon request unless the Director determined it lacked substantial merit. The Director would assign the opposition proceeding to a panel of three APJs. The decision on the opposition would be made upon the prosecution record that was the basis for the grant of the patent and the additional submissions by the parties to the opposition proceeding.
The patent owner would be afforded the opportunity to make a complete response to the opposition request and to provide factual evidence and expert opinions in rebuttal to the submission presented by the requester. However, the patent owner would not be permitted to later make additional evidentiary submissions, as a matter of right, after making the initial response to the request.
A patent owner would have the right to amend the claims of the patent as a part of the patent owner’s response to the opposition request. Any amended claim could not enlarge or broaden the subject matter claimed in the patent. Subsequent amendments could only be made upon a showing of good cause. Where an amended claim raises a new issue of patentability, the requester would be permitted to address that new issue.
As noted previously, we believe that significant limitations must be imposed on the discovery available during an opposition in order to constrain costs and avoid unduly protracted proceedings. Thus, the only form of discovery that we believe should be available to any party to an opposition, whether the requester or the patent owner, is the right to cross-examine a person providing factual evidence or expert opinions. Thus, a patent owner would be able to depose a requester’s declarants and affiants, and a requester would be able to depose a patent owner’s declarants and affiants. Only those persons whose affidavits or declarations were submitted as part of the opposer’s or the patentee’s submission could be cross-examined by way of deposition by the other party during the opposition proceeding.
Other than depositions of these declarants or affiants, additional discovery would only be permitted if the requesting party demonstrates that it is required in the interests of justice. One example of where this might apply is where cross-examination reveals the existence of evidence that rebuts the affidavits submitted by the requester. Discovery should be permitted in this situation so that the evidence could be obtained. Thus, discovery in an opposition proceeding should be available only to the extent that discovery is currently authorized in patent interferences pursuant to 37 C.F.R. §1.687(c).
The Director would have discretion whether to accept or reject supplemental submissions. It is anticipated that the Director would administer this authority in a manner so as to balance fairness to the parties with the desirability of bringing the proceeding to a timely and prompt conclusion.
An oral hearing would be held if requested by a party to the opposition, or ordered by the three-judge panel. Whether or not a hearing takes place, the three-judge panel would have authority to require the filing of briefs before deciding the issues raised in the opposition request. We would expect that briefs would be routinely required and operate in the manner of a typical pre-trial brief.
The fact-finding would be done on a “preponderance of the evidence” standard. Since the opposition proceeding involves an issued United States patent, the presumption that the patent is valid remains in effect. Thus, the requester would have the initial burden of making arguments and establishing facts by a preponderance of the evidence that would result in a conclusion inconsistent with the patent’s presumed validity. Unlike court proceedings, however, the determination of invalidity would be based on the “broadest reasonable construction” of the claim. This is the standard used to test the patentability of a claim during examination.
The final determination of the Director in an opposition proceeding would be based upon a written decision, including findings of facts and conclusions of law on the issues raised in each opposition request.
Any party adversely impacted by a decision should have the right to request reconsideration and modification of the decision, not less than two weeks from the date of the decision. Any party to an opposition proceeding dissatisfied with a final determination of the Director may appeal to the CAFC.
A very important aspect of any post-grant-opposition proceeding is the effect the decision will have on the parties. If the estoppel provision is too harsh, no one will use the procedure, as we have seen with inter partes reexamination. If it is too lenient, patentees may be subject to needless repetitive challenges by the same party. Therefore, we believe that a determination with respect to any issue of validity actually raised by an opposer should be preclusive against that opposer in any subsequent proceeding, absent any factual evidence that could not have been reasonably discovered or presented. Given the relatively short, nine-month period for initiating an opposition and the limited discovery available to the parties, we believe this would strike the right balance.
We believe it is extremely important that an opposition proceeding terminate with a final determination within one year after institution. This one-year period would serve the public interest by providing prompt final determinations of patentability issues raised in the opposition. Recognizing that exceptional circumstances could arise, however, we believe that any party to an opposition should be able to obtain an extension of the one-year period for no more than an additional six months upon a showing of good cause. In addition, the three-judge panel could sua sponte extend the period for six months.
We would provide, as with interference proceedings, that an opposition proceeding could be terminated upon the joint request of the opposer and the patentee. Any agreement or understanding between the patent owner and an opposer would have to be in writing and the opposition would not be terminated until a copy was filed in the Office. The request would have to be filed before the panel issued a written decision. Where an opposition is terminated, there would be no estoppel as to that opposer. If requested, the agreement would be kept separate from the file of the opposition, and made available only to Government agencies on written request, or to any person upon a showing of good cause.
Similar to reexaminations, any claim determined to be patentable would be subject to the intervening rights provision specified in the second paragraph of section 252 for claims in reissued patents.
The opportunity to bring an opposition proceeding is intended to encourage members of the public to make prompt submissions of facts and expert opinions bearing on the validity of U.S. patents. The proceeding, therefore, is designed to provide greater certainty to both inventors and the public on the scope of valid patent rights. To ensure against harassment by a requester, no patent for which an opposition has been instituted should later be the subject of an inter partes reexamination request by the party that initiated the opposition. However, this would not apply to parties who did not initiate an opposition.
The public should be able to continue to request ex parte reexamination based upon patents and printed publications for the life of a patent. This balance would best serve the public interest by granting members of the public administrative redress where questions of patentability exist for which additional consideration by the Office is desired, and in granting inventors finality in the administrative consideration of questions of patentability.
In addition, we would give the opposition proceedings preference over reexamination proceedings. Thus, reexamination requests filed by third parties during the nine-month period would be considered to be requests for an opposition. Once an opposition is instituted, however, later requests for reexamination would be stayed until the opposition is terminated.
A Word of Caution
The adoption of any post-grant opposition system by the United States would be of limited value unless the necessary resources are dedicated to its implementation. As a point of reference, the latest statistical report of the European Patent Office (EPO) indicates that the EPO granted 59,992 European patents in 2003. That same year, 2,634 patents, or approximately 4.4%, were opposed. In the context of the PTO which granted 189,597 patents in 2003, this would translate into over 8,000 oppositions. Even discounting this number by 90% to account for patent owners or others who would continue to use ex parte reexamination to test patent validity and who would be reluctant to use the post-grant opposition procedure, one could still be looking at a potential caseload that is many times the number of interferences currently handled by the Board. While interferences are admittedly more complex than the proposed post-grant oppositions, the adoption of a post-grant opposition system would require a significant increase in the number of APJs (20 of the 61 APJs currently at the Board are exclusively dedicated to interferences). Hiring the number of properly trained and skilled individuals needed to handle post-grant oppositions – irrespective of which proposal is adopted – will be essential if the system is to achieve the results intended. We cannot overlook this need when considering this change to the patent system.
Conclusion
AIPLA reiterates its support for an efficient, cost-effective post-grant opposition proceeding to serve as an alternative to litigation for challenging patents of questionable quality. Such a system must be comprehensive and balance a number of significant factors, providing an attractive option for third parties while avoiding harassment of patent owners. We believe that our draft proposal for a post-grant opposition system represents a solid foundation on which to build just such a post-grant opposition system. We thank the Subcommittee for its time and attention to this issue and look forward to working with the Subcommittee in the design and implementation of such a system.
APPENDIX
CHAPTER 32 – POST-GRANT OPPOSITION PROCEDURES
Sec.
§ 321. Right to oppose patent; opposition request
(a) A person may request that the grant or reissue of a patent be reconsidered by the Office by filing an opposition seeking to invalidate one or more claims in the patent. The Director shall establish, by regulation, fees to be paid by the opposer. Copies of patents and printed publications to be relied upon in support of the request must be filed with the request. If an opposer relies on other factual evidence or on expert opinions in support of the opposition, such evidence and opinions must be filed with the request through one or more accompanying affidavits or declarations.
(b) Copies of any documents filed pursuant to subsection (a) must be provided to the patent owner or, if applicable, the designated representative of the patent owner, at the time of filing under subsection (a), except that if a request is made that the identity of a real party in interest be kept separate pursuant to section 322(b), then the identity of the real party in interest may be redacted from the copies provided.
(c) The file of any opposition proceeding shall be made available to the public except as provided in section 322.
§ 322. Real party in interest
(a) The person making the request shall identify in writing each real party in interest and the opposition shall proceed in the name of the real party in interest.
(b) If requested, the identity of a real party in interest shall be kept separate from the file of the opposition and made available only to Government agencies on written request, or to any person upon a showing of good cause. In the event that the identity of a real party in interest is kept separate from the file pursuant to this subsection, then the opposition shall proceed in the name of the individual filing the request as representative of the real party in interest. However, no request under this subsection to keep the identity of a real party in interest separate from the file of the opposition may be made or maintained if the opposer relies upon factual evidence or expert opinions in the form of affidavits or declarations during the opposition proceeding or if the opposer exercises the right to appeal under section 141.
§ 323. Timing of opposition request
An opposition request made under section 321 must be made not later than nine months after the grant of the patent or issuance of a reissue patent, except that, if the patent owner consents in writing, an opposition request may be filed anytime during the period of enforceability of the patent. A court having jurisdiction over an issue of validity of a patent may not require the patent owner to consent to such a request.
§ 324. Limits on scope of validity issues raised
The opposition request must identify with particularity the claims that are alleged to be invalid and, as to each claim, one or more issues of invalidity on which the opposition is based. The issues of invalidity that may be considered during the opposition proceeding are double patenting and any of the requirements for patentability set forth in sections 101, 102, 103, 112 or 251, fourth paragraph, of this title, except for:
§ 325. Institution of the opposition proceeding
(a) If one or more requests meeting the requirements of section 321 are received by the Director that have not been dismissed as provided in this subsection (a), an opposition proceeding shall be promptly instituted, but not prior to nine months after the date of grant of the patent. The Director may dismiss an opposition request that the Director determines lacks substantial merit. The determination by the Director to dismiss shall not be appealable. The dismissal of an opposition request shall not be admissible in any civil action related to the patent against which a dismissed request was filed. If the opposition is instituted based upon more than one opposition request, the opposition shall proceed as a single consolidated proceeding, unless later divided as provided in subsection (b).
(b) The parties to the opposition proceeding shall be the patent owner and each opposer whose request meets the requirements of section 321 and has not been dismissed under subsection (a). The Director shall assign the opposition proceeding to a panel of three administrative patent judges, hereinafter in this chapter referred to as the “panel.” The panel shall decide the questions of patentability raised in each opposition request for which an opposition has been instituted. The decision shall be based upon the prosecution record that was the basis for the grant of the patent and the additional submissions by the parties to the opposition proceeding authorized under this chapter. The panel may, in appropriate cases, divide the opposition into separate proceedings if the opposition involves multiple opposition requests by different parties.
§ 326. Patent owner response
After the Director has instituted an opposition, the patent owner shall have the right to file a response to each opposition request within the time period set by the panel. The patent owner, in responding to an opposition request, shall file with the response any additional factual evidence and expert opinions on which the patent owner relies in support of the response through affidavits or declarations.
§ 327. Amendment of claims
The patent owner is entitled to request amendment of any claims that are the subject of the opposition, including by the addition of new claims. Any such request for amendment shall be filed with the patent owner’s response to an opposition request. The panel may permit further requests for amendment of the claims only upon good cause shown by the patent owner. No amendment enlarging the scope of the claims of the patent shall be permitted in the opposition.
§ 328. Discovery and sanctions
(a) After institution of an opposition, the patent owner shall have the right to depose each person submitting an affidavit or declaration on behalf of any opposer, and each opposer shall have the right to depose each person submitting an affidavit or declaration on behalf of the patent owner. Such depositions shall be limited to cross-examination on matters relevant to the affidavit or declaration. The panel shall set the times for taking the deposition of any affiant or declarant. No other discovery shall be permitted unless the panel determines that additional discovery is required in the interest of justice.
(b) In the event that any party to an opposition fails to properly respond to any discovery under this section, the panel may draw appropriate adverse inferences and take other action permitted by statute, rule, or regulation.
§ 329. Supplemental submissions
The panel may permit one or more supplemental submissions to be made by any party to the opposition, subject to the rights and limitations on discovery described in section 328.
§ 330. Hearing and briefs
Any party to an opposition may request an oral hearing within the time set by the panel. If a hearing is requested or the panel determines sua sponte that a hearing is needed, the panel shall set a time for the hearing. The panel may permit the filing of briefs by the parties, and shall permit cross-examination of all affiants and declarants, either before the panel or by deposition taken under section 328.
§ 331. Written decision
The panel shall issue a written decision on each issue of patentability with respect to each claim that is the subject of the opposition. The written decision shall consist of findings of fact and conclusions of law. The written decision shall become a final determination of the Office on the issues raised in the opposition unless a party to the opposition files a request for reconsideration and modification of the written decision within a time set by the panel, which period shall not be less than two weeks from the date of the written decision.
§ 332. Burden of proof and evidence
(a) The opposer shall have the burden to prove invalidity of a claim by a preponderance of the evidence. The determination of invalidity shall be based upon the broadest reasonable construction of the claim.
(b) The Federal Rules of Evidence shall apply to the opposition proceeding, except to the extent inconsistent with any provisions of this chapter.
§ 333. Reconsideration
If a request for reconsideration of the written decision is filed, the panel may authorize a non-requesting party to file a response to the request for reconsideration. Following any reconsideration, the panel shall either deny the request for modification of the written decision or grant the request and issue a modified written decision that shall constitute the final determination of the Office on the issues raised in the opposition.
§ 334. Appeal
A party dissatisfied with the final determination of the panel may appeal under the provisions of sections 141-144. Any party to the opposition shall have the right to be a party to the appeal.
§ 335. Certificate
When the time for appeal has expired or any appeal proceeding 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 shall incorporate into the patent any new or amended claims determined to be patentable. The issuance of the certificate shall terminate the opposition proceeding.
§ 336. Estoppel
(a) Once the certificate has issued under section 335, the determination with respect to an issue of invalidity raised by an opposer shall be preclusive against that opposer in any subsequent proceeding involving that opposer as to any issue of fact or law actually decided and necessary to the determination of said issue, provided that, if the opposer demonstrates to a later tribunal that there is additional factual evidence that is material to an issue of fact actually decided and necessary to the final determination that could not reasonably have been discovered or presented in the opposition proceeding by that opposer, the opposer may raise that issue of fact and any determined issue of law for which the issue of fact was necessary.
(b) For purposes of this section, the term “opposer” includes the person making the request under section 321, any real party in interest, and their successors in interest.
(c) If the subsequent proceeding involves a real party-in-interest not identified to the patent owner pursuant to section 322, the real party-in-interest shall notify the Director and the patent owner of that fact and of the subsequent proceeding within 30 days after receiving notice that the subsequent proceeding has been filed.
§ 337. Duration of opposition
The final determination described in section 333 shall issue not later than one year after institution of the opposition as described in section 325. Upon good cause shown, the Director may extend the one-year period by not more than six months.
§ 338. Settlement
(a) The opposition proceeding shall be terminated as to any opposer upon the joint request of the opposer and the patent owner, unless the panel has issued a written decision under section 331 before the request for termination is filed. If the opposition is terminated as to an opposer under this section, no estoppel under section 336 shall apply as to the terminated opposer. The written decision under section 331 shall thereafter be issued only with respect to issues of invalidity raised by opposers that remain in the opposition.
(b) Any agreement or understanding between the patent owner and an opposer, including any collateral agreements referred to therein, made in connection with or in contemplation of the termination of the opposition, shall be in writing. The opposition as between the parties to the agreement or understanding shall not be terminated until a true copy of the agreement or understanding, including any such collateral agreements, has been filed in the Office. If any party filing an agreement or understanding requests, the agreement or understanding shall be kept separate from the file of the opposition, and made available only to Government agencies on written request, or to any person on a showing of good cause.
(c) Any discretionary action of the Director under subsection (b) shall be reviewable under section 10 of the Administrative Procedure Act.
§ 339. Intervening rights
Any proposed amended or new claim determined to be patentable and incorporated into a patent following an opposition proceeding shall have the same effect as that specified in section 252 of this title 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, prior to issuance of a certificate under the provisions of section 335.
§ 340. Relationship with reexamination proceedings
A patent for which an opposition proceeding has been instituted may not thereafter be made the subject of a request under section 311 for inter partes reexamination by the same opposer or on behalf of the same real party in interest. An ex parte reexamination request made by a person other than the patent owner during the nine-month period specified in section 323, or an inter partes reexamination request made during the nine-month period specified in section 323, shall be treated as a request under section 321, and no ex parte reexamination or inter partes reexamination may be ordered based on such request. A request for ex parte reexamination or inter partes reexamination made after the nine month period specified in section 323, and a request for ex parte reexamination made by the patent owner at any time, shall be stayed during the pendency of any opposition.