35 U.S.C. 321 (note): Post-grant review applicability

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

Current Pre-AIA AIA Redline

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35 U.S.C. 321 (note)   Post-grant review applicability.

  • (1) APPLICABILITY.—
    • (A) The post-grant review provisions of the Leahy-Smith America Invents Act (AIA) apply only to patents subject to the first inventor to file provisions of the AIA (see 35 U.S.C. 100 (note) ), except as provided in AIA § 18 and paragraph 2 below.
    • (B) LIMITATION.—The Director may impose a limit on the number of post-grant reviews that may be instituted under chapter 32 of title 35, United States Code, during each of the first 4 1-year periods in which the these provisions are in effect.
  • (2) PENDING INTERFERENCES.—
    • (A) PROCEDURES IN GENERAL.—The Director shall determine, and include in the regulations issued under paragraph (1), the procedures under which an interference commenced before the effective date set forth in paragraph (2)(A) is to proceed, including whether such interference—
      • (i) is to be dismissed without prejudice to the filing of a petition for a post-grant review under chapter 32 of title 35, United States Code; or
      • (ii) is to proceed as if the AIA had not been enacted.
    • (B) PROCEEDINGS BY PATENT TRIAL AND APPEAL BOARD.—For purposes of an interference that is commenced before the effective date set forth in paragraph (2)(A), the Director may deem the Patent Trial and Appeal Board to be the Board of Patent Appeals and Interferences, and may allow the Patent Trial and Appeal Board to conduct any further proceedings in that interference.
    • (C) APPEALS.—The authorization to appeal or have remedy from derivation proceedings in sections 141(d) and 146 of title 35, United States Code, as amended by this Act, and the jurisdiction to entertain appeals from derivation proceedings in section 1295(a)(4)(A) of title 28, United States Code, as amended by this Act, shall be deemed to extend to any final decision in an interference that is commenced before the effective date set forth in paragraph (2)(A) of this subsection and that is not dismissed pursuant to this paragraph.

(Sept. 16, 2011, Public Law 112-29, sec. 6(f), 125 Stat. 284.)