[Congressional Bills 112th Congress]
[From the U.S. Government Publishing Office]
[H.R. 6621 Enrolled Bill (ENR)]
H.R.6621
One Hundred Twelfth Congress
of the
United States of America
AT THE SECOND SESSION
Begun and held at the City of Washington on Tuesday,
the third day of January, two thousand and twelve
An Act
To correct and improve certain provisions of the Leahy-Smith America
Invents Act and title 35, United States Code.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
SECTION 1. TECHNICAL CORRECTIONS.
(a) Advice of Counsel.--Notwithstanding section 35 of the Leahy-
Smith America Invents Act (35 U.S.C. 1 note), section 298 of title 35,
United States Code, shall apply to any civil action commenced on or
after the date of the enactment of this Act.
(b) Transitional Program for Covered Business Method Patents.--
Section 18 of the Leahy-Smith America Invents Act (35 U.S.C. 321 note)
is amended--
(1) in subsection (a)(1)(C)(i), by striking ``of such title''
the second place it appears; and
(2) in subsection (d)(2), by striking ``subsection'' and
inserting ``section''.
(c) Joinder of Parties.--Section 299(a) of title 35, United States
Code, is amended in the matter preceding paragraph (1) by striking ``or
counterclaim defendants only if'' and inserting ``only if''.
(d) Dead Zones.--
(1) Inter partes review.--Section 311(c) of title 35, United
States Code, shall not apply to a petition to institute an inter
partes review of a patent that is not a patent described in section
3(n)(1) of the Leahy-Smith America Invents Act (35 U.S.C. 100
note).
(2) Reissue.--Section 311(c)(1) of title 35, United States
Code, is amended by striking ``or issuance of a reissue of a
patent''.
(e) Correct Inventor.--
(1) In general.--Section 135(e) of title 35, United States
Code, as amended by section 3(i) of the Leahy-Smith America Invents
Act, is amended by striking ``correct inventors'' and inserting
``correct inventor''.
(2) Effective date.--The amendment made by paragraph (1) shall
be effective as if included in the amendment made by section 3(i)
of the Leahy-Smith America Invents Act.
(f) Inventor's Oath or Declaration.--Section 115 of title 35,
United States Code, as amended by section 4 of the Leahy-Smith America
Invents Act, is amended--
(1) by striking subsection (f) and inserting the following:
``(f) Time for Filing.--The applicant for patent shall provide each
required oath or declaration under subsection (a), substitute statement
under subsection (d), or recorded assignment meeting the requirements
of subsection (e) no later than the date on which the issue fee for the
patent is paid.''; and
(2) in subsection (g)(1), by striking ``who claims'' and
inserting ``that claims''.
(g) Travel Expenses and Payment of Administrative Judges.--
Notwithstanding section 35 of the Leahy-Smith America Invents Act (35
U.S.C. 1 note), the amendments made by section 21 of the Leahy-Smith
America Invents Act (Public Law 112-29; 125 Stat. 335) shall be
effective as of September 16, 2011.
(h) Patent Term Adjustments.--Section 154(b) of title 35, United
States Code, is amended--
(1) in paragraph (1)--
(A) in subparagraph (A)(i)(II), by striking ``on which an
international application fulfilled the requirements of section
371 of this title'' and inserting ``of commencement of the
national stage under section 371 in an international
application''; and
(B) in subparagraph (B), in the matter preceding clause
(i), by striking ``the application in the United States'' and
inserting ``the application under section 111(a) in the United
States or, in the case of an international application, the
date of commencement of the national stage under section 371 in
the international application'';
(2) in paragraph (3)(B)(i), by striking ``with the written
notice of allowance of the application under section 151'' and
inserting ``no later than the date of issuance of the patent''; and
(3) in paragraph (4)(A)--
(A) by striking ``a determination made by the Director
under paragraph (3) shall have remedy'' and inserting ``the
Director's decision on the applicant's request for
reconsideration under paragraph (3)(B)(ii) shall have exclusive
remedy''; and
(B) by striking ``the grant of the patent'' and inserting
``the date of the Director's decision on the applicant's
request for reconsideration''.
(i) Improper Applicant.--Section 373 of title 35, United States
Code, and the item relating to that section in the table of sections
for chapter 37 of such title, are repealed.
(j) Financial Management Clarifications.--Section 42(c)(3) of title
35, United States Code, is amended--
(1) in subparagraph (A)--
(A) by striking ``sections 41, 42, and 376,'' and inserting
``this title,''; and
(B) by striking ``a share of the administrative costs of
the Office relating to patents'' and inserting ``a
proportionate share of the administrative costs of the
Office''; and
(2) in subparagraph (B), by striking ``a share of the
administrative costs of the Office relating to trademarks'' and
inserting ``a proportionate share of the administrative costs of
the Office''.
(k) Derivation Proceedings.--
(1) In general.--Section 135(a) of title 35, United States
Code, as amended by section 3(i) of the Leahy-Smith America Invents
Act, is amended to read as follows:
``(a) Institution of Proceeding.--
``(1) In general.--An applicant for patent may file a petition
with respect to an invention to institute a derivation proceeding
in the Office. The petition shall set forth with particularity the
basis for finding that an individual named in an earlier
application as the inventor or a joint inventor derived such
invention from an individual named in the petitioner's application
as the inventor or a joint inventor and, without authorization, the
earlier application claiming such invention was filed. Whenever the
Director determines that a petition filed under this subsection
demonstrates that the standards for instituting a derivation
proceeding are met, the Director may institute a derivation
proceeding.
``(2) Time for filing.--A petition under this section with
respect to an invention that is the same or substantially the same
invention as a claim contained in a patent issued on an earlier
application, or contained in an earlier application when published
or deemed published under section 122(b), may not be filed unless
such petition is filed during the 1-year period following the date
on which the patent containing such claim was granted or the
earlier application containing such claim was published, whichever
is earlier.
``(3) Earlier application.--For purposes of this section, an
application shall not be deemed to be an earlier application with
respect to an invention, relative to another application, unless a
claim to the invention was or could have been made in such
application having an effective filing date that is earlier than
the effective filing date of any claim to the invention that was or
could have been made in such other application.
``(4) No appeal.--A determination by the Director whether to
institute a derivation proceeding under paragraph (1) shall be
final and not appealable.''.
(2) Effective date.--The amendment made by paragraph (1) shall
be effective as if included in the amendment made by section 3(i)
of the Leahy-Smith America Invents Act.
(3) Review of interference decisions.--The provisions of
sections 6 and 141 of title 35, United States Code, and section
1295(a)(4)(A) of title 28, United States Code, as in effect on
September 15, 2012, shall apply to interference proceedings that
are declared after September 15, 2012, under section 135 of title
35, United States Code, as in effect before the effective date
under section 3(n) of the Leahy-Smith America Invents Act. The
Patent Trial and Appeal Board may be deemed to be the Board of
Patent Appeals and Interferences for purposes of such interference
proceedings.
(l) Patent and Trademark Public Advisory Committees.--
(1) In general.--Section 5(a) of title 35, United States Code,
is amended--
(A) in paragraph (1), by striking ``Members of'' and all
that follows through ``such appointments.'' and inserting the
following: ``In each year, 3 members shall be appointed to each
Advisory Committee for 3-year terms that shall begin on
December 1 of that year. Any vacancy on an Advisory Committee
shall be filled within 90 days after it occurs. A new member
who is appointed to fill a vacancy shall be appointed to serve
for the remainder of the predecessor's term.'';
(B) by striking paragraph (2) and inserting the following:
``(2) Chair.--The Secretary of Commerce, in consultation with
the Director, shall designate a Chair and Vice Chair of each
Advisory Committee from among the members appointed under paragraph
(1). If the Chair resigns before the completion of his or her term,
or is otherwise unable to exercise the functions of the Chair, the
Vice Chair shall exercise the functions of the Chair.''; and
(C) by striking paragraph (3).
(2) Transition.--
(A) In general.--The Secretary of Commerce shall, in the
Secretary's discretion, determine the time and manner in which
the amendments made by paragraph (1) shall take effect, except
that, in each year following the year in which this Act is
enacted, 3 members shall be appointed to each Advisory
Committee (to which such amendments apply) for 3-year terms
that begin on December 1 of that year, in accordance with
section 5(a) of title 35, United States Code, as amended by
paragraph (1) of this subsection.
(B) Deemed termination of terms.--In order to implement the
amendments made by paragraph (1), the Secretary of Commerce may
determine that the term of an existing member of an Advisory
Committee under section 5 of title 35, United States Code,
shall be deemed to terminate on December 1 of a year beginning
after the date of the enactment of this Act, regardless of
whether December 1 is before or after the date on which such
member's term would terminate if this Act had not been enacted.
(m) Clerical Amendment.--Section 123(a) of title 35, United States
Code, is amended in the matter preceding paragraph (1) by inserting
``of this title'' after ``For purposes''.
(n) Effective Date.--Except as otherwise provided in this Act, the
amendments made by this Act shall take effect on the date of enactment
of this Act, and shall apply to proceedings commenced on or after such
date of enactment.
Speaker of the House of Representatives.
Vice President of the United States and
President of the Senate.