[Congressional Bills 112th Congress]
[From the U.S. Government Publishing Office]
[H.R. 6621 Received in Senate (RDS)]

112th CONGRESS
  2d Session
                                H. R. 6621


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                           December 19, 2012

                                Received

_______________________________________________________________________

                                 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) Report on Pre-GATT Applications.--Using existing resources, not 
later than four months after the date of the enactment of this Act, the 
Director of the United States Patent and Trademark Office shall submit 
a report to the Committees on the Judiciary of the United States House 
of Representatives and the Senate that describes--
            (1) the total number of pending United States applications 
        for patent that--
                    (A) are not subject to an order under section 181 
                of title 35, United States Code; and
                    (B) were filed before the effective date of the 
                amendments made by section 532 of the Uruguay Round 
                Agreements Act (Public Law 103-465; 108 Stat. 4983);
            (2) the filing date of each such application;
            (3) the filing date of the earliest application for which 
        each such application claims the benefit of or a right of 
        priority to its filing date;
            (4) the inventor and assignee named on each such 
        application;
            (5) the amount of time that examination of each such 
        application has been delayed because of a proceeding under 
        section 135(a) of title 35, United States Code, an appeal to 
        the Patent Trial and Appeal Board under section 134(a) of such 
        title, a civil action in a United States District Court under 
        section 145 or 146 of such title, or an appeal to the United 
        States Court of Appeals for the Federal Circuit under section 
        141 of such title; and
            (6) other information about such applications that the 
        Director believes is relevant to their pendency.
    (n) 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''.
    (o) Effective Date.--Except as otherwise provided in this Act, the 
amendments made by this Act shall take effect on the date of the 
enactment of this Act and shall apply to proceedings commenced on or 
after such date of enactment.

            Passed the House of Representatives December 18, 2012.

            Attest:

                                                 KAREN L. HAAS,

                                                                 Clerk.