[Congressional Record Volume 158, Number 169 (Friday, December 28, 2012)]
[Senate]
[Pages S8517-S8518]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




      CORRECTING AND IMPROVING THE LEAHY-SMITH AMERICA INVENTS ACT

  Mr. REID. Mr. President, I now ask unanimous consent to proceed to 
H.R. 6621.
  The PRESIDING OFFICER. The clerk will report the bill by title.
  The assistant legislative clerk read as follows:

       A bill (H.R. 6621) to correct and improve certain 
     provisions of the Leahy-Smith America Invents Act and title 
     35, United States Code.

  There being no objection, the Senate proceeded to consider the bill.
  Mr. LEAHY. Earlier this Congress, the Senate and the House of 
Representatives came together to pass the Leahy-Smith America Invents 
Act, the most comprehensive change to our Nation's patent laws in 60 
years. It was the result of more than 6 years of bipartisan, bicameral 
work by many, including my counterpart on the House Judiciary 
Committee, Chairman Lamar Smith. Now 15 months since President Obama 
signed our bill into law, its reforms are already starting to take 
effect, benefiting inventors and businesses around the country.
  I am pleased the Senate has taken action to pass Chairman Smith's 
technical corrections legislation, H.R. 6621. The legislation makes a 
small number of changes to clarify and improve the law and to help 
streamline its implementation. The bill corrects several minor drafting 
errors and clarifies provisions concerning the inventor's oath, notice 
of patent term adjustments, derivation proceedings, and the terms of 
the Patent Public Advisory Committee. It also addresses an inadvertent 
``dead zone'' by clarifying the remedies available to those wishing to 
challenge patent applications.
  The changes are straightforward and noncontroversial. They should 
help reduce confusion and ease implementation of the law. I appreciate 
Chairman Smith's efforts to draft this legislation and to move it 
through the House of Representatives so the Patent and Trademark 
Office, PTO, and participants in the patent system can benefit from its 
effects.
  Regrettably, the legislation passed today does not include one 
technical correction that would improve the law by restoring Congress's 
intent for the post-grant estoppel provision of the America Invents 
Act. Chairman Smith recently described certain language contained in 
that provision as an ``inadvertent scrivener's error.'' As written, it 
unintentionally creates a higher threshold of estoppel than was in the 
legislation that passed the Senate 95-5, or that was intended by the 
House, according to Chairman Smith's statement. I hope we will soon 
address this issue so that the law accurately reflects Congress's 
intent.
  We must also continue to focus on the troubling problem of several 
hundred ``pre-GATT'' patent applications that have now been pending 
before the Patent Office for over 18 years. The original version of 
this legislation in the House addressed that problem by providing a 1-
year window for the pending applications to be processed. 
Unfortunately, that language was removed before final passage in the 
House and replaced with a provision requiring the Patent Office to 
prepare a report. The amended bill the Senate has passed today strikes 
the report, but I will work closely with the PTO to identify the cause 
of the delays and ensure that the PTO has the tools it needs to address 
any abuses by those who may be trying to game the system and use the 
patent laws to impede, rather than encourage innovation.
  There is still more work to be done to address the problems that 
confront our patent system. The assertion of patents is still too often 
used by patent trolls to extract payment even where there is not 
infringement of a valid patent, and the ``tech patent wars'' among the 
large mobile phone companies show the perils to competition that can 
come when companies do not reach business-to-business resolutions of 
their patent disputes. But the important reforms made by the Leahy-
Smith America Invents Act go a long way toward improving the patent 
system. This legislation will help streamline those reforms, helping 
inventors, businesses, and the countless American workers employed in 
industries that produce and rely on intellectual property.
  Mr. REID. Mr. President, I ask unanimous consent that the Leahy-
Grassley substitute amendment which is at the desk be agreed to; the 
bill, as amended, be read a third time and passed; a motion to 
reconsider be considered made and laid upon the table, and any 
statements related to this matter be printed in the Record.
  The PRESIDING OFFICER. Without objection, it is so ordered.
  The amendment (No. 3444) was agreed to, as follows:

                (Purpose: In the nature of a substitute)

       Strike all after the enacting clause and insert the 
     following:

     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''.

[[Page S8518]]

       (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.
  The amendment was ordered to be engrossed and the bill to be read a 
third time.
  The bill (H.R. 6621), as amended, was read the third time and passed.

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