[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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