[Congressional Record Volume 158, Number 170 (Sunday, December 30, 2012)]
[House]
[Pages H7455-H7457]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




      CORRECTING AND IMPROVING THE LEAHY-SMITH AMERICA INVENTS ACT

  Mr. SMITH of Texas. Mr. Speaker, I move to suspend the rules and 
concur in the Senate amendment to the bill (H.R. 6621) to correct and 
improve certain provisions of the Leahy-Smith America Invents Act and 
title 35, United States Code.
  The Clerk read the title of the bill.
  The text of the Senate amendment is as follows:

       Senate amendment:
       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''.
       (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

[[Page H7456]]

       (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 SPEAKER pro tempore. Pursuant to the rule, the gentleman from 
Texas (Mr. Smith) and the gentleman from Virginia (Mr. Scott) each will 
control 20 minutes.
  The Chair recognizes the gentleman from Texas.


                             General Leave

  Mr. SMITH of Texas. Mr. Speaker, I ask unanimous consent that all 
Members may have 5 legislative days within which to revise and extend 
their remarks and include extraneous materials on the matter currently 
under consideration.
  The SPEAKER pro tempore. Is there objection to the request of the 
gentleman from Texas?
  There was no objection.
  Mr. SMITH of Texas. Mr. Speaker, I yield myself such time as I may 
consume.
  The Leahy-Smith America Invents Act, or AIA, was signed into law on 
September 16, 2011. It was the first major patent reform bill in over 
60 years and the most substantial reform of U.S. patent law since the 
1836 Patent Act. The Leahy-Smith AIA reestablishes the United States 
patent system as the global standard.
  Over the past year, the Patent Office has worked diligently to 
implement the provisions of the Leahy-Smith AIA in order to ensure that 
the bill realizes its full potential to promote innovation and create 
jobs. The bill that we consider today includes several technical 
corrections and improvements that ensure that the implementation of the 
bill can proceed efficiently and effectively. The bill is supported by 
all sectors of our economy from all across the United States, including 
manufacturers, universities, technology, pharmaceutical and biotech 
companies, and innovators.
  As the provisions of the Leahy-Smith AIA continue to take effect, our 
Nation's innovation infrastructure becomes much stronger, unleashing 
the full potential of American innovators and job creators, so I urge 
my colleagues to support this bill.
  I reserve the balance of my time.
  The Leahy-Smith America Invents Act, or ``AIA,'' was signed into law 
on September 16, 2011. It was the first major patent reform bill in 
over 60 years and the most substantial reform of U.S. patent law since 
the 1836 Patent Act. The Leahy-Smith AIA re-establishes the United 
States patent system as a global standard.
  Over the past year the Patent Office has worked diligently to 
implement the provisions of the Leahy-Smith AIA to ensure that the bill 
realizes its full potential to promote innovation and create jobs.
  The bill that we consider today includes several technical 
corrections and improvements that ensure that the implementation of the 
bill can proceed efficiently and effectively.
  The bill is supported by all sectors of our economy from all across 
the United States, including manufacturers, universities, technology, 
pharmaceutical and biotech companies and innovators.
  I have also received letters in support from: the Coalition for 21st 
Century Patent Reform, which represents manufacturers, pharmaceutical, 
technology, defense companies and universities; the Innovation 
Alliance, which represents high tech companies and licensors; and the 
BSA: The Software Alliance, which represents a range of high technology 
and software companies.
  The Leahy-Smith AIA fundamentally changes our nation's innovation 
infrastructure. With any such substantive and wide-ranging legislation, 
unforeseen issues may arise as implementation occurs.
  H.R. 6621 corrects many of these issues. This package consists of 
several technical corrections to the AIA that are essential to the 
effective implementation of the Act.
  Other technical corrections and improvements may arise in the future; 
for example, the issue surrounding the correction of the Post-Grant 
Review estoppel provision in the Leahy-Smith AIA.
  This was the result of an inadvertent ``scrivener's error,'' an error 
that was made by legislative counsel. That technical error has resulted 
in an estoppel provision with a higher threshold than was intended by 
either house of Congress.
  Additionally, we must remain watchful as we examine ways to deal with 
the abusive and frivolous litigation that American innovators face from 
patent assertion entities or patent trolls.
  The modified bill passed by the Senate takes out the report on pre-
GATT patents. Even though the report is no longer mandated, it is 
within PTO's existing authority to conduct such a study, and I would 
call on them to do so.

[[Page H7457]]

  As the provisions of the Leahy-Smith AIA continue to take effect, our 
nation's innovation infrastructure becomes much stronger, unleashing 
the full potential of American innovators and job creators.
  Mr. SCOTT of Virginia. Mr. Speaker, I yield myself such time as I may 
consume.
  I rise in support of the Senate amendment to H.R. 6621 because the 
measure improves the America Invents Act--the most significant reform 
to the Patent Act since 1952--that was signed into law by President 
Obama last year. Earlier this month, the House passed H.R. 6621 by a 
vote of 308-89. The Senate subsequently passed the legislation with an 
amendment by unanimous consent. Now that the America Invents Act is 
law, our focus should be on how it can be improved, which is why I 
support H.R. 6621, because it accomplishes that very goal in several 
respects.
  To begin with, H.R. 6621 clarifies and improves the provisions to 
help implement the America Invents Act. The bill clarifies provisions 
dealing with patent term adjustments, derivation proceedings, 
inventor's oath, and the terms of the Patent Public Advisory Committee.
  The Senate amendment to this bill makes one change to the House-
passed bill by removing the provision requiring the Patent Office to 
prepare a report on pre-GATT patent applications that have now been 
pending before the Patent Office for over 18 years. Although this 
provision has been removed, we must continue to study ways to improve 
the patent system and make sure that there are not delays to receiving 
patent protection.
  The bill clarifies the act's advice of counsel section as it applies 
to civil actions commenced on or after the date of this legislation's 
enactment. This is important because the original bill created a new 
section 298 of title XXXV that prevents the use of evidence of an 
accused infringer's failure to obtain advice of counsel, or his failure 
to waive privilege and introduce such opinion, to prove either 
willfulness or intent to induce infringement. The provision, however, 
failed to specify when the new authority would go into effect, and it 
would be unfair to apply the new rule retroactively to pending cases 
which anticipate using such evidence.
  In addition, H.R. 6621 makes a series of other technical 
clarifications to the act. In some, the bill makes necessary 
constructive technical corrections to the America Invents Act and 
avoids including any substantive revisions to the act.
  It is my hope that the Judiciary Committee will continue its 
oversight of the act into the next Congress and consider ways in which 
it can be further improved. I urge my colleagues to support the bill.
  I yield back the balance of my time.
  Mr. SMITH of Texas. Mr. Speaker, I yield back the balance of my time.
  The SPEAKER pro tempore. The question is on the motion offered by the 
gentleman from Texas (Mr. Smith) that the House suspend the rules and 
concur in the Senate amendment to the bill, H.R. 6621.
  The question was taken.
  The SPEAKER pro tempore. In the opinion of the Chair, two-thirds 
being in the affirmative, the ayes have it.
  Mr. SCOTT of Virginia. Mr. Speaker, I object to the vote on the 
ground that a quorum is not present and make the point of order that a 
quorum is not present.
  The SPEAKER pro tempore. Pursuant to clause 8 of rule XX, further 
proceedings on this question will be postponed.
  The point of no quorum is considered withdrawn.

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