[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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