[United States Statutes at Large, Volume 126, 112th Congress, 2nd Session]
[From the U.S. Government Publishing Office, www.gpo.gov]


Public Law 112-274
112th Congress

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

[[Page 2457]]

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.--

[[Page 2458]]

``(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.'';

[[Page 2459]]

(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.

Approved January 14, 2013.

LEGISLATIVE HISTORY--H.R. 6621:
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CONGRESSIONAL RECORD:
Vol. 158 (2012):
Dec. 18, considered and passed
House.
Dec. 28, considered and passed
Senate, amended.
Dec. 30, House considered concurring
in Senate amendment.
Vol. 158 (2013):
Jan. 1, House concurred in Senate
amendment.