[Congressional Bills 112th Congress]
[From the U.S. Government Publishing Office]
[H.R. 6621 Received in Senate (RDS)]
112th CONGRESS
2d Session
H. R. 6621
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
December 19, 2012
Received
_______________________________________________________________________
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 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) Report on Pre-GATT Applications.--Using existing resources, not
later than four months after the date of the enactment of this Act, the
Director of the United States Patent and Trademark Office shall submit
a report to the Committees on the Judiciary of the United States House
of Representatives and the Senate that describes--
(1) the total number of pending United States applications
for patent that--
(A) are not subject to an order under section 181
of title 35, United States Code; and
(B) were filed before the effective date of the
amendments made by section 532 of the Uruguay Round
Agreements Act (Public Law 103-465; 108 Stat. 4983);
(2) the filing date of each such application;
(3) the filing date of the earliest application for which
each such application claims the benefit of or a right of
priority to its filing date;
(4) the inventor and assignee named on each such
application;
(5) the amount of time that examination of each such
application has been delayed because of a proceeding under
section 135(a) of title 35, United States Code, an appeal to
the Patent Trial and Appeal Board under section 134(a) of such
title, a civil action in a United States District Court under
section 145 or 146 of such title, or an appeal to the United
States Court of Appeals for the Federal Circuit under section
141 of such title; and
(6) other information about such applications that the
Director believes is relevant to their pendency.
(n) 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''.
(o) Effective Date.--Except as otherwise provided in this Act, the
amendments made by this Act shall take effect on the date of the
enactment of this Act and shall apply to proceedings commenced on or
after such date of enactment.
Passed the House of Representatives December 18, 2012.
Attest:
KAREN L. HAAS,
Clerk.