112th CONGRESS
2d Session
H.R. 6621
In the Senate of the United States,
December 28, 2012.
Amendment:
That the bill from the House of Representatives
(H.R. 6621) entitled An Act to correct and improve certain provisions of
the Leahy-Smith America Invents Act and title 35, United States Code.
,
do pass with the following
Strike all after the enacting clause and insert the following:
Technical corrections
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.
Transitional program for covered business method patents
Section 18 of the Leahy-Smith America Invents Act (35 U.S.C. 321 note) is amended—
in
subsection (a)(1)(C)((i), by striking of such title
the second
place it appears; and
in
subsection (d)(2), by striking subsection
and inserting
section
.
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
.
Dead zones
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).
Reissue
Section 311(c)(1) of title 35, United
States Code, is amended by striking or issuance of a reissue of a
patent
.
Correct inventor
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
.
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.
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—
by striking subsection (f) and inserting the following:
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
in subsection
(g)(1), by striking who claims
and inserting that
claims
.
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.
Patent term adjustments
Section 154(b) of title 35, United States Code, is amended—
in paragraph (1)—
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
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
;
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
in paragraph (4)(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
by
striking the grant of the patent
and inserting the date
of the Director’s decision on the applicant’s request for
reconsideration
.
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.
Financial management clarifications
Section 42(c)(3) of title 35, United States Code, is amended—
in subparagraph (A)—
by
striking sections 41, 42, and 376,
and inserting this
title,
; and
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
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
.
Derivation proceedings
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:
Institution of proceeding
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.
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.
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.
No appeal
A determination by the Director whether to institute a derivation proceeding under paragraph (1) shall be final and not appealable.
.
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.
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.
Patent and trademark public advisory committees
In general
Section 5(a) of title 35, United States Code, is amended—
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.
;
by striking paragraph (2) and inserting the following:
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
by striking paragraph (3).
Transition
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.
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.
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
.
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.
Secretary
