To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code.

Summary: (This measure has not been amended since it was passed by the Senate on December 28, 2012. The summary of that version is repeated here.)

Amends the Leahy-Smith America Invents Act (AIA) to make technical changes regarding the transitional program for covered business method patents and joinder of parties.

Applies, to any civil action commenced on or after enactment of this Act, the AIA's bar on using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced. (Currently, the bar would not take effect until one year after the AIA's enactment.)

Prohibits a nine-month waiting period for inter partes review from applying to issuances of first-to-invent patents ineligible for post-grant review. (Currently, the remaining first-to-invent patents to be issued prior to the effective date of the new first-to-file patent system have no avenue for review during the first nine months because they must wait nine months for inter parties review and are ineligible for post-grant review.)

Revises the filing deadline for inter partes review to be after the later of either: (1) nine months after the grant of a patent (currently, nine months after such grant or the issuance of a reissue patent), or (2) the termination date of any post-grant review.

Extends the time period for an applicant to file an inventor's oath or declaration, substitute statement, or recorded assignment until the date on which the issue fee for the patent is paid. (Current law permits a notice of allowance of a patent application only after such a filing.)

Makes provisions concerning travel expenses for employees of the U.S. Patent and Trademark Office (USPTO) and the payment of administrative judges effective as of September 16, 2011.

Modifies requirements and time periods for activities relating to patent term adjustments. Revises the patent extension period for certain international applications. Specifies that a civil action filed in the U.S. District Court for the Eastern District of Virginia is the exclusive remedy for challenging a USPTO decision on a request for reconsideration of a patent term adjustment determination.

Repeals a provision prohibiting the USPTO from accepting certain international applications designating the United States from anyone not qualified under specified application requirements.

Revises USPTO funding requirements to make all federal patent law fees available for expenses relating to patent processing and to permit patent and trademark fees to be used interchangeably to cover proportionate shares of the USPTO's administrative costs. (Currently, patent fees are used to cover administrative costs relating to patents while trademark fees are used to cover administrative costs relating to trademarks.)

Modifies requirements for applicants filing petitions to institute derivation proceedings and delineates the criteria applied to deem an application as an earlier application with respect to an invention relative to another application.

Sets forth authority for the Patent Trial and Appeal Board to conduct, and for courts to review appeals from, interference proceedings declared after enactment but before the effective date of certain AIA amendments replacing interference proceedings with derivation proceedings.

Modifies the original appointment terms for members of the Patent Public Advisory Committee and the Trademark Public Advisory Committee. Directs the Secretary of Commerce to designate, from among the appointed members, a Chair and Vice Chair of each committee.

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) 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.

                               Speaker of the House of Representatives.

                            Vice President of the United States and    
                                               President of the Senate.