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[112th Congress Public Law 274]
[From the U.S. Government Printing Office]

[[Page 2455]]

            LEAHY-SMITH AMERICA INVENTS TECHNICAL CORRECTIONS

[[Page 126 STAT. 2456]]

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. <<NOTE: Jan. 14, 
                         2013 -  [H.R. 6621]>> 

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled, <<NOTE: Patents.>> 
SECTION 1. TECHNICAL CORRECTIONS.

    (a) <<NOTE: Applicability. 35 USC 298 note.>>  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) <<NOTE: 35 USC 311 note.>>  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) <<NOTE: 35 USC 135 note.>>  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 126 STAT. 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) <<NOTE: 35 USC 2 note.>>  Travel Expenses and Payment of 
Administrative Judges.--Notwithstanding <<NOTE: Effective 
date.>> 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) <<NOTE: Repeal.>>  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) <<NOTE: Petition.>>  Institution of Proceeding.--

[[Page 126 STAT. 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) <<NOTE: 35 USC 135 note.>>  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) <<NOTE: Applicability. 35 USC 135 note.>>  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 <<NOTE: Appointment. Time 
                period. Effective date. Deadline.>> 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 126 STAT. 2459]]

                    (B) by striking paragraph (2) and inserting the 
                following:
            ``(2) <<NOTE: Designation.>>  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) <<NOTE: 35 USC 5 note.>>  Transition.--
                    (A) <<NOTE: Determination. Appointment. Time 
                period. Effective date.>>  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) <<NOTE: Applicability. 35 USC 5 note.>>  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:
---------------------------------------------------------------------------

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.

                                  <all>
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