PUBLIC LAW 112–274—JAN. 14, 2013 

LEAHY-SMITH AMERICA INVENTS 

TECHNICAL CORRECTIONS 


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126 STAT. 2456 PUBLIC LAW 112–274—JAN. 14, 2013 

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 LeahySmith 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 

35 USC 135 note. 

35 USC 311 note. 

Applicability. 

35 USC 298 note. 

Patents. 

Jan. 14, 2013 

[H.R. 6621] 


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PUBLIC LAW 112–274—JAN. 14, 2013 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) 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.— Petition. 

Repeal. 

Effective date. 

35 USC 2 note. 


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126 STAT. 2458 PUBLIC LAW 112–274—JAN. 14, 2013 

‘‘(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.’’; 

Appointment. 

Time period. 

Effective date. 

Deadline. 

Applicability. 

35 USC 135 note. 

35 USC 135 note. 


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PUBLIC LAW 112–274—JAN. 14, 2013 126 STAT. 2459 

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. 

Æ 

(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. 

Applicability. 

35 USC 5 note. 

Determination. 

Appointment. 

Time period. 

Effective date. 

35 USC 5 note. 

Designation. 


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