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SEC. 9. IMPROVEMENTS AND TECHNICAL CORRECTIONS TO 
THE LEAHY-SMITH AMERICA INVENTS ACT. 
(a) POST-GRANT REVIEW AMENDMENT.—Section 
325(e)(2) of title 35, United States Code is amended by 
striking ‘‘or reasonably could have raised’’. 
(b) USE OF DISTRICT-COURT CLAIM CONSTRUCTION 
IN POST-GRANT AND INTER PARTES REVIEWS.— 
(1) INTER PARTES REVIEW.—Section 316(a) of 
title 35, United States Code, is amended— 
(A) in paragraph (12), by striking ‘‘; and’’ 
and inserting a semicolon; 
(B) in paragraph (13), by striking the pe-
riod at the end and inserting ‘‘; and’’; and 
(C) by adding at the end the following new 
paragraph: 
‘‘(14) providing that for all purposes under this 
chapter— 
‘‘(A) each claim of a patent shall be con-
strued as such claim would be in a civil action 
to invalidate a patent under section 282(b), in-
cluding construing each claim of the patent in 
accordance with the ordinary and customary 
meaning of such claim as understood by one of 
ordinary skill in the art and the prosecution 
history pertaining to the patent; and 
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‘‘(B) if a court has previously construed 
the claim or a claim term in a civil action in 
which the patent owner was a party, the Office 
shall consider such claim construction.’’. 
(2) POST-GRANT
REVIEW.—Section 326(a) of 
title 35, United States Code, is amended— 
(A) in paragraph (11), by striking ‘‘; and’’ 
and inserting a semicolon; 
(B) in paragraph (12), by striking the pe-
riod at the end and inserting ‘‘; and’’; and 
(C) by adding at the end the following new 
paragraph: 
‘‘(13) providing that for all purposes under this 
chapter— 
‘‘(A) each claim of a patent shall be con-
strued as such claim would be in a civil action 
to invalidate a patent under section 282(b), in-
cluding construing each claim of the patent in 
accordance with the ordinary and customary 
meaning of such claim as understood by one of 
ordinary skill in the art and the prosecution 
history pertaining to the patent; and 
‘‘(B) if a court has previously construed 
the claim or a claim term in a civil action in 
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which the patent owner was a party, the Office 
shall consider such claim construction.’’. 
(3) TECHNICAL
AND
CONFORMING
AMEND-
MENT.—Section 18(a)(1)(A) of the Leahy-Smith 
America Invents Act (Public Law 112–29; 126 Stat. 
329; 35 U.S.C. 321 note) is amended by striking 
‘‘Section 321(c)’’ and inserting ‘‘Sections 321(c) and 
326(a)(13)’’. 
(4) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect upon the expira-
tion of the 90-day period beginning on the date of 
the enactment of this Act, and shall apply to any 
proceeding under chapter 31 or 32 of title 35, 
United States Code, as the case may be, for which 
the petition for review is filed on or after such effec-
tive date. 
(c) CODIFICATION
OF
THE
DOUBLE-PATENTING 
DOCTRINE FOR FIRST-INVENTOR-TO-FILE PATENTS.— 
(1) AMENDMENT.—Chapter 10 of title 35, 
United States Code, is amended by adding at the 
end the following new section: 
‘‘§ 106. Prior art in cases of double patenting 
‘‘A claimed invention of a patent issued under section 
151 (referred to as the ‘first patent’) that is not prior art 
to a claimed invention of another patent (referred to as 
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the ‘second patent’) shall be considered prior art to the 
claimed invention of the second patent for the purpose of 
determining the nonobviousness of the claimed invention 
of the second patent under section 103 if— 
‘‘(1) the claimed invention of the first patent 
was effectively filed under section 102(d) on or be-
fore the effective filing date of the claimed invention 
of the second patent; 
‘‘(2) either— 
‘‘(A) the first patent and second patent 
name the same individual or individuals as the 
inventor; or 
‘‘(B) the claimed invention of the first pat-
ent would constitute prior art to the claimed in-
vention of the second patent under section 
102(a)(2) 
if 
an 
exception 
under 
section 
102(b)(2) were deemed to be inapplicable and 
the claimed invention of the first patent was, or 
were deemed to be, effectively filed under sec-
tion 102(d) before the effective filing date of 
the claimed invention of the second patent; and 
‘‘(3) the patentee of the second patent has not 
disclaimed the rights to enforce the second patent 
independently from, and beyond the statutory term 
of, the first patent.’’. 
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(2) REGULATIONS.—The Director shall promul-
gate regulations setting forth the form and content 
of any disclaimer required for a patent to be issued 
in compliance with section 106 of title 35, United 
States Code, as added by paragraph (1). Such regu-
lations shall apply to any disclaimer filed after a 
patent has issued. A disclaimer, when filed, shall be 
considered for the purpose of determining the valid-
ity of the patent under section 106 of title 35, 
United States Code. 
(3) CONFORMING AMENDMENT.—The table of 
sections for chapter 10 of title 35, United States 
Code, is amended by adding at the end the following 
new item: 
‘‘106. Prior art in cases of double patenting.’’. 
(4) EXCLUSIVE RULE.—A patent subject to sec-
tion 106 of title 35, United States Code, as added 
by paragraph (1), shall not be held invalid on any 
nonstatutory, double-patenting ground based on a 
patent described in section 3(n)(1) of the Leahy- 
Smith America Invents Act (35 U.S.C. 100 note). 
(5) EFFECTIVE DATE.—The amendments made 
by this subsection shall take effect upon the expira-
tion of the 1-year period beginning on the date of 
the enactment of this Act and shall apply to a pat-
ent or patent application only if both the first and 
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second patents described in section 106 of title 35, 
United States Code, as added by paragraph (1), are 
patents or patent applications that are described in 
section 3(n)(1) of the Leahy-Smith America Invents 
Act (35 U.S.C. 100 note). 
(d) PTO PATENT REVIEWS.— 
(1) CLARIFICATION.— 
(A) 
SCOPE
OF
PRIOR
ART.—Section 
18(a)(1)(C)(i) of the Leahy-Smith America In-
vents Act (35 U.S.C. 321 note) is amended by 
striking ‘‘section 102(a)’’ and inserting ‘‘sub-
section (a) or (e) of section 102’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by subparagraph (A) shall take effect on 
the date of the enactment of this Act and shall 
apply to any proceeding pending on, or filed on 
or after, such date of enactment. 
(2) AUTHORITY
TO
WAIVE
FEE.—Subject to 
available resources, the Director may waive payment 
of a filing fee for a transitional proceeding described 
under section 18(a) of the Leahy-Smith America In-
vents Act (35 U.S.C. 321 note). 
(e) CLARIFICATION OF LIMITS ON PATENT TERM 
ADJUSTMENT.— 
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presents a substantial Federal issue that is impor-
tant to the Federal system as a whole. 
(2) APPLICABILITY.—Paragraph (1)— 
(A) shall apply to all cases filed on or 
after, or pending on, the date of the enactment 
of this Act; and 
(B) shall not apply to a case in which a 
Federal court has issued a ruling on whether 
the case or a claim arises under any Act of 
Congress relating to patents or plant variety 
protection before the date of the enactment of 
this Act. 
(g) PATENT PILOT PROGRAM IN CERTAIN DISTRICT 
COURTS DURATION.— 
(1) DURATION.—Section 1(c) of Public Law 
111–349 (124 Stat. 3674; 28 U.S.C. 137 note) is 
amended to read as follows: 
‘‘(c) DURATION.—The program established under 
subsection (a) shall be maintained using existing re-
sources, and shall terminate 20 years after the end of the 
6-month period described in subsection (b).’’. 
(2) EFFECTIVE DATE.—The amendment made 
by paragraph (1) shall take effect on the date of the 
enactment of this Act. 
(h) TECHNICAL CORRECTIONS.— 
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(1) NOVELTY.— 
(A) AMENDMENT.—Section 102(b)(1)(A) 
of title 35, United States Code, is amended by 
striking ‘‘the inventor or joint inventor or by 
another’’ and inserting ‘‘the inventor or a joint 
inventor or another’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by subparagraph (A) shall be effective as 
if included in the amendment made by section 
3(b)(1) of the Leahy-Smith America Invents 
Act (Public Law 112–29). 
(2) INVENTOR’S OATH OR DECLARATION.— 
(A) AMENDMENT.—The second sentence of 
section 115(a) of title 35, United States Code, 
is amended by striking ‘‘shall execute’’ and in-
serting ‘‘may be required to execute’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by subparagraph (A) shall be effective as 
if included in the amendment made by section 
4(a)(1) of the Leahy-Smith America Invents 
Act (Public Law 112–29). 
(3) ASSIGNEE FILERS.— 
(A) BENEFIT OF EARLIER FILING DATE; 
RIGHT OF PRIORITY.—Section 119(e)(1) of title 
35, United States Code, is amended, in the first 
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sentence, by striking ‘‘by an inventor or inven-
tors named’’ and inserting ‘‘that names the in-
ventor or a joint inventor’’. 
(B) BENEFIT OF EARLIER FILING DATE IN 
THE UNITED STATES.—Section 120 of title 35, 
United States Code, is amended, in the first 
sentence, by striking ‘‘names an inventor or 
joint inventor’’ and inserting ‘‘names the inven-
tor or a joint inventor’’. 
(C) EFFECTIVE DATE.—The amendments 
made by this paragraph shall take effect on the 
date of the enactment of this Act and shall 
apply to any patent application, and any patent 
issuing from such application, that is filed on or 
after September 16, 2012. 
(4) DERIVED PATENTS.— 
(A) AMENDMENT.—Section 291(b) of title 
35, United States Code, is amended by striking 
‘‘or joint inventor’’ and inserting ‘‘or a joint in-
ventor’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by subparagraph (A) shall be effective as 
if included in the amendment made by section 
3(h)(1) of the Leahy-Smith America Invents 
Act (Public Law 112–29). 
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(5) SPECIFICATION.—Notwithstanding section 
4(e) of the Leahy-Smith America Invents Act (Pub-
lic Law 112–29; 125 Stat. 297), the amendments 
made by subsections (c) and (d) of section 4 of such 
Act shall apply to any proceeding or matter that is 
pending on, or filed on or after, the date of the en-
actment of this Act. 
(6) TIME LIMIT FOR COMMENCING MISCONDUCT 
PROCEEDINGS.— 
(A) AMENDMENT.—The fourth sentence of 
section 32 of title 35, United States Code, is 
amended by striking ‘‘1 year’’ and inserting 
‘‘18 months’’. 
(B) EFFECTIVE
DATE.—The amendment 
made by this paragraph shall take effect on the 
date of the enactment of this Act and shall 
apply to any action in which the Office files a 
complaint on or after such date of enactment. 
(7) PATENT OWNER RESPONSE.— 
(A) CONDUCT
OF
INTER
PARTES
RE-
VIEW.—Paragraph (8) of section 316(a) of title 
35, United States Code, is amended by striking 
‘‘the petition under section 313’’ and inserting 
‘‘the petition under section 311’’. 
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(B) CONDUCT OF POST-GRANT REVIEW.— 
Paragraph (8) of section 326(a) of title 35, 
United States Code, is amended by striking 
‘‘the petition under section 323’’ and inserting 
‘‘the petition under section 321’’. 
(C) EFFECTIVE DATE.—The amendments 
made by this paragraph shall take effect on the 
date of the enactment of this Act. 
(8) INTERNATIONAL APPLICATIONS.— 
(A) AMENDMENTS.—Section 202(b) of the 
Patent Law Treaties Implementation Act of 
2012 (Public Law 112–211; 126 Stat. 1536) is 
amended— 
(i) by striking paragraph (7); and 
(ii) by redesignating paragraphs (8) 
and (9) as paragraphs (7) and (8), respec-
tively. 
(B) EFFECTIVE DATE.—The amendments 
made by subparagraph (A) shall be effective as 
if included in title II of the Patent Law Trea-
ties Implementation Act of 2012 (Public Law 
112–21). 
SEC. 10. EFFECTIVE DATE. 
Except as otherwise provided in this Act, the provi-
sions of this Act shall take effect on the date of the enact-
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ment of this Act, and shall apply to any patent issued, 
or any action filed, on or after that date. 
Passed the House of Representatives December 5, 
2013. 
Attest: 
KAREN L. HAAS, 
Clerk. 
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