In the Senate of the United States, 
December 28, 2012. 
Resolved, That the bill from the House of Representa-
tives (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 
AMENDMENT: 
Strike all after the enacting clause and insert the 
following: 
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 en-
actment of this Act. 
(b) TRANSITIONAL PROGRAM FOR COVERED BUSINESS 
METHOD PATENTS.—Section 18 of the Leahy-Smith Amer-
ica Invents Act (35 U.S.C. 321 note) is amended—
† HR 6621 EAS 
(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 peti-
tion 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 in-
ventor’’.
† HR 6621 EAS 
(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 ADMINISTRA-
TIVE JUDGES.—Notwithstanding section 35 of the Leahy- 
Smith America Invents Act (35 U.S.C. 1 note), the amend-
ments made by section 21 of the Leahy-Smith America In-
vents Act (Public Law 112–29; 125 Stat. 335) shall be effec-
tive as of September 16, 2011. 
(h) PATENT TERM ADJUSTMENTS.—Section 154(b) of 
title 35, United States Code, is amended—
† HR 6621 EAS 
(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 applica-
tion’’; and 
(B) in subparagraph (B), in the matter pre-
ceding clause (i), by striking ‘‘the application in 
the United States’’ and inserting ‘‘the applica-
tion 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 applica-
tion’’; 
(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
† HR 6621 EAS 
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 re-
pealed. 
(j) FINANCIAL MANAGEMENT CLARIFICATIONS.—Sec-
tion 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 administra-
tive costs of the Office relating to patents’’ and 
inserting ‘‘a proportionate share of the adminis-
trative 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
† HR 6621 EAS 
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 insti-
tute a derivation proceeding in the Office. The peti-
tion shall set forth with particularity the basis for 
finding that an individual named in an earlier ap-
plication as the inventor or a joint inventor derived 
such invention from an individual named in the peti-
tioner’s application as the inventor or a joint inven-
tor and, without authorization, the earlier applica-
tion claiming such invention was filed. Whenever the 
Director determines that a petition filed under this 
subsection demonstrates that the standards for insti-
tuting 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 con-
tained 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 con-
† HR 6621 EAS 
taining such claim was granted or the earlier appli-
cation containing such claim was published, which-
ever 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 appli-
cation having an effective filing date that is earlier 
than the effective filing date of any claim to the in-
vention that was or could have been made in such 
other application. 
‘‘(4) NO APPEAL.—A determination by the Di-
rector whether to institute a derivation proceeding 
under paragraph (1) shall be final and not appeal-
able.’’. 
(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
† HR 6621 EAS 
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 Ap-
peals and Interferences for purposes of such inter-
ference proceedings. 
(l) PATENT AND TRADEMARK PUBLIC ADVISORY COM-
MITTEES.— 
(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 appoint-
ments.’’ and inserting the following: ‘‘In each 
year, 3 members shall be appointed to each Advi-
sory 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 ap-
pointed 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:
† HR 6621 EAS 
‘‘(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 Com-
merce shall, in the Secretary’s discretion, deter-
mine the time and manner in which the amend-
ments 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 ap-
pointed 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