II 
112TH CONGRESS 
2D SESSION 
H. R. 6621 
IN THE SENATE OF THE UNITED STATES 
DECEMBER 19, 2012 
Received 
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 Representa-
tives of the United States of America in Congress assembled, 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00001
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with
HR 6621 RDS
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 BUSI-
NESS 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 ‘‘sub-
section’’ and inserting ‘‘section’’. 
(c) JOINDER OF PARTIES.—Section 299(a) of title 
35, United States Code, is amended in the matter pre-
ceding paragraph (1) by striking ‘‘or counterclaim defend-
ants 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 pe-
tition 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). 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00002
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with
HR 6621 RDS
(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 ‘‘cor-
rect 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 sub-
section (a), substitute statement under subsection (d), or 
recorded assignment meeting the requirements of sub-
section (e) no later than the date on which the issue fee 
for the patent is paid.’’; and 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00003
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with
HR 6621 RDS
(2) in subsection (g)(1), by striking ‘‘who 
claims’’ and inserting ‘‘that claims’’. 
(g) TRAVEL EXPENSES AND PAYMENT OF ADMINIS-
TRATIVE 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 na-
tional stage under section 371 in an inter-
national application’’; and 
(B) in subparagraph (B), in the matter 
preceding clause (i), by striking ‘‘the applica-
tion in the United States’’ and inserting ‘‘the 
application under section 111(a) in the United 
States or, in the case of an international appli-
cation, the date of commencement of the na-
tional stage under section 371 in the inter-
national application’’; 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00004
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with
HR 6621 RDS
(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 deci-
sion on the applicant’s request for reconsider-
ation’’. 
(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 amend-
ed— 
(1) in subparagraph (A)— 
(A) by striking ‘‘sections 41, 42, and 376,’’ 
and inserting ‘‘this title,’’; and 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00005
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with
HR 6621 RDS
(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 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 de-
rived such invention from an individual named in the 
petitioner’s application as the inventor or a joint in-
ventor and, without authorization, the earlier appli-
cation claiming such invention was filed. Whenever 
the Director determines that a petition filed under 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00006
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with
HR 6621 RDS
this subsection demonstrates that the standards for 
instituting a derivation proceeding are met, the Di-
rector 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 
containing such claim was granted or the earlier ap-
plication 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 inven-
tion, 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 Di-
rector whether to institute a derivation proceeding 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00007
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with
HR 6621 RDS
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 Sep-
tember 15, 2012, shall apply to interference pro-
ceedings that are declared after September 15, 
2012, under section 135 of title 35, United States 
Code, as in effect before the effective date under sec-
tion 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 ‘‘Mem-
bers of’’ and all that follows through ‘‘such ap-
pointments.’’ and inserting the following: ‘‘In 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00008
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with
HR 6621 RDS
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 va-
cancy 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 ap-
pointed to serve for the remainder of the prede-
cessor’s term.’’; 
(B) by striking paragraph (2) and insert-
ing 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 para-
graph (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 exer-
cise 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 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00009
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with
HR 6621 RDS
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 ac-
cordance 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 sec-
tion 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 mem-
ber’s term would terminate if this Act had not 
been enacted. 
(m) REPORT ON PRE-GATT APPLICATIONS.—Using 
existing resources, not later than four months after the 
date of the enactment of this Act, the Director of the 
United States Patent and Trademark Office shall submit 
a report to the Committees on the Judiciary of the United 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00010
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with
HR 6621 RDS
States House of Representatives and the Senate that de-
scribes— 
(1) the total number of pending United States 
applications for patent that— 
(A) are not subject to an order under sec-
tion 181 of title 35, United States Code; and 
(B) were filed before the effective date of 
the amendments made by section 532 of the 
Uruguay Round Agreements Act (Public Law 
103–465; 108 Stat. 4983); 
(2) the filing date of each such application; 
(3) the filing date of the earliest application for 
which each such application claims the benefit of or 
a right of priority to its filing date; 
(4) the inventor and assignee named on each 
such application; 
(5) the amount of time that examination of 
each such application has been delayed because of a 
proceeding under section 135(a) of title 35, United 
States Code, an appeal to the Patent Trial and Ap-
peal Board under section 134(a) of such title, a civil 
action in a United States District Court under sec-
tion 145 or 146 of such title, or an appeal to the 
United States Court of Appeals for the Federal Cir-
cuit under section 141 of such title; and 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00011
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with
HR 6621 RDS
(6) other information about such applications 
that the Director believes is relevant to their pend-
ency. 
(n) CLERICAL AMENDMENT.—Section 123(a) of title 
35, United States Code, is amended in the matter pre-
ceding paragraph (1) by inserting ‘‘of this title’’ after 
‘‘For purposes’’. 
(o) EFFECTIVE DATE.—Except as otherwise provided 
in this Act, the amendments made by this Act shall take 
effect on the date of the enactment of this Act and shall 
apply to proceedings commenced on or after such date of 
enactment. 
Passed the House of Representatives December 18, 
2012. 
Attest: 
KAREN L. HAAS, 
Clerk. 
VerDate Mar 15 2010 
23:17 Dec 28, 2012
Jkt 029200
PO 00000
Frm 00012
Fmt 6652
Sfmt 6201
E:\BILLS\H6621.RDS
H6621
srobinson on DSK4SPTVN1PROD with