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
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
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
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
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
(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: 
Clerk.
112TH CONGRESS 
2D SESSION 
H. R. 6621 
AN ACT 
To correct and improve certain provisions of the 
Leahy-Smith America Invents Act and title 35, 
United States Code.