II 
Calendar No. 87 
112TH CONGRESS 
1ST SESSION H. R. 1249 
IN THE SENATE OF THE UNITED STATES 
JUNE 27, 2011 
Received and read the first time 
JUNE 28, 2011 
Read the second time and placed on the calendar 
AN ACT 
To amend title 35, United States Code, to provide for patent 
reform. 
Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled, 
SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 
(a) SHORT TITLE.—This Act may be cited as the 
‘‘Leahy-Smith America Invents Act’’. 
(b) TABLE OF CONTENTS.—The table of contents for 
this Act is as follows: 
Sec. 1. Short title; table of contents. 
Sec. 2. Definitions. 
Sec. 3. First inventor to file. 
Sec. 4. Inventor’s oath or declaration. 
Sec. 5. Defense to infringement based on prior commercial use. 
Sec. 6. Post-grant review proceedings. 
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Sec. 7. Patent Trial and Appeal Board. 
Sec. 8. Preissuance submissions by third parties. 
Sec. 9. Venue. 
Sec. 10. Fee setting authority. 
Sec. 11. Fees for patent services. 
Sec. 12. Supplemental examination. 
Sec. 13. Funding agreements. 
Sec. 14. Tax strategies deemed within the prior art. 
Sec. 15. Best mode requirement. 
Sec. 16. Marking. 
Sec. 17. Advice of counsel. 
Sec. 18. Transitional program for covered business method patents. 
Sec. 19. Jurisdiction and procedural matters. 
Sec. 20. Technical amendments. 
Sec. 21. Travel expenses and payment of administrative judges. 
Sec. 22. Patent and Trademark Office funding. 
Sec. 23. Satellite offices. 
Sec. 24. Designation of Detroit satellite office. 
Sec. 25. Priority examination for important technologies. 
Sec. 26. Study on implementation. 
Sec. 27. Study on genetic testing. 
Sec. 28. Patent Ombudsman Program for small business concerns. 
Sec. 29. Establishment of methods for studying the diversity of applicants. 
Sec. 30. Sense of Congress. 
Sec. 31. USPTO study on international patent protections for small businesses. 
Sec. 32. Pro bono program. 
Sec. 33. Limitation on issuance of patents. 
Sec. 34. Study of patent litigation. 
Sec. 35. Effective date. 
Sec. 36. Budgetary effects. 
Sec. 37. Calculation of 60-day period for application of patent term extension. 
SEC. 2. DEFINITIONS. 
In this Act: 
(1) DIRECTOR.—The term ‘‘Director’’ means 
the Under Secretary of Commerce for Intellectual 
Property and Director of the United States Patent 
and Trademark Office. 
(2) OFFICE.—The term ‘‘Office’’ means the 
United States Patent and Trademark Office. 
(3) PATENT PUBLIC ADVISORY COMMITTEE.— 
The term ‘‘Patent Public Advisory Committee’’ 
means the Patent Public Advisory Committee estab-
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lished under section 5(a) of title 35, United States 
Code. 
(4) TRADEMARK
ACT
OF
1946.—The term 
‘‘Trademark Act of 1946’’ means the Act entitled 
‘‘An Act to provide for the registration and protec-
tion of trademarks used in commerce, to carry out 
the provisions of certain international conventions, 
and for other purposes’’, approved July 5, 1946 (15 
U.S.C. 1051 et seq.) (commonly referred to as the 
‘‘Trademark Act of 1946’’ or the ‘‘Lanham Act’’). 
(5) 
TRADEMARK
PUBLIC
ADVISORY
COM-
MITTEE.—The term ‘‘Trademark Public Advisory 
Committee’’ means the Trademark Public Advisory 
Committee established under section 5(a) of title 35, 
United States Code. 
SEC. 3. FIRST INVENTOR TO FILE. 
(a) DEFINITIONS.—Section 100 of title 35, United 
States Code, is amended— 
(1) in subsection (e), by striking ‘‘or inter 
partes reexamination under section 311’’; and 
(2) by adding at the end the following: 
‘‘(f) The term ‘inventor’ means the individual or, if 
a joint invention, the individuals collectively who invented 
or discovered the subject matter of the invention. 
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‘‘(g) The terms ‘joint inventor’ and ‘coinventor’ mean 
any 1 of the individuals who invented or discovered the 
subject matter of a joint invention. 
‘‘(h) The term ‘joint research agreement’ means a 
written contract, grant, or cooperative agreement entered 
into by 2 or more persons or entities for the performance 
of experimental, developmental, or research work in the 
field of the claimed invention. 
‘‘(i)(1) The term ‘effective filing date’ for a claimed 
invention in a patent or application for patent means— 
‘‘(A) if subparagraph (B) does not apply, the 
actual filing date of the patent or the application for 
the patent containing a claim to the invention; or 
‘‘(B) the filing date of the earliest application 
for which the patent or application is entitled, as to 
such invention, to a right of priority under section 
119, 365(a), or 365(b) or to the benefit of an earlier 
filing date under section 120, 121, or 365(c). 
‘‘(2) The effective filing date for a claimed invention 
in an application for reissue or reissued patent shall be 
determined by deeming the claim to the invention to have 
been contained in the patent for which reissue was sought. 
‘‘(j) The term ‘claimed invention’ means the subject 
matter defined by a claim in a patent or an application 
for a patent.’’. 
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