I 
112TH CONGRESS 
2D SESSION 
H. R. 6621 
To correct and improve certain provisions of the Leahy-Smith America Invents 
Act and title 35, United States Code. 
IN THE HOUSE OF REPRESENTATIVES 
NOVEMBER 30, 2012 
Mr. SMITH of Texas introduced the following bill; which was referred to the 
Committee on the Judiciary 
A BILL 
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, 
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. 
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(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). 
(2) REPEAL.—Section 325(f) of title 35, United 
States Code, as added by section 6 of the Leahy- 
Smith America Invents Act, is repealed. 
(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 
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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 
(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. 
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(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’’; 
(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 
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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 
(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’’. 
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(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 
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 
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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, 
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