H. R. 6621 
One Hundred Twelfth Congress 
of the 
United States of America 
AT THE SECOND SESSION 
Begun and held at the City of Washington on Tuesday, 
the third day of January, two thousand and twelve 
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 Representatives 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. 
(b) TRANSITIONAL PROGRAM FOR COVERED BUSINESS 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 ‘‘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 petition 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 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 subsection (a), substitute
H. R. 6621—2 
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
ADMINISTRATIVE 
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 national stage under section 371 in an international 
application’’; and 
(B) in subparagraph (B), in the matter preceding clause 
(i), by striking ‘‘the application in the United States’’ and 
inserting ‘‘the application 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 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 on the applicant’s request for reconsider-
ation 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 repealed. 
(j) FINANCIAL MANAGEMENT CLARIFICATIONS.—Section 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 administrative costs 
of the Office relating to patents’’ and inserting ‘‘a propor-
tionate share of the administrative costs of the Office’’; 
and 
(2) in subparagraph (B), by striking ‘‘a share of the adminis-
trative 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.—
H. R. 6621—3 
‘‘(1) IN GENERAL.—An applicant for patent may file a peti-
tion with respect to an invention to institute a derivation pro-
ceeding in the Office. The petition shall set forth with particu-
larity the basis for finding that an individual named in an 
earlier application as the inventor or a joint inventor derived 
such invention from an individual named in the petitioner’s 
application as the inventor or a joint inventor and, without 
authorization, the earlier application 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 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 contained 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 application 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 invention, 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 Director whether 
to institute a derivation proceeding under paragraph (1) shall 
be final and not appealable.’’. 
(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 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 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 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 ‘‘Members of’’ and 
all that follows through ‘‘such appointments.’’ 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 vacancy 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 appointed to serve for the remainder of the prede-
cessor’s term.’’;
H. R. 6621—4 
(B) by striking paragraph (2) and inserting the fol-
lowing: 
‘‘(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 Commerce shall, 
in the Secretary’s discretion, determine the time and 
manner in which the amendments 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 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 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 
member’s term would terminate if this Act had not been 
enacted. 
(m) CLERICAL AMENDMENT.—Section 123(a) of title 35, United 
States Code, is amended in the matter preceding paragraph (1) 
by inserting ‘‘of this title’’ after ‘‘For purposes’’. 
(n) EFFECTIVE DATE.—Except as otherwise provided in this 
Act, the amendments made by this Act shall take effect on the 
date of enactment of this Act, and shall apply to proceedings com-
menced on or after such date of enactment. 
Speaker of the House of Representatives. 
Vice President of the United States and
President of the Senate.