To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code.

Bill: 112-hr-6621
Sponsor: Rep. Smith, Lamar [R-TX-21]
Introduced: 2012-11-30 in the House
Policy area: Commerce
Subjects: Administrative law and regulatory procedures
Administrative remedies
Advisory bodies
Business expenses
Civil actions and liability
Department of Commerce
Government employee pay, benefits, personnel management
Intellectual property
Judges
Judicial procedure and administration

Summary:
action_date: 2012-11-30
text: 
Amends the Leahy-Smith America Invents Act (AIA) to make technical changes regarding the transitional program for covered business method patents and joinder of parties.
 
Applies, to any civil action commenced on or after enactment of this Act, the AIA's bar on using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced. (Currently, the bar would not take effect until one year after the AIA's enactment.)
 
Prohibits a nine-month waiting period for inter partes review from applying to issuances of first-to-invent patents ineligible for post-grant review. (Currently, the remaining first-to-invent patents to be issued prior to the effective date of the new first-to-file patent system have no avenue for review during the first nine months because they must wait nine months for inter parties review and are ineligible for post-grant review.)
 
Repeals a prohibition on the institution of post-grant review based on a request to cancel a claim in a reissue patent that is identical to or narrower than a claim in the original patent. (Currently, such reissue patents must wait nine months for inter parties review and are barred from post-grant review.)
 
Extends the time period for an applicant to file an inventor's oath or declaration, substitute statement, or recorded assignment until the date on which the issue fee for the patent is paid. (Current law permits a notice of allowance of a patent application only after such a filing.) 
 
Makes provisions concerning travel expenses for employees of the U.S. Patent and Trademark Office (USPTO) and the payment of administrative judges effective as of September 16, 2011.
 
Modifies requirements and time periods for activities relating to patent term adjustments. Revises the patent extension period for certain international applications. Specifies that a civil action filed in the U.S. District Court for the Eastern District of Virginia is the exclusive remedy for challenging a USPTO decision on a request for reconsideration of a patent term adjustment determination.
 
Repeals a provision prohibiting the USPTO from accepting certain international applications designating the United States from anyone not qualified under specified application requirements.
 
Revises USPTO funding requirements to make all federal patent law fees available for expenses relating to patent processing and to permit patent and trademark fees to be used interchangeably to cover proportionate shares of the USPTO's administrative costs. (Currently, patent fees are used to cover administrative costs relating to patents while trademark fees are used to cover administrative costs relating to trademarks.)
 
Modifies requirements for applicants filing petitions to institute derivation proceedings and delineates the criteria applied to deem an application as an earlier application with respect to an invention relative to another application. 
 
Sets forth authority for the Patent Trial and Appeal Board to conduct, and for courts to review appeals from, interference proceedings declared after enactment but before the effective date of certain AIA amendments replacing interference proceedings with derivation proceedings.
 
Modifies the original appointment terms for members of the Patent Public Advisory Committee and the Trademark Public Advisory Committee. Directs the Secretary of Commerce to designate, from among the appointed members, a Chair and Vice Chair of each committee to serve one-year terms. (Currently, only a Chair is designated for a term of three years.)
 
Establishes a one-year period during which applications pending since before the effective date of the Uruguay Round Agreements Act (URAA) would remain eligible for a patent term of 17 years from the date of issuance. Prohibits a term of 17 years from the date of issuance from applying, and instead requires a term of 20 years from the filing date to be applied, to patents issued on such pre-URAA applications still pending after the one-year period.

action_date: 2012-12-18
text: 
Amends the Leahy-Smith America Invents Act (AIA) to make technical changes regarding the transitional program for covered business method patents and joinder of parties.
 
Applies, to any civil action commenced on or after enactment of this Act, the AIA's bar on using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced. (Currently, the bar would not take effect until one year after the AIA's enactment.)
 
Prohibits a nine-month waiting period for inter partes review from applying to issuances of first-to-invent patents ineligible for post-grant review. (Currently, the remaining first-to-invent patents to be issued prior to the effective date of the new first-to-file patent system have no avenue for review during the first nine months because they must wait nine months for inter parties review and are ineligible for post-grant review.)
 
Revises the filing deadline for inter partes review to be after the later of either: (1) nine months after the grant of a patent (currently, nine months after such grant or the issuance of a reissue patent), or (2) the termination date of any post-grant review. 
 
Extends the time period for an applicant to file an inventor's oath or declaration, substitute statement, or recorded assignment until the date on which the issue fee for the patent is paid. (Current law permits a notice of allowance of a patent application only after such a filing.) 
 
Makes provisions concerning travel expenses for employees of the U.S. Patent and Trademark Office (USPTO) and the payment of administrative judges effective as of September 16, 2011.
 
Modifies requirements and time periods for activities relating to patent term adjustments. Revises the patent extension period for certain international applications. Specifies that a civil action filed in the U.S. District Court for the Eastern District of Virginia is the exclusive remedy for challenging a USPTO decision on a request for reconsideration of a patent term adjustment determination.
 
Repeals a provision prohibiting the USPTO from accepting certain international applications designating the United States from anyone not qualified under specified application requirements.
 
Revises USPTO funding requirements to make all federal patent law fees available for expenses relating to patent processing and to permit patent and trademark fees to be used interchangeably to cover proportionate shares of the USPTO's administrative costs. (Currently, patent fees are used to cover administrative costs relating to patents while trademark fees are used to cover administrative costs relating to trademarks.)
 
Modifies requirements for applicants filing petitions to institute derivation proceedings and delineates the criteria applied to deem an application as an earlier application with respect to an invention relative to another application. 
 
Sets forth authority for the Patent Trial and Appeal Board to conduct, and for courts to review appeals from, interference proceedings declared after enactment but before the effective date of certain AIA amendments replacing interference proceedings with derivation proceedings.
 
Modifies the original appointment terms for members of the Patent Public Advisory Committee and the Trademark Public Advisory Committee. Directs the Secretary of Commerce to designate, from among the appointed members, a Chair and Vice Chair of each committee.
 
Directs the USPTO to report to Congress on the total number of pending U.S. patent applications that are not subject to a secrecy order for national security purposes and were filed before the effective date of certain amendments made by the Uruguay Round Agreements Act (commonly referred to as pre-GATT [General Agreement on Tariffs and Trade] applications). Requires such report to include: (1) the filing dates of each such application, including the filing date of the earliest application for which each such application claims the benefit or right of priority to its filing date; (2) the named inventor and assignee; (3) the amount of time each examination has been delayed because of interference proceedings, an appeal to the Patent Trial and Appeal Board, certain civil actions in a U.S. district court, or an appeal to the U.S. Court of Appeals for the Federal Circuit; and (4) any other information relevant to the pendency of such applications. 

action_date: 2012-12-28
text: 
Amends the Leahy-Smith America Invents Act (AIA) to make technical changes regarding the transitional program for covered business method patents and joinder of parties.
 
Applies, to any civil action commenced on or after enactment of this Act, the AIA's bar on using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced. (Currently, the bar would not take effect until one year after the AIA's enactment.)
 
Prohibits a nine-month waiting period for inter partes review from applying to issuances of first-to-invent patents ineligible for post-grant review. (Currently, the remaining first-to-invent patents to be issued prior to the effective date of the new first-to-file patent system have no avenue for review during the first nine months because they must wait nine months for inter parties review and are ineligible for post-grant review.)
 
Revises the filing deadline for inter partes review to be after the later of either: (1) nine months after the grant of a patent (currently, nine months after such grant or the issuance of a reissue patent), or (2) the termination date of any post-grant review. 
 
Extends the time period for an applicant to file an inventor's oath or declaration, substitute statement, or recorded assignment until the date on which the issue fee for the patent is paid. (Current law permits a notice of allowance of a patent application only after such a filing.) 
 
Makes provisions concerning travel expenses for employees of the U.S. Patent and Trademark Office (USPTO) and the payment of administrative judges effective as of September 16, 2011.
 
Modifies requirements and time periods for activities relating to patent term adjustments. Revises the patent extension period for certain international applications. Specifies that a civil action filed in the U.S. District Court for the Eastern District of Virginia is the exclusive remedy for challenging a USPTO decision on a request for reconsideration of a patent term adjustment determination.
 
Repeals a provision prohibiting the USPTO from accepting certain international applications designating the United States from anyone not qualified under specified application requirements.
 
Revises USPTO funding requirements to make all federal patent law fees available for expenses relating to patent processing and to permit patent and trademark fees to be used interchangeably to cover proportionate shares of the USPTO's administrative costs. (Currently, patent fees are used to cover administrative costs relating to patents while trademark fees are used to cover administrative costs relating to trademarks.)
 
Modifies requirements for applicants filing petitions to institute derivation proceedings and delineates the criteria applied to deem an application as an earlier application with respect to an invention relative to another application. 
 
Sets forth authority for the Patent Trial and Appeal Board to conduct, and for courts to review appeals from, interference proceedings declared after enactment but before the effective date of certain AIA amendments replacing interference proceedings with derivation proceedings.
 
Modifies the original appointment terms for members of the Patent Public Advisory Committee and the Trademark Public Advisory Committee. Directs the Secretary of Commerce to designate, from among the appointed members, a Chair and Vice Chair of each committee.

action_date: 2013-01-14
text: 

(This measure has not been amended since it was passed by the Senate on December 28, 2012. The summary of that version is repeated here.)
 
 
Amends the Leahy-Smith America Invents Act (AIA) to make technical changes regarding the transitional program for covered business method patents and joinder of parties.
 
Applies, to any civil action commenced on or after enactment of this Act, the AIA's bar on using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced. (Currently, the bar would not take effect until one year after the AIA's enactment.)
 
Prohibits a nine-month waiting period for inter partes review from applying to issuances of first-to-invent patents ineligible for post-grant review. (Currently, the remaining first-to-invent patents to be issued prior to the effective date of the new first-to-file patent system have no avenue for review during the first nine months because they must wait nine months for inter parties review and are ineligible for post-grant review.)
 
Revises the filing deadline for inter partes review to be after the later of either: (1) nine months after the grant of a patent (currently, nine months after such grant or the issuance of a reissue patent), or (2) the termination date of any post-grant review. 
 
Extends the time period for an applicant to file an inventor's oath or declaration, substitute statement, or recorded assignment until the date on which the issue fee for the patent is paid. (Current law permits a notice of allowance of a patent application only after such a filing.) 
 
Makes provisions concerning travel expenses for employees of the U.S. Patent and Trademark Office (USPTO) and the payment of administrative judges effective as of September 16, 2011.
 
Modifies requirements and time periods for activities relating to patent term adjustments. Revises the patent extension period for certain international applications. Specifies that a civil action filed in the U.S. District Court for the Eastern District of Virginia is the exclusive remedy for challenging a USPTO decision on a request for reconsideration of a patent term adjustment determination.
 
Repeals a provision prohibiting the USPTO from accepting certain international applications designating the United States from anyone not qualified under specified application requirements.
 
Revises USPTO funding requirements to make all federal patent law fees available for expenses relating to patent processing and to permit patent and trademark fees to be used interchangeably to cover proportionate shares of the USPTO's administrative costs. (Currently, patent fees are used to cover administrative costs relating to patents while trademark fees are used to cover administrative costs relating to trademarks.)
 
Modifies requirements for applicants filing petitions to institute derivation proceedings and delineates the criteria applied to deem an application as an earlier application with respect to an invention relative to another application. 
 
Sets forth authority for the Patent Trial and Appeal Board to conduct, and for courts to review appeals from, interference proceedings declared after enactment but before the effective date of certain AIA amendments replacing interference proceedings with derivation proceedings.
 
Modifies the original appointment terms for members of the Patent Public Advisory Committee and the Trademark Public Advisory Committee. Directs the Secretary of Commerce to designate, from among the appointed members, a Chair and Vice Chair of each committee.


Legislative actions:
action_date: 2013-01-14
text: Became Public Law No: 112-274.
action_date: 2013-01-14
text: Became Public Law No: 112-274.
action_date: 2013-01-14
text: Signed by President.
action_date: 2013-01-14
text: Signed by President.
action_date: 2013-01-03
text: Presented to President.
action_date: 2013-01-03
text: Presented to President.
action_date: 2013-01-01
text: Motion to reconsider laid on the table Agreed to without objection.
action_date: 2013-01-01
text: On motion that the House suspend the rules and agree to the Senate amendment Agreed to by voice vote. (consideration: CR H7559; text as House agreed to Senate amendment: CR 12/30/2012 H7455-7456)
action_date: 2013-01-01
text: Resolving differences -- House actions: On motion that the House suspend the rules and agree to the Senate amendment Agreed to by voice vote.(consideration: CR H7559; text as House agreed to Senate amendment: CR 12/30/2012 H7455-7456)
action_date: 2012-12-30
text: At the conclusion of debate, the chair put the question on the motion to suspend the rules. Mr. Scott (VA) objected to the vote on the grounds that a quorum was not present. Further proceedings on the motion were postponed. The point of no quorum was considered as withdrawn.
action_date: 2012-12-30
text: DEBATE - The House proceeded with forty minutes of debate on the motion to suspend the rules and agree to the Senate amendment to H.R. 6621.
action_date: 2012-12-30
text: Mr. Smith (TX) moved that the House suspend the rules and agree to the Senate amendment. (consideration: CR H7455-7457)
action_date: 2012-12-30
text: Message on Senate action sent to the House.
action_date: 2012-12-28
text: Passed Senate with an amendment by Unanimous Consent.
action_date: 2012-12-28
text: Passed/agreed to in Senate: Passed Senate with an amendment by Unanimous Consent.
action_date: 2012-12-28
text: Measure laid before Senate by unanimous consent. (consideration: CR S8517-8518)
action_date: 2012-12-19
text: Received in the Senate, read twice.
action_date: 2012-12-18
text: Motion to reconsider laid on the table Agreed to without objection.
action_date: 2012-12-18
text: On motion to suspend the rules and pass the bill, as amended Agreed to by the Yeas and Nays: (2/3 required): 308 - 89 (Roll no. 631). (text: CR H6842-6843)
action_date: 2012-12-18
text: Passed/agreed to in House: On motion to suspend the rules and pass the bill, as amended Agreed to by the Yeas and Nays: (2/3 required): 308 - 89 (Roll no. 631).(text: CR H6842-6843)
action_date: 2012-12-18
text: Considered as unfinished business. (consideration: CR H6854)
action_date: 2012-12-18
text: At the conclusion of debate, the Yeas and Nays were demanded and ordered. Pursuant to the provisions of clause 8, rule XX, the Chair announced that further proceedings on the motion would be postponed.
action_date: 2012-12-18
text: DEBATE - The House proceeded with forty minutes of debate on H.R. 6621.
action_date: 2012-12-18
text: Considered under suspension of the rules. (consideration: CR H6842-6844)
action_date: 2012-12-18
text: Mr. Smith (TX) moved to suspend the rules and pass the bill, as amended.
action_date: 2012-11-30
text: Referred to the House Committee on the Judiciary.
action_date: 2012-11-30
text: Introduced in House
action_date: 2012-11-30
text: Introduced in House

Enacted as: number: 112-274