AUTHENTICATED
`U.5. GOVERNMENT
`INFORMATION
`GPO
`
`PUBLIC LAW 112—274—JAN. 14, 2013
`
`LEAHY-SMITH AMERICA INVENTS
`
`TECHNICAL CORRECTIONS
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`

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`126 STAT. 2456
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`PUBLIC LAW 112—274—JAN. 14, 2013
`
`Public Law 112—274
`
`112th Congress
`
`An Act
`
`Jan. 14, 2013
`[H.R. 6621]
`
`To correct and improve certain provisions of the Leahy-Smith America Invents
`Act and title 35, United States Code.
`
`Patents.
`
`Applicability.
`35 USC 298 note.
`
`35 USC 311 note.
`
`35 USC 135 note.
`
`Be it enacted by the Senate and House of Representatives of
`the United States ofAmerica 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)
`bfy striking “or counterclaim defendants only if” and inserting “only
`1 ’.
`(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 (0 and inserting the following:
`“(i) TIME FOR FILING.—The applicant for patent Shall provide
`each required oath or declaration under subsection (a), substitute
`
`

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`PUBLIC LAW 112—274—JAN. 14, 2013
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`126 STAT. 2457
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`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 35 USC2note.
`JUDGES.—Notwithstanding section 35 of the Leahy-Smith America Effective date.
`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 Repeal.
`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-
`tioiliate share of the administrative costs of the Office”;
`an
`(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 0F PROCEEDING.—
`
`Petition.
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`126 STAT. 2458
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`PUBLIC LAW 112—274—JAN. 14, 2013
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`“(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) N0 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.
`(1) 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.”;
`
`35 USC 135 note.
`
`Applicability.
`35 USC 135 note.
`
`Appointment.
`Time period.
`Effective date.
`Deadline.
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`PUBLIC LAW 112—274—JAN. 14, 2013
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`126 STAT. 2459
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`(B) by striking paragraph (2) and inserting the fol-
`lowing:
`“(2) CHAIR.—The Secretary of Commerce, in consultation Designation.
`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).
`35 U30 5 note.
`(2) TRANSITION.—
`(A) IN GENERAL—The Secretary of Commerce shall, Determination.
`in the Secretary’s discretion, determine the time and Appointment-
`manner in which the amendments made by paragraph Eliggtigldgte
`(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.
`to
`(B) DEEMED TERMINATION OF TERMS.—In order
`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 Applicability.
`Act, the amendments made by this Act shall take effect on the 35 U50 5 note-
`date of enactment of this Act, and shall apply to proceedings com-
`menced on or after such date of enactment.
`
`'
`
`Approved January 14, 2013.
`
`LEGISLATIVE HISTORY—HR. 6621:
`CONGRESSIONAL RECORD:
`Vol. 158 (2012): Dec. 18, considered and passed House.
`Dec. 28, considered and passed Senate, amended.
`Dec. 30, House considered concurring in Senate amendment.
`Vol. 158 (2013): Jan. 1, House concurred in Senate amendment.
`
`0
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