In the nature of a substitute.

This amendment's own text couldn't be picked out of its Congressional Record passage, so the passage is shown in full.

SA 3444. Mr. REID (for Mr. Leahy (for himself and Mr. Grassley))
proposed an amendment to the bill H.R. 6621, to correct and improve
certain provisions of the Leahy-Smith America Invents Act and title 35,
United States Code; as folows.

       Strike all after the enacting clause and insert the
     following:

     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 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
     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 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
     proportionate share of the administrative 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''.
       (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 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

[[Page S8513]]

     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
     proceedings 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 predecessor's term.'';
       (B) by striking paragraph (2) and inserting the following:
       ``(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 section 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
     commenced on or after such date of enactment.

                          ____________________