To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code.
Latest action · Jan 14, 2013 Became Public Law No: 112-274.
Progress
Where this bill reached, and when. A stage with no date was not reached; one that failed a vote and later carried shows the date it carried.
- IntroducedNov 30, 2012
- Passed HouseDec 18, 2012
- Passed SenateDec 28, 2012
- To the PresidentJan 3, 2013
- Became lawJan 14, 2013Public Law 112-274
Summary
(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.
Recorded votes 1
Newest first. Open one to see how every member voted.
| Roll call | Question | Result | Date |
|---|---|---|---|
| House 631 | On Motion to Suspend the Rules and Pass, as Amended | Passed308–89 | Dec 18, 2012 |
Cosponsors
Members who signed on, in the order they did.
Committees 1
Where it was sent and what each committee and subcommittee did with it, in order.
| Chamber | Committee | What it did |
|---|---|---|
| House | Judiciary Committee | Referred Nov 30, 2012 |
Actions 21
Everything that happened, newest first.
- Jan 14, 2013Signed by President.
- Jan 14, 2013Became Public Law No: 112-274.
- Jan 3, 2013Presented to President.
- Jan 1, 2013Resolving 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)
- Jan 1, 2013Motion to reconsider laid on the table Agreed to without objection.
In the Congressional Record 6
Days the Record’s own index lists this bill, newest first, with the pages and the members it names. Pages starting H are the House, S the Senate, E Extensions of Remarks.
| Where | In the Record | Members | Date |
|---|---|---|---|
| Extensions | Analyses E2016 | Lamar Smith R-TX | Dec 31, 2012 |
| House | Debate and remarks H7455–H7457Amendments H7455 | Lamar Smith R-TX, Robert C. "Bobby" Scott D-VA | Dec 30, 2012 |
| Senate | Debate and remarks S8517Amendments S8512, S8517 | Chuck Grassley R-IA (amendment), Harry Reid D-NV, Patrick J. Leahy D-VT (amendment) | Dec 28, 2012 |
| House | Debate and remarks H6842–H6844Text printed H6842Recorded votes H6854correct and improve | Dana Rohrabacher R-CA, John Conyers, Jr. D-MI, Lamar Smith R-TX, Melvin L. Watt D-NC | Dec 18, 2012 |
| Extensions | Debate and remarks E2034 | Howard Coble R-NC | Jan 2, 2012 |
Research
What has been written about this bill: committee reports, cost estimates, the sponsor’s authority statement, printed hearings and the Congressional Research Service’s work.
Constitutional authority
The sponsor’s statement, as printed in the page H6578.
CRS reports 1
Congressional Research Service work that CRS links to this bill or the law it became, newest first.
Cite it 1
Products on other subjects that cite it, usually among other measures.
| Product | Title | Kind | Published |
|---|---|---|---|
| R42014 | The Leahy-Smith America Invents Act: Innovation Issues Archived | Report | Jan 15, 2014 |
Amendments 1
Amendments offered to this bill.
| Amendment | Description | Offered by | Status |
|---|---|---|---|
| SA 3444 | In the nature of a substitute. | Patrick J. Leahy D-VT | Amendment SA 3444 agreed to in Senate by Unanimous Consent. |
Related bills 1
Companion bills and other measures the record links to this one.
| Bill | Title | Relationship | Latest action |
|---|---|---|---|
| HR 1249 | Leahy-Smith America Invents Act | Related bill | Sep 16, 2011 |
Titles 1
Every title it has carried, official and short, at each stage.
- Official Title as Introduced
- To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code.
Subjects
Assigned by the Library of Congress. Policy area: Commerce.
Text 5
Each version as it was printed, newest first.
- —Enrolled Bill
- Dec 28, 2012Engrossed Amendment Senate
- Dec 19, 2012Received in Senate
- Dec 18, 2012Engrossed in House
- Nov 30, 2012Introduced in House
Everything here is as published by Congress: the summary is the Congressional Research Service's, the action wording is the clerks', and the subjects are the Library of Congress's. How far it got is read from the actions themselves, taking the most recent one of each kind, so a bill that failed a vote and later passed is shown as having passed. Records come from this bill on Congress.gov and govinfo.gov; cost estimates are the Congressional Budget Office's, and the hearings are the printed hearings GovInfo publishes, which can appear months after the hearing.