Sec. 9. Improvements and technical corrections to the Leahy-Smith America Invents Act
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Section 145 of title 35, United States Code, is repealed. Section 1295(a)(4) of title 28, United States Code, is amended— in subparagraph (A), by striking except that an applicant or a party and all that follows through the end of the subparagraph and inserting the following: except that a party to a derivation proceeding may also have remedy by civil action under ; and section 146 of title 35; an appeal under this subparagraph of a decision of the Board with respect to a derivation proceeding shall waive the right of such party to proceed under section 146 of title 35; in subparagraph (C), by striking section 145, 146, or and inserting section 146 or .
Section 141(a) of title 35, United States Code, is amended— by striking may appeal the Board’s decision to and inserting may appeal the Board’s decision only to ; and by striking the second sentence. Section 154(b)(1)(A)(iii) of title 35, United States Code, is amended by striking section 141, 145, or 146 and inserting section 141 or 146 . The table of sections for chapter 13 of title 35, United States Code, is amended by repealing the item relating to section 145. The amendments made by this subsection shall take effect on the date of the enactment of this Act and apply to any proceeding in which a decision is made by the Patent Trial and Appeal Board on or after such date of enactment.
Section 325(e)(2) of title 35, United States Code is amended by striking or reasonably could have raised . Section 316(a) of title 35, United States Code, is amended— in paragraph (12), by striking ; and and inserting a semicolon; in paragraph (13), by striking the period at the end and inserting ; and ; and by adding at the end the following new paragraph: providing that for all purposes under this chapter— each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction. .
Section 326(a) of title 35, United States Code, is amended— in paragraph (11), by striking ; and and inserting a semicolon; in paragraph (12), by striking the period at the end and inserting ; and ; and by adding at the end the following new paragraph: providing that for all purposes under this chapter— each claim of a patent shall be construed as such claim would be in a civil action to invalidate a patent under section 282(b), including construing each claim of the patent in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent; and if a court has previously construed the claim or a claim term in a civil action in which the patent owner was a party, the Office shall consider such claim construction. .
Section 18(a)(1)(A) of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 126 Stat. 329; 35 U.S.C. 321 note) is amended by striking Section 321(c) and inserting Sections 321(c) and 326(a)(13) . The amendments made by this subsection shall take effect upon the expiration of the 90-day period beginning on the date of the enactment of this Act, and shall apply to any proceeding under chapter 31 or 32 of title 35, United States Code, as the case may be, for which the petition for review is filed on or after such effective date.
Chapter 10 of title 35, United States Code, is amended by adding at the end the following new section: A claimed invention of a patent issued under section 151 (referred to as the first patent ) that is not prior art to a claimed invention of another patent (referred to as the second patent ) shall be considered prior art to the claimed invention of the second patent for the purpose of determining the nonobviousness of the claimed invention of the second patent under section 103 if— the claimed invention of the first patent was effectively filed under section 102(d) on or before the effective filing date of the claimed invention of the second patent; either— the first patent and second patent name the same inventor; or the claimed invention of the first patent would constitute prior art to the claimed invention of the second patent under section 102(a)(2) if an exception under section 102(b)(2) were deemed to be inapplicable and the claimed invention of the first patent was, or were deemed to be, effectively filed under section 102(d) before the effective filing date of the claimed invention of the second patent; and the patentee of the second patent has not disclaimed the rights to enforce the second patent independently from, and beyond the statutory term of, the first patent. .
The Director shall promulgate regulations setting forth the form and content of any disclaimer required for a patent to be issued in compliance with section 106 of title 35, United States Code, as added by paragraph (1). Such regulations shall apply to any disclaimer filed after a patent has issued. A disclaimer, when filed, shall be considered for the purpose of determining the validity of the patent under section 106 of title 35, United States Code. The table of sections for chapter 10 of title 35, United States Code, is amended by adding at the end the following new item: 106.
Prior art in cases of double patenting. . A patent subject to section 106 of title 35, United States Code, as added by paragraph (1), shall not be held invalid on any nonstatutory, double-patenting ground. The amendments made by this subsection shall take effect on the date of the enactment of this Act and shall apply to a patent or patent application only if both the first and second patents described in section 106 of title 35, United States Code, as added by paragraph (1), are patents or patent applications that are described in section 3(n)(1) of the Leahy-Smith America Invents Act ( 35 U.S.C. 100 note).
Section 18(a)(1)(C)(i) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 note) is amended by striking section 102(a) and inserting subsection
(a)or
(e)of section 102 . The amendment made by subparagraph
(A)shall take effect on the date of the enactment of this Act and shall apply to any proceeding pending on, or filed on or after, such date of enactment. Subject to available resources, the Director may waive payment of a filing fee for a transitional proceeding described under section 18(a) of the Leahy-Smith America Invents Act ( 35 U.S.C. 321 note). Section 154(b)(1)(B) of title 35, United States Code, is amended— in the matter preceding clause (i), by striking not including— and inserting the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued, not including— ; in clause (i), by striking consumed by continued examination of the application requested by the applicant and inserting consumed after continued examination of the application is requested by the applicant ; in clause (iii), by striking the comma at the end and inserting a period; and by striking the matter following clause (iii). The amendments made by this subsection shall take effect on the date of the enactment of this Act and apply to any patent application or patent that is pending on, or filed on or after, such date of enactment. The Federal interest in preventing inconsistent final judicial determinations as to the legal force or effect of the claims in a patent presents a substantial Federal issue that is important to the Federal system as a whole. Paragraph (1)— shall apply to all cases filed on or after, or pending on, the date of the enactment of this Act; and shall not apply to a case in which a Federal court has issued a ruling on whether the case or a claim arises under any Act of Congress relating to patents or plant variety protection before the date of the enactment of this Act. Section 1(c) of Public Law 111–349 (124 Stat. 3674; 28 U.S.C. 137 note) is amended to read as follows: The program established under subsection
(a)shall be maintained using existing resources, and shall terminate 20 years after the end of the 6-month period described in subsection (b). . The amendment made by paragraph
(1)shall take effect on the date of the enactment of this Act. Section 102(b)(1)(A) of title 35, United States Code, is amended by striking the inventor or joint inventor or by another and inserting the inventor or a joint inventor or another . The amendment made by subparagraph
(A)shall be effective as if included in the amendment made by section 3(b)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 ). The second sentence of section 115(a) of title 35, United States Code, is amended— by striking Except as otherwise provided and inserting Except for an application filed under section 118 or as otherwise provided ; and by striking shall execute and inserting may be required by the Director to execute . The amendments made by subparagraph
(A)shall be effective as if included in the amendment made by section 4(a)(1) of the Leahy-Smith America Invents Act ( Public Law 112–29 ). Section 119(e)(1) of title 35, United States Code, is amended, in the first sentence, by striking by an inventor or inventors named and inserting that names the inventor or a joint inventor . Section 120 of title 35, United States Code, is amended, in the first sentence, by striking names an inventor or joint inventor and inserting names the inventor or a joint inventor . The amendments made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any patent application, and any patent issuing from such application, that is filed on or after September 16, 2012. Section 291(b) of title 35, United States Code, is amended by striking or joint inventor and inserting or a joint inventor . The amendment made by subparagraph
(A)shall be effective as if included in the amendment made by section 3(h)(1) of the Leahy-Smith America Invents Act (Public Law No. 112–29). Notwithstanding section 4(e) of the Leahy-Smith America Invents Act ( Public Law 112–29 ; 125 Stat. 297), the amendments made by subsections
(c)and
(d)of section 4 of such Act shall apply to any proceeding or matter that is pending on, or filed on or after, the date of the enactment of this Act. The fourth sentence of section 32 of title 35, United States Code, is amended by striking 1 year and inserting 2 years . The amendment made by this paragraph shall take effect on the date of the enactment of this Act and shall apply to any action in which the Office files a complaint on or after such date of enactment. Paragraph
(8)of section 316(a) of title 35, United States Code, is amended by striking the petition under section 313 and inserting the petition under section 311 . Paragraph
(8)of section 326(a) of title 35, United States Code, is amended by striking the petition under section 323 and inserting the petition under section 321 . The amendments made by this paragraph shall take effect on the date of the enactment of this Act. Section 202(b) of the Patent Law Treaties Implementation Act of 2012 ( Public Law 112–211 ; 126 Stat. 1536) is amended— by striking paragraph (7); and by redesignating paragraphs
(8)and
(9)as paragraphs
(7)and (8), respectively. The amendments made by subparagraph
(A)shall be effective as if included in title II of the Patent Law Treaties Implementation Act of 2012 ( Public Law 112–21 ).
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- Pub. L. 112-29
- 126 Stat. 329
- Pub. L. 111-349
- 124 Stat. 3674
- 125 Stat. 297
- Pub. L. 112-211
- 126 Stat. 1536
- Pub. L. 112-21
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Sec. 9
Improvements and technical corrections to the Leahy-Smith America Invents Act
Pub. L.Pub. L. 112-29
Stat.126 Stat. 329
Pub. L.Pub. L. 111-349
Stat.124 Stat. 3674
Stat.125 Stat. 297
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