With confetti still lingering in the air Congress passed H.R. 6621 which includes many technical amendments to the America Invents Act.  The passing of H.R. 6621 was not without a small amount of controversy as a section dealing with still pending and unpublished pre-GATT applications was ultimately removed from the Bill.  As originally drafted, the Bill would have altered the term for such applications still pending one year from the Bill’s implementation date, effectively killing a majority of pre-GATT applications.  The section was first amended to require only that a report on still-pending pre-GATT applications be sent to congress including the inventor identities, before the Senate removed the section completely in the version ultimately passed by both houses. Some highlights of the Bill that did pass are discussed below.

 Dead-Zones: H.R. 6621 allows inter partes reviews to be filed at any time for issued patents with effective filing dates before March 16, 2013.

 Oath or Declaration: H.R. 6621 allows for an oath or declaration, substitute statement, or assignment, to be filed “no later than the date on which the issue fee for the patent is paid.”

 Patent Term Adjustment: H.R. 6621 clarifies that patent term adjustment accumulates only on “commencement of the national stage under section 371 in an international application.”  The Bill also requires that patent term adjustment be calculated with the issuance rather than at the notice of allowance.  Finally, the Bill clarifies that patent term adjustment decisions may only be challenged by filing in the Eastern District of Virginia.

 Improper Applicant: H.R. 6621 eliminates 35 U.S.C. 373 which restricts who may file international PCT applications at the USPTO.

 Patent and Trademark Fee Allocation: H.R. 6621 eliminates the requirement that patent fees be used to cover “administrative costs of the Office relating to patents” and a similar restriction relating to trademark fees.

 Derivation Proceeding: H.R. 6621 alters the timing for filing a petition to institute a derivation proceeding and includes a definition of the term “earlier application.”  The Bill also clarifies that interferences declared after September 15, 2012 are subject to the pre-AIA provisions of the Patent Act governing the Board of Patent Appeals and Interferences and appeals to the Court of Appeals for the Federal Circuit.