[Congressional Bills 116th Congress]
[From the U.S. Government Publishing Office]
[S. 2178 Introduced in Senate (IS)]
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116th CONGRESS
1st Session
S. 2178
To impose requirements in certain actions for patent infringement, and
for other purposes.
_______________________________________________________________________
IN THE SENATE OF THE UNITED STATES
July 18, 2019
Mr. Rubio (for himself and Mr. Cornyn) introduced the following bill;
which was read twice and referred to the Committee on the Judiciary
_______________________________________________________________________
A BILL
To impose requirements in certain actions for patent infringement, and
for other purposes.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ``Prevent Abuse of the Legal System
Act'' or the ``PALS Act''.
SEC. 2. COVERED INFRINGEMENT ACTIONS.
(a) Definitions.--In this section--
(1) the term ``affected proceeding'' means an action for
infringement of a patent under title 35, United States Code, an
investigation under section 337 of the Tariff Act of 1930 (19
U.S.C. 1337), or any other administrative or judicial
proceeding in which--
(A) a patent issued by the United States Patent and
Trademark Office is a subject of the proceeding; and
(B) a designated entity--
(i) is the owner or exclusive licensee of
the patent described in subparagraph (A);
(ii) has a financial interest in the
outcome of the proceeding; or
(iii) has direct or indirect control over
the conduct of the litigation of the matter by
the holder of the patent described in
subparagraph (A);
(2) the term ``covered regulations'' means the Export
Administration Regulations under subchapter C of chapter VII of
title 15, Code of Federal Regulations; and
(3) the term ``designated entity'' means--
(A) an entity on the entity list maintained by the
Bureau of Industry and Security of the Department of
Commerce and set forth in Supplement No. 4 to part 744
of title 15, Code of Federal Regulations; or
(B) any parent, subsidiary, or affiliate of an
entity described in subparagraph (A).
(b) Conduct of Affected Proceedings.--Notwithstanding any other
provision of law or regulation, the following requirements shall apply
with respect to an affected proceeding:
(1) The pleadings alleging infringement of the patent
shall, with respect to each patent in which a designated entity
has an interest--
(A) state with particularity the facts and
circumstances constituting that infringement,
including--
(i) all patent claims alleged to be
infringed; and
(ii) all products and services alleged to
be infringed;
(B) provide a detailed identification of the
specific elements of each patent claim that is found in
each product and service identified under subparagraph
(A)(ii); and
(C) state with particularity all damages or other
remedies sought in the proceeding.
(2) Excluding legal counsel for the designated entity
involved, neither the designated entity nor the agents or
representatives of the designated entity may obtain through
discovery, or by other means, any non-public information of any
entity or person related to any technical features or operation
of a product or service.
(3) Upon the filing of the affected proceeding, the
designated entity involved shall provide notice of the
proceeding to the Department of Justice and the United States
Patent and Trademark Office.
(4) The United States shall have the unconditional right to
intervene as a party in the proceeding under rule 24(a) of the
Federal Rules of Civil Procedure.
(c) Restrictions on Certain Patent Transactions.--Notwithstanding
any other provision of law or regulation, the following requirements
shall apply with respect to the sale or exclusive license of a patent
issued by the United States Patent and Trademark Office:
(1) The sale or license is prohibited if the sale or
license is to a designated entity and the entity has not
undergone review under section 721 of the Defense Production
Act of 1950 (50 U.S.C. 4565).
(2) The sale or license is prohibited if the sale or
license is to or by a designated entity and the manufacture,
sale, use, import, or export of a product or service that is
subject to the covered regulations would infringe the patent,
unless an appropriate license is granted under the covered
regulations.
(3) With respect to a patent not involving a drug or
biological product, the sale or license of the patent to or by
a designated entity to any foreign entity or affiliate shall
require notification pursuant to rules under subsection (d)(1),
and the waiting period described in subsection (b)(1), of
section 7A of the Clayton Act (15 U.S.C. 18a), notwithstanding
any other provision of that Act.
(d) List.--The Under Secretary of Commerce for Intellectual
Property and Director of the United States Patent and Trademark Office
shall maintain a publicly available list of all designated entities.
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