[Congressional Bills 117th Congress]
[From the U.S. Government Publishing Office]
[S. 2774 Introduced in Senate (IS)]

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117th CONGRESS
  1st Session
                                S. 2774

To amend title 35, United States Code, to address patent ownership, and 
                          for other purposes.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                           September 21, 2021

 Mr. Leahy (for himself and Mr. Tillis) introduced the following bill; 
  which was read twice and referred to the Committee on the Judiciary

_______________________________________________________________________

                                 A BILL


 
To amend title 35, United States Code, to address patent ownership, 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 ``Pride in Patent Ownership Act''.

SEC. 2. PATENTS.

    (a) Amendments to Title 35.--
            (1) In general.--Title 35, United States Code, is amended--
                    (A) in chapter 11, by adding at the end the 
                following:
``Sec. 124. Government funding of patent applications and maintenance 
              fees
    ``(a) Government Funding of Patent Applications.--For any 
application for patent, if any governmental entity, including a foreign 
governmental entity, provides funding specifically for the purpose of 
paying fees to the Office under section 41, or specifically for the 
purpose of paying an attorney or patent agent for prosecution of the 
application, the application shall include, or be amended to include, a 
statement describing the amount and source of the funding provided by 
the entity.
    ``(b) Government Funding of Maintenance Fees.--For any patent, if 
any governmental entity, including a foreign governmental entity, 
provides funding specifically for the purpose of paying maintenance 
fees to the Office under section 41, or specifically for the purpose of 
paying an attorney or patent agent for submitting those maintenance 
fees, the patentee shall file a separate statement describing the 
amount and source of the funding provided by the entity.''; and
                    (B) in section 261--
                            (i) by striking the first undesignated 
                        paragraph and inserting the following:
    ``(a) In General.--
            ``(1) Attributes of personal property.--Subject to the 
        provisions of this title, patents shall have the attributes of 
        personal property.
            ``(2) Register of interests.--
                    ``(A) In general.--The Patent and Trademark Office 
                shall maintain a register of interests in patents and 
                applications for patents and shall record any document 
                related thereto upon request, and may require a fee 
                therefor.
                    ``(B) Public availability.--The Office shall make 
                the information described in subparagraph (A) publicly 
                accessible, to the extent permitted by law.
            ``(3) Requirement to record certain assignments and other 
        interests.--
                    ``(A) In general.--Whenever a patent issues, or 
                certain rights or interests in a patent (as defined by 
                the Director) are assigned, granted, or conveyed to any 
                person, including a governmental or legal entity, 
                including a parent corporation--
                            ``(i) the patentee shall, not later than 90 
                        days after the effective date of the issuance, 
                        assignment, grant, or conveyance, as 
                        applicable, submit, or cause to be submitted, a 
                        request described in paragraph (2), unless such 
                        a request was submitted before the issuance of 
                        the patent; and
                            ``(ii) the Office shall, not later than 60 
                        days after the date on which the Office 
                        receives a request submitted under clause (i)--
                                    ``(I) notify the patentee regarding 
                                any error in the request; or
                                    ``(II) record the interest in the 
                                register described in paragraph (2).
                    ``(B) Effect of failure to comply.--If a patentee 
                fails to comply with subparagraph (A)(i), no party may 
                recover, for infringement of the applicable patent in 
                any action, increased monetary damages under section 
                284 during the period beginning on the date that is 91 
                days after the effective date of the issuance, 
                assignment, grant, or conveyance with respect to the 
                patent, as applicable, and ending on the date on which 
                that issuance, assignment, grant, or conveyance is 
                properly requested to be recorded under paragraph 
                (2).'';
                            (ii) in the first undesignated paragraph 
                        following subsection (a), as so designated by 
                        clause (i) of this subparagraph, by striking 
                        ``Applications'' and inserting the following:
    ``(b) Applications and Patents Assignable.--Applications'';
                            (iii) in the first undesignated paragraph 
                        following subsection (b), as so designated by 
                        clause (ii) of this subparagraph, by striking 
                        ``A certificate'' and inserting the following:
    ``(c) Certificate of Acknowledgment.--A certificate''; and
                            (iv) in the undesignated paragraph 
                        following subsection (c), as so designated by 
                        clause (iii) of this subparagraph, by striking 
                        ``An interest'' and inserting the following:
    ``(d) Effect of Assignment.--An interest''.
            (2) Technical and conforming amendment.--The table of 
        sections for chapter 11 of title 35, United States Code, is 
        amended by adding at the end the following:

``124. Government funding of patent applications and maintenance 
                            fees.''.
            (3) Effective dates; applicability.--
                    (A) In general.--Except as provided in subparagraph 
                (B), the amendments made by this subsection shall take 
                effect on the date that is 1 year after the date of 
                enactment of this Act.
                    (B) Amendments regarding ownership and 
                assignment.--
                            (i) In general.--Except as provided in 
                        clause (ii), the amendments made by paragraph 
                        (1)(B) shall take effect on the date of 
                        enactment of this Act.
                            (ii) Requirement to record assignments and 
                        certain other interests.--Paragraph (3) of 
                        subsection (a) of section 261 of title 35, 
                        United States Code, as so designated by 
                        paragraph (1)(B)(i) of this subsection, shall--
                                    (I) take effect on the effective 
                                date described in subparagraph (A); and
                                    (II) apply with respect to any 
                                patent issuance, assignment, grant, or 
                                conveyance that occurs on or after the 
                                effective date described in subclause 
                                (I).
    (b) Rules.--Not later than 1 year after the date of enactment of 
this Act, the Under Secretary of Commerce for Intellectual Property and 
Director of the United States Patent and Trademark Office (referred to 
in this section as the ``Director'') shall issue rules that accomplish 
the following:
            (1)(A) Define the term ``certain rights or interests in a 
        patent'' for the purposes of subsection (a)(3) of section 261 
        of title 35, United States Code, as so designated by subsection 
        (a)(1) of this section.
            (B) For the purposes of subparagraph (A), the Director may 
        review rules defining the term ``beneficial owner'' issued by 
        other Federal entities and agencies, including the Committee on 
        Foreign Investment in the United States, the Department of the 
        Treasury, and the Securities and Exchange Commission.
            (2) Establish procedures for the proper recording of 
        interests in patents that--
                    (A) provide for--
                            (i) notice of any error in a request 
                        submitted under subsection (a)(2) of section 
                        261 of title 35, United States Code, as so 
                        designated by subsection (a)(1) of this 
                        section; and
                            (ii) an opportunity to correct an error 
                        described in clause (i) not later than 60 days 
                        after the date on which the Director notifies 
                        the submitting party regarding the error; and
                    (B) describe--
                            (i) which types of errors described in 
                        subparagraph (A)(i) are eligible for correction 
                        without having to change the date of submission 
                        of the original request; and
                            (ii) which types of errors described in 
                        subparagraph (A)(i) must result in a new 
                        request with a new submission date.
            (3) Implement section 124 of title 35, United States Code, 
        as added by subsection (a)(1) of this section, including by 
        imposing a penalty for a failure to disclose funding provided 
        by a governmental entity, as required under such section 124.
            (4) Otherwise implement the amendments made by subsection 
        (a)(1).
    (c) Register.--Not later than 2 years after the date of enactment 
of this Act, the Director shall, with respect to the register described 
in subsection (a)(2) of section 261 of title 35, United States Code, as 
so designated by subsection (a)(1) of this section, create a publicly 
accessible database that is digitally searchable with fields based on 
patent number, assignee, assignor, assignment date, and other criteria 
determined by the Director.
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