[Congressional Record Volume 165, Number 107 (Tuesday, June 25, 2019)]
[Senate]
[Pages S4518-S4519]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]
SA 895. Mr. RUBIO submitted an amendment intended to be proposed to
amendment SA 764 proposed by Mr. Inhofe to the bill S. 1790, to
authorize appropriations for fiscal year 2020 for military activities
of the Department of Defense, for military construction, and for
defense activities of the Department of Energy, to prescribe military
personnel strengths for such fiscal year, and for other purposes; which
was ordered to lie on the table; as follows:
At the end of subtitle H of title X, add the following:
SEC. __. COVERED INFRINGEMENT ACTIONS.
(a) Definitions.--In this section--
(1) the term ``affected proceeding'' means an action for
patent infringement 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 patent infringement shall, with
respect to any 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,
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 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.
[[Page S4519]]
(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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