[Congressional Record Volume 168, Number 150 (Monday, September 19, 2022)]
[Senate]
[Pages S4827-S4828]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

  SA 5506. Mr. LEAHY (for himself and Mr. Tillis) submitted an 
amendment intended to be proposed to amendment SA 5499 submitted by Mr. 
Reed (for himself and Mr. Inhofe) and intended to be proposed to the 
bill H.R. 7900, to authorize appropriations for fiscal year 2023 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 appropriate place, insert the following:

     SEC. ___. PRIDE IN PATENT OWNERSHIP.

       (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 that names the entity providing that funding.
       ``(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 patent owner shall file a separate statement that 
     names the entity providing that funding.''; 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 another person, 
     including a governmental or legal entity--
       ``(i) the patent owner shall submit, or cause to be 
     submitted, a request described in paragraph (2), unless such 
     a request was submitted before the issuance of the patent;
       ``(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 patent owner regarding any error in the 
     request, consistent with the requirements under clauses (iii) 
     and (iv), as applicable; or
       ``(II) record the interest in the register described in 
     paragraph (2);

       ``(iii) with respect to a request submitted under clause 
     (i) that the Office identifies as containing an error that 
     can be corrected without having to change the date of 
     submission of the original request, as determined by the 
     Office, the Office shall allow the submitting party to file a 
     corrected request not later than 60 days after the date on 
     which the Office notifies the submitting party regarding the 
     error; and
       ``(iv) in the case of a submitting party that receives an 
     error notice from the Office, as described in clause (ii)(I), 
     and fails to file a corrected request during the 60-day 
     period described in clause (iii), the date on which the 
     submitting party ultimately files the corrected request shall 
     be deemed to be the date of submission of the original 
     request.
       ``(B) Effect of failure to comply.--
       ``(i) In general.--Except as provided in clause (iii), if 
     the conditions described in subclause (I) of clause (ii) 
     apply with respect to a patent, no party may recover, for 
     infringement of the patent in any action, increased monetary 
     damages under section 284 during the period beginning on the 
     date that is 121 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 
     the ownership, assignment, grant, or conveyance of the patent 
     is properly requested to be recorded under paragraph (2).
       ``(ii) Conditions.--

       ``(I) In general.--The conditions described in this 
     subclause with respect to a patent are as follows:

       ``(aa) A party asserts the patent against an alleged 
     infringer through a civil complaint, demand letter, or 
     otherwise.
       ``(bb) Any of the following:
       ``(AA) The patent owner fails to comply with subparagraph 
     (A)(i) with an intent to deceive a member of the public.
       ``(BB) The alleged infringer has reasonably relied in the 
     course of business on a failure

[[Page S4828]]

     by the patent owner to comply with subparagraph (A)(i).
       ``(CC) The party asserting the patent does not 
     substantially match the entity with a recorded right to 
     assert the patent and the alleged infringer suffers prejudice 
     as a result of that discrepancy.
       ``(DD) The failure of the patent owner to comply with 
     subparagraph (A)(i) conceals a separate legal or regulatory 
     error, such as an improper Federal tax payment or the 
     misapplication of section 337(a)(2) of the Tariff Act of 1930 
     (19 U.S.C. 1337(a)(2)).

       ``(II) Affirmative defense.--A person that, in any action, 
     is alleged to have infringed a patent may plead, as an 
     affirmative defense in that action, that the conditions 
     described in subclause (I) are applicable with respect to the 
     alleged infringement of the patent.

       ``(iii) Exception.--

       ``(I) In general.--This subparagraph shall not apply if--

       ``(aa) the applicable patent owner, as of the date that the 
     application for the patent was submitted, was an entity to 
     which section 41(h)(1) applies;
       ``(bb) the party asserting the patent would qualify as an 
     entity to which section 41(h)(1) applies, as of the date on 
     which the entity asserts the patent, if that party were to 
     file a patent application; and
       ``(cc) the party asserting the patent has been the owner, 
     assignee, or exclusive licensee of not more than 20 patents, 
     as of the date on which the party asserts the patent.

       ``(II) Burden.--A patent owner shall have the burden of 
     establishing in an action that the elements described in 
     subclause (I) apply.'';

       (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) Amendments regarding government funding of patent 
     applications and maintenance fees; technical and conforming 
     amendment.--The amendments made by paragraphs (1)(A) and (2) 
     shall take effect on the date that is 2 years 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 date that is 2 years after the date 
     of enactment of this Act; 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, which shall include 
     examples of types of rights or interests that--
       (i) are required to be recorded under such subsection 
     (a)(3), such as patent assignments and exclusive licenses; 
     and
       (ii) are not required to be recorded under such subsection 
     (a)(3), such as ownership of less than 10 percent of a 
     patent.
       (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);
       (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, if the amended request 
     is filed not later than 60 days after the date on which the 
     Director notifies the submitting party regarding the error; 
     and
       (ii) which types of errors described in subparagraph (A)(i) 
     must result in a new request with a new submission date; and
       (C) require the recording of any parent corporation when an 
     interest in a patent is recorded.
       (3) Implement section 124 of title 35, United States Code, 
     as added by subsection (a)(1) of this section.
       (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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