[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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