S.Amdt. 5506

1. Adds SEC. ___. PRIDE IN PATENT OWNERSHIP wherever appropriate

   Adds a section

   Inserted: SEC. ___. PRIDE IN PATENT OWNERSHIP.

   Inserted: (a) Amendments to Title 35.--

   Inserted: (1) In general.--Title 35, United States Code, is amended--

   Inserted: (A) in chapter 11, by adding at the end the following:

   Inserted: "Sec. 124. Government funding of patent applications and

   Inserted: maintenance fees

   Inserted: "(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.

   Inserted: "(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

   Inserted: (B) in section 261--

   Inserted: (i) by striking the first undesignated paragraph and inserting the following:

   Inserted: "(a) In General.--

   Inserted: "(1) Attributes of personal property.--Subject to the provisions of this title, patents shall have the attributes of personal property.

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   Inserted: "(2) Register of interests.--

   Inserted: "(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.

   Inserted: "(B) Public availability.--The Office shall make the information described in subparagraph (A) publicly accessible, to the extent permitted by law.

   Inserted: "(3) Requirement to record certain assignments and other interests.--

   Inserted: "(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--

   Inserted: "(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;

   Inserted: "(ii) the Office shall, not later than 60 days after the date on which the Office receives a request submitted under clause (i)--

   Inserted: "(I) notify the patent owner regarding any error in the request, consistent with the requirements under clauses (iii) and (iv), as applicable; or

   Inserted: "(II) record the interest in the register described in paragraph (2);

   Inserted: "(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

   Inserted: "(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.

   Inserted: "(B) Effect of failure to comply.--

   Inserted: "(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).

   Inserted: "(ii) Conditions.--

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

   Inserted: "(aa) A party asserts the patent against an alleged infringer through a civil complaint, demand letter, or otherwise.

   Inserted: "(bb) Any of the following:

   Inserted: "(AA) The patent owner fails to comply with subparagraph (A)(i) with an intent to deceive a member of the public.

   Inserted: "(BB) The alleged infringer has reasonably relied in the course of business on a failure by the patent owner to comply with subparagraph (A)(i).

   Inserted: "(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.

   Inserted: "(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)).

   Inserted: "(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.

   Inserted: "(iii) Exception.--

   Inserted: "(I) In general.--This subparagraph shall not apply if--

   Inserted: "(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;

   Inserted: "(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

   Inserted: "(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.

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

   Inserted: (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:

   Inserted: "(b) Applications and Patents Assignable.--Applications";

   Inserted: (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:

   Inserted: "(c) Certificate of Acknowledgment.--A certificate"; and

   Inserted: (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:

   Inserted: "(d) Effect of Assignment.--An interest".

   Inserted: (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:

   Inserted: "124. Government funding of patent applications and maintenance fees.".

   Inserted: (3) Effective dates; applicability.--

   Inserted: (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.

   Inserted: (B) Amendments regarding ownership and assignment.--

   Inserted: (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.

   Inserted: (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--

   Inserted: (I) take effect on the date that is 2 years after the date of enactment of this Act; and

   Inserted: (II) apply with respect to any patent issuance, assignment, grant, or conveyance that occurs on or after the effective date described in subclause (I).

   Inserted: (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:

   Inserted: (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--

   Inserted: (i) are required to be recorded under such subsection (a)(3), such as patent assignments and exclusive licenses; and

   Inserted: (ii) are not required to be recorded under such subsection (a)(3), such as ownership of less than 10 percent of a patent.

   Inserted: (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.

   Inserted: (2) Establish procedures for the proper recording of interests in patents that--

   Inserted: (A) provide for--

   Inserted: (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

   Inserted: (ii) an opportunity to correct an error described in clause (i);

   Inserted: (B) describe--

   Inserted: (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

   Inserted: (ii) which types of errors described in subparagraph (A)(i) must result in a new request with a new submission date; and

   Inserted: (C) require the recording of any parent corporation when an interest in a patent is recorded.

   Inserted: (3) Implement section 124 of title 35, United States Code, as added by subsection (a)(1) of this section.

   Inserted: (4) Otherwise implement the amendments made by subsection (a)(1).

   Inserted: (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.

   The amendment doesn't say where this goes; the clerk decides.

   Original wording

   At the appropriate place, insert the following:

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As printed