S. 2774 – Reading Mode

117th CONGRESS

1st Session

S. 2774

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.

Short title

This Act may be cited as the Pride in Patent Ownership Act.

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:

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)

(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)

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.