Sec. 4. Transparency of patent ownership
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/bill/114/hr/9/ih/section-4A research copy — for the controlling text, always check the official state or federal source. Not legal advice.
Section 290 of title 35, United States Code, is amended— in the heading, by striking and inserting suits ; suits; disclosure of interests by striking The clerks and inserting
(a); and Notice of patent suits.— The clerks by adding at the end the following new subsections: Except as provided in paragraph (2), upon the filing of an initial complaint for patent infringement, the plaintiff shall disclose to the Patent and Trademark Office, the court, and each adverse party the identity of each of the following: The assignee of the patent or patents at issue. Any entity with a right to sublicense or enforce the patent or patents at issue. Any entity, other than the plaintiff, that the plaintiff knows to have a financial interest in the patent or patents at issue or the plaintiff. The ultimate parent entity of any assignee identified under subparagraph
(A)and any entity identified under subparagraph
(B)or (C). The requirements of paragraph
(1)shall not apply with respect to a civil action filed under subsection
(a)that includes a cause of action described under section 271(e)(2). For purposes of subsection (b)(1)(C), if the financial interest is held by a corporation traded on a public stock exchange, an identification of the name of the corporation and the public exchange listing shall satisfy the disclosure requirement. For purposes of subsection (b)(1)(C), if the financial interest is not held by a publicly traded corporation, the disclosure shall satisfy the disclosure requirement if the information identifies— in the case of a partnership, the name of the partnership and the name and correspondence address of each partner or other entity that holds more than a 5-percent share of that partnership; in the case of a corporation, the name of the corporation, the location of incorporation, the address of the principal place of business, and the name of each officer of the corporation; and for each individual, the name and correspondence address of that individual. A plaintiff required to submit information under subsection
(b)or a subsequent owner of the patent or patents at issue shall, not later than 90 days after any change in the assignee of the patent or patents at issue or an entity described under subparagraph
(B)or
(D)of subsection (b)(1), submit to the Patent and Trademark Office the updated identification of such assignee or entity. With respect to a patent for which the requirement of paragraph
(1)has not been met— the plaintiff or subsequent owner shall not be entitled to recover reasonable fees and other expenses under section 285 or increased damages under section 284 with respect to infringing activities taking place during any period of noncompliance with paragraph (1), unless the denial of such damages or fees would be manifestly unjust; and the court shall award to a prevailing party accused of infringement reasonable fees and other expenses under section 285 that are incurred to discover the updated assignee or entity described under paragraph (1), unless such sanctions would be unjust. In this section: The term financial interest — means— with regard to a patent or patents, the right of a person to receive proceeds related to the assertion of the patent or patents, including a fixed or variable portion of such proceeds; and with regard to the plaintiff, direct or indirect ownership or control by a person of more than 5 percent of such plaintiff; and does not mean— ownership of shares or other interests in a mutual or common investment fund, unless the owner of such interest participates in the management of such fund; or the proprietary interest of a policyholder in a mutual insurance company or of a depositor in a mutual savings association, or a similar proprietary interest, unless the outcome of the proceeding could substantially affect the value of such interest. The term proceeding means all stages of a civil action, including pretrial and trial proceedings and appellate review. Except as provided in subparagraph (B), the term ultimate parent entity has the meaning given such term in section 801.1(a)(3) of title 16, Code of Federal Regulations, or any successor regulation. The Director may modify the definition of ultimate parent entity by regulation. . The item relating to section 290 in the table of sections for chapter 29 of title 35, United States Code, is amended to read as follows: 290. Notice of patent suits; disclosure of interests. . The Director may promulgate such regulations as are necessary to establish a registration fee in an amount sufficient to recover the estimated costs of administering subsections
(b)through
(e)of section 290 of title 35, United States Code, as added by subsection (a), to facilitate the collection and maintenance of the information required by such subsections, and to ensure the timely disclosure of such information to the public. The amendments made by this section shall take effect upon the expiration of the 6-month period beginning on the date of the enactment of this Act and shall apply to any action for which a complaint is filed on or after such effective date.