I 

116TH CONGRESS 

1ST SESSION H. R. 5478 

To amend title 35, United States Code, restore patent rights to inventors, 

and for other purposes. 

IN THE HOUSE OF REPRESENTATIVES 

DECEMBER 18, 2019 

Mr. DANNY K. DAVIS of Illinois (for himself and Mr. GOSAR) introduced the 

following bill; which was referred to the Committee on the Judiciary 

A BILL 

To amend title 35, United States Code, restore patent rights 

to inventors, and for other purposes. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE. 

4 This Act may be cited as the ‘‘Inventor Rights Act’’. 

5 SEC. 2. FINDINGS. 

6 Congress finds the following: 

7 (1) Inventors have contributed significantly to 

8 innovation in the United States and their continued 

9 dedication to inventing and sharing solutions to 

10 modern technical challenges is essential for the 


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1 United States to maintain leadership in the global 

2 economy. 

3 (2) Inventors, not employees or investors, are 

4 the source of innovation intended by the Constitu5 tion (‘‘securing to inventors’’) and the Patent Act 

6 ‘‘(Whoever invents or discovers . . . may obtain a 

7 patent therefore . . .)’’. 

8 (3) Recent changes to patent laws and proce9 dures and Supreme Court decisions have adversely 

10 affected inventors such that the promise of Article 1, 

11 section 8 of the Constitution of ‘‘securing for limited 

12 times to inventors the exclusive right to their discov13 eries’’ is no longer attainable. 

14 (4) Inventors are denied the fundamental right 

15 to ‘‘exclude others’’ by the Supreme Court’s 2006 

16 decision in eBay Inc. v. MercExchange, LLC. 

17 (5) Inventors were stripped of the right to file 

18 suit in their own judicial district by the Supreme 

19 Court’s 2017 decision in TC Heartland LLC v. 

20 Kraft Foods Group Brands LLC. 

21 (6) Issued patents fail to secure to inventors 

22 their exclusive rights because— 

23 (A) the Patent Trial and Appeal Board in24 stitutes trials in over 60 percent of cases and 


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1 invalidates one or more claims in over 80 per2 cent of trials which reach a final decision; 

3 (B) many patents are subjected to multiple 

4 post issuance reviews; or 

5 (C) most inventors cannot afford the costs 

6 of defending a patent challenged in a single 

7 post issuance review, as these costs can reach 

8 hundreds of thousand of dollars. 

9 (7) Infringement trials can cost tens of millions 

10 of dollars and can take up to ten years to reach a 

11 final judgment after all appeals, making legal relief 

12 unattainable for inventors. 

13 (8) These obstacles have given rise to an ‘‘effi14 cient infringement’’ business model whereby large 

15 corporations infringe patent rights held by inventors 

16 without concern for any legal consequences. 

17 (9) Patent protection has led to patient cures, 

18 positive changes to the standard of living for all peo19 ple in the United States, and improvements to the 

20 agricultural, telecommunications, software, biotech, 

21 pharmaceutical and electronics industries, among 

22 others. 


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1 SEC. 3. INVENTOR PROTECTIONS. 

2 (a) INVENTOR-OWNED PATENT.—Section 100 of title 

3 35, United States Code, is amended by adding at the end 

4 the following: 

5 ‘‘(k) The term ‘inventor-owned patent’ means a pat6 ent with respect to which the inventor of the invention 

7 claimed by the patent or an entity controlled by that in8 ventor— 

9 ‘‘(1) is the patentee; and 

10 ‘‘(2) holds all substantial rights.’’. 

11 (b) INVENTOR-OWNED PATENT PROTECTIONS.— 

12 Chapter 32 of title 35, United States Code, is amended 

13 by adding at the end the following new section: 

14 ‘‘§ 330. Inventor protections 

15 ‘‘(a) PROTECTION FROM POST ISSUANCE PRO16 CEEDINGS IN THE UNITED STATES PATENT AND TRADE17 MARK OFFICE.—The United States Patent and Trade18 mark Office shall not undertake a proceeding to reexam19 ine, review, or otherwise make a determination about the 

20 validity of an inventor-owned patent without the consent 

21 of the patentee. 

22 ‘‘(b) CHOICE OF VENUE.—Any civil action for in23 fringement of an inventor-owned patent or any action for 

24 a declaratory judgment that an inventor-owned patent is 

25 invalid or not infringed may be brought in a judicial dis26 trict— 


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1 ‘‘(1) in accordance with section 1400(b) of title 

2 28; 

3 ‘‘(2) where the defendant has agreed or con4 sented to be sued in the instant action; 

5 ‘‘(3) where an inventor named on the patent in 

6 suit conducted research or development that led to 

7 the application for the patent in suit; 

8 ‘‘(4) where a party has a regular and estab9 lished physical facility that such party controls and 

10 operates, not primarily for the purpose of creating 

11 venue, and has— 

12 ‘‘(A) engaged in management of significant 

13 research and development of an invention 

14 claimed in a patent in suit prior to the effective 

15 filing date of the patent; 

16 ‘‘(B) manufactured a tangible good that is 

17 alleged to embody an invention claimed in a 

18 patent in suit; or 

19 ‘‘(C) implemented a manufacturing process 

20 for a tangible good in which the process is al21 leged to embody an invention claimed in a pat22 ent in suit; or 

23 ‘‘(5) in the case of a foreign defendant that 

24 does not meet the requirements of section 1400(b) 


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1 of title 28, in accordance with section 1391(c)(3) of 

2 such title. 

3 ‘‘(c) INJUNCTION.— 

4 ‘‘(1) PRESUMPTION.—Upon a finding by a 

5 court of infringement of an inventor-owned patent 

6 not proven invalid or unenforceable, the court shall 

7 presume, respectively, that— 

8 ‘‘(A) further infringement of the patent 

9 would cause irreparable injury; and 

10 ‘‘(B) remedies available at law are inad11 equate to compensate for that injury. 

12 ‘‘(2) OVERCOMING THE PRESUMPTION.—A pre13 sumption described under subparagraphs (A) or (B) 

14 of paragraph (1) may be overcome if the infringing 

15 party shows clear and convincing evidence that the 

16 patentee would not be irreparably harmed by further 

17 infringement of the patent, including evidence of un18 reasonable delay by the patentee from the date on 

19 which the infringement was known or reasonably 

20 could have been known to the patentee. 

21 ‘‘(d) RECOVERY.—A patentee that asserts a claim for 

22 infringement of an inventor-owned patent in a civil action 

23 under subsection (a), (b), (c), (f), or (g) of section 271 

24 may elect, at any time before final judgment is entered 

25 by the court, recovery under this subsection in lieu of damVerDate Sep 11 2014 00:09 Dec 28, 2019 Jkt 099200 PO 00000 Frm 00006 Fmt 6652 Sfmt 6201 E:\BILLS\H5478.IH H5478

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1 ages under section 284. If an election for recovery under 

2 this subsection is made, the following provisions apply 

3 upon a finding of infringement: 

4 ‘‘(1) PROFIT DISGORGEMENT.—The court shall 

5 award the patentee the profits from the use made of 

6 the invention by the infringer. In assessing profits 

7 the patentee shall be required to prove only the in8 fringer’s revenues resulting from the infringement; 

9 the infringer must prove all elements of cost or de10 duction claimed. 

11 ‘‘(2) INTEREST AND COSTS.—The court shall 

12 award the patentee the costs described under section 

13 1920 of title 28. 

14 ‘‘(3) INFRINGEMENT FOUND WILLFUL.—If the 

15 court finds the infringement to be willful, the court 

16 may award the patentee damages equal to no more 

17 than three times the amount of the profits found in 

18 paragraph (1). 

19 ‘‘(4) ATTORNEYS FEES.—The court shall award 

20 the patentee any amount of their attorneys fees that 

21 exceeds 10 percent of the amount of the profits and 

22 damages of paragraphs (1) to (3).’’. 

23 (c) TECHNICAL AND CONFORMING AMENDMENT.— 

24 The table of sections for chapter 32 of title 35, United 


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1 States Code, is amended by adding at the end the fol2 lowing: 

‘‘330. Inventor protections.’’. 

Æ 


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