II 

116TH CONGRESS 

1ST SESSION S. 440 

To amend title 35, United States Code, to provide that a patent owner 

may not assert sovereign immunity as a defense in certain actions before 

the United States Patent and Trademark Office, and for other purposes. 

IN THE SENATE OF THE UNITED STATES 

FEBRUARY 12, 2019 

Mr. COTTON (for himself, Ms. ERNST, and Mr. TOOMEY) 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 provide that 

a patent owner may not assert sovereign immunity as 

a defense in certain actions before the United States 

Patent and Trademark Office, 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 ‘‘Preserving Access to 

5 Cost Effective Drugs Act’’ or the ‘‘PACED Act’’. 

6 SEC. 2. ABROGATION OF SOVEREIGN IMMUNITY. 

7 (a) IN GENERAL.—Title 35, United States Code, is 

8 amended— 


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1 (1) in section 135, by adding at the end the fol2 lowing: 

3 ‘‘(g) SOVEREIGN IMMUNITY.— 

4 ‘‘(1) DEFINITIONS.—In this subsection— 

5 ‘‘(A) the term ‘foreign state’ has the mean6 ing given the term in section 1603(a) of title 

7 28; and 

8 ‘‘(B) the term ‘Indian tribe’ has the mean9 ing given the term in section 4(e) of the Indian 

10 Self-Determination and Education Assistance 

11 Act (25 U.S.C. 5304(e)). 

12 ‘‘(2) ABROGATION OF SOVEREIGN IMMUNITY.— 

13 Except as provided in paragraph (3), and subject to 

14 paragraph (4), a patent owner may not assert sov15 ereign immunity, including the sovereign immunity 

16 accorded to an Indian tribe, as a defense in— 

17 ‘‘(A) a derivation proceeding instituted 

18 under subsection (a); or 

19 ‘‘(B) a review by a court of the United 

20 States with respect to a decision reached in a 

21 proceeding described in subparagraph (A). 

22 ‘‘(3) IMMUNITY OF FOREIGN STATES.—If a pat23 ent owner is a foreign state, for the purposes of any 

24 proceeding described in paragraph (2)(A), the Pat25 ent Trial and Appeal Board shall determine whether 


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1 the patent owner is immune from the jurisdiction of 

2 the Patent Trial and Appeal Board, in accordance 

3 with chapter 97 of title 28 as if the Patent Trial and 

4 Appeal Board were a court of the United States. 

5 ‘‘(4) LIMITATION.—This subsection shall apply 

6 only to the extent permitted under the 11th amend7 ment to the Constitution of the United States.’’; 

8 (2) in section 296— 

9 (A) in the section heading, by striking 

10 ‘‘and State officials’’ and inserting ‘‘, 

11 State officials, and Indian tribes’’; and 

12 (B) by adding at the end the following: 

13 ‘‘(c) ABROGATION OF TRIBAL SOVEREIGN IMMU14 NITY.— 

15 ‘‘(1) DEFINITIONS.—In this subsection— 

16 ‘‘(A) the term ‘covered claim’ means any 

17 claim, counterclaim, or third-party claim that 

18 arises under— 

19 ‘‘(i) this title relating to infringement 

20 of a patent; or 

21 ‘‘(ii) section 351 of the Public Health 

22 Service Act (42 U.S.C. 262); and 

23 ‘‘(B) the term ‘Indian tribe’ has the mean24 ing given the term in section 4(e) of the Indian 


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1 Self-Determination and Education Assistance 

2 Act (25 U.S.C. 5304(e)). 

3 ‘‘(2) ABROGATION.—In any action that involves 

4 a covered claim that is otherwise within the jurisdic5 tion of a court of the United States, an Indian tribe 

6 may not assert sovereign immunity as a defense.’’; 

7 (3) in section 305— 

8 (A) in the first sentence, by striking ‘‘After 

9 the’’ and inserting the following: 

10 ‘‘(a) IN GENERAL.—After the’’; and 

11 (B) by adding at the end the following: 

12 ‘‘(b) SOVEREIGN IMMUNITY.— 

13 ‘‘(1) DEFINITIONS.—In this subsection— 

14 ‘‘(A) the term ‘foreign state’ has the mean15 ing given the term in section 1603(a) of title 

16 28; and 

17 ‘‘(B) the term ‘Indian tribe’ has the mean18 ing given the term in section 4(e) of the Indian 

19 Self-Determination and Education Assistance 

20 Act (25 U.S.C. 5304(e)). 

21 ‘‘(2) ABROGATION OF SOVEREIGN IMMUNITY.— 

22 Except as provided in paragraph (3), and subject to 

23 paragraph (4), a patent owner may not assert sov24 ereign immunity, including the sovereign immunity 

25 accorded to an Indian tribe, as a defense in— 


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1 ‘‘(A) any reexamination proceeding under 

2 this section, including any appeal to the Patent 

3 Trial and Appeal Board; or 

4 ‘‘(B) a review by a court of the United 

5 States with respect to a decision reached in a 

6 proceeding described in subparagraph (A). 

7 ‘‘(3) IMMUNITY OF FOREIGN STATES.—If a pat8 ent owner is a foreign state, for the purposes of any 

9 proceeding described in paragraph (2)(A), the Office 

10 or the Patent Trial and Appeal Board, as applicable, 

11 shall determine whether the patent owner is immune 

12 from the jurisdiction of the Office or the Patent 

13 Trial and Appeal Board, as applicable, in accordance 

14 with chapter 97 of title 28 as if the Office or the 

15 Patent Trial and Appeal Board, as applicable, were 

16 a court of the United States. 

17 ‘‘(4) LIMITATION.—This subsection shall apply 

18 only to the extent permitted under the 11th amend19 ment to the Constitution of the United States.’’; 

20 (4) in section 316, by adding at the end the fol21 lowing: 

22 ‘‘(f) SOVEREIGN IMMUNITY.— 

23 ‘‘(1) DEFINITIONS.—In this subsection— 


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1 ‘‘(A) the term ‘foreign state’ has the mean2 ing given the term in section 1603(a) of title 

3 28; and 

4 ‘‘(B) the term ‘Indian tribe’ has the mean5 ing given the term in section 4(e) of the Indian 

6 Self-Determination and Education Assistance 

7 Act (25 U.S.C. 5304(e)). 

8 ‘‘(2) ABROGATION OF SOVEREIGN IMMUNITY.— 

9 Except as provided in paragraph (3), and subject to 

10 paragraph (4), a patent owner may not assert sov11 ereign immunity, including the sovereign immunity 

12 accorded to an Indian tribe, as a defense in— 

13 ‘‘(A) an inter partes review instituted 

14 under this chapter; or 

15 ‘‘(B) a review by a court of the United 

16 States with respect to a decision reached in a 

17 proceeding described in subparagraph (A). 

18 ‘‘(3) IMMUNITY OF FOREIGN STATES.—If a pat19 ent owner is a foreign state, for the purposes of any 

20 review described in paragraph (2)(A), the Patent 

21 Trial and Appeal Board shall determine whether the 

22 patent owner is immune from the jurisdiction of the 

23 Patent Trial and Appeal Board, in accordance with 

24 chapter 97 of title 28 as if the Patent Trial and Ap25 peal Board were a court of the United States. 


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1 ‘‘(4) LIMITATION.—This subsection shall apply 

2 only to the extent permitted under the 11th amend3 ment to the Constitution of the United States.’’; and 

4 (5) in section 326, by adding at the end the fol5 lowing: 

6 ‘‘(f) SOVEREIGN IMMUNITY.— 

7 ‘‘(1) DEFINITIONS.—In this subsection— 

8 ‘‘(A) the term ‘foreign state’ has the mean9 ing given the term in section 1603(a) of title 

10 28; and 

11 ‘‘(B) the term ‘Indian tribe’ has the mean12 ing given the term in section 4(e) of the Indian 

13 Self-Determination and Education Assistance 

14 Act (25 U.S.C. 5304(e)). 

15 ‘‘(2) ABROGATION OF SOVEREIGN IMMUNITY.— 

16 Except as provided in paragraph (3), and subject to 

17 paragraph (4), a patent owner may not assert sov18 ereign immunity, including the sovereign immunity 

19 accorded to an Indian tribe, as a defense in— 

20 ‘‘(A) a post-grant review instituted under 

21 this chapter; or 

22 ‘‘(B) a review by a court of the United 

23 States with respect to a decision reached in a 

24 proceeding described in subparagraph (A). 


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1 ‘‘(3) IMMUNITY OF FOREIGN STATES.—If a pat2 ent owner is a foreign state, for the purposes of any 

3 review described in paragraph (2)(A), the Patent 

4 Trial and Appeal Board shall determine whether the 

5 patent owner is immune from the jurisdiction of the 

6 Patent Trial and Appeal Board, in accordance with 

7 chapter 97 of title 28 as if the Patent Trial and Ap8 peal Board were a court of the United States. 

9 ‘‘(4) LIMITATION.—This subsection shall apply 

10 only to the extent permitted under the 11th amend11 ment to the Constitution of the United States.’’. 

12 (b) AMENDMENTS TO THE TARIFF ACT OF 1930.— 

13 Section 337 of the Tariff Act of 1930 (19 U.S.C. 1337) 

14 is amended by adding at the end the following: 

15 ‘‘(o) ABROGATION OF TRIBAL SOVEREIGN IMMU16 NITY.— 

17 ‘‘(1) DEFINITIONS.—In this subsection— 

18 ‘‘(A) the term ‘covered person’— 

19 ‘‘(i) means a person; and 

20 ‘‘(ii) includes— 

21 ‘‘(I) an Indian tribe; and 

22 ‘‘(II) any other person that 

23 claims immunity on account of the 

24 sovereign status of an Indian tribe; 

25 and 


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1 ‘‘(B) the term ‘Indian tribe’ has the mean2 ing given the term in section 4(e) of the Indian 

3 Self-Determination and Education Assistance 

4 Act (25 U.S.C. 5304(e)). 

5 ‘‘(2) ABROGATION.—In any proceeding under 

6 this section, no covered person may assert as a de7 fense the sovereign immunity that is accorded to an 

8 Indian tribe.’’. 

9 (c) TECHNICAL AND CONFORMING AMENDMENT.— 

10 The table of sections for chapter 29 of title 35, United 

11 States Code, is amended by striking the item relating to 

12 section 296 and inserting the following: 

‘‘296. Liability of States, instrumentalities of States, State officials, and Indian 

tribes for infringement of patents.’’. 

Æ 


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