I 

113TH CONGRESS 

1ST SESSION H. R. 3540 

To amend chapter 26 of title 35, United States Code, to require the disclosure 

of information related to patent ownership, and for other purposes. 

IN THE HOUSE OF REPRESENTATIVES 

NOVEMBER 19, 2013 

Mr. POLIS (for himself, Mr. MARINO, and Mr. DEUTCH) introduced the following bill; which was referred to the Committee on the Judiciary, and 

in addition to the Committee on Energy and Commerce, for a period to 

be subsequently determined by the Speaker, in each case for consideration of such provisions as fall within the jurisdiction of the committee 

concerned 

A BILL 

To amend chapter 26 of title 35, United States Code, to 

require the disclosure of information related to patent 

ownership, 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 ‘‘Demand Letter Trans5 parency Act of 2013’’. 


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1 SEC. 2. DEMAND LETTER DISCLOSURE REQUIREMENT. 

2 (a) AMENDMENT.—Chapter 26 of title 35, United 

3 States Code, is amended by adding at the end the fol4 lowing new section: 

5 ‘‘§ 263. Disclosure of Information Related to Patent 

6 Ownership 

7 ‘‘(a) DEMAND LETTER DISCLOSURE.—Any entity 

8 that sends 20 or more demand letters during any 365- 

9 day period shall, not later than the disclosure deadline, 

10 submit to the Patent and Trademark Office with respect 

11 to each patent that was the subject in each such letter 

12 the following: 

13 ‘‘(1) Identification of the patent and confirma14 tion that the entity that sent the letter is the owner 

15 of the patent (or a representative of such person) 

16 and is the last recorded entity in the records of the 

17 Patent and Trademark Office for purposes of as18 signment, grant, or conveyance under this chapter. 

19 ‘‘(2) Identification of the entity that has the 

20 right to license the patent or, in the case of a patent 

21 already exclusively licensed, the name of the exclu22 sive licensee. 

23 ‘‘(3) Identification of each entity asserting a 

24 claim with regard to a patent in such letter in ac25 cordance with subsection (b). 


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1 ‘‘(4) Identification of each obligation to license 

2 the patent on reasonable and nondiscriminatory 

3 terms, including a copy of each letter of assurance 

4 to each standard-setting organization with respect to 

5 such obligation, and the financial terms, including 

6 the rate, at which such patent has been licensed pur7 suant to such obligation. 

8 ‘‘(5) Identification of the ultimate parent entity 

9 of such entity. 

10 ‘‘(6) Identification of the number of entities 

11 that received a demand letter from the entity that 

12 sent the letter. 

13 ‘‘(7) Identification of any case that has been 

14 filed by such entity relating to each such patent, in15 cluding the docket number and the court in which 

16 the case was filed. 

17 ‘‘(8) Identification of any ex parte review under 

18 chapter 30 or inter partes review under chapter 31 

19 of such patent. 

20 ‘‘(9) Any required registration fee established 

21 with regard to this section. 

22 ‘‘(b) INFORMATION NOT READILY ACCESSIBLE.—An 

23 entity required to disclose the information described under 

24 subsection (a) shall include with such disclosure a descrip25 tion of any information described under subsection (a) 


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1 that is not disclosed, why such undisclosed information 

2 was not readily accessible, and the efforts made by such 

3 entity to access such undisclosed information. 

4 ‘‘(c) IDENTIFICATION.— 

5 ‘‘(1) PUBLICLY TRADED.—For purposes of sub6 section (a)(3), if the entity to be identified is owned 

7 or controlled by a corporation traded on a public 

8 stock exchange, an identification of the publicly 

9 traded corporation and the public stock exchange 

10 shall be sufficient. 

11 ‘‘(2) NOT PUBLICLY TRADED.—For purposes of 

12 subsection (a)(3), if the entity to be identified is not 

13 owned or controlled by a publicly traded corporation, 

14 the information shall identify— 

15 ‘‘(A) in the case of a partnership, the 

16 name and address of each partner or other enti17 ty, holding more than a 5 percent share of that 

18 partnership; 

19 ‘‘(B) in the case of a corporation, the loca20 tion of incorporation and the name of each offi21 cer of the corporation; 

22 ‘‘(C) in the case of an entity that is di23 rectly or indirectly controlled by another entity, 

24 the name and address of the entity and each 

25 other entity, and the name, address, location of 


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1 incorporation, and each officer or partner of the 

2 entity and each other entity; and 

3 ‘‘(D) for each individual, the name and ad4 dress of that individual. 

5 ‘‘(3) NUMBER OF DEMAND LETTERS.—The re6 quirement under subsection (a)(6) shall be updated 

7 regularly by the Director. 

8 ‘‘(d) FAILURE TO COMPLY.— 

9 ‘‘(1) MONETARY SANCTIONS.—Any entity that 

10 does not meet the requirements of this section with 

11 regard to a patent or the disclosure requirements 

12 with respect to a demand letter under section 264 

13 may be subject to monetary sanctions by a court in 

14 an action brought by such entity with regard to in15 fringement or validity of such patent, for an amount 

16 to be awarded to the adverse party that covers any 

17 cost incurred by the adverse party resulting from the 

18 failure of such entity to meet the requirements of 

19 this section, including any reasonable cost incurred 

20 by such adverse party to discover the correct and 

21 complete information described under subsection (a) 

22 with regard to such patent, unless such sanctions 

23 would be unjust. 


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1 ‘‘(2) AWARD OF DAMAGES OR FEES.—A court 

2 in a case involving monetary sanctions described in 

3 paragraph (1)— 

4 ‘‘(A) may not award treble damages under 

5 the second undesignated paragraph of section 

6 284 or attorney’s fees under section 285 to the 

7 entity described in paragraph (1), unless the 

8 denial of such damages or fees would be mani9 festly unjust; and 

10 ‘‘(B) shall consider good faith mistakes in 

11 a relevant demand letter when calculating attor12 neys fees under section 285 and damages under 

13 section 284. 

14 ‘‘(e) ONGOING DUTY TO CORRECT OR SUPPLE15 MENT.—An entity described in subsection (a) shall update 

16 any filing made pursuant to such subsection with correct 

17 information not later than 20 days after any change in 

18 the information described under subsection (a). 

19 ‘‘(f) EXEMPTION.—This section shall not apply to 

20 any of the following: 

21 ‘‘(1) The original inventor or joint inventor. 

22 ‘‘(2) An institution of higher education (as that 

23 term is defined in section 101 of the Higher Edu24 cation Act of 1965 (20 U.S.C. 1001)). 


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1 ‘‘(3) A technology transfer organization whose 

2 primary purpose is to facilitate the commercializa3 tion of technology developed by one or more institu4 tions of higher education. 

5 ‘‘(g) DEFINITIONS.—In this section: 

6 ‘‘(1) DEMAND LETTER.—The term ‘demand let7 ter’ means any written communication directed to an 

8 unaffiliated third party stating or indicating, directly 

9 or indirectly, that the intended recipient or anyone 

10 affiliated with that recipient is or may be infringing 

11 a patent, or may bear liability or owe compensation 

12 to another because of such patent. 

13 ‘‘(2) DISCLOSURE DEADLINE.—The term ‘dis14 closure deadline’ means the lesser of 30 days after 

15 the 20th demand letter is sent or 15 days before the 

16 earliest date of compliance described in the 20th de17 mand letter. 

18 ‘‘(3) ULTIMATE PARENT ENTITY.— 

19 ‘‘(A) IN GENERAL.—Except as provided in 

20 subparagraph (B), the term ‘ultimate parent 

21 entity’ has the meaning given such term in sec22 tion 801.1(a)(3) of title 16, Code of Federal 

23 Regulations, or any successor regulation. 


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1 ‘‘(B) MODIFICATION OF DEFINITION.—The 

2 Director may modify the definition of ‘ultimate 

3 parent entity’ by regulation.’’. 

4 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

5 The table of sections for chapter 26 of title 35, United 

6 States Code, is amended by adding at the end the fol7 lowing new item: 

‘‘263. Disclosure of Information Related to Patent Ownership.’’. 

8 (c) REGULATIONS.—The Director may promulgate 

9 such regulations as are necessary to establish a registra10 tion fee in an amount sufficient to recover the estimated 

11 costs of administering section 263 of title 35, United 

12 States Code, as added by subsection (a), to facilitate the 

13 collection and maintenance of the information required by 

14 such section, and to ensure the timely disclosure of such 

15 information to the public. 

16 (d) DEMAND LETTER DATABASE.— 

17 (1) ESTABLISHMENT.—Not later than 180 days 

18 after the date of the enactment of this Act, the Di19 rector, in consultation with the Attorney General 

20 and the Federal Trade Commission, shall establish 

21 a publicly accessible and searchable database of the 

22 information obtained pursuant to section 263 of title 

23 35, United States Code, as added by subsection (a), 

24 to be maintained at and updated by the Office. 


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1 (2) PROTECTION OF INFORMATION.—The Di2 rector shall allow recipients of a demand letter (as 

3 such term is defined under section 263(g), as added 

4 by subsection (a)) to request the redaction of the 

5 company name, company-specific information, or any 

6 other company information from the database de7 scribed in paragraph (1). 

8 SEC. 3. DEMAND LETTER REQUIREMENT. 

9 (a) AMENDMENT.—Chapter 26 of title 35, United 

10 States Code, as amended by section 2(a), is amended by 

11 adding at the end the following new section: 

12 ‘‘§ 264. Requirements for patent infringement de13 mand letters 

14 ‘‘(a) IN GENERAL.—Any entity sending a demand 

15 letter shall include in any demand letter sent to another 

16 entity the following: 

17 ‘‘(1) An identification of each patent that is or 

18 may be allegedly infringing. 

19 ‘‘(2) An identification of each claim of each pat20 ent identified under paragraph (1) that is allegedly 

21 infringed. 

22 ‘‘(3) For each claim identified under paragraph 

23 (2), an identification of each accused apparatus, 

24 product, feature, device, method, system, process, 

25 function, act, service, or other instrumentality (reVerDate Mar 15 2010 00:53 Nov 21, 2013 Jkt 039200 PO 00000 Frm 00009 Fmt 6652 Sfmt 6201 E:\BILLS\H3540.IH H3540

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1 ferred to in this section as an ‘accused instrumen2 tality’) alleged to infringe the claim. 

3 ‘‘(4) For each accused instrumentality identi4 fied under paragraph (3), an identification with par5 ticularity, if known, of— 

6 ‘‘(A) the name or model number of each 

7 accused instrumentality; and 

8 ‘‘(B) the name of each accused method, 

9 system, process, function, act, or service, or the 

10 name or model number of each apparatus, 

11 product, feature, or device that, when used, al12 legedly results in the practice of the claimed in13 vention. 

14 ‘‘(5) For each accused instrumentality identi15 fied under paragraph (3), an explanation of— 

16 ‘‘(A) where each element of each asserted 

17 claim identified under paragraph (2) is found 

18 within the accused instrumentality; 

19 ‘‘(B) whether each such element is in20 fringed literally or under the doctrine of equiva21 lents; and 

22 ‘‘(C) with detailed specificity, how the 

23 terms in each asserted claim identified under 

24 paragraph (2) correspond to the functionality of 

25 the accused instrumentality. 


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1 ‘‘(6) For each claim that is alleged to have been 

2 infringed indirectly, a description of— 

3 ‘‘(A) the direct infringement; 

4 ‘‘(B) any person alleged to be a direct in5 fringer known to the party alleging infringe6 ment; and 

7 ‘‘(C) the acts of the alleged indirect in8 fringer that contribute to or are inducing the 

9 direct infringement. 

10 ‘‘(7) A description of the right of the party al11 leging infringement to assert each— 

12 ‘‘(A) patent identified under paragraph 

13 (1); and 

14 ‘‘(B) patent claim identified in paragraph 

15 (2). 

16 ‘‘(8) A description of the principal business of 

17 the party alleging infringement. 

18 ‘‘(9) A list of each complaint filed, of which the 

19 party alleging infringement has knowledge, that as20 serts or asserted any of the patents identified under 

21 paragraph (1). 

22 ‘‘(10) Identification of any case that has been 

23 filed by such entity relating to each patent identified 

24 under paragraph (1), including the docket number 

25 and the court in which the case was filed. 


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1 ‘‘(11) Identification of any ex parte review 

2 under chapter 30 or any inter partes review under 

3 chapter 31 for each patent identified under para4 graph (1). 

5 ‘‘(12) For each patent identified under para6 graph (1), whether such patent is subject to any li7 censing term or pricing commitments through any 

8 agency, organization, standard-setting body, or other 

9 entity or community. 

10 ‘‘(13) The identity of any person other than the 

11 party alleging infringement, known to the party al12 leging infringement, who— 

13 ‘‘(A) owns or co-owns a patent identified 

14 under paragraph (1); 

15 ‘‘(B) is the assignee of a patent identified 

16 under paragraph (1); or 

17 ‘‘(C) is an exclusive licensee to a patent 

18 identified under paragraph (1). 

19 ‘‘(14) The identity of any person other than the 

20 party alleging infringement, known to the party al21 leging infringement, who has a legal right to enforce 

22 a patent identified under paragraph (1) through a 

23 civil action under any Act of Congress relating to 

24 patents or is licensed under such patent. 


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1 ‘‘(15) The identity of any person with a direct 

2 financial interest in the outcome of the action, in3 cluding a right to receive proceeds, or any fixed or 

4 variable portion thereof. 

5 ‘‘(16) A description of any agreement or other 

6 legal basis for a financial interest described in para7 graph (13). 

8 ‘‘(17) A description of how the recipient of the 

9 demand letter can access the demand letter database 

10 of the Patent and Trademark Office. 

11 ‘‘(18) At the bottom of such letter, a clear 

12 statement of the following: ‘You are not required to 

13 respond to this letter by law.’. 

14 ‘‘(b) INFORMATION NOT READILY ACCESSIBLE.—An 

15 entity required to disclose the information described under 

16 subsection (a) shall include with such disclosure a descrip17 tion of any information described under subsection (a) 

18 that is not disclosed, why such undisclosed information 

19 was not readily accessible, and the efforts made by such 

20 entity to access such undisclosed information. 

21 ‘‘(c) DEMAND LETTER DEFINED.—In this section, 

22 the term ‘demand letter’ shall have the meaning given that 

23 term under section 263(g).’’. 

24 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

25 The table of sections for chapter 26 of title 35, United 


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1 States Code, as amended by section 2(b), is amended by 

2 adding at the end the following new item: 

‘‘264. Requirements for patent infringement demand letters.’’. 

3 SEC. 4. PENALTIES. 

4 (a) AMENDMENT.—Chapter 26 of title 35, United 

5 States Code, as amended by sections 2(a) and 3(a), is 

6 amended by adding at the end the following new section: 

7 ‘‘§ 265. Penalties 

8 ‘‘(a) DISCLOSURE OF INFORMATION TO THE PATENT

9 AND TRADEMARK OFFICE VIOLATION.—Any entity that 

10 receives a demand letter and that believes the require11 ments under section 263 have not been met with respect 

12 to such patent may submit to the Office in writing a peti13 tion— 

14 ‘‘(1) describing the requirements that have not 

15 been met under section 263; and 

16 ‘‘(2) anything else the Director determines to 

17 be necessary. 

18 ‘‘(b) DEMAND LETTER REQUIREMENT VIOLATION.— 

19 Any entity that receives a demand letter that does not 

20 meet the requirements described under section 264 may 

21 submit to the Office in writing a petition— 

22 ‘‘(1) describing the requirements that have not 

23 been included in such letter; and 

24 ‘‘(2) anything else the Director determines to 

25 be necessary. 


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1 ‘‘(c) NOTICE OF INTENT TO ABANDON.—If the Of2 fice determines that the requirements of section 263 or 

3 264 have not been met with respect to a patent, the Office 

4 shall notify the patent owner that the patent will be voided 

5 unless a fee is paid not later than 3 months after the date 

6 on which the notification is sent. The Director may accept 

7 the payment of any fee required by this subsection if the 

8 delay is shown to the satisfaction of the Director to have 

9 been unintentional or unavoidable. The Director shall con10 sider good faith mistakes in the determination of whether 

11 to void a patent under this section. 

12 ‘‘(d) DEMAND LETTER DEFINED.—In this section, 

13 the term ‘demand letter’ shall have the meaning given that 

14 term under section 263(g).’’. 

15 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

16 The table of sections for chapter 26 of title 35, United 

17 States Code, as amended by sections 2(b) and 3(b), is 

18 amended by adding at the end the following new item: 

‘‘265. Penalties.’’. 

19 (c) REGULATIONS.—Not later than 180 days after 

20 the date of the enactment of this Act, the Director shall 

21 establish, by regulation, a fee for filing a petition under 

22 section 265 in such amounts as the Director determines 

23 to be reasonable. 


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1 SEC. 5. FEDERAL TRADE COMMISSION ENFORCEMENT. 

2 (a) ENFORCEMENT.—A violation of section 263 or 

3 264 of title 35, United States Code, as added by sections 

4 2 and 3, respectively, shall be treated as a violation of 

5 a rule defining an unfair or deceptive act or practice under 

6 section 18(a)(1)(B) of the Federal Trade Commission Act 

7 (15 U.S.C. 57a(a)(1)(B)). The Commission shall enforce 

8 such rules in the same manner, by the same means, and 

9 with the same jurisdiction, powers, and duties as though 

10 all applicable terms and provisions of the Federal Trade 

11 Commission Act were incorporated into and made a part 

12 of this section. Any entity who violates this section shall 

13 be subject to the penalties and entitled to the privileges 

14 and immunities provided in the Federal Trade Commis15 sion Act (15 U.S.C. 41 et seq.). 

16 (b) RULE OF CONSTRUCTION.—Nothing in this sec17 tion shall be construed— 

18 (1) to limit the authority of the Federal Trade 

19 Commission under any other provision of law; or 

20 (2) except as specifically provided in this sec21 tion to provide the Federal Trade Commission with 

22 any additional authority. 

23 SEC. 6. DEFINITIONS. 

24 In this Act: 

25 (1) DIRECTOR.—The term ‘‘Director’’ means 

26 the Under Secretary of Commerce for Intellectual 


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1 Property and Director of the United States Patent 

2 and Trademark Office. 

3 (2) OFFICE.—The term ‘‘Office’’ means the 

4 United States Patent and Trademark Office. 

5 SEC. 7. EFFECTIVE DATE. 

6 The amendments made by this Act shall take effect 

7 upon the expiration of the 6-month period beginning on 

8 the date of the enactment of this Act and shall apply to 

9 an entity that sends a demand letter (as such term is de10 fined under section 263(g) of title 35, United States Code, 

11 as added by section 2(a)) on or after that date. 

Æ 


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