II 

117TH CONGRESS 

1ST SESSION S. 2774 

To amend title 35, United States Code, to address patent ownership, and 

for other purposes. 

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. 

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 ‘‘Pride in Patent Owner5 ship Act’’. 

6 SEC. 2. PATENTS. 

7 (a) AMENDMENTS TO TITLE 35.— 

8 (1) IN GENERAL.—Title 35, United States 

9 Code, is amended— 


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1 (A) in chapter 11, by adding at the end 

2 the following: 

3 ‘‘§ 124. Government funding of patent applications 

4 and maintenance fees 

5 ‘‘(a) GOVERNMENT FUNDING OF PATENT APPLICA6 TIONS.—For any application for patent, if any govern7 mental entity, including a foreign governmental entity, 

8 provides funding specifically for the purpose of paying fees 

9 to the Office under section 41, or specifically for the pur10 pose of paying an attorney or patent agent for prosecution 

11 of the application, the application shall include, or be 

12 amended to include, a statement describing the amount 

13 and source of the funding provided by the entity. 

14 ‘‘(b) GOVERNMENT FUNDING OF MAINTENANCE

15 FEES.—For any patent, if any governmental entity, in16 cluding a foreign governmental entity, provides funding 

17 specifically for the purpose of paying maintenance fees to 

18 the Office under section 41, or specifically for the purpose 

19 of paying an attorney or patent agent for submitting those 

20 maintenance fees, the patentee shall file a separate state21 ment describing the amount and source of the funding 

22 provided by the entity.’’; and 

23 (B) in section 261— 

24 (i) by striking the first undesignated 

25 paragraph and inserting the following: 


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1 ‘‘(a) IN GENERAL.— 

2 ‘‘(1) ATTRIBUTES OF PERSONAL PROPERTY.— 

3 Subject to the provisions of this title, patents shall 

4 have the attributes of personal property. 

5 ‘‘(2) REGISTER OF INTERESTS.— 

6 ‘‘(A) IN GENERAL.—The Patent and 

7 Trademark Office shall maintain a register of 

8 interests in patents and applications for patents 

9 and shall record any document related thereto 

10 upon request, and may require a fee therefor. 

11 ‘‘(B) PUBLIC AVAILABILITY.—The Office 

12 shall make the information described in sub13 paragraph (A) publicly accessible, to the extent 

14 permitted by law. 

15 ‘‘(3) REQUIREMENT TO RECORD CERTAIN AS16 SIGNMENTS AND OTHER INTERESTS.— 

17 ‘‘(A) IN GENERAL.—Whenever a patent 

18 issues, or certain rights or interests in a patent 

19 (as defined by the Director) are assigned, 

20 granted, or conveyed to any person, including a 

21 governmental or legal entity, including a parent 

22 corporation— 

23 ‘‘(i) the patentee shall, not later than 

24 90 days after the effective date of the 

25 issuance, assignment, grant, or conveyance, 


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1 as applicable, submit, or cause to be sub2 mitted, a request described in paragraph 

3 (2), unless such a request was submitted 

4 before the issuance of the patent; and 

5 ‘‘(ii) the Office shall, not later than 

6 60 days after the date on which the Office 

7 receives a request submitted under clause 

8 (i)— 

9 ‘‘(I) notify the patentee regard10 ing any error in the request; or 

11 ‘‘(II) record the interest in the 

12 register described in paragraph (2). 

13 ‘‘(B) EFFECT OF FAILURE TO COMPLY.— 

14 If a patentee fails to comply with subparagraph 

15 (A)(i), no party may recover, for infringement 

16 of the applicable patent in any action, increased 

17 monetary damages under section 284 during 

18 the period beginning on the date that is 91 

19 days after the effective date of the issuance, as20 signment, grant, or conveyance with respect to 

21 the patent, as applicable, and ending on the 

22 date on which that issuance, assignment, grant, 

23 or conveyance is properly requested to be re24 corded under paragraph (2).’’; 


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1 (ii) in the first undesignated para2 graph following subsection (a), as so des3 ignated by clause (i) of this subparagraph, 

4 by striking ‘‘Applications’’ and inserting 

5 the following: 

6 ‘‘(b) APPLICATIONS AND PATENTS ASSIGNABLE.— 

7 Applications’’; 

8 (iii) in the first undesignated para9 graph following subsection (b), as so des10 ignated by clause (ii) of this subparagraph, 

11 by striking ‘‘A certificate’’ and inserting 

12 the following: 

13 ‘‘(c) CERTIFICATE OF ACKNOWLEDGMENT.—A cer14 tificate’’; and 

15 (iv) in the undesignated paragraph 

16 following subsection (c), as so designated 

17 by clause (iii) of this subparagraph, by 

18 striking ‘‘An interest’’ and inserting the 

19 following: 

20 ‘‘(d) EFFECT OF ASSIGNMENT.—An interest’’. 

21 (2) TECHNICAL AND CONFORMING AMEND22 MENT.—The table of sections for chapter 11 of title 

23 35, United States Code, is amended by adding at 

24 the end the following: 

‘‘124. Government funding of patent applications and maintenance fees.’’. 

25 (3) EFFECTIVE DATES; APPLICABILITY.— 


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1 (A) IN GENERAL.—Except as provided in 

2 subparagraph (B), the amendments made by 

3 this subsection shall take effect on the date that 

4 is 1 year after the date of enactment of this 

5 Act. 

6 (B) AMENDMENTS REGARDING OWNERSHIP

7 AND ASSIGNMENT.— 

8 (i) IN GENERAL.—Except as provided 

9 in clause (ii), the amendments made by 

10 paragraph (1)(B) shall take effect on the 

11 date of enactment of this Act. 

12 (ii) REQUIREMENT TO RECORD AS13 SIGNMENTS AND CERTAIN OTHER INTER14 ESTS.—Paragraph (3) of subsection (a) of 

15 section 261 of title 35, United States 

16 Code, as so designated by paragraph 

17 (1)(B)(i) of this subsection, shall— 

18 (I) take effect on the effective 

19 date described in subparagraph (A); 

20 and 

21 (II) apply with respect to any 

22 patent issuance, assignment, grant, or 

23 conveyance that occurs on or after the 

24 effective date described in subclause 

25 (I). 


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1 (b) RULES.—Not later than 1 year after the date of 

2 enactment of this Act, the Under Secretary of Commerce 

3 for Intellectual Property and Director of the United States 

4 Patent and Trademark Office (referred to in this section 

5 as the ‘‘Director’’) shall issue rules that accomplish the 

6 following: 

7 (1)(A) Define the term ‘‘certain rights or inter8 ests in a patent’’ for the purposes of subsection 

9 (a)(3) of section 261 of title 35, United States Code, 

10 as so designated by subsection (a)(1) of this section. 

11 (B) For the purposes of subparagraph (A), the 

12 Director may review rules defining the term ‘‘bene13 ficial owner’’ issued by other Federal entities and 

14 agencies, including the Committee on Foreign In15 vestment in the United States, the Department of 

16 the Treasury, and the Securities and Exchange 

17 Commission. 

18 (2) Establish procedures for the proper record19 ing of interests in patents that— 

20 (A) provide for— 

21 (i) notice of any error in a request 

22 submitted under subsection (a)(2) of sec23 tion 261 of title 35, United States Code, 

24 as so designated by subsection (a)(1) of 

25 this section; and 


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1 (ii) an opportunity to correct an error 

2 described in clause (i) not later than 60 

3 days after the date on which the Director 

4 notifies the submitting party regarding the 

5 error; and 

6 (B) describe— 

7 (i) which types of errors described in 

8 subparagraph (A)(i) are eligible for correc9 tion without having to change the date of 

10 submission of the original request; and 

11 (ii) which types of errors described in 

12 subparagraph (A)(i) must result in a new 

13 request with a new submission date. 

14 (3) Implement section 124 of title 35, United 

15 States Code, as added by subsection (a)(1) of this 

16 section, including by imposing a penalty for a failure 

17 to disclose funding provided by a governmental enti18 ty, as required under such section 124. 

19 (4) Otherwise implement the amendments made 

20 by subsection (a)(1). 

21 (c) REGISTER.—Not later than 2 years after the date 

22 of enactment of this Act, the Director shall, with respect 

23 to the register described in subsection (a)(2) of section 

24 261 of title 35, United States Code, as so designated by 

25 subsection (a)(1) of this section, create a publicly accesVerDate Sep 11 2014 05:41 Sep 22, 2021 Jkt 019200 PO 00000 Frm 00008 Fmt 6652 Sfmt 6201 E:\BILLS\S2774.IS S2774

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1 sible database that is digitally searchable with fields based 

2 on patent number, assignee, assignor, assignment date, 

3 and other criteria determined by the Director. 

Æ 


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