I 

114TH CONGRESS 

1ST SESSION H. R. 1896 

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 

APRIL 20, 2015 

Mr. POLIS (for himself, Mr. MARINO, and Mr. DEUTCH) introduced the 

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

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 2015’’. 

6 SEC. 2. DEMAND LETTER DISCLOSURE REQUIREMENT. 

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

8 States Code, is amended by adding at the end the fol9 lowing new section: 


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

2 Ownership 

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

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

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

6 submit to the Patent and Trademark Office with respect 

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

8 the following: 

9 ‘‘(1) Identification of the patent and confirma10 tion that the entity that sent the letter is the owner 

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

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

13 Patent and Trademark Office for purposes of as14 signment, grant, or conveyance under this chapter. 

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

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

17 already exclusively licensed, the name of the exclu18 sive licensee. 

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

20 claim with regard to a patent in such letter in ac21 cordance with subsection (b). 

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

23 the patent on reasonable and nondiscriminatory 

24 terms, including a copy of each letter of assurance 

25 to each standard-setting organization with respect to 

26 such obligation, and the financial terms, including 


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1 the rate, at which such patent has been licensed pur2 suant to such obligation. 

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

4 of such entity. 

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

6 that received a demand letter from the entity that 

7 sent the letter. 

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

9 filed by such entity relating to each such patent, in10 cluding the docket number and the court in which 

11 the case was filed. 

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

13 chapter 30 or inter partes review under chapter 31 

14 of such patent. 

15 ‘‘(9) Any required registration fee established 

16 with regard to this section. 

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

18 entity required to disclose the information described under 

19 subsection (a) shall include with such disclosure a descrip20 tion of any information described under subsection (a) 

21 that is not disclosed, why such undisclosed information 

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

23 entity to access such undisclosed information. 

24 ‘‘(c) IDENTIFICATION.— 


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1 ‘‘(1) PUBLICLY TRADED.—For purposes of sub2 section (a)(3), if the entity to be identified is owned 

3 or controlled by a corporation traded on a public 

4 stock exchange, an identification of the publicly 

5 traded corporation and the public stock exchange 

6 shall be sufficient. 

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

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

9 owned or controlled by a publicly traded corporation, 

10 the information shall identify— 

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

12 name and address of each partner or other enti13 ty, holding more than a 5 percent share of that 

14 partnership; 

15 ‘‘(B) in the case of a corporation, the loca16 tion of incorporation and the name of each offi17 cer of the corporation; 

18 ‘‘(C) in the case of an entity that is di19 rectly or indirectly controlled by another entity, 

20 the name and address of the entity and each 

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

22 incorporation, and each officer or partner of the 

23 entity and each other entity; and 

24 ‘‘(D) for each individual, the name and ad25 dress of that individual. 


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1 ‘‘(3) NUMBER OF DEMAND LETTERS.—The re2 quirement under subsection (a)(6) shall be updated 

3 regularly by the Director. 

4 ‘‘(d) FAILURE TO COMPLY.— 

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

6 does not meet the requirements of this section with 

7 regard to a patent or the disclosure requirements 

8 with respect to a demand letter under section 264 

9 may be subject to monetary sanctions by a court in 

10 an action brought by such entity with regard to in11 fringement or validity of such patent, for an amount 

12 to be awarded to the adverse party that covers any 

13 cost incurred by the adverse party resulting from the 

14 failure of such entity to meet the requirements of 

15 this section, including any reasonable cost incurred 

16 by such adverse party to discover the correct and 

17 complete information described under subsection (a) 

18 with regard to such patent, unless such sanctions 

19 would be unjust. 

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

21 in a case involving monetary sanctions described in 

22 paragraph (1)— 

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

24 the second undesignated paragraph of section 

25 284 or attorney’s fees under section 285 to the 


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1 entity described in paragraph (1), unless the 

2 denial of such damages or fees would be mani3 festly unjust; and 

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

5 a relevant demand letter when calculating attor6 neys fees under section 285 and damages under 

7 section 284. 

8 ‘‘(e) ONGOING DUTY TO CORRECT OR SUPPLE9 MENT.—An entity described in subsection (a) shall update 

10 any filing made pursuant to such subsection with correct 

11 information not later than 20 days after any change in 

12 the information described under subsection (a). 

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

14 any of the following: 

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

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

17 term is defined in section 101 of the Higher Edu18 cation Act of 1965 (20 U.S.C. 1001)). 

19 ‘‘(3) A technology transfer organization whose 

20 primary purpose is to facilitate the commercializa21 tion of technology developed by one or more institu22 tions of higher education. 

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

24 ‘‘(1) DEMAND LETTER.—The term ‘demand let25 ter’ means any written communication directed to an 


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1 unaffiliated third party stating or indicating, directly 

2 or indirectly, that the intended recipient or anyone 

3 affiliated with that recipient is or may be infringing 

4 a patent, or may bear liability or owe compensation 

5 to another because of such patent. 

6 ‘‘(2) DISCLOSURE DEADLINE.—The term ‘dis7 closure deadline’ means the lesser of 30 days after 

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

9 earliest date of compliance described in the 20th de10 mand letter. 

11 ‘‘(3) ULTIMATE PARENT ENTITY.— 

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

13 subparagraph (B), the term ‘ultimate parent 

14 entity’ has the meaning given such term in sec15 tion 801.1(a)(3) of title 16, Code of Federal 

16 Regulations, or any successor regulation. 

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

18 Director may modify the definition of ‘ultimate 

19 parent entity’ by regulation.’’. 

20 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

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

22 States Code, is amended by adding at the end the fol23 lowing new item: 

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

24 (c) REGULATIONS.—The Director may promulgate 

25 such regulations as are necessary to establish a registraVerDate Sep 11 2014 23:34 Apr 24, 2015 Jkt 049200 PO 00000 Frm 00007 Fmt 6652 Sfmt 6201 E:\BILLS\H1896.IH H1896

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1 tion fee in an amount sufficient to recover the estimated 

2 costs of administering section 263 of title 35, United 

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

4 collection and maintenance of the information required by 

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

6 information to the public. 

7 (d) DEMAND LETTER DATABASE.— 

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

9 after the date of the enactment of this Act, the Di10 rector, in consultation with the Attorney General, 

11 shall establish a publicly accessible and searchable 

12 database of the information obtained pursuant to 

13 section 263 of title 35, United States Code, as added 

14 by subsection (a), to be maintained at and updated 

15 by the Office. 

16 (2) PROTECTION OF INFORMATION.—The Di17 rector shall allow recipients of a demand letter (as 

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

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

20 company name, company-specific information, or any 

21 other company information from the database de22 scribed in paragraph (1). 


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1 SEC. 3. DEMAND LETTER REQUIREMENT. 

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

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

4 adding at the end the following new section: 

5 ‘‘§ 264. Requirements for patent infringement de6 mand letters 

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

8 letter shall include in any demand letter sent to another 

9 entity the following: 

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

11 may be allegedly infringing. 

12 ‘‘(2) An identification of each claim of each pat13 ent identified under paragraph (1) that is allegedly 

14 infringed. 

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

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

17 product, feature, device, method, system, process, 

18 function, act, service, or other instrumentality (re19 ferred to in this section as an ‘accused instrumen20 tality’) alleged to infringe the claim. 

21 ‘‘(4) For each accused instrumentality identi22 fied under paragraph (3), an identification with par23 ticularity, if known, of— 

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

25 accused instrumentality; and 


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

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

3 name or model number of each apparatus, 

4 product, feature, or device that, when used, al5 legedly results in the practice of the claimed in6 vention. 

7 ‘‘(5) For each accused instrumentality identi8 fied under paragraph (3), an explanation of— 

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

10 claim identified under paragraph (2) is found 

11 within the accused instrumentality; 

12 ‘‘(B) whether each such element is in13 fringed literally or under the doctrine of equiva14 lents; and 

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

16 terms in each asserted claim identified under 

17 paragraph (2) correspond to the functionality of 

18 the accused instrumentality. 

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

20 infringed indirectly, a description of— 

21 ‘‘(A) the direct infringement; 

22 ‘‘(B) any person alleged to be a direct in23 fringer known to the party alleging infringe24 ment; and 


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1 ‘‘(C) the acts of the alleged indirect in2 fringer that contribute to or are inducing the 

3 direct infringement. 

4 ‘‘(7) A description of the right of the party al5 leging infringement to assert each— 

6 ‘‘(A) patent identified under paragraph 

7 (1); and 

8 ‘‘(B) patent claim identified in paragraph 

9 (2). 

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

11 the party alleging infringement. 

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

13 party alleging infringement has knowledge, that as14 serts or asserted any of the patents identified under 

15 paragraph (1). 

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

17 filed by such entity relating to each patent identified 

18 under paragraph (1), including the docket number 

19 and the court in which the case was filed. 

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

21 under chapter 30 or any inter partes review under 

22 chapter 31 for each patent identified under para23 graph (1). 

24 ‘‘(12) For each patent identified under para25 graph (1), whether such patent is subject to any liVerDate Sep 11 2014 23:34 Apr 24, 2015 Jkt 049200 PO 00000 Frm 00011 Fmt 6652 Sfmt 6201 E:\BILLS\H1896.IH H1896

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1 censing term or pricing commitments through any 

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

3 entity or community. 

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

5 party alleging infringement, known to the party al6 leging infringement, who— 

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

8 under paragraph (1); 

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

10 under paragraph (1); or 

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

12 identified under paragraph (1). 

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

14 party alleging infringement, known to the party al15 leging infringement, who has a legal right to enforce 

16 a patent identified under paragraph (1) through a 

17 civil action under any Act of Congress relating to 

18 patents or is licensed under such patent. 

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

20 financial interest in the outcome of the action, in21 cluding a right to receive proceeds, or any fixed or 

22 variable portion thereof. 

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

24 legal basis for a financial interest described in para25 graph (13). 


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

2 demand letter can access the demand letter database 

3 of the Patent and Trademark Office. 

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

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

6 respond to this letter by law.’. 

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

8 entity required to disclose the information described under 

9 subsection (a) shall include with such disclosure a descrip10 tion of any information described under subsection (a) 

11 that is not disclosed, why such undisclosed information 

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

13 entity to access such undisclosed information. 

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

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

16 term under section 263(g).’’. 

17 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

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

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

20 adding at the end the following new item: 

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

21 SEC. 4. PENALTIES. 

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

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

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


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1 ‘‘§ 265. Penalties 

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

3 AND TRADEMARK OFFICE VIOLATION.—Any entity that 

4 receives a demand letter and that believes the require5 ments under section 263 have not been met with respect 

6 to such patent may submit to the Office in writing a peti7 tion— 

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

9 been met under section 263; and 

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

11 be necessary. 

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

13 Any entity that receives a demand letter that does not 

14 meet the requirements described under section 264 may 

15 submit to the Office in writing a petition— 

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

17 been included in such letter; and 

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

19 be necessary. 

20 ‘‘(c) NOTICE OF INTENT TO ABANDON.—If the Of21 fice determines that the requirements of section 263 or 

22 264 have not been met with respect to a patent, the Office 

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

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

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

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


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

2 been unintentional or unavoidable. The Director shall con3 sider good faith mistakes in the determination of whether 

4 to void a patent under this section. 

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

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

7 term under section 263(g).’’. 

8 (b) TECHNICAL AND CONFORMING AMENDMENT.— 

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

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

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

‘‘265. Penalties.’’. 

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

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

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

15 section 265 in such amounts as the Director determines 

16 to be reasonable. 

17 SEC. 5. DEFINITIONS. 

18 In this Act: 

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

20 the Under Secretary of Commerce for Intellectual 

21 Property and Director of the United States Patent 

22 and Trademark Office. 

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

24 United States Patent and Trademark Office. 


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1 SEC. 6. EFFECTIVE DATE. 

2 The amendments made by this Act shall take effect 

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

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

5 an entity that sends a demand letter (as such term is de6 fined under section 263(g) of title 35, United States Code, 

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

Æ 


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