II 

114TH CONGRESS 

1ST SESSION S. 926 

To amend the patent law to promote basic research, to stimulate publication 

of scientific documents, to encourage collaboration in scientific endeavors, 

to improve the transfer of technology to the private sector, and for 

other purposes. 

IN THE SENATE OF THE UNITED STATES 

APRIL 14, 2015 

Ms. BALDWIN (for herself and Mr. VITTER) introduced the following bill; 

which was read twice and referred to the Committee on the Judiciary 

A BILL 

To amend the patent law to promote basic research, to 

stimulate publication of scientific documents, to encourage collaboration in scientific endeavors, to improve the 

transfer of technology to the private sector, 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 ‘‘Grace Period Restora5 tion Act of 2015’’. 

6 SEC. 2. FINDINGS; PURPOSES. 

7 (a) FINDINGS.—Congress finds the following: 


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1 (1) Language in the Leahy-Smith America In2 vents Act (Public Law 112–29; 125 Stat. 284) and 

3 regulations and examination guidelines issued by the 

4 United States Patent and Trademark Office imple5 menting provisions of that Act have created uncer6 tainty regarding the scope of the 1-year grace period 

7 during which an inventor who discloses an invention 

8 to the public may decide whether to file a patent ap9 plication for the invention (referred to in this Act as 

10 the ‘‘grace period’’). 

11 (2) The regulatory reading of the Leahy-Smith 

12 America Invents Act does not comport with the in13 tent of the sponsors of that Act. 

14 (3) In performing more than 50 percent of all 

15 basic research in the United States and pursuing the 

16 transfer of research results to the private sector for 

17 the benefit of the public under the auspices of chap18 ter 18 of title 35, United States Code (commonly 

19 known as the ‘‘Bayh-Dole Act’’), institutions of 

20 higher education and government laboratories face a 

21 difficult and expensive challenge in gaining and uti22 lizing the full scope of patent rights. 

23 (4) The uncertainty relating to the grace period 

24 created by the Leahy-Smith America Invents Act 

25 adds to the challenge faced by institutions of higher 


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1 education and government laboratories in gaining 

2 and utilizing the full scope of patent rights. 

3 (5) Job growth and the creation of start-up 

4 companies and small businesses are thwarted by un5 certainty as to the scope of the grace period and by 

6 the difficulty and expense of gaining and utilizing 

7 patent rights, which hinders the economy of the 

8 United States and the technological leadership of the 

9 United States in a competitive global economy. 

10 (6) Ambiguity and uncertainty in statutory text 

11 and government regulations breed abusive and ex12 pensive patent litigation. 

13 (7) Discouragement of scientific research publi14 cation— 

15 (A) delays the disclosure of scientific ad16 vances to the public; 

17 (B) thwarts scientific advances; 

18 (C) chills collaborative research activities; 

19 and 

20 (D) delays, if not denies, the opportunity 

21 for the public to realize the benefits of research 

22 results. 

23 (8) Misappropriation by third parties of dis24 closed inventions is likely to increase, especially in 

25 countries that take advantage of the technological 


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1 prowess of the United States without appropriately 

2 compensating inventors. 

3 (9) Secrecy is anathema to— 

4 (A) the maintenance of a viable United 

5 States patent system; 

6 (B) the constitutional purpose of the 

7 United States patent system; and 

8 (C) the goal of the United States patent 

9 system of promoting scientific progress. 

10 (10) In the words of David J. Kappos, who 

11 served as the Under Secretary of Commerce for In12 tellectual Property and Director of the United States 

13 Patent and Trademark Office during the enactment 

14 of the Leahy-Smith America Invents Act, the grace 

15 period before the enactment of the Leahy-Smith 

16 America Invents Act was ‘‘the gold standard of best 

17 practices’’. 

18 (b) PURPOSES.—The purposes of this Act are— 

19 (1) to correct the drafting problem in the 

20 Leahy-Smith America Invents Act relating to the 

21 grace period; and 

22 (2) to maintain the position of leadership of the 

23 United States in educational, technological, and sci24 entific progress. 


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1 SEC. 3. DISCLOSURES FOLLOWING A PUBLIC DISCLOSURE 

2 OF A CLAIMED INVENTION BY AN INVENTOR. 

3 Section 102(b) of title 35, United States Code, is 

4 amended by adding at the end the following: 

5 ‘‘(3) DISCLOSURES BY ANY PERSON AFTER

6 PUBLIC DISCLOSURE OF A CLAIMED INVENTION BY

7 AN INVENTOR.— 

8 ‘‘(A) DEFINITIONS.—In this paragraph— 

9 ‘‘(i) the term ‘covered person’, with 

10 respect to a claimed invention, means— 

11 ‘‘(I) the inventor; 

12 ‘‘(II) a joint inventor; or 

13 ‘‘(III) another who obtained the 

14 claimed invention directly or indirectly 

15 from the inventor or a joint inventor; 

16 and 

17 ‘‘(ii) the term ‘relevant section 112(a) 

18 requirements’ means the requirements for 

19 a specification under section 112(a) other 

20 than the requirement to set forth the best 

21 mode of carrying out the invention. 

22 ‘‘(B) PUBLIC DISCLOSURE.—A disclosure 

23 by any person shall not be prior art to a 

24 claimed invention under subsection (a) or sec25 tion 103 if— 


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1 ‘‘(i) the disclosure is made under sub2 section (a)(1) or effectively filed under 

3 subsection (a)(2) 1 year or less before the 

4 effective filing date of the claimed inven5 tion; and 

6 ‘‘(ii) before the disclosure described in 

7 clause (i) is made or filed, and 1 year or 

8 less before the effective filing date of the 

9 claimed invention, the claimed invention is 

10 publicly disclosed in a printed publication 

11 by a covered person in a manner that sat12 isfies the relevant section 112(a) require13 ments. 

14 ‘‘(C) DETERMINATION THAT PUBLIC DIS15 CLOSURE WOULD HAVE SATISFIED SPECIFICA16 TION REQUIREMENTS.—In determining under 

17 subparagraph (B) whether a claimed invention 

18 was publicly disclosed in a printed publication 

19 by a covered person in a manner that satisfied 

20 the relevant section 112(a) requirements— 

21 ‘‘(i) only the state of the art known 

22 on and before the date of the disclosure 

23 may be considered; and 

24 ‘‘(ii) satisfaction of the relevant sec25 tion 112(a) requirements may be— 


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1 ‘‘(I) established by 1 or more 

2 public disclosures in printed publica3 tions made by a covered person during 

4 the period of 1 year or less between— 

5 ‘‘(aa) the disclosure by the 

6 covered person described in sub7 paragraph (B)(ii); and 

8 ‘‘(bb) the effective filing 

9 date of the claimed invention; 

10 and 

11 ‘‘(II) supported by statements 

12 under declaration or oath relating to 

13 the existence and content of the public 

14 disclosure or disclosures in printed 

15 publications described in subclause 

16 (I). 

17 ‘‘(D) PRESUMPTION OF VALIDITY.—An ap18 plicant for a patent shall present to the Patent 

19 and Trademark Office, before the Patent and 

20 Trademark Office issues a notice of allowance 

21 of the application for the patent, each disclo22 sure under subparagraph (C)(ii)(I) and any 

23 statement under subparagraph (C)(ii)(II) in 

24 order for the section 112(a) support provided 

25 by each such disclosure or statement under subVerDate Sep 11 2014 01:13 Apr 17, 2015 Jkt 049200 PO 00000 Frm 00007 Fmt 6652 Sfmt 6201 E:\BILLS\S926.IS S926

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1 paragraph (C)(ii) to be taken into account 

2 under the section 282(a) presumption of valid3 ity of an issued patent. 

4 ‘‘(E) CERTAIN DISCLOSURES NOT PRIOR

5 ART.—A disclosure described in paragraph 

6 (1)(A), (2)(A), or (2)(C) shall not be prior art 

7 to a claimed invention under this paragraph. 

8 ‘‘(F) PROCEDURES.—The Patent and 

9 Trademark Office may establish procedures to 

10 carry out this paragraph.’’. 

11 SEC. 4. EFFECTIVE DATE. 

12 The amendments made by this Act shall take effect 

13 as if enacted as part of the Leahy-Smith America Invents 

14 Act (Public Law 112–29; 125 Stat. 284). 

Æ 


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