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[Congressional Bills 114th Congress]
[From the U.S. Government Publishing Office]
[S. 926 Introduced in Senate (IS)]

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.

    Be it enacted by the Senate and House of Representatives of the 
United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

    This Act may be cited as the ``Grace Period Restoration Act of 
2015''.

SEC. 2. FINDINGS; PURPOSES.

    (a) Findings.--Congress finds the following:
            (1) Language in the Leahy-Smith America Invents Act (Public 
        Law 112-29; 125 Stat. 284) and regulations and examination 
        guidelines issued by the United States Patent and Trademark 
        Office implementing provisions of that Act have created 
        uncertainty regarding the scope of the 1-year grace period 
        during which an inventor who discloses an invention to the 
        public may decide whether to file a patent application for the 
        invention (referred to in this Act as the ``grace period'').
            (2) The regulatory reading of the Leahy-Smith America 
        Invents Act does not comport with the intent of the sponsors of 
        that Act.
            (3) In performing more than 50 percent of all basic 
        research in the United States and pursuing the transfer of 
        research results to the private sector for the benefit of the 
        public under the auspices of chapter 18 of title 35, United 
        States Code (commonly known as the ``Bayh-Dole Act''), 
        institutions of higher education and government laboratories 
        face a difficult and expensive challenge in gaining and 
        utilizing the full scope of patent rights.
            (4) The uncertainty relating to the grace period created by 
        the Leahy-Smith America Invents Act adds to the challenge faced 
        by institutions of higher education and government laboratories 
        in gaining and utilizing the full scope of patent rights.
            (5) Job growth and the creation of start-up companies and 
        small businesses are thwarted by uncertainty as to the scope of 
        the grace period and by the difficulty and expense of gaining 
        and utilizing patent rights, which hinders the economy of the 
        United States and the technological leadership of the United 
        States in a competitive global economy.
            (6) Ambiguity and uncertainty in statutory text and 
        government regulations breed abusive and expensive patent 
        litigation.
            (7) Discouragement of scientific research publication--
                    (A) delays the disclosure of scientific advances to 
                the public;
                    (B) thwarts scientific advances;
                    (C) chills collaborative research activities; and
                    (D) delays, if not denies, the opportunity for the 
                public to realize the benefits of research results.
            (8) Misappropriation by third parties of disclosed 
        inventions is likely to increase, especially in countries that 
        take advantage of the technological prowess of the United 
        States without appropriately compensating inventors.
            (9) Secrecy is anathema to--
                    (A) the maintenance of a viable United States 
                patent system;
                    (B) the constitutional purpose of the United States 
                patent system; and
                    (C) the goal of the United States patent system of 
                promoting scientific progress.
            (10) In the words of David J. Kappos, who served as the 
        Under Secretary of Commerce for Intellectual Property and 
        Director of the United States Patent and Trademark Office 
        during the enactment of the Leahy-Smith America Invents Act, 
        the grace period before the enactment of the Leahy-Smith 
        America Invents Act was ``the gold standard of best 
        practices''.
    (b) Purposes.--The purposes of this Act are--
            (1) to correct the drafting problem in the Leahy-Smith 
        America Invents Act relating to the grace period; and
            (2) to maintain the position of leadership of the United 
        States in educational, technological, and scientific progress.

SEC. 3. DISCLOSURES FOLLOWING A PUBLIC DISCLOSURE OF A CLAIMED 
              INVENTION BY AN INVENTOR.

    Section 102(b) of title 35, United States Code, is amended by 
adding at the end the following:
            ``(3) Disclosures by any person after public disclosure of 
        a claimed invention by an inventor.--
                    ``(A) Definitions.--In this paragraph--
                            ``(i) the term `covered person', with 
                        respect to a claimed invention, means--
                                    ``(I) the inventor;
                                    ``(II) a joint inventor; or
                                    ``(III) another who obtained the 
                                claimed invention directly or 
                                indirectly from the inventor or a joint 
                                inventor; and
                            ``(ii) the term `relevant section 112(a) 
                        requirements' means the requirements for a 
                        specification under section 112(a) other than 
                        the requirement to set forth the best mode of 
                        carrying out the invention.
                    ``(B) Public disclosure.--A disclosure by any 
                person shall not be prior art to a claimed invention 
                under subsection (a) or section 103 if--
                            ``(i) the disclosure is made under 
                        subsection (a)(1) or effectively filed under 
                        subsection (a)(2) 1 year or less before the 
                        effective filing date of the claimed invention; 
                        and
                            ``(ii) before the disclosure described in 
                        clause (i) is made or filed, and 1 year or less 
                        before the effective filing date of the claimed 
                        invention, the claimed invention is publicly 
                        disclosed in a printed publication by a covered 
                        person in a manner that satisfies the relevant 
                        section 112(a) requirements.
                    ``(C) Determination that public disclosure would 
                have satisfied specification requirements.--In 
                determining under subparagraph (B) whether a claimed 
                invention was publicly disclosed in a printed 
                publication by a covered person in a manner that 
                satisfied the relevant section 112(a) requirements--
                            ``(i) only the state of the art known on 
                        and before the date of the disclosure may be 
                        considered; and
                            ``(ii) satisfaction of the relevant section 
                        112(a) requirements may be--
                                    ``(I) established by 1 or more 
                                public disclosures in printed 
                                publications made by a covered person 
                                during the period of 1 year or less 
                                between--
                                            ``(aa) the disclosure by 
                                        the covered person described in 
                                        subparagraph (B)(ii); and
                                            ``(bb) the effective filing 
                                        date of the claimed invention; 
                                        and
                                    ``(II) supported by statements 
                                under declaration or oath relating to 
                                the existence and content of the public 
                                disclosure or disclosures in printed 
                                publications described in subclause 
                                (I).
                    ``(D) Presumption of validity.--An applicant for a 
                patent shall present to the Patent and Trademark 
                Office, before the Patent and Trademark Office issues a 
                notice of allowance of the application for the patent, 
                each disclosure under subparagraph (C)(ii)(I) and any 
                statement under subparagraph (C)(ii)(II) in order for 
                the section 112(a) support provided by each such 
                disclosure or statement under subparagraph (C)(ii) to 
                be taken into account under the section 282(a) 
                presumption of validity of an issued patent.
                    ``(E) Certain disclosures not prior art.--A 
                disclosure described in paragraph (1)(A), (2)(A), or 
                (2)(C) shall not be prior art to a claimed invention 
                under this paragraph.
                    ``(F) Procedures.--The Patent and Trademark Office 
                may establish procedures to carry out this 
                paragraph.''.

SEC. 4. EFFECTIVE DATE.

    The amendments made by this Act shall take effect as if enacted as 
part of the Leahy-Smith America Invents Act (Public Law 112-29; 125 
Stat. 284).
                                 <all>
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