I 
114TH CONGRESS 
1ST SESSION H. R. 1791 
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 HOUSE OF REPRESENTATIVES 
APRIL 14, 2015 
Mr. SENSENBRENNER (for himself and Mr. CONYERS) introduced the 
following bill; which was 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 encour-
age 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 Representa-
tives of the United States of America in Congress assembled, 
SECTION 1. SHORT TITLE. 
This Act may be cited as the ‘‘Grace Period Restora-
tion Act of 2015’’. 
SEC. 2. FINDINGS; PURPOSES. 
(a) FINDINGS.—Congress finds the following: 
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(1) Language in the Leahy-Smith America In-
vents Act (Public Law 112–29; 125 Stat. 284) and 
regulations and examination guidelines issued by the 
United States Patent and Trademark Office imple-
menting provisions of that Act have created uncer-
tainty 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 ap-
plication 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 in-
tent 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 chap-
ter 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 uti-
lizing 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 
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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 un-
certainty 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 ex-
pensive patent litigation. 
(7) Discouragement of scientific research publi-
cation— 
(A) delays the disclosure of scientific ad-
vances 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 dis-
closed inventions is likely to increase, especially in 
countries that take advantage of the technological 
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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 In-
tellectual 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 sci-
entific progress. 
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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 sec-
tion 103 if— 
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‘‘(i) the disclosure is made under sub-
section (a)(1) or effectively filed under 
subsection (a)(2) 1 year or less before the 
effective filing date of the claimed inven-
tion; 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 sat-
isfies the relevant section 112(a) require-
ments. 
‘‘(C) DETERMINATION THAT PUBLIC DIS-
CLOSURE WOULD HAVE SATISFIED SPECIFICA-
TION
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 sec-
tion 112(a) requirements may be— 
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‘‘(I) established by 1 or more 
public disclosures in printed publica-
tions made by a covered person during 
the period of 1 year or less between— 
‘‘(aa) the disclosure by the 
covered person described in sub-
paragraph (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 ap-
plicant 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 disclo-
sure 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 sub-
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paragraph (C)(ii) to be taken into account 
under the section 282(a) presumption of valid-
ity 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). 
Æ 
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