I 
113TH CONGRESS 
1ST SESSION H. R. 3540 
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 
NOVEMBER 19, 2013 
Mr. POLIS (for himself, Mr. MARINO, and Mr. DEUTCH) introduced the fol-
lowing bill; which was referred to the Committee on the Judiciary, and 
in addition to the Committee on Energy and Commerce, for a period to 
be subsequently determined by the Speaker, in each case for consider-
ation of such provisions as fall within the jurisdiction of the committee 
concerned 
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. 
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 ‘‘Demand Letter Trans-
parency Act of 2013’’. 
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SEC. 2. DEMAND LETTER DISCLOSURE REQUIREMENT. 
(a) AMENDMENT.—Chapter 26 of title 35, United 
States Code, is amended by adding at the end the fol-
lowing new section: 
‘‘§ 263. Disclosure of Information Related to Patent 
Ownership 
‘‘(a) DEMAND LETTER DISCLOSURE.—Any entity 
that sends 20 or more demand letters during any 365- 
day period shall, not later than the disclosure deadline, 
submit to the Patent and Trademark Office with respect 
to each patent that was the subject in each such letter 
the following: 
‘‘(1) Identification of the patent and confirma-
tion that the entity that sent the letter is the owner 
of the patent (or a representative of such person) 
and is the last recorded entity in the records of the 
Patent and Trademark Office for purposes of as-
signment, grant, or conveyance under this chapter. 
‘‘(2) Identification of the entity that has the 
right to license the patent or, in the case of a patent 
already exclusively licensed, the name of the exclu-
sive licensee. 
‘‘(3) Identification of each entity asserting a 
claim with regard to a patent in such letter in ac-
cordance with subsection (b). 
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‘‘(4) Identification of each obligation to license 
the patent on reasonable and nondiscriminatory 
terms, including a copy of each letter of assurance 
to each standard-setting organization with respect to 
such obligation, and the financial terms, including 
the rate, at which such patent has been licensed pur-
suant to such obligation. 
‘‘(5) Identification of the ultimate parent entity 
of such entity. 
‘‘(6) Identification of the number of entities 
that received a demand letter from the entity that 
sent the letter. 
‘‘(7) Identification of any case that has been 
filed by such entity relating to each such patent, in-
cluding the docket number and the court in which 
the case was filed. 
‘‘(8) Identification of any ex parte review under 
chapter 30 or inter partes review under chapter 31 
of such patent. 
‘‘(9) Any required registration fee established 
with regard to this section. 
‘‘(b) INFORMATION NOT READILY ACCESSIBLE.—An 
entity required to disclose the information described under 
subsection (a) shall include with such disclosure a descrip-
tion of any information described under subsection (a) 
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that is not disclosed, why such undisclosed information 
was not readily accessible, and the efforts made by such 
entity to access such undisclosed information. 
‘‘(c) IDENTIFICATION.— 
‘‘(1) PUBLICLY TRADED.—For purposes of sub-
section (a)(3), if the entity to be identified is owned 
or controlled by a corporation traded on a public 
stock exchange, an identification of the publicly 
traded corporation and the public stock exchange 
shall be sufficient. 
‘‘(2) NOT PUBLICLY TRADED.—For purposes of 
subsection (a)(3), if the entity to be identified is not 
owned or controlled by a publicly traded corporation, 
the information shall identify— 
‘‘(A) in the case of a partnership, the 
name and address of each partner or other enti-
ty, holding more than a 5 percent share of that 
partnership; 
‘‘(B) in the case of a corporation, the loca-
tion of incorporation and the name of each offi-
cer of the corporation; 
‘‘(C) in the case of an entity that is di-
rectly or indirectly controlled by another entity, 
the name and address of the entity and each 
other entity, and the name, address, location of 
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incorporation, and each officer or partner of the 
entity and each other entity; and 
‘‘(D) for each individual, the name and ad-
dress of that individual. 
‘‘(3) NUMBER OF DEMAND LETTERS.—The re-
quirement under subsection (a)(6) shall be updated 
regularly by the Director. 
‘‘(d) FAILURE TO COMPLY.— 
‘‘(1) MONETARY SANCTIONS.—Any entity that 
does not meet the requirements of this section with 
regard to a patent or the disclosure requirements 
with respect to a demand letter under section 264 
may be subject to monetary sanctions by a court in 
an action brought by such entity with regard to in-
fringement or validity of such patent, for an amount 
to be awarded to the adverse party that covers any 
cost incurred by the adverse party resulting from the 
failure of such entity to meet the requirements of 
this section, including any reasonable cost incurred 
by such adverse party to discover the correct and 
complete information described under subsection (a) 
with regard to such patent, unless such sanctions 
would be unjust. 
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‘‘(2) AWARD OF DAMAGES OR FEES.—A court 
in a case involving monetary sanctions described in 
paragraph (1)— 
‘‘(A) may not award treble damages under 
the second undesignated paragraph of section 
284 or attorney’s fees under section 285 to the 
entity described in paragraph (1), unless the 
denial of such damages or fees would be mani-
festly unjust; and 
‘‘(B) shall consider good faith mistakes in 
a relevant demand letter when calculating attor-
neys fees under section 285 and damages under 
section 284. 
‘‘(e) ONGOING DUTY TO CORRECT
OR SUPPLE-
MENT.—An entity described in subsection (a) shall update 
any filing made pursuant to such subsection with correct 
information not later than 20 days after any change in 
the information described under subsection (a). 
‘‘(f) EXEMPTION.—This section shall not apply to 
any of the following: 
‘‘(1) The original inventor or joint inventor. 
‘‘(2) An institution of higher education (as that 
term is defined in section 101 of the Higher Edu-
cation Act of 1965 (20 U.S.C. 1001)). 
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‘‘(3) A technology transfer organization whose 
primary purpose is to facilitate the commercializa-
tion of technology developed by one or more institu-
tions of higher education. 
‘‘(g) DEFINITIONS.—In this section: 
‘‘(1) DEMAND LETTER.—The term ‘demand let-
ter’ means any written communication directed to an 
unaffiliated third party stating or indicating, directly 
or indirectly, that the intended recipient or anyone 
affiliated with that recipient is or may be infringing 
a patent, or may bear liability or owe compensation 
to another because of such patent. 
‘‘(2) DISCLOSURE DEADLINE.—The term ‘dis-
closure deadline’ means the lesser of 30 days after 
the 20th demand letter is sent or 15 days before the 
earliest date of compliance described in the 20th de-
mand letter. 
‘‘(3) ULTIMATE PARENT ENTITY.— 
‘‘(A) IN GENERAL.—Except as provided in 
subparagraph (B), the term ‘ultimate parent 
entity’ has the meaning given such term in sec-
tion 801.1(a)(3) of title 16, Code of Federal 
Regulations, or any successor regulation. 
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‘‘(B) MODIFICATION OF DEFINITION.—The 
Director may modify the definition of ‘ultimate 
parent entity’ by regulation.’’. 
(b) TECHNICAL AND CONFORMING AMENDMENT.— 
The table of sections for chapter 26 of title 35, United 
States Code, is amended by adding at the end the fol-
lowing new item: 
‘‘263. Disclosure of Information Related to Patent Ownership.’’. 
(c) REGULATIONS.—The Director may promulgate 
such regulations as are necessary to establish a registra-
tion fee in an amount sufficient to recover the estimated 
costs of administering section 263 of title 35, United 
States Code, as added by subsection (a), to facilitate the 
collection and maintenance of the information required by 
such section, and to ensure the timely disclosure of such 
information to the public. 
(d) DEMAND LETTER DATABASE.— 
(1) ESTABLISHMENT.—Not later than 180 days 
after the date of the enactment of this Act, the Di-
rector, in consultation with the Attorney General 
and the Federal Trade Commission, shall establish 
a publicly accessible and searchable database of the 
information obtained pursuant to section 263 of title 
35, United States Code, as added by subsection (a), 
to be maintained at and updated by the Office. 
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(2) PROTECTION OF INFORMATION.—The Di-
rector shall allow recipients of a demand letter (as 
such term is defined under section 263(g), as added 
by subsection (a)) to request the redaction of the 
company name, company-specific information, or any 
other company information from the database de-
scribed in paragraph (1). 
SEC. 3. DEMAND LETTER REQUIREMENT. 
(a) AMENDMENT.—Chapter 26 of title 35, United 
States Code, as amended by section 2(a), is amended by 
adding at the end the following new section: 
‘‘§ 264. Requirements for patent infringement de-
mand letters 
‘‘(a) IN GENERAL.—Any entity sending a demand 
letter shall include in any demand letter sent to another 
entity the following: 
‘‘(1) An identification of each patent that is or 
may be allegedly infringing. 
‘‘(2) An identification of each claim of each pat-
ent identified under paragraph (1) that is allegedly 
infringed. 
‘‘(3) For each claim identified under paragraph 
(2), an identification of each accused apparatus, 
product, feature, device, method, system, process, 
function, act, service, or other instrumentality (re-
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‘‘(11) Identification of any ex parte review 
under chapter 30 or any inter partes review under 
chapter 31 for each patent identified under para-
graph (1). 
‘‘(12) For each patent identified under para-
graph (1), whether such patent is subject to any li-
censing term or pricing commitments through any 
agency, organization, standard-setting body, or other 
entity or community. 
‘‘(13) The identity of any person other than the 
party alleging infringement, known to the party al-
leging infringement, who— 
‘‘(A) owns or co-owns a patent identified 
under paragraph (1); 
‘‘(B) is the assignee of a patent identified 
under paragraph (1); or 
‘‘(C) is an exclusive licensee to a patent 
identified under paragraph (1). 
‘‘(14) The identity of any person other than the 
party alleging infringement, known to the party al-
leging infringement, who has a legal right to enforce 
a patent identified under paragraph (1) through a 
civil action under any Act of Congress relating to 
patents or is licensed under such patent. 
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‘‘(15) The identity of any person with a direct 
financial interest in the outcome of the action, in-
cluding a right to receive proceeds, or any fixed or 
variable portion thereof. 
‘‘(16) A description of any agreement or other 
legal basis for a financial interest described in para-
graph (13). 
‘‘(17) A description of how the recipient of the 
demand letter can access the demand letter database 
of the Patent and Trademark Office. 
‘‘(18) At the bottom of such letter, a clear 
statement of the following: ‘You are not required to 
respond to this letter by law.’. 
‘‘(b) INFORMATION NOT READILY ACCESSIBLE.—An 
entity required to disclose the information described under 
subsection (a) shall include with such disclosure a descrip-
tion of any information described under subsection (a) 
that is not disclosed, why such undisclosed information 
was not readily accessible, and the efforts made by such 
entity to access such undisclosed information. 
‘‘(c) DEMAND LETTER DEFINED.—In this section, 
the term ‘demand letter’ shall have the meaning given that 
term under section 263(g).’’. 
(b) TECHNICAL AND CONFORMING AMENDMENT.— 
The table of sections for chapter 26 of title 35, United 
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States Code, as amended by section 2(b), is amended by 
adding at the end the following new item: 
‘‘264. Requirements for patent infringement demand letters.’’. 
SEC. 4. PENALTIES. 
(a) AMENDMENT.—Chapter 26 of title 35, United 
States Code, as amended by sections 2(a) and 3(a), is 
amended by adding at the end the following new section: 
‘‘§ 265. Penalties 
‘‘(a) DISCLOSURE OF INFORMATION TO THE PATENT 
AND TRADEMARK OFFICE VIOLATION.—Any entity that 
receives a demand letter and that believes the require-
ments under section 263 have not been met with respect 
to such patent may submit to the Office in writing a peti-
tion— 
‘‘(1) describing the requirements that have not 
been met under section 263; and 
‘‘(2) anything else the Director determines to 
be necessary. 
‘‘(b) DEMAND LETTER REQUIREMENT VIOLATION.— 
Any entity that receives a demand letter that does not 
meet the requirements described under section 264 may 
submit to the Office in writing a petition— 
‘‘(1) describing the requirements that have not 
been included in such letter; and 
‘‘(2) anything else the Director determines to 
be necessary. 
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‘‘(c) NOTICE OF INTENT TO ABANDON.—If the Of-
fice determines that the requirements of section 263 or 
264 have not been met with respect to a patent, the Office 
shall notify the patent owner that the patent will be voided 
unless a fee is paid not later than 3 months after the date 
on which the notification is sent. The Director may accept 
the payment of any fee required by this subsection if the 
delay is shown to the satisfaction of the Director to have 
been unintentional or unavoidable. The Director shall con-
sider good faith mistakes in the determination of whether 
to void a patent under this section. 
‘‘(d) DEMAND LETTER DEFINED.—In this section, 
the term ‘demand letter’ shall have the meaning given that 
term under section 263(g).’’. 
(b) TECHNICAL AND CONFORMING AMENDMENT.— 
The table of sections for chapter 26 of title 35, United 
States Code, as amended by sections 2(b) and 3(b), is 
amended by adding at the end the following new item: 
‘‘265. Penalties.’’. 
(c) REGULATIONS.—Not later than 180 days after 
the date of the enactment of this Act, the Director shall 
establish, by regulation, a fee for filing a petition under 
section 265 in such amounts as the Director determines 
to be reasonable. 
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SEC. 5. FEDERAL TRADE COMMISSION ENFORCEMENT. 
(a) ENFORCEMENT.—A violation of section 263 or 
264 of title 35, United States Code, as added by sections 
2 and 3, respectively, shall be treated as a violation of 
a rule defining an unfair or deceptive act or practice under 
section 18(a)(1)(B) of the Federal Trade Commission Act 
(15 U.S.C. 57a(a)(1)(B)). The Commission shall enforce 
such rules in the same manner, by the same means, and 
with the same jurisdiction, powers, and duties as though 
all applicable terms and provisions of the Federal Trade 
Commission Act were incorporated into and made a part 
of this section. Any entity who violates this section shall 
be subject to the penalties and entitled to the privileges 
and immunities provided in the Federal Trade Commis-
sion Act (15 U.S.C. 41 et seq.). 
(b) RULE OF CONSTRUCTION.—Nothing in this sec-
tion shall be construed— 
(1) to limit the authority of the Federal Trade 
Commission under any other provision of law; or 
(2) except as specifically provided in this sec-
tion to provide the Federal Trade Commission with 
any additional authority. 
SEC. 6. DEFINITIONS. 
In this Act: 
(1) DIRECTOR.—The term ‘‘Director’’ means 
the Under Secretary of Commerce for Intellectual 
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Property and Director of the United States Patent 
and Trademark Office. 
(2) OFFICE.—The term ‘‘Office’’ means the 
United States Patent and Trademark Office. 
SEC. 7. EFFECTIVE DATE. 
The amendments made by this Act shall take effect 
upon the expiration of the 6-month period beginning on 
the date of the enactment of this Act and shall apply to 
an entity that sends a demand letter (as such term is de-
fined under section 263(g) of title 35, United States Code, 
as added by section 2(a)) on or after that date. 
Æ 
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