[Congressional Bills 118th Congress]
[From the U.S. Government Publishing Office]
[H.R. 8134 Introduced in House (IH)]
<DOC>
118th CONGRESS
2d Session
H. R. 8134
To promote the leadership of the United States in global innovation by
establishing a robust patent system that restores and protects the
right of inventors to own and enforce private property rights in
inventions and discoveries, and for other purposes.
_______________________________________________________________________
IN THE HOUSE OF REPRESENTATIVES
April 26, 2024
Mr. Massie (for himself, Ms. Kaptur, Mr. Cloud, Mr. Davidson, Mr. Good
of Virginia, Mr. Gosar, Ms. Greene of Georgia, Mr. Higgins of
Louisiana, Mr. McClintock, Mr. Mooney, Mr. Norman, Mr. Posey, Mr. Roy,
and Mr. Steube) introduced the following bill; which was referred to
the Committee on the Judiciary
_______________________________________________________________________
A BILL
To promote the leadership of the United States in global innovation by
establishing a robust patent system that restores and protects the
right of inventors to own and enforce private property rights in
inventions and discoveries, 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; TABLE OF CONTENTS.
(a) Short Title.--This Act may be cited as the ``Restoring
America's Leadership in Innovation Act of 2024''.
(b) Table of Contents.--The table of contents for this Act is as
follows:
Sec. 1. Short title; table of contents.
Sec. 2. Findings.
Sec. 3. Restoring the right of the first inventor to secure a patent.
Sec. 4. Abolishing inter partes and post-grant review.
Sec. 5. Abolishing the Patent Trial and Appeal Board.
Sec. 6. Elimination of fee diversion and full funding of the United
States Patent and Trademark Office.
Sec. 7. Patentability of scientific discoveries and software
inventions.
Sec. 8. Limitations on prior art.
Sec. 9. Restoring patents as a property right.
Sec. 10. Ending automatic publication of patent applications.
Sec. 11. Presumption of validity; defenses.
Sec. 12. Injunction.
Sec. 13. Best mode requirement.
SEC. 2. FINDINGS.
The Congress finds the following:
(1) The Congress created a patent system to ``promote the
Progress of Science and useful Arts, by securing for limited
Times to Authors and Inventors the exclusive Right to their
respective Writings and Discoveries,'' as provided for in the
Constitution of the United States.
(2) The Leahy-Smith America Invents Act (Public Law 112-29)
enacted on September 16, 2011, and several decisions of the
Supreme Court have harmed the progress of Science and the
useful Arts by eroding the strength and value of the patent
system.
(3) The United States Government exists to protect life,
liberty, and property, which includes intellectual property.
(4) A United States patent secures a private property right
to an inventor.
(5) This Act restores the patent system as envisioned by
the Constitution of the United States.
SEC. 3. RESTORING THE RIGHT OF THE FIRST INVENTOR TO SECURE A PATENT.
(a) Repeal of First-to-File System Under the America Invents Act.--
Section 3 of the Leahy-Smith America Invents Act (Public Law 112-29),
including each amendment made by such section, is repealed and any
amendment made by such section to any provision shall be effective as
if the provision had not been amended by such section.
(b) First-to-Invent.--Notwithstanding any other provision under
title 35, United States Code, a person shall be entitled to a patent
where the inventor is first to conceive of the invention and diligently
reduces the invention to practice.
(c) One-Year Grace Period.--Notwithstanding any other provision
under title 35, United States Code, a person shall be entitled to a
one-year grace period before filing an application for a patent, as the
grace period existed before the date of the enactment of the Leahy-
Smith America Invents Act under section 102 of title 35, United States
Code, and with the same meaning of the terms ``in public use'' and ``on
sale in this country'' as interpreted before the enactment of the
Leahy-Smith America Invents Act.
(d) Sense of Congress.--It is the sense of Congress that--
(1) reverting the United States patent system from a
``first-to-file'' system back to ``first-to-invent'' system
will promote the progress of science and the useful arts by
securing for limited times to inventors the exclusive rights to
their discoveries and incentivize innovation and protect
inventors' rights;
(2) restoring the one-year grace period before the first
and true inventor must file a patent application on an
invention will promote the progress of science and useful arts
by enabling inventors once again to disclose inventions in
order to attract investment, complete research and development
on the invention, test, improve, and perfect the invention so
as to improve the invention and the quality of the patent
application; and
(3) the repeal of section 3, and the amendments made by
section 3, of the Leahy-Smith America Invents Act, restore
sections 100, 102, 103, 135, and 291 of title 35, United States
Code, to the way such sections read on the day before the date
of the enactment of such Act.
SEC. 4. ABOLISHING INTER PARTES AND POST-GRANT REVIEW.
(a) Repeal of Inter Partes and Post-Grant Review.--Section 6 of the
Leahy-Smith America Invents Act (Public Law 112-29), including each
amendment made by such section, is repealed and any amendment made by
such section to any provision shall be effective as if the provision
had not been amended by such section.
(b) Repeal of Codified Titles.--Chapters 31 and 32 of title 35,
United States Code, are repealed.
(c) Sense of Congress.--It is the sense of Congress that--
(1) inter partes review and post-grant review proceedings
introduced by the Leahy-Smith America Invents Act have harmed
the progress of science and the useful arts by subjecting
inventors to serial challenges to patents;
(2) inter partes review and post-grant review proceedings
invalidate patents at an unreasonably high rate;
(3) patent rights should be protected from unfair
adjudication at the Patent and Trademark Office and duly issued
patents should be adjudicated in a judicial proceeding;
(4) repealing section 6 of the Leahy-Smith America Invents
Act abolishes inter partes review, post-grant review, and the
previously available inter partes reexamination proceedings;
and
(5) it is the intent of Congress to preserve ex parte
reexamination proceedings under chapter 30 of title 35, United
States Code.
SEC. 5. ABOLISHING THE PATENT TRIAL AND APPEAL BOARD.
(a) Repeal of Patent Trial and Appeal Board.--Section 7 of the
Leahy-Smith America Invents Act (Public Law 112-29) is repealed,
including each amendment made by such section, and any amendment made
by such section to any provision shall be effective as if the provision
had not been amended by such section.
(b) Board of Patent Appeals and Interferences.--
(1) Amendment.--Section 6 of title 35, United States Code,
is amended to read as follows:
``Sec. 6. Board of Patent Appeals and Interferences
``(a) Establishment and Composition.--There shall be in the Patent
and Trademark Office a Board of Patent Appeals and Interferences. The
Director, the Deputy Director, the Commissioner for Patents, the
Commissioner for Trademarks, and the administrative patent judges shall
constitute the Board. The administrative patent judges shall be persons
of competent legal knowledge and scientific ability who are appointed
by the Secretary of Commerce, in consultation with the Director.
``(b) Duties.--The Board of Patent Appeals and Interferences shall,
on written appeal of an applicant, review adverse decisions of
examiners upon applications for patents and shall determine priority
and patentability of invention in interferences declared under section
135(a). Each appeal and interference shall be heard by at least three
members of the Board, who shall be designated by the Director. Only the
Board of Patent Appeals and Interferences may grant rehearings. The
Board shall not invalidate an issued patent except in an ex parte
reexamination under chapter 30.
``(c) Authority of the Secretary.--The Secretary of Commerce may,
in the Secretary's discretion, deem the appointment of an
administrative patent judge who, before the date of the enactment of
this subsection, held office pursuant to an appointment by the
Director, to take effect on the date on which the Director initially
appointed the administrative patent judge.
``(d) Defense to Challenge of Appointment.--It shall be a defense
to a challenge to the appointment of an administrative patent judge on
the basis of the judge's having been originally appointed by the
Director that the administrative patent judge so appointed was acting
as a de facto officer.''.
(2) Technical and conforming amendment.--The table of
sections for chapter 1 of title 35, United States Code, is
amended by striking the item relating to section 6 and
inserting the following new item:
``6. Board of patent appeals and interferences.''.
(c) Appeal to the Board of Patent Appeals and Interferences.--
(1) Amendment.--Section 134 of title 35, United States
Code, as reinstated by section 3(a) of this Act, is amended by
striking subsection (c).
(2) Technical and conforming amendment.--The table of
sections for chapter 12 of title 35, United States Code, is
amended by striking the item relating to section 134 and
inserting the following new item:
``134. Appeal to the Board of Patent Appeals and
Interferences.''.
(d) Appeal to the Court of Appeals for the Federal Circuit.--
Section 141 of title 35, United States Code, is amended to read as
follows:
``Sec. 141. Appeal to the Court of Appeals for the Federal Circuit
``(a) Examinations.--An applicant dissatisfied with the decision in
an appeal to the Board of Patent Appeals and Interferences under
section 134 may appeal the decision directly to the United States Court
of Appeals for the Federal Circuit, or may seek review de novo in any
district court of the United States of competent jurisdiction.
``(b) Reexaminations.--A patent owner who is, in a reexamination
proceeding, dissatisfied with the final decision in an appeal to the
Board of Patent Appeals and Interferences under section 134 may appeal
the decision directly to the United States Court of Appeals for the
Federal Circuit, or may seek review de novo in a district court of the
United States of competent jurisdiction.
``(c) Interference.--A party to an interference dissatisfied with
the decision of the Board of Patent Appeals and Interferences on the
interference may appeal the decision to the United States Court of
Appeals for the Federal Circuit, but such appeal shall be dismissed if
any adverse party to such interference, within twenty days after the
appellant has filed notice of appeal in accordance with section 142,
files notice with the Director that the party elects to have all
further proceedings conducted as provided in section 146. If the
appellant does not, within thirty days after filing of such notice by
the adverse party, file a civil action under section 146, the decision
appealed from shall govern the further proceedings in the case.''.
(e) Sense of Congress.--It is the sense of Congress that--
(1) the Patent Trial and Appeal Board shall be replaced
with the former Board of Patent Appeals and Interferences;
(2) with the abolishment of inter partes review and post-
grant review proceedings, the Patent Trial and Appeal Board is
no longer needed to conduct these duties;
(3) unless otherwise in the context of an ex parte
reexamination under chapter 30 of title 35, United States Code,
the Board of Patent Appeals and Interferences will not be used
to invalidate an already issued patent;
(4) the changes described in paragraphs (1) through (3)
will protect the rights of patent owners who have been granted
a patent and ensure a fair, fully adjudicated proceeding to
invalidate an issued patent;
(5) the amendment to section 6 of title 35, United States
Code, reflects Congress's intent to require a judicial
proceeding to invalidate an issued patent; and
(6) the amendments to section 134 of title 35, United
States Code, and section 141 of title 35, United States Code,
are intended to restore each respective section to its prior
state, but delete any reference to inter partes reexamination,
which is no longer available.
SEC. 6. ELIMINATION OF FEE DIVERSION AND FULL FUNDING OF THE UNITED
STATES PATENT AND TRADEMARK OFFICE.
(a) Patent and Trademark Office Funding.--Section 42 of title 35,
United States Code, is amended--
(1) in subsection (a), by striking ``(a) All fees'' and
inserting ``(a) In General.--Fees'';
(2) in subsection (b)--
(A) by striking ``(b) All fees'' and inserting
``(b) Credit of Fees.--Fees''; and
(B) by striking ``Patent and Trademark Office
Appropriation Account'' and inserting ``United States
Patent and Trademark Office Innovation Promotion
Fund'';
(3) in subsection (c)--
(A) by striking ``(1) To the extent'' and all that
follows through ``fees'' and inserting ``(c) Use of
Fees.--(1) Fees'';
(B) in paragraph (1), by striking ``shall be
collected by and shall, subject to paragraph (3), be
available to the Director'' and inserting ``shall be
collected by the Director and shall be available to the
Director until expended'';
(C) by striking paragraph (2); and
(D) by redesignating paragraph (3) as paragraph
(2);
(4) by redesignating subsections (d) and (e) as subsections
(e) and (f), respectively; and
(5) by inserting after subsection (c) the following:
``(d) Revolving Fund.--
``(1) Definitions.--In this subsection:
``(A) Fund.--The term `Fund' means the United
States Patent and Trademark Office Innovation Promotion
Fund established under paragraph (2).
``(B) Trademark act of 1946.--The term `Trademark
Act of 1946' means the Act entitled `An Act to provide
for the registration and protection of trademarks used
in commerce, to carry out the provisions of certain
international conventions, and for other purposes',
approved July 5, 1946 (15 U.S.C. 1051 et seq.)
(commonly referred to as the `Trademark Act of 1946' or
the `Lanham Act').
``(2) Establishment.--There is established in the Treasury
a revolving fund to be known as the `United States Patent and
Trademark Office Innovation Promotion Fund'.
``(3) Derivation of resources.--There shall be deposited
into the Fund any fees collected under--
``(A) this title; or
``(B) the Trademark Act of 1946.
``(4) Expenses.--Amounts deposited into the Fund under
paragraph (3) shall be available, without fiscal year
limitation, to cover--
``(A) all expenses to the extent consistent with
the limitation on the use of fees set forth in
subsection (c), including all administrative and
operating expenses, determined in the discretion of the
Director to be ordinary and reasonable, incurred by the
Director for the continued operation of all services,
programs, activities, and duties of the Office relating
to patents and trademarks, as such services, programs,
activities, and duties are described under--
``(i) this title; and
``(ii) the Trademark Act of 1946; and
``(B) all expenses incurred pursuant to any
obligation, representation, or other commitment of the
Office.'';
(6) in subsection (e), as so redesignated, by striking
``The Director'' and inserting ``Refunds.-- The Director''; and
(7) in subsection (f), as so redesignated, by striking
``The Secretary'' and inserting ``Report.-- The Secretary''.
(b) Effective Date; Transfer From and Termination of Obsolete
Funds.--
(1) Effective date.--The amendments made by subsection (a)
shall take effect on the first day of the first fiscal year
that begins on or after the date of the enactment of this Act.
(2) Remaining balances.--There shall be deposited in the
Fund, on the effective date described in paragraph (1), any
available unobligated balances remaining in the Patent and
Trademark Office Appropriation Account, and in the Patent and
Trademark Fee Reserve Fund established under section 42(c)(2)
of title 35, United States Code, as in effect on the day before
the effective date.
(3) Termination of reserve fund.--Upon the payment of all
obligated amounts in the Patent and Trademark Fee Reserve Fund
under paragraph (2), the Patent and Trademark Fee Reserve Fund
shall be terminated.
SEC. 7. PATENTABILITY OF SCIENTIFIC DISCOVERIES AND SOFTWARE
INVENTIONS.
(a) Amendment.--Section 101 of title 35, United States Code, is
amended to read as follows:
``Sec. 101. Inventions patentable
``(a) In General.--Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title.
``(b) Exception.--A claimed invention is ineligible patent subject
matter under subsection (a) if the claimed invention as a whole, as
understood by a person having ordinary skill in the art, exists in
nature independently of and prior to any human activity, or exists
solely in the human mind.
``(c) Eligibility Standard.--The eligibility of a claimed invention
under subsections (a) and (b) shall be determined without regard as to
the requirements or conditions of sections 102, 103, and 112 of this
title, or the claimed invention's inventive concept.''.
(b) Sense of Congress.--It is the sense of Congress that--
(1) the Supreme Court's recent jurisprudence concerning
subject matter patentability has harmed the progress of science
and the useful arts;
(2) the United States patent system must protect and
encourage research and development in such scientific
disciplines as would promote the progress of science and the
useful arts by securing for limited times to inventors the
exclusive rights to their discoveries and provide scientists in
the life sciences, computer sciences, and other disciplines,
with certainty that their discoveries and inventions are
entitled to patent protection; and
(3) this amendment effectively abrogates Alice Corp. v. CLS
Bank International, 573 U.S. 208 (2014), Bilski v. Kappos, 561
U.S. 593 (2010), Association for Molecular Pathology v. Myriad
Genetics, 569 U.S. 576 (2013), Mayo Collaborative Services v.
Prometheus Laboratories, 566 U.S. 66 (2012), and its
predecessors to ensure that life sciences discoveries, computer
software, and similar inventions and discoveries are
patentable, and that those patents are enforceable.
SEC. 8. LIMITATIONS ON PRIOR ART.
Section 102 of title 35, United States Code, is amended to read as
follows:
``Sec. 102. Conditions for patentability; novelty
``(a) In General.--A person shall be entitled to a patent unless--
``(1) the invention was known or used by others in this
country, or patented or described in a printed publication in
this or a foreign country, before the invention thereof by the
applicant for patent;
``(2) the invention was patented or described in a printed
publication in this or a foreign country or in public use or on
sale in this country, more than one year prior to the date of
the application for patent in the United States;
``(3) he has abandoned the invention;
``(4) the invention was first patented or caused to be
patented, or was the subject of an inventor's certificate, by
the applicant or his legal representatives or assigns in a
foreign country prior to the date of the application for patent
in this country on an application for patent or inventor's
certificate filed more than twelve months before the filing of
the application in the United States;
``(5) the invention was described in (1) an application for
patent, published under section 122(b), by another filed in the
United States before the invention by the applicant for patent
or (2) a patent granted on an application for patent by another
filed in the United States before the invention by the
applicant for patent, except that an international application
filed under the treaty defined in section 351(a) shall have the
effects for the purposes of this subsection of an application
filed in the United States only if the international
application designated the United States and was published
under Article 21(2) of such treaty in the English language;
``(6) he did not himself invent the subject matter sought
to be patented; or
``(7)(A) during the course of an interference conducted
under section 135 or section 291, another inventor involved
therein establishes, to the extent permitted in section 104,
that before such person's invention thereof the invention was
made by such other inventor and not abandoned, suppressed, or
concealed; or
``(B) before such person's invention thereof, the invention
was made in this country by another inventor who had not
abandoned, suppressed, or concealed it. In determining priority
of invention under this subsection, there shall be considered
not only the respective dates of conception and reduction to
practice of the invention, but also the reasonable diligence of
one who was first to conceive and last to reduce to practice,
from a time prior to conception by the other.
``(b) Disclosures in Patent Applications and Patents.--A disclosure
shall not be prior art to a claimed invention under this section if
before the issuance of a patent--
``(1) the information disclosed was obtained directly or
indirectly from the inventor or a joint inventor;
``(2) the information disclosed to the Office or another
party during the one-year period prior to the date of the
application for patent had, before a patent application for the
information was effectively filed, been publicly disclosed by
the inventor or a joint inventor; or
``(3) the information disclosed and the claimed invention,
not later than the effective filing date of the claimed
invention, were owned by the same person or subject to an
obligation of assignment to the same person.''.
SEC. 9. RESTORING PATENTS AS A PROPERTY RIGHT.
(a) Private Property Patent Right.--
(1) Amendment.--Chapter 10 of title 35, United States Code,
is amended by adding at the end the following new section:
``Sec. 106. Private property patent right
``A patent right is a private property right secured to an inventor
upon issuance of the patent that shall only be revoked by a court
ruling in a judicial proceeding, unless the patent owner consents to an
administrative or other procedure.''.
(2) Technical and conforming amendment.--The table of
sections for chapter 10 of title 35, United States Code, is
amended by adding at the end the following new item:
``106. Private property patent right.''.
(b) Ownership; Assignment.--Section 261 of title 35, United States
Code, is amended--
(1) in the first sentence, by striking ``patents shall have
the attributes of personal property'' and inserting the
following: ``patents shall be recognized as private property
rights''; and
(2) by inserting after the second sentence the following:
``As private property rights, applications for patents, patents,
and interests therein shall be freely transferrable, in whole or in
part, including conveyance by assignment or license. Any successors,
heirs, assigns, or licensees of a patent owner, who receive a lesser
interest in a patent, shall be subject to any and all restrictions of
their interest in the patent, provided that the successors, heirs,
assigns, or licensees have actual or constructive notice of such
restrictions.''.
(c) Sense of Congress.--It is the sense of Congress that--
(1) recent jurisprudence of the United States Supreme
Court, including Oil States Energy Services v. Greene's Energy
Group, 138 S. Ct. 1365 (2018), have harmed the progress of
science and the useful arts by unconstitutionally changing the
treatment of fundamental patent rights to government-bestowed
public franchises from the Founders' original intent of
exclusive private property rights of limited duration;
(2) recent jurisprudence of the United States Supreme
Court, including Impression Products Inc. v. Lexmark
International, Inc., have harmed the progress of science and
the useful arts by limiting the ability of patent owners to
exclude unlicensed customers from their supply chains; and
(3) meaningful patent rights must permit patent owners to
freely assign their rights in whole, or in part, and to ensure
that successors, heirs, or assigns of a patent owner, or their
assigns, are duly bound by restrictions or exclusions set by
patent owners on the use of their property.
SEC. 10. ENDING AUTOMATIC PUBLICATION OF PATENT APPLICATIONS.
(a) Amendment.--Section 122(b) of title 35, United States Code, is
amended to read as follows:
``(b) Publication.--
``(1) In general.--Each application for a patent shall be
published, in accordance with procedures determined by the
Director, only upon the request of the patent applicant.
``(2) Information released once a patent issues.--No
information concerning a patent application shall be available
to the public unless and until a patent issues.''.
(b) Sense of Congress.--It is the sense of Congress that--
(1) automatic publication of patent applications after 18
months has harmed the progress of science and the useful arts
by creating ``prior art'' by operation of law that prevents a
patent owner from applying for a patent on the same invention
if a patent does not issue; and
(2) automatic publication of patent applications encourages
early disclosure of claimed inventions and subjects innovative
inventions and discoveries reduced to practice in the United
States to theft or appropriation by foreign competitors.
SEC. 11. PRESUMPTION OF VALIDITY; DEFENSES.
(a) Validity of a Patent in Adjudicatory Proceedings.--Section
282(a) of title 35, United States Code, is amended to read as follows:
``(a) In General.--
``(1) Presumption of validity for a patent.--In any
judicial or administrative proceeding conducted in any court or
Federal agency (as defined in section 201) or of any State, a
patent issued under this title shall be presumed valid.
``(2) Presumption of validity for claims of a patent.--In
any proceeding described under paragraph (1)--
``(A) each claim of a patent (whether in
independent, dependent, or multiple dependent form)
shall be presumed valid independently of the validity
of other claims; and
``(B) dependent or multiple dependent claims shall
be presumed valid even though dependent upon an invalid
claim.
``(3) Burden of establishing invalidity.--In any proceeding
described under paragraph (1) in which the validity of a patent
is at issue, the burden of establishing invalidity of a patent
or any claim thereof rests on the party asserting the
invalidity by clear and convincing evidence.''.
(b) Tolling Patent Term During Judicial Challenge.--Section 282 of
title 35, United States Code, is amended by adding at the end the
following:
``(d) Tolling of Patent Term During Validity Challenge.--In an
action involving a patent where the validity of the patent has been
challenged, the patent term shall be tolled from the time the validity
of the patent is challenged to the time of resolution of the validity
issue by the court. The patent term shall resume once the validity
challenge is resolved. The court may award damages to the patent owner
in a case in which another party brought a validity claim against the
patent in bad faith.''.
SEC. 12. INJUNCTION.
(a) Amendment.--Section 283 of title 35, United States Code, is
amended--
(1) by striking ``The'' and inserting the following:
``(a) In General.--The''; and
(2) by adding at the end the following new subsection:
``(b) Permanent Injunction.--
``(1) In general.--Upon a finding of infringement of a
patent, the court shall presume that further infringement of
the patent would cause the patent owner irreparable harm. This
presumption may be overcome only by a showing of clear and
convincing evidence by the infringing party that the patent
owner would not be irreparably harmed by further infringement
of the patent. The patent owner is not required to make or sell
a product covered by the patent to show irreparable harm.
``(2) Patent owner defined.--In this subsection, a `patent
owner' means the owner of the patent or an exclusive licensee
of the patent.''.
(b) Sense of Congress.--It is the sense of Congress that this
section abrogates the Supreme Court's ruling in and subsequent lower
court interpretations of eBay v. MercExchange, 547 U.S. 388 (2006),
which has been applied as a de facto presumption against granting
patent owners injunctive relief.
SEC. 13. BEST MODE REQUIREMENT.
Section 15 of the Leahy-Smith America Invents Act (Public Law 112-
29), including each amendment made by such section, is repealed and any
provision amended by such section shall be amended to read as in effect
on the day before the date of the enactment of such Act.
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