[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