S-5610-119
Read twice and referred to the Committee on the Judiciary.
Sponsored by Ashley Moody (R-FL)
What it does
The bill would add a new section 106 to title 35 that bars the Patent Office from issuing a U.S. patent to a person (or its subsidiary, affiliate, successor, assign, legal representative, or privy) on the NS-CMIC List, the Section 1260H Chinese military companies list, or the FCC covered communications equipment list. Any patent held by such a person, whether issued before or after enactment, would be unenforceable while the person is on a list. It would also bar expedited review, including the Patent Prosecution Highway, for their applications. The President may waive these limits for renewable periods of up to 180 days, if the President determines there is not an essential security interest in applying them and reports to the Judiciary Committees at least 30 days beforehand. Listed persons could still file and have applications examined (other than expedited review), and patent ownership and term would not change.
Who benefits
U.S. companies and inventors who compete with or are sued by listed firms, since those firms could not enforce their patents while listed. National security agencies and supporters of limiting technology advantages for entities tied to the Chinese military or flagged telecom suppliers. Domestic firms facing infringement suits from listed entities, and the patent system's examiners, who would not have to process expedited requests from listed firms.
Who is hurt
Listed Chinese military-linked firms and covered telecom equipment makers, who could not obtain patents or enforce existing ones while listed. Affiliates, subsidiaries, successors, and assignees swept in by the broad coverage, including those who may have only loose ties to the listed entity. U.S. licensees, partners, and customers who rely on patents owned by listed firms, and U.S. firms that might lose licensing revenue. The Patent Office and Executive Branch would bear added administrative work to track lists and waiver reports.
Supporters argue
Supporters argue that firms the government has already identified as military-linked or security risks should not receive the legal monopoly and court remedies of U.S. patents. They contend the bill uses existing federal lists, keeps filing and ownership rights intact, and includes a time-limited presidential waiver with congressional reporting, so it balances security needs with flexibility and avoids new designation machinery.
Opponents argue
Opponents argue that making already-issued patents unenforceable based on list membership could be seen as a retroactive deprivation of property without a hearing, and that list inclusion decisions are made through executive processes with limited review. They contend the broad reach to affiliates and privies, and the risk of retaliation against U.S. patent holders abroad, could create legal uncertainty and might conflict with international treaty obligations on patents.
Constitutional context
Congress's power under the Patent Clause (Art. I, §8, cl. 8) to define patent rights is broad, but making existing patents unenforceable raises Fifth Amendment Takings and Due Process questions, since patents are treated as property (see Horne v. Department of Agriculture (2015) on property protection, and Florida Prepaid v. College Savings Bank (1999) treating patents as property for due process). Challenges might also cite TRIPS and Paris Convention obligations, though the bill directs the President to act consistently with international obligations in waivers.
Checks and balances
The Executive Branch gains waiver authority (limited to 180-day periods and 30-day advance reports to the Judiciary Committees), while Congress retains oversight and courts could review challenges to enforcement limits.
Historical precedent
Congress has previously used entity lists and sanctions to restrict dealings with specific foreign firms, such as the Section 889 NDAA procurement ban on certain Chinese telecom equipment, but no clear prior law has restricted patent enforcement by list status.