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Mississippi House Bill HB957

Mississippi 2025 Regular Session

Mississippi House Bill HB957 Compare Versions

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1-MISSISSIPPI LEGISLATURE 2025 Regular Session To: Judiciary A By: Representative Shanks House Bill 957 (As Passed the House) AN ACT TO REENACT SECTIONS 75-24-351 THROUGH 75-24-357, MISSISSIPPI CODE OF 1972, WHICH PROHIBIT BAD FAITH ASSERTIONS OF PATENT INFRINGEMENT AND ESTABLISH REMEDIES FOR PREVAILING PLAINTIFFS IN CIVIL ACTIONS INSTITUTED UNDER THOSE STATUTES; TO AMEND SECTION 75-24-359, MISSISSIPPI CODE OF 1972, TO EXTEND THE DATE OF THE REPEALER ON THOSE REENACTED SECTIONS; AND FOR RELATED PURPOSES. BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF MISSISSIPPI: SECTION 1. Section 75-24-351, Mississippi Code of 1972, is reenacted as follows: 75-24-351. The following words shall have the following meaning, unless the content clearly states otherwise: (a) "Affiliated person" means a person under common ownership or control of an intended recipient. (b) "Intended recipient" means a person who purchases, rents, leases or otherwise obtains a product or service in the commercial market that is not for resale in the ordinary business and that is, or later becomes, the subject of a patent infringement allegation. (c) "Person" means any natural person, partnership, corporation, company, trust, business entity or association, and any agent, employee, partner, officer, director, member, associate, or trustee thereof. SECTION 2. Section 75-24-353, Mississippi Code of 1972, is reenacted as follows: 75-24-353. (1) It is a violation of Sections 75-24-351 through 75-24-357 for a person, in connection with the assertion of a United States patent, to send, or cause any person to send, any written or electronic communication that states that the intended recipient or any affiliated person is infringing or has infringed a patent and bears liability or owes compensation to another person if: (a) The communication threatens litigation if compensation is not paid or the infringement issue is not otherwise resolved and there is a consistent pattern of such threats having been issued and no litigation having been filed; (b) The communication falsely states that litigation has been filed against the intended recipient or any affiliated person; or (c) The assertions contained in the communication lack a reasonable basis in fact or law because: (i) The person asserting the patent is not a person, or does not represent a person, with the current right to license the patent to, or to enforce the patent against, the intended recipient or any affiliated person; (ii) The communication seeks compensation for a patent that has been held to be invalid or unenforceable in a final, unappealable or unappealed judicial or administrative decision; (iii) The communication seeks compensation on account of activities undertaken after the patent has expired; or (iv) The content of the communication fails to include the information necessary to inform an intended recipient or any affiliated person about the patent assertion by failing to include any one of the following: 1. The identity of the person asserting a right to license the patent to or enforce the patent against the intended recipient or any affiliated person; 2. The patent number issued by the United States Patent and Trademark Office alleged to have been infringed; or 3. The factual allegations concerning the specific areas in which the intended recipient or affiliated person's products, services, or technology infringed the patent or are covered by the claims in the patent. (2) It is not a violation of Sections 75-24-351 through 75-24-357 for any person who owns or has the right to license or enforce a patent to: (a) Advise others of that ownership or right of license or enforcement; (b) Communicate to others that a patent is available for license or sale; (c) Notify another of the infringement of the patent; or (d) Seek compensation on account of past or present infringement, or for a license to the patent, if the person is not acting in bad faith. (3) The provisions of Sections 75-24-351 through 75-24-357 shall not apply to any written or electronic communication sent by: (a) Any owner of a patent who is using the patent in connection with substantial research, development, production, manufacturing, processing or delivery of products or materials; (b) A state institution of higher learning; (c) An agency of the State of Mississippi; (d) A technology transfer organization that is owned by or has a written affiliation agreement with a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq.; (e) Any person that has licensed patent rights from a state institution of higher learning, an agency of the State of Mississippi, or a technology transfer organization that is owned by or has a written affiliation agreement, a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq., provided that the ownership of the patent rights remains with the state institution of higher learning, the agency of the State of Mississippi, or the technology transfer organization that is owned by or has a written affiliation agreement with a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq.; or (f) Any person seeking a claim for relief arising under 35 USC Section 271(e)(2) or 42 USC Section 262s. SECTION 3. Section 75-24-355, Mississippi Code of 1972, is reenacted as follows: 75-24-355. (1) The Attorney General shall have the authority under Sections 75-24-351 through 75-24-357 to conduct civil investigations and bring civil actions. (2) In an action brought by the Attorney General under Sections 75-24-351 through 75-24-357, the court may award or impose any relief available under state law. (3) In addition to the relief provided for in Section 75-24-357, upon a motion by the Attorney General and a finding by the court that there is a reasonable likelihood that a person violated Section 75-24-353, the court may require the person to post a bond in an amount equal to a good faith estimate of the costs to litigate a claim and amounts reasonably likely to be recovered if an action were to be brought under Section 75-24-355. A hearing shall be held if either party requests a hearing. SECTION 4. Section 75-24-357, Mississippi Code of 1972, is reenacted as follows: 75-24-357. An intended recipient alleging a violation of Sections 75-24-351 through 75-24-357 may bring an action in any circuit court in this state. A court shall award litigation costs and fees, including reasonable attorney's fees, to a plaintiff who prevails in an action brought pursuant to this section. In addition, the court may award the following remedies to a plaintiff who prevails in an action brought pursuant to Sections 75-24-351 through 75-24-357: (a) Actual damages; and (b) Punitive damages in the amount equal to three (3) times the actual damages. SECTION 5. Section 75-24-359, Mississippi Code of 1972, is amended as follows: 75-24-359. Sections 75-24-351 through 75-24-359 * * *, Mississippi Code of 1972, shall stand repealed on July 1, * * *2025 2028. SECTION 6. This act shall take effect and be in force from and after July 1, 2025.
1+MISSISSIPPI LEGISLATURE 2025 Regular Session To: Judiciary A By: Representative Shanks House Bill 957 AN ACT TO REENACT SECTIONS 75-24-351 THROUGH 75-24-357, MISSISSIPPI CODE OF 1972, WHICH PROHIBIT BAD FAITH ASSERTIONS OF PATENT INFRINGEMENT AND ESTABLISH REMEDIES FOR PREVAILING PLAINTIFFS IN CIVIL ACTIONS INSTITUTED UNDER THOSE STATUTES; TO AMEND SECTION 75-24-359, MISSISSIPPI CODE OF 1972, TO EXTEND THE DATE OF THE REPEALER ON THOSE REENACTED SECTIONS; AND FOR RELATED PURPOSES. BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF MISSISSIPPI: SECTION 1. Section 75-24-351, Mississippi Code of 1972, is reenacted as follows: 75-24-351. The following words shall have the following meaning, unless the content clearly states otherwise: (a) "Affiliated person" means a person under common ownership or control of an intended recipient. (b) "Intended recipient" means a person who purchases, rents, leases or otherwise obtains a product or service in the commercial market that is not for resale in the ordinary business and that is, or later becomes, the subject of a patent infringement allegation. (c) "Person" means any natural person, partnership, corporation, company, trust, business entity or association, and any agent, employee, partner, officer, director, member, associate, or trustee thereof. SECTION 2. Section 75-24-353, Mississippi Code of 1972, is reenacted as follows: 75-24-353. (1) It is a violation of Sections 75-24-351 through 75-24-357 for a person, in connection with the assertion of a United States patent, to send, or cause any person to send, any written or electronic communication that states that the intended recipient or any affiliated person is infringing or has infringed a patent and bears liability or owes compensation to another person if: (a) The communication threatens litigation if compensation is not paid or the infringement issue is not otherwise resolved and there is a consistent pattern of such threats having been issued and no litigation having been filed; (b) The communication falsely states that litigation has been filed against the intended recipient or any affiliated person; or (c) The assertions contained in the communication lack a reasonable basis in fact or law because: (i) The person asserting the patent is not a person, or does not represent a person, with the current right to license the patent to, or to enforce the patent against, the intended recipient or any affiliated person; (ii) The communication seeks compensation for a patent that has been held to be invalid or unenforceable in a final, unappealable or unappealed judicial or administrative decision; (iii) The communication seeks compensation on account of activities undertaken after the patent has expired; or (iv) The content of the communication fails to include the information necessary to inform an intended recipient or any affiliated person about the patent assertion by failing to include any one of the following: 1. The identity of the person asserting a right to license the patent to or enforce the patent against the intended recipient or any affiliated person; 2. The patent number issued by the United States Patent and Trademark Office alleged to have been infringed; or 3. The factual allegations concerning the specific areas in which the intended recipient or affiliated person's products, services, or technology infringed the patent or are covered by the claims in the patent. (2) It is not a violation of Sections 75-24-351 through 75-24-357 for any person who owns or has the right to license or enforce a patent to: (a) Advise others of that ownership or right of license or enforcement; (b) Communicate to others that a patent is available for license or sale; (c) Notify another of the infringement of the patent; or (d) Seek compensation on account of past or present infringement, or for a license to the patent, if the person is not acting in bad faith. (3) The provisions of Sections 75-24-351 through 75-24-357 shall not apply to any written or electronic communication sent by: (a) Any owner of a patent who is using the patent in connection with substantial research, development, production, manufacturing, processing or delivery of products or materials; (b) A state institution of higher learning; (c) An agency of the State of Mississippi; (d) A technology transfer organization that is owned by or has a written affiliation agreement with a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq.; (e) Any person that has licensed patent rights from a state institution of higher learning, an agency of the State of Mississippi, or a technology transfer organization that is owned by or has a written affiliation agreement, a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq., provided that the ownership of the patent rights remains with the state institution of higher learning, the agency of the State of Mississippi, or the technology transfer organization that is owned by or has a written affiliation agreement with a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq.; or (f) Any person seeking a claim for relief arising under 35 USC Section 271(e)(2) or 42 USC Section 262s. SECTION 3. Section 75-24-355, Mississippi Code of 1972, is reenacted as follows: 75-24-355. (1) The Attorney General shall have the authority under Sections 75-24-351 through 75-24-357 to conduct civil investigations and bring civil actions. (2) In an action brought by the Attorney General under Sections 75-24-351 through 75-24-357, the court may award or impose any relief available under state law. (3) In addition to the relief provided for in Section 75-24-357, upon a motion by the Attorney General and a finding by the court that there is a reasonable likelihood that a person violated Section 75-24-353, the court may require the person to post a bond in an amount equal to a good faith estimate of the costs to litigate a claim and amounts reasonably likely to be recovered if an action were to be brought under Section 75-24-355. A hearing shall be held if either party requests a hearing. SECTION 4. Section 75-24-357, Mississippi Code of 1972, is reenacted as follows: 75-24-357. An intended recipient alleging a violation of Sections 75-24-351 through 75-24-357 may bring an action in any circuit court in this state. A court shall award litigation costs and fees, including reasonable attorney's fees, to a plaintiff who prevails in an action brought pursuant to this section. In addition, the court may award the following remedies to a plaintiff who prevails in an action brought pursuant to Sections 75-24-351 through 75-24-357: (a) Actual damages; and (b) Punitive damages in the amount equal to three (3) times the actual damages. SECTION 5. Section 75-24-359, Mississippi Code of 1972, is amended as follows: 75-24-359. Sections 75-24-351 through 75-24-359 * * *, Mississippi Code of 1972, shall stand repealed on July 1, * * *2025 2028. SECTION 6. This act shall take effect and be in force from and after July 1, 2025.
22
33 MISSISSIPPI LEGISLATURE
44
55 2025 Regular Session
66
77 To: Judiciary A
88
99 By: Representative Shanks
1010
1111 # House Bill 957
12-
13-## (As Passed the House)
1412
1513 AN ACT TO REENACT SECTIONS 75-24-351 THROUGH 75-24-357, MISSISSIPPI CODE OF 1972, WHICH PROHIBIT BAD FAITH ASSERTIONS OF PATENT INFRINGEMENT AND ESTABLISH REMEDIES FOR PREVAILING PLAINTIFFS IN CIVIL ACTIONS INSTITUTED UNDER THOSE STATUTES; TO AMEND SECTION 75-24-359, MISSISSIPPI CODE OF 1972, TO EXTEND THE DATE OF THE REPEALER ON THOSE REENACTED SECTIONS; AND FOR RELATED PURPOSES.
1614
1715 BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF MISSISSIPPI:
1816
1917 SECTION 1. Section 75-24-351, Mississippi Code of 1972, is reenacted as follows:
2018
2119 75-24-351. The following words shall have the following meaning, unless the content clearly states otherwise:
2220
2321 (a) "Affiliated person" means a person under common ownership or control of an intended recipient.
2422
2523 (b) "Intended recipient" means a person who purchases, rents, leases or otherwise obtains a product or service in the commercial market that is not for resale in the ordinary business and that is, or later becomes, the subject of a patent infringement allegation.
2624
2725 (c) "Person" means any natural person, partnership, corporation, company, trust, business entity or association, and any agent, employee, partner, officer, director, member, associate, or trustee thereof.
2826
2927 SECTION 2. Section 75-24-353, Mississippi Code of 1972, is reenacted as follows:
3028
3129 75-24-353. (1) It is a violation of Sections 75-24-351 through 75-24-357 for a person, in connection with the assertion of a United States patent, to send, or cause any person to send, any written or electronic communication that states that the intended recipient or any affiliated person is infringing or has infringed a patent and bears liability or owes compensation to another person if:
3230
3331 (a) The communication threatens litigation if compensation is not paid or the infringement issue is not otherwise resolved and there is a consistent pattern of such threats having been issued and no litigation having been filed;
3432
3533 (b) The communication falsely states that litigation has been filed against the intended recipient or any affiliated person; or
3634
3735 (c) The assertions contained in the communication lack a reasonable basis in fact or law because:
3836
3937 (i) The person asserting the patent is not a person, or does not represent a person, with the current right to license the patent to, or to enforce the patent against, the intended recipient or any affiliated person;
4038
4139 (ii) The communication seeks compensation for a patent that has been held to be invalid or unenforceable in a final, unappealable or unappealed judicial or administrative decision;
4240
4341 (iii) The communication seeks compensation on account of activities undertaken after the patent has expired; or
4442
4543 (iv) The content of the communication fails to include the information necessary to inform an intended recipient or any affiliated person about the patent assertion by failing to include any one of the following:
4644
4745 1. The identity of the person asserting a right to license the patent to or enforce the patent against the intended recipient or any affiliated person;
4846
4947 2. The patent number issued by the United States Patent and Trademark Office alleged to have been infringed; or
5048
5149 3. The factual allegations concerning the specific areas in which the intended recipient or affiliated person's products, services, or technology infringed the patent or are covered by the claims in the patent.
5250
5351 (2) It is not a violation of Sections 75-24-351 through 75-24-357 for any person who owns or has the right to license or enforce a patent to:
5452
5553 (a) Advise others of that ownership or right of license or enforcement;
5654
5755 (b) Communicate to others that a patent is available for license or sale;
5856
5957 (c) Notify another of the infringement of the patent; or
6058
6159 (d) Seek compensation on account of past or present infringement, or for a license to the patent, if the person is not acting in bad faith.
6260
6361 (3) The provisions of Sections 75-24-351 through 75-24-357 shall not apply to any written or electronic communication sent by:
6462
6563 (a) Any owner of a patent who is using the patent in connection with substantial research, development, production, manufacturing, processing or delivery of products or materials;
6664
6765 (b) A state institution of higher learning;
6866
6967 (c) An agency of the State of Mississippi;
7068
7169 (d) A technology transfer organization that is owned by or has a written affiliation agreement with a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq.;
7270
7371 (e) Any person that has licensed patent rights from a state institution of higher learning, an agency of the State of Mississippi, or a technology transfer organization that is owned by or has a written affiliation agreement, a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq., provided that the ownership of the patent rights remains with the state institution of higher learning, the agency of the State of Mississippi, or the technology transfer organization that is owned by or has a written affiliation agreement with a state institution of higher learning or an agency of the State of Mississippi, or is formed pursuant to Section 37-147-1 et seq.; or
7472
7573 (f) Any person seeking a claim for relief arising under 35 USC Section 271(e)(2) or 42 USC Section 262s.
7674
7775 SECTION 3. Section 75-24-355, Mississippi Code of 1972, is reenacted as follows:
7876
7977 75-24-355. (1) The Attorney General shall have the authority under Sections 75-24-351 through 75-24-357 to conduct civil investigations and bring civil actions.
8078
8179 (2) In an action brought by the Attorney General under Sections 75-24-351 through 75-24-357, the court may award or impose any relief available under state law.
8280
8381 (3) In addition to the relief provided for in Section 75-24-357, upon a motion by the Attorney General and a finding by the court that there is a reasonable likelihood that a person violated Section 75-24-353, the court may require the person to post a bond in an amount equal to a good faith estimate of the costs to litigate a claim and amounts reasonably likely to be recovered if an action were to be brought under Section 75-24-355. A hearing shall be held if either party requests a hearing.
8482
8583 SECTION 4. Section 75-24-357, Mississippi Code of 1972, is reenacted as follows:
8684
8785 75-24-357. An intended recipient alleging a violation of Sections 75-24-351 through 75-24-357 may bring an action in any circuit court in this state. A court shall award litigation costs and fees, including reasonable attorney's fees, to a plaintiff who prevails in an action brought pursuant to this section. In addition, the court may award the following remedies to a plaintiff who prevails in an action brought pursuant to Sections 75-24-351 through 75-24-357:
8886
8987 (a) Actual damages; and
9088
9189 (b) Punitive damages in the amount equal to three (3) times the actual damages.
9290
9391 SECTION 5. Section 75-24-359, Mississippi Code of 1972, is amended as follows:
9492
9593 75-24-359. Sections 75-24-351 through 75-24-359 * * *, Mississippi Code of 1972, shall stand repealed on July 1, * * *2025 2028.
9694
9795 SECTION 6. This act shall take effect and be in force from and after July 1, 2025.