84R10297 DDT/MEW-D
By: Nichols S.B. No. 1457
A BILL TO BE ENTITLED
AN ACT
relating to bad faith claims of patent infringement; providing a
civil penalty; creating a criminal offense.
BE IT ENACTED BY THE LEGISLATURE OF THE STATE OF TEXAS:
SECTION 1. Chapter 17, Business & Commerce Code, is amended
by adding Subchapter L to read as follows:
SUBCHAPTER L. BAD FAITH CLAIMS OF PATENT INFRINGEMENT
Sec. 17.951. BAD FAITH CLAIMS OF PATENT INFRINGEMENT
PROHIBITED. A person may not send 10 or more written communications
per calendar year in which the person makes a bad faith claim of
patent infringement against a person located or doing business in
this state. A person makes a bad faith claim of patent infringement
if the communication includes an allegation that the recipient or a
person affiliated with the recipient has infringed a patent and is
liable for that infringement and:
(1) the communication falsely states that the sender
has filed a lawsuit in connection with the claim;
(2) the claim is objectively baseless because:
(A) the sender or a person the sender represents
does not have a current right to license the patent to or enforce
the patent against the recipient;
(B) the patent has been held invalid or
unenforceable in a final judgment or administrative decision; or
(C) the infringing activity alleged in the patent
occurred after the patent expired; or
(3) the communication is likely to materially mislead
a reasonable recipient because the communication does not contain
information sufficient to inform the recipient of:
(A) the identity of the person asserting the
claim;
(B) the patent that is alleged to have been
infringed; and
(C) at least one product, service, or activity of
the recipient that is alleged to infringe the patent.
Sec. 17.952. ENFORCEMENT BY ATTORNEY GENERAL; INJUNCTION
AND CIVIL PENALTY. (a) If the attorney general believes that a
person has violated or is violating Section 17.951, the attorney
general may bring an action on behalf of the state to enjoin the
person from violating that section.
(b) In addition to seeking an injunction under Subsection
(a), the attorney general may request and the court may order any
other relief that may be in the public interest, including:
(1) the imposition of a civil penalty in an amount not
to exceed $50,000 for each violation of Section 17.951;
(2) an order requiring reimbursement to this state for
the reasonable value of investigating and prosecuting a violation
of Section 17.951; and
(3) an order requiring restitution to a victim for
legal and professional expenses related to the violation.
Sec. 17.953. CONSTRUCTION OF SUBCHAPTER. This subchapter
may not be construed to:
(1) limit rights and remedies available to the state
or another person under any other law;
(2) alter or restrict the attorney general's authority
under other law with regard to conduct involving claims of patent
infringement; or
(3) prohibit a person who owns or has a right to
license or enforce a patent from:
(A) notifying others of the person's ownership or
right;
(B) offering the patent to others for license or
sale;
(C) notifying any person of the person's
infringement of the patent as provided by 35 U.S.C. Section 287; or
(D) seeking compensation for past or present
infringement of the patent or for a license to the patent.
SECTION 2. Section 38.12, Penal Code, is amended by
amending Subsections (a) and (f) and adding Subsection (f-1) to
read as follows:
(a) A person commits an offense if, with intent to obtain an
economic benefit the person:
(1) knowingly institutes a suit or claim that the
person has not been authorized to pursue;
(2) solicits employment, either in person or by
telephone, for himself or for another;
(3) pays, gives, or advances or offers to pay, give, or
advance to a prospective client money or anything of value to obtain
employment as a professional from the prospective client;
(4) pays or gives or offers to pay or give a person
money or anything of value to solicit employment;
(5) pays or gives or offers to pay or give a family
member of a prospective client money or anything of value to solicit
employment; [or]
(6) accepts or agrees to accept money or anything of
value to solicit employment; or
(7) knowingly institutes a suit or claim for patent
infringement that constitutes a bad faith claim of patent
infringement under Section 17.951, Business & Commerce Code.
(f) Except as provided by Subsection (f-1), an [An] offense
under Subsection (a) or (b) is a felony of the third degree.
(f-1) An offense under Subsection (a)(7) is a Class A
misdemeanor.
SECTION 3. This Act takes effect September 1, 2015.