Representatives Deborah Ross (NC-02) and Nathaniel Moran (TX-01) introduced their Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act, while Senators Chris Coons (D-Del.), Thom Tillis (R-N.C.) Dick Dubrin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced companion legislation in the Senate. The PREVAIL Act supports American inventors, encourages investments in intellectual property, secures U.S. global technology leadership, and safeguards both economic and national security. This legislation updates and improves our patent system to ensure it protects essential property rights.
“I’m proud to represent the Research Triangle Park, where world-class institutions, organizations, scientists, and innovators are propelling our state and country to new heights,” said Congresswoman Ross. “It’s critical that we work across party lines to ensure the people who are driving our country’s innovation have the tools they need to thrive. That’s why I’m proud to reintroduce the PREVAIL Act, which will institute much-needed reforms to PTAB and create a fairer system for inventors and researchers. When we support innovators, we bolster American competitiveness and the American economy.”
“The PREVAIL Act provides much needed protection for American inventors by addressing the most egregious problems with the existing PTAB system. By correcting some of the imbalances that have allowed large corporations to exploit the system and silence competition, the PREVAIL Act will restore confidence in our patent process, reduce abuse of the PTAB system, increase transparency, and ensure that the rights of everyday inventors are protected—not crushed by legal loopholes and procedural abuse outside of an Article III courtroom. In short, it will help spur American innovation rather than deter it,” said Congressman Moran.
“Whether you have the backing of a huge company or are tinkering in your garage, you should be confident that your ideas and innovation will be protected. That’s what the Patent Trial and Appeal board was intended to do,” said Senator Coons. “Unfortunately, bad actors ranging from multinational corporations to overseas grifters have spent the last decade exploiting the PTAB to harass innovators and prevent them from profiting off their creations. With the bipartisan PREVAIL Act, we restore fairness to the patent process and let America get back to inventing and innovating.”
“To maintain the United States’ position as the global leader in technology and innovation, we must work with inventors – large and small – to improve and streamline our patent system,” said Senator Tillis. “The PREVAIL Act makes commonsense changes to our patent system that will increase transparency, safeguard patents, eliminate duplicative legal proceedings, and encourage American inventors to design and create. We must restore faith and confidence in the Patent Trial and Appeal Board.”
“A strong patent system helps American innovation remain at the global forefront. The bipartisan PREVAIL ACT will support our innovators by leveling the playing field when it comes to adjudicating patent validity, further encouraging innovation and economic growth,” said Senator Durbin.
“America’s patent system drives innovation and fuels long-term economic growth by supporting small businesses and entrepreneurs in Hawaii and across the country,” said Senator Hirono. “The PREVAIL Act supports this crucial innovation by ensuring all patents are treated the same no matter where they are challenged and eliminating the repetitive challenges that have placed unnecessary burdens on innovative startups, inventors, and universities.”
The Patent Trial and Appeal Board (PTAB) was created within the U.S. Patent and Trademark Office (USPTO) to provide a faster, more efficient process for adjudicating patent validity than going to federal district court. However, in practice, the PTAB has become a forum where patent claims are consistently invalidated through proceedings that are duplicative of – not an alternative to – the district court. According to USPTO data, approximately 80% of PTAB proceedings that reach a final written decision result in the invalidation of at least one challenged patent claim. Two-thirds of those proceedings result in the invalidation of all challenged patent claims.
The PREVAIL Act would reform the PTAB to ensure fair treatment for inventors, establish a true alternative to district court litigation, and equip the USPTO with the resources it needs to effectively administer a patent system that incentivizes American innovation and enables U.S. innovators to compete. The bill would also end USPTO fee diversion and support innovative small businesses.
The PREVAIL Act would reform the PTAB in the following ways:
- Require standing for PTAB challengers and limit repeated petitions challenging the same patent
- Harmonize PTAB claim construction and burden of proof with federal district court
- End duplicative patent challenges by requiring a party to choose between making its validity challenges before the PTAB or in district court
- Increase transparency by prohibiting the USPTO director from influencing PTAB panel decisions
This bill has been endorsed by the Council for Innovation Promotion (C4IP), the Biotechnology Innovation Organization (BIO), and the Innovation Alliance.
Rep. Ross introduced a previous version of the PREVAIL Act with former Rep. Ken Buck (CO-04), alongside companion legislation in the Senate from Senators Coons and Tillis.
A fact sheet on the bill is available here.
The text of the bill is available here.