PublishedJuly 31, 2023

Analysis of Comments Shows Strong Public Opposition to ANPRM, PREVAIL Proposals

Recent Patent Progress posts have focused on the harmful and overlapping policy proposals contained in the USPTO’s Advance Notice of Proposed Rulemaking (ANPRM) and the PREVAIL Act. As it turns out, many others share our concerns. 

Last week, Unified Patents released an analysis of the more than 14,500 public comments submitted in response to the ANPRM. The analysis confirms what anyone would conclude from taking just a cursory look through the posted comments – the public overwhelmingly opposes any new restrictions to Patent Trial and Appeal Board (PTAB) review. In fact, more than 95% of all comments submitted and more than 75% of unique comments submitted object to the ANPRM’s proposals. 

The PREVAIL Act was introduced just days after the ANPRM public comment period closed and bill sponsors apparently didn’t heed the public’s input. Many of the same types of proposals that appear in the ANPRM – geared toward restricting access to the PTAB and making invalid patents more difficult to challenge – are also reflected in the PREVAIL Act. This is perhaps unsurprising, given that PREVAIL is primarily a rebrand of the STRONGER Act, which has been repeatedly introduced, but failed to move, in numerous prior Congresses. 

Unified’s analysis summarizes key themes from the public outcry, including that patent trolls are a large concern (more than 70% of all comments mention “patent trolls” or “NPEs”); new PTAB standing requirements would harm small- and medium-sized entities; the open-source and pharmaceutical/health tech communities weighed in heavily in opposition to the rules; and the proposals would drive up costs and hurt the economy. 

The latter point is emphasized in CCIA’s comment. We note that “the proposals would likely result in significant negative impacts on American innovators. IPRs are a net benefit, reducing deadweight losses by petitioners and patent owners alike, and rules which reduce access to IPR will also reduce those economic benefits,” adding, “contrary to an instituted IPR scenario, each discretionary denial creates a deadweight loss of $2.06 million over the status quo ex ante of institution of meritorious petitions.”

Unified’s analysis correctly concludes that the flawed Congressional and USPTO proposals are up against overwhelming opposition. Let’s hope that leaders in Congress and at the USPTO have meant it when they have said stakeholder and public input is crucial. Assessing the comments in their totality could only lead to one conclusion: Both the ANPRM and PREVAIL Act must be abandoned.

Josh Landau

Patent Counsel, CCIA

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.

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