Last month, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) introduced the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL) Act. Under the guise of promoting efficiency and protecting the interests of the proverbial ‘little guy,’ the legislation’s proponents say that it will reform the Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.) to better serve inventors, ensure that the patent system incentivizes American innovation, and allow U.S. innovators to compete on the global stage. These assertions, however, deserve a second look.
In practice, the PREVAIL Act would severely limit access to PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. review and make it more difficult to challenge invalid patents on their merits. In fact, similar proposals outlined in the U.S. Patent and Trademark Office’s April Advance Notice of Proposed Rulemaking (ANPRM) received an onslaught of critical public comments, highlighting a variety of concerns from a wide array of stakeholders. It is not clear how this legislation would help inventors and innovation as its proponents suggest, but non-practicing entities (NPEsNon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More) and their funders will surely welcome a new law that makes it easier to continuously engage in baseless infringement litigation, without being subject to review.
Let’s take a look at just a few of the PREVAIL Act’s more significant changes to existing statute.
First, the PREVAIL Act would impose a brand-new standing requirement to access PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. review. Under the new law, parties would only be able to petition for PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. review if they have been sued for patent infringement or threatened with a patent infringement lawsuit. This severs access to review for many parties who have a legitimate interest in challenging questionable patents. Do you want to challenge a patent that is being used to sue your customers or members for infringement? Sorry, can’t do it. Do you receive a threatening letter, but it is vague enough to avoid being covered by the PREVAIL Act? You are on your own. Want to clear the field of patents before you invest years of time and millions of dollars into developing a product? Too bad.
On top of standing requirements, the PREVAIL Act also wades into real party in interest (RPI) rules. The Act lays out that any entity financially contributing to a PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. challenge is an RPI – regardless of whether they directly fund the challenge or just generally contribute to the petitioning organization – and that a petitioner and its RPIs can only bring one petition per patent. The added restrictions seem to be specifically directed at membership-based organizations, which help police NPENon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More abuse and in doing so promote patent quality and discourage bad behavior.
Then there is venue. The PREVAIL Act would enshrine the spirit of the deeply-flawed NHK-Fintiv rule with forum restrictions. The PREVAIL Act would require that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. deny a petition or dismiss a proceeding if a patent’s validity has already been upheld elsewhere – such as in federal court or at the International Trade Commission – and would require parties to choose between making validity challenges before the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. or in another forum. Both are direct roll-backs of the America Invents Act and strike at the heart of what makes efficient, expert PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. review so valuable in the first place. But they’re also fundamental rejections of patent law. A patent is never held “valid”. It might be held to be valid in light of certain prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed., but other prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. might still invalidate it.
The new restrictions on where you can make your arguments are compounded by what you can say in your arguments. The PREVAIL Act would require that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. reject petitions for review that raise the same or similar prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. or arguments that were previously presented to the USPTOUnited States Patent and Trademark Office. See also PTO., absent exceptional circumstances. The Act does not require that the prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. was considered or evaluated, merely that it was presented. This language is bound to cut off entirely independent and valid challenges based on previously-submitted evidence that was never actually considered, and opens up all sorts of new avenues for gamesmanship by patent holders who want to insulate themselves from challenges. Further, examiners often make mistakes—if they didn’t, the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. wouldn’t serve much purpose. Sometimes that mistake is not finding the right prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed., but sometimes an examiner simply misapprehends the prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. they do find. And this isn’t a hypothetical – I have personal experience with this. In an early IPR, we pointed out that a reference the examiner had cited against a dependent claimA claim that refers back to (depends on) and further limits a preceding dependent or independent claim. A patent typically only states a few independent claims, but many dependent claims which are narrower than the independent claim that they reference. The narrower the claim, the more likely it is to be valid against prior art, but the less likely it actually was anticipatory prior artPrior art is the knowledge in the field of a patent that was publicly available before the patent was filed. for the independent claims. The PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. agreed, instituting review, and the patent owner (a subsidiary of well-known NPENon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More Acacia) settled to avoid having their patent invalidated. Barring the USPTOUnited States Patent and Trademark Office. See also PTO. from reviewing its own work is, again, a direct roll-back of the America Invents Act.
These are only a handful of the PREVAIL Act changes that would upend post-grant reviewA procedure by which a third-party may contest issuance of a patent at the USPTO within a short period (9 months) after issuance. Introduced to the U.S. by the AIA. The EPO has a similar procedure. as we know it. The legislation appears to primarily be a response to oft-repeated assertions by certain interest groups that patent owners – particularly small patent owners – face repeated harassment through coordinated validity challenges and that current review practices create opportunities for abuse by petitioners.
For new legislative proposals to veer so wildly from a system that has been operating effectively for the past decade – rule changes that like Fintiv aside – one would expect to see long lists detailing patent owner harassment and PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. abuse by challengers to justify such an extreme shift. But USPTOUnited States Patent and Trademark Office. See also PTO. data on serial and parallel petitions tell a different story – that both are infrequent and declining – and in the rare instances where there has been petitioner abuse, it has been appropriately addressed by the agency within the confines of existing law. And small patent owners rarely face validity challenges—and when they do, they’re essentially always because the small patent owner has initiated litigation against the petitioner.
I am left scratching my head at why PREVAIL Act advocates are so much more concerned with the hypothetical harassment of patent owners and abuse of PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. review by petitioners than they are with the frequent actual ongoing harassment of businesses and abuse of patent infringement lawsuits by NPEsNon-Practicing Entity. A broad term associated with trolls but now disfavored because it includes universities and legitimate technology developers that seek to license technology in advance rather than after a producing company has independently developed it. More. Open access to PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. review has been a critical tool in this battle. PREVAIL would go a long way to making sure that innovators would lose the fight.
