November Highlights: Reforming Patent Adjudication With PREVAIL
The Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act is one of the most important innovation policy priorities under consideration in Congress. The landmark bill would reform the Patent Trial and Appeal Board to eliminate duplicative proceedings — which unfairly benefit corporate giants accused of infringement — and protect inventors’ right to “quiet title” for their patents with that and several other changes, such as aligning key PTAB standards with those used in federal court. These reforms would bring significant and needed improvements to America’s patent system — leading to the protection of small businesses from abuses by large firms practicing predatory infringement.
In November, the Senate Judiciary Committee voted to advance the PREVAIL ACT out of committee for consideration in the full Senate — marking a historic milestone for intellectual property rights in the United States. With this favorable vote, C4IP has advocated for the swift passage of this bill by the Senate and House of Representatives this year:
- C4IP issued a statement commending the Senate Judiciary Committee for advancing the PREVAIL Act, applauding the committee’s leaders and the bill’s authors for championing policies that increase America’s innovative potential, and emphasizing why the bill’s critical to protecting small innovators from abusive litigation.
- C4IP’s statement was quoted in Law360 and IPWatchdog’s coverage of the development.
- You can find additional resources on the PREVAIL Act here and below:
Fostering Inventor Diversity Through the IDEA Act
Patent protections have long been a cornerstone of American innovation, but data suggests that there may not be equal awareness of, and opportunities to participate in, the invention economy shared by all Americans. For example, Black Americans are roughly three times less likely to be named on a patent than White Americans, and women, despite representing half of the U.S. population, receive fewer than 13% of patents. The Inventor Diversity for Economic Advancement (IDEA) Act, a bipartisan bill currently under consideration in Congress, aims to address these disparities by generating even more detailed information about participation in the patent system, with the ultimate aim of helping design policies to maximize our nation’s innovative output. The bill would instruct the U.S. Patent and Trademark Office to collect demographic information on a voluntary basis from patent applicants to help policymakers close the demographic gaps in patenting.
In November, the Senate Judiciary Committee voted to advance the IDEA Act out of committee for consideration in the full Senate. C4IP has been active in encouraging the passage of this important bill:
- C4IP issued a statement applauding the Senate Judiciary Committee’s advancement of the IDEA Act, thanking the committee’s leaders for their decisive action, and noting the bill’s importance to America’s future economic competitiveness.
- C4IP’s statement was also quoted in an IPWatchdog article recapping the Senate Judiciary Committee hearing in which members voted to advance the bill.
- You can find additional resources on the IDEA Act below:
Additional Coalition Updates
- On December 3, C4IP issued a statement applauding the USPTO’s decision to withdraw a proposed rule that would have imposed a burdensome new requirement for filing terminal disclaimers.
- On December 3, CSIS hosted a hybrid event on the role of intellectual property in innovation and geopolitical competition. The event featured a discussion with Rep. Nathaniel Moran (R-TX), moderated by C4IP Co-Chair Andrei Iancu.
- On November 20, C4IP was featured in IPWatchdog’s coverage of the USPTO’s final rules package on new patent fees, which will become effective in 2025.
- On November 18, former U.S. Commerce Secretary Gary Locke published an opinion essay in the Minnesota Star-Tribune underlining how PERA and the PREVAIL Act would bolster high-tech innovation across Minnesota.
“[B]ecause of court rulings and policies coming out of Washington, the innovation ecosystem that has contributed so much to the prosperity of this great state is now in danger. Congress needs to step in now to end this threat.”
- On November 16, C4IP Co-Chair and former USPTO Director Andrei Iancu published an opinion essay in The Hill tracing back the series of court decisions that have muddled patent eligibility law and urging Congress to pass PERA to resolve the confusion.
“By reasserting congressional authority over patent eligibility rules, PERA would provide the certainty needed to restart investment and restore U.S. leadership across multiple spheres, from biomedicine to computer science.”
- On November 14, C4IP Executive Director Frank Cullen featured in an episode of the Arizona’s Family “On Your Side” podcast, where he discussed the problem of counterfeit products and how consumers can avoid harm to their health and safety.
- On November 14, C4IP Board Member Judge Paul Michel (ret.) was quoted in IPWatchdog’s article on the Senate Judiciary Committee’s Nov. 14 markup session expressing hope for the future passage of PERA and the PREVAIL Act.
- On November 11, IP policy expert Patrick Kilbride published an opinion essay in IPWatchdog explaining how enacting PERA and PREVAIL would reverse the erosion of constitutionally protected patent rights that has occurred in recent years.
- On November 7, C4IP Executive Director Frank Cullen was quoted in an IAM article discussing potential changes to IP policy in the second Trump administration, in which he expressed C4IP’s desire to work with incoming officials and lawmakers to bolster IP protections.
- On November 7, C4IP co-signed a statement from numerous pro-IP organizations and thought leaders that called on European Union policymakers to strengthen Europe’s system of IP rights and promote investment into innovative industries.
- On November 7, C4IP Chief Policy Officer and Counsel Jamie Simpson spoke at the 11th Annual IP Dealmakers Forum on a panel titled “The Policy Landscape,” discussing post-election patent policy, key legislation like PERA, RESTORE, and PREVAIL, the future of SEPs in the United States, and what lies ahead in litigation funding and disclosure.
Government Rundown
Senate Judiciary Committee Executive Business Meeting: Committee Markup of the PREVAIL Act:
On November 21, the Senate Judiciary Committee held a full committee meeting that included the markup of the PREVAIL Act, which includes several important reforms to the PTAB. The committee voted to advance the bill to the full Senate, which C4IP celebrated in a statement. (Senate Judiciary Committee, 11/21)
Senate Judiciary Committee, Subcommittee on Privacy, Technology, and the Law Hearing: Big Hacks & Big Tech: China’s Cybersecurity Threat:
On November 19, the Senate Judiciary Subcommittee on Privacy, Technology, and the Law held a hearing on the national security risks posed by U.S. tech companies’ dependence on China. Experts including Sam Bresnick of Georgetown University’s Center for Security and Emerging Technology, Isaac Stone Fish of Strategy Risks, Adam Meyers of Crowdstrike, and David Stehlin of the Telecommunications Industry Association testified as witnesses. (Senate Judiciary Committee, 11/19)
Senate Judiciary Committee Executive Business Meeting: Committee Markup of the IDEA Act:
On November 14, the Senate Committee on the Judiciary held a full committee meeting in which the committee voted to advance the IDEA Act. C4IP applauded the vote in a statement. (Senate Judiciary Committee, 11/14)
Senate Judiciary Committee, Subcommittee on Intellectual Property Hearing: Oversight of the United States Copyright Office:
On November 13, the Senate Judiciary Subcommittee on Intellectual Property held an oversight hearing of the U.S. Copyright Office. Subcommittee Chair Chris Coons (D-DE) presided over the hearing, while U.S. Copyright Office Director Shira Perlmutter provided testimony as the sole witness. (Senate Judiciary Committee, 11/13)
Fact Check
Seokbeom Kwon, a systems management engineering professor at Sungkyunkwan University in South Korea, recently published a journal article in Science claiming that over a quarter of U.S. patents on inventions derived from federally funded research do not disclose that funding as required by law. Kwon also claimed that research is less likely to acknowledge government research the larger the “private stake” in its application. Kwon’s assertions fueled anti-IP narratives and seemed designed to provide lawmakers with a pretext to enact new regulations that would burden collaborations between the public and private sectors.
However, the study’s methodology and reasoning are deeply flawed. A closer examination of Kwon’s research methods — and the assumptions implicit in them — reveals why policymakers should not take his sweeping conclusions at face value.
| Claim: Disparities between patent-paper pairs must be evidence of wrongdoing. |
| In reality: The Science article examines pairs of academic papers and patent filings — known as patent-paper pairs (PPPs) — under the assumption that if the patent and paper are associated with the same research, they must make the same disclosures. However, papers and patents operate under different standards. Disclosure requirements for patents are governed by law, while requirements for papers are largely decided by the specific conventions of each journal. Consequently, disparities between patents and papers are to be expected, and patents and papers that do not include the same information as one another can both simultaneously be truthful. The Science article’s interpretation that these disparities are necessarily dishonest falsely inflates its claimed rate of non-reporting. |
| Claim: Inventorship on a patent is equivalent to authorship of an academic article. |
| In reality: The Science article’s research methodology makes the implicit assumption that inventorship and authorship must be equivalent when it raises the alarm about grant recipients who are listed as an author on a paper but not as an inventor on the affiliated patent. Yet this is an incorrect assumption to make as, once again, patents are held to different standards than papers. U.S. patent laws are strict about who may be listed on a patent, requiring that only “true and only” inventors be named, and applicants who fail to comply with these rules may have their patents invalidated. On the other hand, who is listed as an author or contributor to a paper is affected by many factors — including traditions of academia — and has been rising steadily over time, meaning that less significant contributors may be included in a paper even when they are not eligible to be listed on a patent. Therefore, if a government-funded researcher is listed as an author on a paper but the corresponding patent does not disclose that person’s funding, it could simple be due to the differing rules regarding authorship and inventorship, rather than being evidence of deceit. |
| Claim: The publication of academic papers always precedes the patenting of an invention. |
| In reality: While the Science article operates under the assumption that all patents must report whatever government grants are referenced in the corresponding academic article, this is not necessarily the case because government funds may sometimes enter the equation after a patent has already been filed. For instance, if an invention is developed and patented using only private-sector funding, government funding may be awarded to follow-on research, which results in a published journal article. In that scenario, there would be no reason to expect a disclosure of federal funding on the patent, and there would be nothing untoward about the discrepancy between the patent and the article. |
Celebrating American Innovation
Inventor Spotlight
This month, C4IP is recognizing Philo T. Farnsworth, who revolutionized news and entertainment with his invention of the electronic television.
- Farnsworth was born in Utah in 1906 and was an avid scientist from a young age, learning about electronics from science magazines.
- He developed the idea for the electronic television — a device that could produce images using beams of electrons — in 1922 while still a high-school student.
- Farnsworth successfully built the device by 1927 and received a patent for it in 1930, then founded the company Farnsworth Television to commercialize it.
- He successfully defended his patents against invalidation attempts from the Radio Corporation of America, a larger competitor, and won $1 million in patent licenses.
- He received more than 300 U.S. and foreign patents over the course of his life, including for technologies such as radar, electronic microscopes, and nuclear fusion.
- The television has since become one of the most economically impactful modern inventions, revitalizing or pioneering industries such as news, movies, and video games.
- As of 2023, nearly 200 million TVs were shipped annually, and the value of the global television broadcasting market was estimated at more than $350 billion this year.
- Local TV broadcasts in the United States support over 193,000 jobs and generate over $34 billion in GDP annually, per a 2023 study.
(Photo credit: National Inventors Hall of Fame)
What’s Happening in Congress
As Democratic and Republican members of Congress continue to weigh legislative priorities during the 118th Congress, top of mind for those who follow intellectual property policy are:
The Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act: In July 2023, Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL), and Mazie Hirono (D-HI) – joined by Deborah Ross (D-NC), and later cosponsored by Nathaniel Moran (R-TX), on the House side – introduced legislation that will eliminate redundant patent invalidity challenges and safeguard Americans’ right to participate in a fair and accessible patent system. The PREVAIL Act contains important reforms to the Patent Trial and Appeal Board, which will return the body to its original purpose of providing an efficient alternative to district court litigation, and will curtail the practice by patent infringers of forcing inventors to defend their patents repeatedly and in multiple fora. In November 2024, the Senate Judiciary Committee voted to advance this bill to the Senate.
The Patent Eligibility Restoration Act of 2023: In June 2023, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) reintroduced legislation aimed at restoring patent eligibility for important categories of inventions – including life sciences diagnostics, gene therapies, and computer-implemented inventions – as well as resolving questions regarding the scope of patent eligibility. In so doing, the Patent Eligibility Restoration Act will foster the development of next-generation technologies across innovative industries. Representatives Kevin Kiley (R-CA) and Scott Peters (D-CA) introduced the House companion to this bill in September 2024.
The Realizing Engineering, Science, and Technology Opportunities by Restoring Exclusive (RESTORE) Patent Rights Act: In July 2024, Senators Chris Coons (D-DE) and Tom Cotton (R-AR), and Representatives Nathaniel Moran (R-TX), Madeleine Dean (D-PA), and Hank Johnson (D-GA) introduced legislation that aims to realign patent law with the U.S. Constitution and the Patent Act’s promise of “exclusive rights” to inventors. This bipartisan bill seeks to restore injunctive relief – court orders that stop infringers from utilizing patented technology – in response to the Supreme Court’s 2006 eBay v. MercExchange. That ruling substantially curtailed the granting of such injunctions, undermining the exclusive rights set forth in the U.S. Constitution to many inventors. C4IP strongly supports this legislation, viewing it as a pivotal moment for American innovation.
The Inventor Diversity for Economic Advancement (IDEA) Act of 2024: In September 2024, Senators Mazie Hirono (D-HI) and Thom Tillis (R-NC), alongside Representatives Nydia Velázquez (D-NY) and Young Kim (R-CA), reintroduced legislation that would direct the U.S. Patent and Trademark Office to collect demographic information from patent applicants on a voluntary basis. This data would provide clarity on current demographic gaps in patenting and could inform future reforms intended to help currently underrepresented communities, such as women and racial minorities, participate fully in the patent system. By helping ensure equitable access to intellectual property protections, the IDEA Act would help America harness the innovative talents of all its citizens, spurring economic growth and technological advancement. In November 2024, the Senate Judiciary Committee voted to advance this bill to the Senate.
The Nurture Originals, Foster Art, and Keep Entertainment Safe (NO FAKES) Act of 2024: In August 2024, Senators Chris Coons (D-DE) and Thom Tillis (R-NC), along with Senators Amy Klobuchar (D-MN) and Marsha Blackburn (R-TN), introduced bipartisan legislation intended to protect all individuals from having their voice and visual likeness copied by generative AI without consent. The bill would ensure that entities that produce or share a non-consensual digital replica of another person’s image or voice, such as an AI-generated “deepfake,” can be held liable for damages. It also provides a mechanism to hold platforms hosting user-generated content liable for the same, if they do not remove such unauthorized material after receiving notice. By safeguarding all individuals from exploitation, this legislation would ensure that music, videos, and other forms of content feature only individuals who agree to it, strengthening the rights of artists and actors, and preventing the exploitation of them and everyone else.
The Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce (SHOP SAFE) Act: In September 2023, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) introduced legislation designed to protect online consumers from harmful counterfeit products. By establishing trademark infringement liability for e-commerce platforms that allow the sale of dangerous counterfeit items, requiring brand owners to notify platforms of their mark(s) in advance, and providing safety from liability to platforms that appropriately vet and remove counterfeit sellers, the SHOP SAFE Act will protect American families as well as businesses and IP holders. Representatives Darrell Issa (R-CA), Jerry Nadler (D-NY), Ben Cline (R-VA), and Hank Johnson (D-GA) introduced the House companion to this bill in June 2024.
The Medication Affordability and Patent Integrity Act: In September 2023, Senators Maggie Hassan (D-NH) and Mike Braun (R-IN) introduced legislation that would require life sciences innovators to disclose vast amounts of confidential data to the USPTO. In addition, firms would also have to provide lengthy certifications stating that all information submitted to the FDA and USPTO is consistent. Proponents of the bill argue that such disclosures would help prevent drug companies from manipulating the patent system, keep weak patents from being issued, and lower drug costs for patients. However, there is no evidence that these problems exist. Rather than benefit patients, the requirements imposed by this bill would likely compromise the confidentiality of trade secrets and make it easier for companies to have their competitors’ patents invalidated. It would also drain USPTO resources and make the drug approval process even more burdensome for innovative companies. Due to these problems, as well as the lack of empirical support for the bill, C4IP opposes this legislation.
The Prohibiting Adversarial Patents (PAPA) Act: In September 2023, Representatives Scott Fitzgerald (R-WI), Mike Gallagher (R-WI), Darrell Issa (R-CA), and Blaine Luetkemeyer (R-MO) introduced legislation that raises a number of concerns. With the well-intended goal of protecting U.S. national security, the PAPA Act has the potential to trigger significant unintended consequences. These include potential retaliatory moves by China and other nations to suspend or render unenforceable patents owned by American companies, further enabling the theft of American IP overseas. The actions called for by the bill may well violate U.S. treaty obligations, which would, in turn, embolden other nations to violate IP-related treaties in various ways. In addition, confiscating patents, or rendering them unenforceable, violates basic principles of property and, therefore, could weaken the concept of patents as property rights. These and other considerations are of the utmost importance as U.S. lawmakers study the full scope of the PAPA Act. C4IP stands ready to work with Members of Congress to address the threat posed by foreign entities while maintaining the integrity of the U.S. patent system.
The Improving Efficiency to Increase Competition Act: In January 2024, Senators Thom Tillis (R-NC) and Chris Coons (D-DE) introduced legislation intended to reduce the administrative burden on universities and other institutions that receive federal research grants so that they can focus more intently on producing new innovations. Specifically, the legislation would direct the Government Accountability Office (GAO) to conduct a study on intellectual property reporting requirements under the Bayh-Dole Act, which vary between federal agencies. Such a study will offer important insights into how the government can make the reporting process more efficient and remove barriers that may have inhibited the development of new inventions.
The Interagency Patent Coordination and Improvement Act of 2023: In January 2023, Senators Dick Durbin (D-IL), Chris Coons (D-DE), Thom Tillis (R-NC), and Chuck Grassley (R-IA) introduced the Interagency Patent Coordination and Improvement Act of 2023. The bill would create an interagency task force to share patent filing information and technical assistance between USPTO and FDA officials. IP experts warn that interagency entanglement could weaken the patent system by inserting officials from multiple federal agencies – without patent law expertise – into the examination process. They submit that it is premature to implement such substantial changes without conducting a thorough evidence-based study.