A bipartisan group of legislators led by Sens. Thom Tillis (R-NC) and Chris Coons (D-DE) recently reintroduced two critical bills to Congress: the Patent Eligibility Restoration Act (PERA) and the PREVAIL Act. Both bills would shore up the legal foundation for American innovation — PERA by restoring clarity around what types of inventions are eligible for patenting, and PREVAIL by streamlining the process to challenge patents at the Patent Office after they are issued to eliminate redundancies and harmonize standards with federal court, providing a fair playing field for patent holders.
Unfortunately, throughout May, opponents of patent rights circulated several false and misleading claims aimed at derailing both reforms. One such example is the statement issued by the Computer and Communications Industry Association (CCIA) upon the bills’ reintroduction.
Close scrutiny reveals that these common criticisms of PERA and PREVAIL are groundless and mischaracterize the effects the bills would have for U.S. innovation:
| Claim: PERA would “fundamentally chang[e] the patent system.” |
| In reality: In reality: PERA would restore clarity to the law on patent eligibility — a threshold question that has become increasingly uncertain following a series of Supreme Court decisions. These rulings introduced vague judicial exceptions that have made it difficult to determine what types of inventions can be protected by the patent system. PERA offers a clear, modern framework for subject matter eligibility under Section 101 of the Patent Act — one that reflects longstanding principles while replacing vague judicial doctrines with well-defined statutory exclusions, including mathematical formulas, mental processes, and unmodified natural materials. The bill does not affect other core provisions of the Patent Act that determine whether a patent can be granted, including Section 102 (novelty), Section 103 (non-obviousness), and Section 112 (written description). PERA brings the U.S. system into alignment with the longstanding purpose of Section 101: to serve as a gateway, not a barrier, for meaningful innovation. |
| Claim: PERA would “make it easier to obtain weak patents” |
| In reality: First, the narrative that the United States has a problem with low-quality patents was thoroughly debunked by a recent study from the nonpartisan Sunwater Institute. Second, this claim confuses patent eligibility with patentability. Section 101 determines whether an invention is eligible to be considered for a patent — it does not assess whether the invention ultimately qualifies for one. Even if an invention is eligible, it must still be novel, non-obvious, and fully disclosed under other provisions of the Patent Act. PERA does not change those safeguards. The bill clarifies which types of subject matter can be considered in the first place, providing a clear pathway of eligibility for inventions that qualify as technical and are the result of applied human ingenuity. But any patent application that passes this subject matter eligibility threshold must still meet the remaining statutory requirements, all of which are designed to guard against non-meritorious applications from becoming patents. By restoring clarity to eligibility, PERA strengthens — not weakens — the integrity of the U.S. patent system. |
| Claim: PREVAIL would undermine the “highly effective” inter partes review process. |
| In reality: The current IPR process at the Patent Trial and Appeal Board (PTAB) is routinely exploited by large corporations seeking to leverage their resources in a war of attrition to invalidate the patent rights to technologies they’ve used without permission from smaller companies — a tactic known as predatory infringement. Patent owners are often forced to defend their rights on two fronts — at the PTAB and in federal court — and to relitigate issues that have already been decided. Indeed, roughly 85% of PTAB proceedings duplicate litigation in other forums, and the board allows multiple petitions to be filed against the same patent. As a result, deep-pocketed challengers can overwhelm startups and independent inventors with enormous legal costs and delays. The PREVAIL Act introduces common-sense reforms to curb these abuses. It would close loopholes that permit duplicative proceedings and better align PTAB procedures with those used in district court. For innovators facing predatory tactics, the bill would make the patent system fairer and more effective — not less. |
| Claim: PERA and PREVAIL would benefit “patent trolls” not inventors. |
| In reality: PERA and PREVAIL are designed to support genuine inventors — including startups, university researchers, and small businesses — not “patent trolls.” PERA would help innovators in high-tech fields like medical diagnostics, where uncertainty around patent eligibility has chilled investment. One study found that funding for diagnostics fell $9.3 billion below expected levels following one Supreme Court decision in Mayo Collaborative Services v. Prometheus Laboratories (which significantly narrowed patent eligibility for medical diagnostic tests). PREVAIL, meanwhile, reins in abuse of the PTAB that disproportionately harms small patent owners, many of whom cannot afford to defend against serial challenges from deep-pocketed corporate infringers. Together, these reforms would give legitimate inventors a fairer shot at protecting their work and bringing new products to market. By contrast, the status quo favors large incumbents, particularly in Big Tech — who are among the PTAB’s most frequent petitioners, and many of whom are members of the CCIA. |