The U.S. Patent and Trademark Office is considering reforms to address longstanding concerns about abuse of the Patent Trial and Appeal Board (PTAB), which includes repeated and serial petitions that unfairly burden patent holders. One key reform — a Notice of Proposed Rulemaking issued last fall — would streamline the inter partes review (IPR) process and reduce duplicative proceedings involving the same patent. While these proposed changes have been welcomed by inventors, startups, former judges, former USPTO officials, and other advocates for a stronger patent system, they have also drawn criticism from familiar opponents of robust patent rights.
In comments on the USPTO’s proposed PTAB rulemaking, notable anti-IP organizations such as the Electronic Frontier Foundation and Unified Patents have argued that PTAB reforms would make it harder to challenge weak patents, disrupt a system that is functioning effectively, and run counter to the wishes of the broader innovation community. In reality, the evidence points to the opposite: the current system often disadvantages innovators, including smaller patent owners, and meaningful reform is necessary to ensure that the PTAB serves its intended purpose.
Below, we set the record straight:
| Claim: The PTAB was already operating as intended: as a fair and efficient alternative to district court. |
| In reality: PTAB, before many of the recent changes, has been neither fair nor efficient, as it often functions as an additional layer of litigation rather than a true substitute for district court. Under those rules, challengers can pursue PTAB validity challenges and court litigation at the same time, forcing patent owners to defend the same patent in multiple proceedings at once. Challengers also frequently file multiple challenges against the same patent, and nearly half of all PTAB petitions involve repeat challenges. This enables large companies to burden smaller patent owners with costly litigation that drains their resources and prevents them from enforcing their patent rights. And it is especially burdensome because PTAB proceedings use a lower evidentiary standard than district courts. A challenger at the PTAB generally needs to prove invalidity by a preponderance of the evidence, while a challenger in federal court must satisfy the higher standard of clear and convincing evidence.
Put simply, until recently, the PTAB presented clear procedural advantages for companies seeking to invalidate patents, while disadvantaging patent holders — which is not how it was intended to work. Former Congressman Lamar Smith, one of the principal authors of the America Invents Act, which created the PTAB, has written that “[t]he purpose of our law was to provide an alternative to court proceedings to handle patent disputes — not to add another set of proceedings causing duplicative challenges.” Reform is crucial for that to become a reality. |
| Claim: PTAB reform would make it harder to challenge low-quality patents. |
| In reality: Sensible PTAB reform would not prevent meritorious challenges to patents whose validity is questioned. If a patent is invalid, it should not take duplicative or repetitive petitions for its claims to be canceled. The greater danger is that after undergoing repeated, duplicative, and strategically timed reviews, patents may be invalidated, even after being upheld previously. This is one problem that the USPTO’s Notice of Proposed Rulemaking (NPRM), as well as legislative solutions like the PREVAIL Act, are designed to address. Research from the Alliance of U.S. Startups and Inventors for Jobs (USIJ) illustrates how patents can become vulnerable when large, well-resourced challengers mount serial attacks across multiple venues. In these circumstances, outcomes may depend less on the merits of the patent and more on which party has the resources to continue litigating.
The current system also creates uncertainty for innovators seeking investment. When patents can be challenged repeatedly even after being reexamined and upheld by the USPTO, investors rightly question whether those rights will remain enforceable. Reforms such as the USPTO’s NPRM and the PREVAIL Act would preserve fair and accessible mechanisms for challenging patents while ensuring that patent owners are not subjected to endless rounds of harassment. |
| Claim: Most stakeholders oppose PTAB reform. |
| In reality: Opponents of reform often point to the number of public comments submitted against the USPTO’s proposal as evidence that the broader innovation community opposes change. But comment counts alone provide an incomplete picture of stakeholder sentiment. Many of the most vocal opponents of reform are large technology companies and organizations aligned with them — in other words, the entities that benefit most from the current system’s permissive approach to serial and duplicative challenges. Big Tech makes up most of the PTAB’s most frequent petitioners, as the board’s lack of protections against duplicative and serial petitions allows large companies to leverage their financial muscle against smaller rivals whose patents they seek to invalidate. However, while the resources of Big Tech companies often give them a louder voice in public campaigns, a large chorus of stakeholders support reform, including the smaller companies that develop the technologies and standards Big Tech firms rely on.
Supporters of reform include inventors and startups, former judges and USPTO officials, lawmakers from both parties, and numerous organizations focused on restoring balance to the patent system. These individuals and entities recognize the critical role that strong and reliable patent rights play in attracting investment, commercializing new technologies, and enabling innovative startups to compete against larger incumbents. Policymakers would be wise to elevate these stakeholders’ concerns rather than minimize them. |