Fact Check: The PREVAIL Act Would Not Protect “Bad” Patents

Claim: In November, senior policy analyst Joe Mullin of the Electronic Frontier Foundation (EFF) published an article claiming that the reforms included in the PREVAIL Act would unfairly protect the owners of “bad,” low-quality patents at the expense of small businesses and software developers.

Correction: PREVAIL allows the challenger of a patent to decide where it wants its challenge to be heard: at the PTAB or in District Court, but not both. It is false to claim that either the PTAB or the district court would protect invalid patents. If a patent is truly “bad,” or “low quality,” either of those forums should be trusted to render the patent invalid. Multiple, duplicative proceedings between the same parties on the same issues are not needed.

The America Invents Act (AIA) established the IPR system at the PTAB as a “cheaper, faster alternative” to district court litigation. IPRs were not meant to be duplicative of district court proceedings. PREVAIL simply returns the IPR process to its original intent.

The vast majority of challenges at the PTAB are filed by the world’s largest technology companies. These giants are able to multiply the proceedings and bury inventors in legal fees. This has become routine: over 80% of patent validity challenges take place twice – in both the PTAB and in district courts. The system is not well-served by repetitive proceedings, and PREVAIL puts a stop to such abuses.

In addition, the PTAB and the district courts use different standards to adjudicate challenges, with the PTAB requiring a lower burden of proof to invalidate a patent. This creates confusion, inconsistent results, and opportunity for forum shopping and other litigation gamesmanship. PREVAIL closes this loophole as well, and makes the burden of proof to be the same in both forums. This is hardly a protection of “bad” patents: the United States has trusted courts to do their jobs correctly since the nation’s founding, and using the same standard at the PTAB as is used in the courts will only increase the reliability of the patent system.

Mullin characterizes the PREVAIL Act’s removal of these loopholes as problematic for software developers. But this is true only if such software developers want to game the system at the expense of inventors. Legitimate challenges to the validity of a patent will succeed if brought in a single forum – either the district court or the PTAB, but not both – and using the same standard.

The PTAB’s current workings tilt the playing field in favor of large businesses with significant financial resources. Big Tech companies are the most prolific petitioners at the PTAB, where about 80% of final written decisions result in the invalidation of a patent claim. The PREVAIL Act aims to fix PTAB’s flaws, restoring balance to its proceedings: enabling legitimate challenges but also allowing inventors to defend their intellectual property fairly. This will empower inventors to keep inventing, and unleash the full force of America’s drive towards technological progress.

Bottom Line: This claim is false.

Scroll to Top