WASHINGTON (June 27, 2023) — Today, Representatives Ken Buck and Deborah Ross introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. Last week, Senators Chris Coons and Thom Tillis introduced complementary legislation in the U.S. Senate.
C4IP strongly supports the PREVAIL Act, which would make long-overdue reforms to the Patent Trial and Appeal Board (PTAB), an administrative patent tribunal established by Congress in 2011. In recent years, excessive PTAB proceedings have eroded confidence in the robust intellectual property protections underpinning the U.S. innovation ecosystem.
“Representatives Buck and Ross’ introduction of the PREVAIL Act in the House demonstrates widespread, bipartisan support for common-sense reforms to the PTAB,” said Dave Kappos, board co-chair of C4IP and former Under Secretary of Commerce for Intellectual Property and USPTO Director from 2009 to 2013. “PTAB has been used as a cudgel against patent holders, including small inventors without the financial resources to defend their IP in multiple fora, and the PREVAIL Act addresses this issue.”
“From the Space Race to life-saving Covid-19 vaccines, America led the world in cutting-edge innovation. But our competitive edge is at risk of slipping, in part because of uncertainty caused by repetitive and duplicative attacks on constitutionally enshrined patent rights,” said Andrei Iancu, board co-chair of C4IP and former Under Secretary of Commerce for Intellectual Property and USPTO Director from 2018 to 2021. “The bipartisan, bicameral PREVAIL Act presents a historic opportunity to stabilize the U.S. IP system and restore American innovation dominance for the next generation.”
The PREVAIL Act would make several essential reforms, including:
- Giving challengers of a patent’s validity the choice of forum, either court or at the Patent Trial and Appeal Board (PTAB), but limiting them to only one — thereby ensuring that patent owners are not required to fight multiple costly and duplicative legal battles on the same issues
- Ensuring that “clear and convincing evidence” is required to invalidate a patent at the PTAB, the same standard used in district courts and which recognizes that issued patents have already undergone thorough examination at the Patent Office
- Providing additional safeguards aimed at ensuring balance and fairness to both patentees whose patents are subject to validity challenges in the PTAB, as well as those seeking to challenge patent validity
“The common-sense reforms in the PREVAIL Act are welcome and long past due. It is important to align both eligibility standards and the governing burdens of proof so that the PTAB and the Courts are operating under the same rules and stakeholders will know exactly what those standards are,” said Judge Kathleen O’Malley (ret.), former Judge of the U.S. Court of Appeals for the Federal Circuit. “Assuring that patents will not be invalidated absent clear and convincing evidence is especially important because it ensures that, once patents are duly issued by the PTO, and businesses are built on the strength of those patents, the rights those patents convey will not be discarded absent careful consideration.”
“The introduction of the PREVAIL Act and other IP-related legislation gives me hope that the United States is on the verge of real, long-lasting change to a system that has for too long been abused by Big Tech and other large corporations,” said Judge Paul Michel (ret.), former Judge of the U.S. Court of Appeals for the Federal Circuit. “The reforms proposed by Representatives Buck and Ross, along with Senators Coons and Tillis, are vital to the future of American innovation.”
“When inventors cannot achieve ‘quiet title’ for their existing patents, they hesitate to invest in developing new groundbreaking inventions,” said Frank Cullen, executive director of C4IP. “Representatives Buck and Russ have proven themselves as true champions of America’s innovators by working to curtail PTAB abuse and protecting the United States Patent and Trademark Office’s reputation as the global gold standard for patent evaluation.”
About the Council for Innovation Promotion
The Council for Innovation Promotion is a bipartisan coalition dedicated to promoting strong and effective intellectual property rights that drive innovation, boost economic competitiveness, and improve lives everywhere.