PREVAIL Act
- Sponsor
- Sen. Coons, Christopher A. [D-DE]
- Committees
- Judiciary Committee (primary)
- Last action
- May 1, 2025
Bottom line
This bill seeks to rebalance the U.S. patent system by making it harder to challenge issued patents at the PTAB, thereby strengthening patent holder protections and fostering innovation.
What it actually does
The PREVAIL Act amends Title 35 of the U.S. Code to reform the patent system, primarily by modifying procedures for inter partes review (IPR), post-grant review (PGR), and ex parte reexamination before the Patent Trial and Appeal Board (PTAB). It aims to strengthen patent holder rights, limit repetitive challenges, and ensure the U.S. Patent and Trademark Office (USPTO) fees are used solely for its operations. The bill also expands micro-entity status for academic inventors and requires a Small Business Administration report on patent impacts.
Proponents argue
Proponents argue the bill is essential to restore reliability and effectiveness to U.S. patent protection, which they contend has been undermined by unintended consequences of the 2011 patent reforms. They believe it will encourage investment in innovation, particularly for individual inventors and small companies, and safeguard national security interests by maintaining U.S. leadership in emerging technologies against competitors like China.
Opponents contend
While the bill text does not explicitly state opposition, potential opponents might argue that strengthening patent holder rights and limiting challenges could stifle competition, increase litigation costs for alleged infringers, and make it harder to invalidate weak or overly broad patents, potentially hindering innovation by creating patent thickets.
The bill is moderately technical but well-structured, allowing an informed reader to understand its core provisions within a reasonable timeframe.
Section 3, amending 35 U.S.C. 6(b) and (d)
Enhanced Patent Trial and Appeal Board (PTAB) Standards
This provision requires the Director of the USPTO to establish a code of conduct for PTAB members, considering the Code of Conduct for U.S. Judges. It also mandates that PTAB panels consist of at least 3 members, requires public notation of any panel changes, prohibits supervisory influence on merits decisions, and makes PTAB members who institute a review ineligible to hear that same review.
Supporters argue
Supporters argue these changes enhance the integrity and perceived fairness of PTAB proceedings, addressing concerns about impartiality and potential conflicts of interest, thereby strengthening public trust in the patent system.
Critics contend
No specific opposition is typically raised against provisions enhancing judicial ethics or transparency, though some might argue that existing rules are sufficient or that new rules could introduce unnecessary procedural delays.
Tradeoffs
Balances the need for efficient patent review with demands for judicial independence and transparency within the administrative body.
Section 4(a) amending 35 U.S.C. 311(d); Section 5(a) amending 35 U.S.C. 321(d)
Expanded Definition of Real Party in Interest for IPR/PGR
This provision expands the definition of 'real party in interest' for Inter Partes Review (IPR) and Post-Grant Review (PGR) to include any person who, directly or through an affiliate, subsidiary, or proxy, makes a financial contribution to the preparation or conduct of the review on behalf of a petitioner.
Section 4(b) amending 35 U.S.C. 312(a)
Stricter Standing Requirements for IPR Petitioners
This provision requires IPR petitioners to certify, and the Director to determine, that they meet specific criteria: either they are a qualified non-profit (with no infringing members/donors and filing solely for patentability ascertainment), or they have a bona fide intent to engage in infringing conduct, would have standing for a declaratory judgment of invalidity, or have been sued for infringement.
Section 4(d) amending 35 U.S.C. 315(c), (e), (f), (g); Section 5(c) amending 35 U.S.C. 325(c), (e), (f), (h)
Prohibition on Parallel Proceedings and Repetitive Challenges
This provision establishes a 'single forum' rule, preventing a petitioner (or RPI/privy) from challenging patent validity in federal court or the ITC if an IPR/PGR is instituted. It also creates a rebuttable presumption against joinder for late-filing parties in IPR, and generally rejects petitions that present prior art or arguments substantially the same as those previously presented to the Office, unless exceptional circumstances are shown. Furthermore, it introduces estoppel for petitioners who previously challenged a patent in IPR/PGR on grounds they raised or reasonably could have raised.
Section 4(e) amending 35 U.S.C. 316(e), (f); Section 5(d) amending 35 U.S.C. 326(e), (f)
Higher Evidentiary Burden and District Court Claim Construction for PTAB
This provision applies the presumption of validity (under 35 U.S.C. 282(a)) to previously issued claims challenged in IPR/PGR. It also raises the burden of proof for petitioners to 'clear and convincing evidence' for unpatentability of issued claims (from 'preponderance of the evidence'), while maintaining 'preponderance' for substitute claims. Furthermore, it requires PTAB to construe claims using the 'ordinary and customary meaning' standard (like federal courts) and to consider prior court constructions of the same claims.
Section 7 amending 35 U.S.C. 42
Establishment of USPTO Innovation Promotion Fund
This provision establishes the 'United States Patent and Trademark Office Innovation Promotion Fund' in the Treasury. All patent and trademark fees collected by the Director will be deposited into this revolving fund and made available to the Director without fiscal year limitation, solely for the expenses of the Office relating to patents and trademarks, respectively. This prevents fees collected by the USPTO from being diverted for other government purposes.
Section 8 amending 35 U.S.C. 123(d)
Expanded Micro Entity Status for Higher Education and Related Non-Profits
This provision expands the definition of 'micro entity' for patent fee purposes to include applicants whose employer is an institution of higher education, applicants who have assigned or are obligated to assign an interest to an institution of higher education, the institution of higher education itself, or a 501(c)(3) non-profit holding patents on behalf of a higher education institution for commercialization.
Section 9(b) and (c) amending 35 U.S.C. 41(i)
Small Business Administration Report and Free Online Search Tools
This provision requires the Small Business Administration (SBA) to submit a report within one year on the impact of patent ownership by small business concerns and civil actions against them related to patent infringement. It also mandates the Director to make all patent and trademark information available online and at no charge, including search tools, databases, and training materials, provided third-party licenses don't make it financially unviable.
This provision bars ex parte reexamination requests filed more than 1 year after the requester or a real party in interest is served with an infringement complaint. It also defines 'real party in interest' for reexamination similarly to IPR/PGR, and allows the Director to reject requests presenting substantially the same prior art/arguments previously presented or those using prior Office decisions to bolster deficient requests.
Section 6(b) amending 35 U.S.C. 303(d) and (e)
Why it matters:Standard legislative practice to amend specific sections of code, but the implications for reexamination are significant and could be overlooked by those focused solely on IPR/PGR changes.
Case for: Proponents argue this prevents abusive, serial reexamination requests and aligns reexamination procedures more closely with the intent of IPR/PGR reforms, ensuring finality and reducing harassment of patent owners.
Case against: Critics might argue that limiting reexamination, especially for parties served with infringement complaints, reduces avenues for challenging potentially invalid patents, particularly if IPR/PGR options are also restricted.
Estimated impact: Reduces the number of ex parte reexamination requests, particularly those filed defensively after an infringement suit or those that are repetitive.
These provisions set strict deadlines for the Director to decide requests for rehearing on institution decisions (45 days, extendable by 30 days) and for the Board/Director to decide requests for rehearing on final written decisions (90 days, extendable by 60 days). They also set deadlines for decisions on remand from appeals (120 days, extendable by 60 days). Additionally, the Director is granted explicit authority to review PTAB decisions, requiring a separate written opinion.
Sections 4(c), 4(g), 4(h) for IPR; Sections 5(b), 5(f), 5(g) for PGR.
Why it matters:Standard legislative practice for procedural details, but these deadlines are crucial for the efficiency and predictability of the PTAB process. The Director's review authority is also significant.
Case for: Proponents argue these deadlines ensure timely resolution of PTAB proceedings, reducing uncertainty and costs for all parties. The Director's review authority provides an important check on PTAB decisions.
Case against: Critics might argue that strict deadlines could compromise the thoroughness of review, especially for complex cases, or that the Director's explicit review authority could introduce political influence into quasi-judicial decisions.
Estimated impact: Increases the speed and predictability of PTAB proceedings and introduces a new layer of review by the Director.