Patent News

Jun. 22, 2023

Press Release: Senators Coons, Tillis, colleagues introduce bipartisan bill to support American inventors by reforming Patent Trial and Appeal Board

WASHINGTON – U.S. Senators Chris Coons (D-Del.),Thom Tillis(R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced thePromoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act today. This billsupports inventors, encourages investments in intellectual property, secures U.S. global technology leadership, and protects economic and national security. The PREVAIL Act updates and improves on legislation that Senator Coons previously introducedto ensure that our patent system protects this essential property right.

“To ensure the United States does not cede technological supremacy to our foreign competitors and adversaries, we must act now toensure American inventors can maintain confidence in our patent system,”said Senator Coons.“We need the bipartisan PREVAIL Act to make commonsense reforms to Patent Trial and Appeal Board (PTAB) proceedings that will treat inventors fairly, fuel U.S. economic growth, protect our national security, and ensure our global leadership.”

“To maintain the United States’ position as the global leader in technology and innovation, we must work with inventors to improve and streamline our patent system,” said Senator Tillis. “The PREVAIL Act makes commonsense changes to our patent approval system that will increase transparency, safeguard patents, eliminate duplicative legal proceedings, and encourage American inventors to design and create.”

”American innovation must remain at the global forefront. This bipartisan bill will support our innovators by ensuring a level playing field when adjudicating patent validity, which will encourage further innovation and economic growth. I urge my colleagues to support the PREVAIL Act to ensure our patent system supports American innovation and national security,” said Senator Durbin.

“America’s patent system drives innovation and fuels long-term economic growth. This is particularly true for the small businesses and entrepreneurs who are critical to Hawaii’s economy,” said Senator Hirono. “The PREVAIL Act supports innovation by ensuring patents are given the same treatment no matter where they are challenged and by eliminating the gamesmanship and repetitive challenges that have placed unnecessary burdens on innovative startups, inventors, and universities.”

The PTAB is the administrative body of the U.S. Patent and Trademark Office (USPTO), designed to provide a faster, more efficient process for adjudicating patent validity than going to federal district court. However, the PTAB has become a forum where patent claims are consistently invalidated through proceedings that are duplicative of – not an alternative to – district court. According to USPTO data, about 80% of instituted PTAB proceedings that reach a final written decision result in the invalidation of at least one challenged patent claim. Two-thirds of those proceedings result in the invalidation of all challenged patent claims.

The PREVAIL Act would make changes to the PTAB to promote fair treatment for inventors, provide a true alternative to district court, and ensure the USPTO has the resources it needs to effectively administer a patent system that incentivizes American innovation and enables U.S. innovators to compete. The PREVAIL Act would also end USPTO fee diversion and support innovative small businesses.


The PREVAIL Act would reform the PTAB in the following ways:

  • Require standing for PTAB challengers and limit repeated petitions challenging the same patent;
  • Harmonize PTAB claim construction and burden of proof with federal district court;
  • End duplicative patent challenges by requiring a party to choose between making its validity challenges before the PTAB or in district court; and
  • Increase transparency by prohibiting the USPTO director from influencing PTAB panel decisions.

This bill has been endorsed by the Council for Innovation Promotion (C4IP), the Biotechnology Innovation Organization (BIO), and the Innovation Alliance.

“C4IP commends Senators Coons and Tillis for introducing legislation that will eliminate redundant patent invalidity proceedings, thereby saving taxpayer dollars and safeguarding Americans’ constitutional right to participate in a fair and accessible patent system. Patents are the crucial equalizing mechanism by which inventors from all backgrounds can engage in risky R&D efforts and commercialize successful innovations. The PREVAIL Act contains critically necessary reforms to the Patent Trial and Appeal Board, which will return it to its original vision and purpose of providing a low-cost, efficient alternative to district court litigation, and will curtail the practice by patent infringers of forcing inventors to defend their intellectual property in multiple fora at once,”said David Kappos and Andrei Iancu, C4IP Co-Chairs and former USPTO Directors.

“Strong intellectual property protections sustain America’s global leadership in biotechnology innovation and the creation of hundreds of thousands of high-wage, high-value jobs throughout our country,” said Hans Sauer, BIO’s Vice President for Intellectual Property. “BIO has long supported the balanced and bipartisan reform proposals embodied in this important legislation. We commend the Senators for introducing this important legislation and thank them for their continued leadership on this critically important issue. Without strong patent rights, the financing to take revolutionary biotechnology discoveries from the lab to the patient, farmer, and consumer would be unavailable. Weak or inconsistent patent protections threaten new investment in the innovation sector of our economy and, with it, the jobs and industries of the future.”

“The Innovation Alliance is grateful to Senators Coons, Tillis, Durbin, and Hirono for their leadership on behalf of inventors to promote a robust innovation economy in the United States. The PREVAIL Act will help move the PTAB closer to the quicker and cheaper alternative to patent litigation it was intended to be, and away from the tool that Big Tech companies use to quash the rights of inventors that it has largely become. The Innovation Alliance looks forward to working with our allies in the innovation ecosystem to gather support to pass the PREVAIL Act into law,” said Brian Pomper, Executive Director, Innovation Alliance.

Senator Coons and Senator Tillis are the Chair and Ranking Member, respectively, of the Judiciary Committee’s Intellectual Property Subcommittee.

The text of the bill is available here. A fact sheet on the bill is available here. A section-by-section summary of the bill is available here.