Jul. 25, 2023

USIJ: The Prevail Act Provides Much-Needed Reforms to Reduce Harassment of Startups and Inventors

The Importance of Reliable Patent Rights: Patents are the lifeblood of innovative startups, particularly those with significant research and development costs. Robust and enforceable intellectual property protections attract capital and ensure a seat at the table across from much larger, highly resourced, and heavily entrenched competitors. But patent rights have been under assault in recent years, and much of the resulting uncertainty can be traced to abuses of the Inter Partes Review (IPR) and Post Grant Review (PGR) proceedings for challenging the validity of issued patents at the Patent Trial and Appeal Board (PTAB), an administrative tribunal within the United States Patent and Trademark Office (USPTO).

The Problems Facing Inventors and Startups: When Congress created these proceedings as part of the America Invents Act (AIA) in 2011, it recognized the potential for abuse and harassment of patent owners.1 But it could not have envisioned the extent of the predatory infringement strategies, extortion and stock-market manipulation schemes, tactics designed to secure leverage in unrelated disputes, and duplicative litigation loopholes exploited by opportunistic parties and clever attorneys.2 As a result, the PTAB has become an additional litigation tool for mercenaries, Big Tech, and Chinese competitors to impose costs on inventors and small businesses seeking to enforce their patent rights3 rather than the “quick and cost-effective alternatives to litigation” envisioned by Congress.4 Moreover, the AIA included structural flaws that subjected patent owners to lower invalidation standards, permitted anyone to file petitions, and omitted sufficient ethical safeguards, among other shortcomings. Rather than curbing unnecessary litigation, the PTAB has multiplied proceedings and costs for all involved.

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