Senate Judiciary Committee sends the PREVAIL Act to the floor by one vote

2024-11-21Legislation

Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL Act), S. 2220, 118th Cong., introduced July 10, 2023 by Senator Coons for himself and Senators Tillis, Durbin and Hirono; ordered favorably reported in the nature of a substitute by the Senate Committee on the Judiciary, 11-10, November 21, 2024

The Senate Committee on the Judiciary ordered S. 2220 favorably reported in the nature of a substitute by a vote of 11 to 10, after adopting a managers' amendment by voice vote and rejecting an amendment by Senator Cruz, 6 to 14. Eight Democrats and three Republicans voted yes, and three Democrats and seven Republicans voted no. The substitute would let a party petition for inter partes review only if it has been sued on the patent, would have declaratory judgment standing, is engaging in or intends to engage in conduct that could reasonably be accused of infringing, or is a nonprofit with no member, donor or funder that could be accused. A petitioner would have to prove unpatentability of issued claims by clear and convincing evidence, with claims construed as in an invalidity action under Section 282(b) of Title 35 of the United States Code. Once review is instituted, the petitioner could not press the same kind of prior-art invalidity grounds in court or at the International Trade Commission. The Director would have to reject petitions repeating prior art or arguments already before the Office absent exceptional circumstances, a petitioner could not seek another Office proceeding on the patent on grounds it raised or reasonably could have raised, except for newly charged claims, and a Board member who decided institution could not hear the review.

What it changesFor a company whose freedom to operate against software and artificial intelligence patents rests on challenging them at the Board, each element of this bill points the same way. The clear and convincing burden matches the one a jury applies and removes the Board's main advantage over district court. The standing rule still admits an operating company practicing or planning a product the patent could reach, but it excludes a challenger with nothing of its own at risk and any nonprofit funded by someone who could be accused. The single-forum rule forces a choice between the Board and the court, and the repeat-petition bar means the first petition has to carry every ground. The vote does not change the law; the bill has not passed the Senate, and the 118th Congress ends in January. It does show the sponsors can carry the bill out of committee, so the patents that matter most to a product roadmap should be assessed for a petition under the current rules.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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