Senators Coons leads bipartisan, bicameral members in supporting USPTO’s proposed PTAB reforms that includes measures from their PREVAIL Act

WASHINGTON - U.S. Senator Chris Coons (D-Del.) led a bipartisan, bicameral group of legislators in a comment to Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) John Squires in support of the agency's notice of proposed rulemaking involving reforms to the Patent Trial and Appeal Board (PTAB).

Senator Coons, U.S. Senator Thom Tillis (R-N.C.), and U.S. Representatives Nathaniel Moran (R-Texas) and Deborah Ross (D-N.C.) wrote that, while the new rule implements part of their bill, they urge the USPTO to support the passage of their full legislation - the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act - introduced earlier this year. The PREVAIL Act aims to promote fair treatment for inventors, improve efficiency, and ensure that the USPTO has the resources necessary to administer a patent system that effectively supports American innovation.

The lawmakers noted that while Congress created the PTAB "to provide a quick and cost-effective alternative to district court patent litigation for resolving disputes over patent validity" the PTAB, in practice, is currently operating "as an additional forum for challenging patents," since the majority of "PTAB proceedings take place in parallel to another case involving the same patent or patents in another forum such as federal district court or the U.S. International Trade Commission (ITC)."

"Congress did not intend for the PTAB to be an additional forum for challenging patents," the lawmakers added. They noted that the PTAB should not be used "for harassment or a means to prevent market entry through repeated litigation and administrative attacks" because such conduct would "frustrate the purpose of the [PTAB] as providing quick and cost effective alternatives to litigation" and undermines "innovation by divert[ing] resources from the research and development of inventions."

Both the PREVAIL Act and the USPTO's proposed rule would:

1. Eliminate repetitive challenges by the same party on the same patents;
2. End duplicative challenges and parallel proceedings in multiple tribunals, requiring a party to choose whether to bring a challenge in the PTAB or another forum, like federal district court or the ITC; and
3. Reduce inconsistency between tribunals and improve efficiency by providing an inventor "quiet title" when a final judgment has been entered on the validity of a patent claim.

"We appreciate the USPTO's efforts to ensure that the PTAB meets its congressional intent," the lawmakers concluded. "We look forward to engaging with the USPTO to advance our mutual interest in ensuring fairness, efficiency, and predictability in patent disputes."

The full text of the letter can be found here.