Senators’ Patent Reform Bills Offer a Strong Way Forward for the U.S. Patent System

“The boldness of the new bills is stunning, especially after years of futile efforts by patent owners to get more modest reforms adopted by USPTO leaders.”

patent reform billsLast week, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) launched the long-awaited legislative campaign to revive the faltering U.S. innovation system, jointly introducing one bill to restore patent eligibility and another to boost patent reliability at the Patent Trial and Appeal Board (PTAB).  As the chair and ranking member of the Senate subcommittee on Intellectual Property, they are well-positioned to move these bipartisan bills forward.  They got assists from Senators Dick Durbin (D-IL) and Mazie Hirono (D-HI), who joined as original co-sponsors on the PREVAIL Act.

While Coons and Tillis are well-placed, Durbin is even more so as he chairs the Judiciary Committee and serves as the number two leader of the majority party.

Restoring Patent Eligibility

The eligibility bill broadens the scope of inventions eligible for patenting and thus patentable if other requirements of patent law are met. It also clarifies the law, which was enormously confused as well as sharply narrowed by the Supreme Court’s decisions a decade ago in Mayo, Myriad and Alice. The effect will almost certainly be to increase investment in R&D in advanced technologies, the very ones in which Strategic arch-rival China has been rapidly overtaking the prior U.S. lead.

According to a recent study by an Australian think tank, China has already surpassed us in 37 of the 44 technologies. This represents a crisis for our national security—and our economic security as well, for they are so intertwined.

Correcting PTAB Abuses

The PTAB reforms correct numerous design flaws Congress unintentionally included when passing the 2011 America Invents Act. These errors caused abnormally high invalidation rates at the PTAB compared to courts. Most importantly, the bill conforms standards at the PTAB to those applied in the courts. Thus, future America Invents Act (AIA) reviews would require standing and  cClear and convincing evidence, while blocking repetitive challenges.

The decade of experience with PTAB defied nearly all of Congress’ expectations when it omitted such protections for patent owners. A few examples: Congress was told challenges would be limited in number, made only in clear cases, be based on documents, and provide “an alternative to expensive court litigation.” In fact, the number of challenges proved many times greater than expected, they were not limited to clear cases, relied on expert testimony, not just documents, and became not an alternative to, but a toll booth blocking access to court, with 88% brought in cases already pending in court.

But there were many others, too. Congress assumed that the PTAB could not be employed for “harassment” of patent owners. But with many repeat petitions, each costing the owner an average of half a million dollars, they were.

The primary beneficiaries of the ill-designed procedures were its leading proponents, the big tech giants which have filed the most review petitions. Often, they filed many, many petitions against the same patent, both simultaneously and sequentially. In addition to overwhelming many smaller competitors of lessor means, the accused infringers were nearly always able to delay the day of reckoning at trial for several years as PTAB proceedings ground on and appeals were taken. For efficiency reasons, district judges usually stayed the infringement cases during PTAB proceedings. This was yet another instance where Congress guessed wrong. But the facts are now unmistakably clear after a decade of many thousands of AIA proceedings.

Congress cannot fairly be faulted for not correctly predicting such results, for many stakeholders encouraged such faulty assumptions. They are the very ones who have been advantaged by the erroneous predictions they helped propagate. The PTAB proceedings became the accused infringers’ dream opportunity, an extra shot at invalidity.

The Right Approach to Reform is Through Congress

The boldness of the new bills is stunning, especially after years of futile efforts by patent owners to get more modest reforms adopted by U.S. Patent and Trademark Office (USPTO) leaders. Just compare the strong corrections of the two bills to the confused and ineffectual changes described in the USPTO’s Advanced Notice of Proposed Rulemaking (ANPRM) issued in April. The comment period closed just two days before the Senators acted. But the bills’ provisions are strong, realistic, and comprehensive, where the potential agency reforms look inconsistent, incomplete, ineffectual and in many instances unauthorized.

Eligibility is statutory, governed by section 101 of the Patent Act. Because the Supreme Court had substantially rewritten its terms, Congress has every right to overrule the case law to comport with congressional intent. Correcting unexpected flaws in the AIA is indisputably the business of Congress.

Not enough praise can be ascribed to the Senate leaders, who mastered complex areas of law, business, investment, and innovation economics. They studied the actual experience of deleterious impacts on innovation and investment from the High Court’s errant case law and PTAB excesses.

For the future of our nation, let’s hope their colleagues will help promptly pass these bills. Meanwhile, everyone who cares about retaining U.S. technology leadership, competing successfully with commercial rivals, and staying safely ahead of China should speak up, making your voices heard in Congress!

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Author: Olivier26


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Join the Discussion

14 comments so far.

  • [Avatar for Yul]
    July 16, 2023 03:16 am

    I wish inventors all the success. But celebration will come after the fall. It will take an invasion by China for these lawmakers to wake up. Even then, majority of these lawmakers will be slaves to Chinese influence, money, blackmail and psywar. So yes, be positive but be prepared for darkest times ahead.

  • [Avatar for B]
    June 28, 2023 12:06 pm

    @ David Lewis

    I very agree with your analysis, but don’t think you go far enough. This is a disaster in the making, and I’m reminded of a short story called “The Weapon” by Frederic Brown with the Federal Circuit acting the part of Harry Graham.

    The “and the like” language, which gives the courts and PTO care blanche to declare everything patent ineligible, and who in their right mind would trust the Federal Circuit with interpreting this!

  • [Avatar for B]
    June 28, 2023 09:59 am

    Dear Judge Michel

    Respectfully, this bill is idiotic

  • [Avatar for Pro Say]
    Pro Say
    June 27, 2023 02:45 pm

    “No individual inventor can compete with this on-going degree of influencing.”

    You’re correct, PTO-Indentured. No individual can.

    But the great news is that if our army of untold 1,000’s all work together (including repeatedly reaching out to our elected representatives), we will not just compete — but win this battle.

    While I respect the viewpoints of the doubters and naysayers, this time s different. Very different indeed.

    The stars and planets are finally in alignment, the necessary factors have coalesced, and those Senators and Congress Folks who were previously unsure and uncertain . . . now (or will very soon) appreciate and understand the gravity of what is at stake for America.

    Lies and money will not prevail.

    Not this time.

  • [Avatar for David Lewis]
    David Lewis
    June 27, 2023 02:25 pm

    Although it would appear that the bill is an improvement over what we currently have, it is not clear how much certainty the bill will add to the law and exactly how much of an improvement it will be (particularly for software invention). It at least may clear up some issues and it makes isolated genes patent-eligible again.

    For example, the language “substantially economic, financial, business, social, cultural, or artistic” D(v)- particularly the word “substantially” and the language “adding a non-essential reference to a computer by merely stating, for example, ‘‘do it on a computer’’ shall not establish such eligibility” encourage dissecting the claim into parts instead of reading it as a whole. Additionally, following the current line of reasoning of the CAFC, this language may also keep 102, 103, and 112 types of analysis in the evaluation of patent eligibility despite the express prohibition of using such types of analysis (because how else does one determine what is essential/nonessential if not by dissecting the claim into parts and then possibly even using 102, 103, and 112 types of analysis).
    Also, the language “and the like” E(i) leaves at least some uncertainty as to what that might include.
    Although the bill removes judicial exceptions, it adds back similar exceptions of its own, which could potentially introduce uncertainties as to what they include.
    For example, if a mathematical formula cannot be practically performed without a machine, is it now patent eligible – not entirely clear? Note that there are decisions that state that an algorithm is a mathematical formula. Combining that concept with the idea that nonessential references to computers do not make it patent eligible would seem to suggest that software (e.g., like that of Enfest or McCro) may not be patent eligible anymore.

    The introductory statements about what the legislation intends to correct may be helpful (I have not read it carefully). However, I fear that similar to the legislation, it may give some things but have other innocuous-sounding clauses that may have the effect of taking away other things that are at least kind of similar to what the introduction at first glance appears to be giving).

    However, perhaps that is the best we can get for now.

  • [Avatar for jacek]
    June 27, 2023 11:22 am

    The enthusiasm of the Title “…Strong Way Forward… makes me shiver. Nothing good ever comes out when the two are involved.
    The abuse in the patent system is just too apparent, so they are trying to derail any significant reforms by offering the ersatz.

  • [Avatar for PTO Indentured]
    PTO Indentured
    June 27, 2023 10:33 am

    The best patent-crushing tactics Big Tech money can buy (which will surely continue to snow-ball unless this obscene practice is curtailed):

    According to required senate reporting: merely a few Big Tech entities ‘threw $80M into the ring’ this past year — to lobby just 100 US senators. For one-year that’s $800,000 per senator (avg.). Take into account that this is quite likely to continue (or increase) this will be $4.8M per senator (avg.) over a six-year senator term. When such an individual is doted on — to the tune of $4.8M — he/she is quite likely to be ‘influenced’ by such ‘attention’.

    This year at a premiere debut of a pro-inventor / innovation documentary film shown at a major nearby theater — attended by the director and a USPTO ‘decision maker’ — the subject of how detrimental unprecedented levels of anti-patent lobbying can be, the latter individual remarked (sincerely!) ‘Oh they (the lobbyists) are such friendly people’ (versus patent-deadly).

    No individual inventor can compete with this on-going degree of influencing.

    Just wanted to give fellow readers here, a bit of a reality check.

  • [Avatar for Addy]
    June 27, 2023 09:51 am

    Don’t get too excited. Nothing will happen until after the upcoming federal election, and then Big Tech and their allies will likely prevent this from getting out of committee, or not without significant amendments. Tech has enough Ds in their corner to get what they want, and pro-business Rs are likely allies.

    You’re just going to have to find better patent practitioners who genuinely understand how to get good claims allowed (and there aren’t many).

    Good claims in this context – designed and prosecuted to survive litigation and not merely collect your fees to get something allowed.

  • [Avatar for Pro Say]
    Pro Say
    June 27, 2023 08:40 am

    Respectfully Max, please do not allow your demonstrated intelligence somehow leave you blinded to just what these carefully crafted bills say . . . and say not.

    What they will . . . and will not do.

    What their effect will . . . and will not be.

    While perfection is impossible in a world which must by necessity operate with mere words, these two bills are the best hope for America.

    And — except for the sworn enemies of democracy and freedom including repressive Communist China — indeed for the World itself.

    You say: “The remedies lie elsewhere.”

    What remedies are those? In fact, your inability to articulate any such remedies serves only to confirm these two facts:

    1. These two bills are the remedies.

    2. The time to pass them is now.

  • [Avatar for Anon]
    June 27, 2023 07:04 am


    With all due respect, have you been under a rock for the last twenty years?

    Your response to retired Chief Judge Michel is simply not in touch with reality.

  • [Avatar for Max Drei]
    Max Drei
    June 27, 2023 06:34 am

    Dear Mr Michel, I do not understand the argument that because China is ahead of the USA in 37 out of 44 fields of technology the US patent statute (which already makes eligible “all fields” of technology for patent protection) has to be amended to render eligible subject matter areas that have never before been seen as susceptible of patent protection.

    Patents are, by definition, restraints on free trade. One should be very cautious about allowing patents on stuff that has never before been seen as within the ambit of any system of patents, lest one dampen the climate of innovation within any given business field, more than one fires it up.

    It is indeed worrying, that China is ahead in 37 out of 44 fields of technology. Something must be done! That’s for sure. But granting patents for non-technological subject matter won’t change that state of affairs one little bit. The remedies lie elsewhere.

  • [Avatar for Concerned]
    June 27, 2023 04:51 am

    I have been personally told by the courts that I met the law as written by Congress but did not meet the courts’ case law. Who really writes the laws in this land?

    My attorney has a petition pending in front of SCOTUS asking the high court to toss all their judicial exceptions. It is a longshot, we know, not based on principle is it a longshot, but based on human nature and arrogance. I also witnessed the changing of the rejection theory 3 or 4 times to further suit the other side’s position. The authorities can change their position all day long, rinse and repeat, patent applications can be a fool’s errand.

    Win or lose the petition, we stood up to this nonsense. Hopefully, Congress will put a stop to this madness, although it would be great if my petition hit the miracle homerun.

  • [Avatar for Pro Say]
    Pro Say
    June 26, 2023 09:42 pm

    My fellow independent inventors, innovative small and midsize companies, pharma / bio firms, R&D firms, all colleges and universities, and indeed each and every one who cares about America . . . the time has finally come for us all to stand together in this honorable battle.

    The Big Tech behemoths and Communist China (through their corporate lapdogs) are already swamping Congress with their “sky is falling, sky is falling” baloney. We must not let them get away with it.

    My Express Mail letters supporting both these innovation-critical bills to my Senators and Congressmen and Women go out this week . . . with my followup weekly phone calls to them beginning next week and continuing until both bills are passed and signed by the President.

    Working together, truth and our numbers can overcome their slick, lying lobbyists and blood money dollars.

    There is no time to waste, my friends. No time to waste.

  • [Avatar for F22strike]
    June 26, 2023 06:23 pm

    Big-tech will surely lobby to prevent these bills from making it out of committee and onto the floor of the Senate. Even if they do make it out of committee, those monopolies will surely prevent these bills from gaining the 60 votes required for cloture. Also, get ready for amendments that will kill the badly needed reforms.