IDEA Act moves forward while fate of PERA and PREVAIL seems uncertain
The Inventor Diversity for Economic Advancement (IDEA) Act of 2024, however, moved forward to the Senate floor. However, the Inventor Diversity for Economic Advancement (IDEA) Act of 2024 moved forward to the Senate floor.
Commenting on the decision to delay PERA, which would eliminate all judicially-created exceptions to U.S. patent eligibility law, Tillis said “we’ve had some discussions with members, we feel like we’re making good progress, but for the purposes of the markup I will be withdrawing it from consideration.” He alluded to forces at work that “may be trying to undermine progress of either PERA or PREVAIL,” and said that despite those efforts, “it’s going to get marked up, so those need to get at the table before they get on the table.”
The reasons for delay with respect to the PREVAIL Act, which would introduce a number of reforms to the Patent Trial and Appeal Board (PTAB) process, were more concrete, with Coons explaining that Senator Ted Cruz (R-TX) has amendments about making the PTAB process fairer for small and independent inventors and Senator Marsha Blackburn (R-TN) had also asked for more time for consideration. Coons also noted that there is now a manager’s amendment to address concerns from Senators Peter Welch (D-VT), Richard Blumenthal (D-CT) and Amy Klobuchar (D-MN) that the standing requirement contemplated by PREVAIL “might prevent generic competitors and patient advocates from using the PTAB to challenge patents.”
PREVAIL would require standing for PTAB challengers–specifically, that they must have been sued or threatened with a patent infringement lawsuit before filing a PTAB challenge–and limit multiple petitions against the same patent by “prohibiting any entity financially contributing to a PTAB challenge from bringing its own challenge.”
Coons said he didn’t want to move forward with the vote due to attendance issues as well as to give those members more time but added that “there is some significant misrepresentation going on about what happens at the PTAB,” noting that 18 of the 20 largest litigants are from Big Tech “who use it to invalidate properly granted patents.”[trying to thwart the bills]The last bill considered in today’s hearing was the IDEA Act, which will “direct the PTO to collect certain demographic data from patent applicants in a confidential and voluntary way,” according to the bill’s co-sponsor, Senator Mazie Hirono (D-HI), today. The bill was prompted by Senator Chuck Grassley (R-IA), Study of Underrepresented Class Chasing Engineering & Science (SUCCESS) Act. This act required the USPTO director to report to Congress on publicly available data on women and minorities and veterans and make recommendations on how to encourage their participation in patent system. The USPTO study concluded that there is not enough publicly available information to support and guide legislation that will encourage inclusive innovation. The IDEA Act was born out of this. The Office had no way to guess who was a veteran. According to a letter from the Council for Innovation Promotion (C4IP) supporting the bill, “
nvolving a greater number of women and Black Americans in innovation could increase U.S. gross domestic product by as much as 4.6%, or roughly $1.3 trillion according to one study.”
According to a Council for Innovation Promotion (C4IP) letter The collected demographic info would be kept separate from applications and not considered by examiners.
“I believe in this theory that inventors and leaders are evenly distributed among races, religions, creeds, ethnicities and we have to find a way to get to all of them,” commented Tillis.
According to a Council for Innovation Promotion (C4IP) letter supporting the bill, “
nvolving a greater number of women and Black Americans in the innovation process could increase U.S. gross domestic product by as much as 4.6%, or roughly $1.3 trillion, according to one study.”
The bill was favorably reported by a vote of 15 to 6.
C4IP also today applauded the passage of the IDEA Act and in a statement sent to IPWatchdog commended Tillis and Coons for “their continued commitment to moving PREVAIL and PERA through the committee.” The statement added: “These bills are the result of a thoughtful and collaborative process, and we are confident that the full Senate Judiciary Committee will favorably report these critically important bills soon.”[i]Judge Paul Michel, retired Chief Judge of the U.S. Court of Appeals for the Federal Circuit and also a Board Member with C4IP, said he is encouraged by today’s hearing despite the delay of PERA and PREVAIL:
“Today’s Judiciary Committee discussion of PREVAIL and PERA revealed dramatic progress toward approval. The bill was approved by a vote of 15 to 6. Judge Paul Michel, retired Chief Judge of the U.S. Courts of Appeals for the Federal Circuit and a Board Member with C4IP, said he is encouraged by today’s hearing despite the delay in PERA and PREVAIL:
“Today’s Judiciary Committee discussion on PREV These legislative proposals require time and discussion to allow members to become familiar with the complex issues. The Manager’s Amendment will address these concerns, including the “standing” required to petition PTAB. It may also include a narrow exemption for inventors who own their patents. The chances of passage have increased dramatically today, despite the delay in voting. The Senate Committee leaders again showed they know best how to advance legislation.”
The Innovation Alliance also commended the Committee on movement of the IDEA Act but said it was “disappointed that the Committee postponed consideration of the PREVAIL and Patent Eligibility Restoration Acts, which are needed to strengthen the U.S. innovation ecosystem. Failure to pass these laws would be a win for Big Tech, and a loss for American innovators and the U.S. Economy.”
Eileen McDermott, Editor-in Chief of IPWatchdog.com is a veteran IP and legal journalist. Eileen McDermott is a veteran IP journalist and has held editorial and management positions at
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