The PREVAIL Act and RESTORE Acts in 2025
The U.S. Congress considered three important bills in 2024 that would change patent law: the “Promoting and Respecting Economically Vital Americans Innovation Leadership Act (PREVAIL Act), the “Restoring Engineering, Each bill was sponsored by bipartisans and intended to benefit patent holders. Ken Buck (R) sponsored the legislation at first in the House. Later, co-sponsors from both parties joined. The PREVAIL Act is now up for debate in the full Senate. The PREVAIL Act will now be debated in the full Senate. The bill was cosponsored when it was introduced by Representatives Chip Roy, Hank Johnson, and Deborah Ross. The bill will be heard on Wednesday, December 18th, 2024. Kevin Kiley (R – CA) and Scott Peters, (D – CA) introduced the bill to the House in September of 2024. It is scheduled to be voted on by the Senate Judiciary By November 2024, it did not appear that the bill had received enough committee support to be voted on in the Senate. PERA could eventually be approved because it addresses concerns raised by President Biden’s Solicitor-General in a petition to the U.S. Supreme Court for certiorari on American Axle & Manufacturing The PREVAIL Act
The America Invents Act of 2011, which brought about fundamental changes to the U.S. Patent System, included the creation of Inter Partes Review. Patents have always undergone “examination,” where the U.S. Patent and Trademark Office researches prior patents to determine whether new proposed inventions are novel, nonobvious, and sufficiently described to However, the American Invents Act created IPR proceedings which effectively re-opened the examination process as to prior art patents and printed publications, and subjected issued patents to new, low-cost validity challenges.
Whereas patent validity had previously been subject to challenge in federal courts, usually as part of a patent infringement suit, IPRs created mini-trials before a second set of USPTO employees at the Patent Trial and Appeal Board (PTAB). The PTAB’s Administrative Patent Judge panels are tribunals that are fully within the Executive Branch. Since its creation, PTAB has regularly struck patents down and has become recognized as a powerful weapon for those accused of patent infringement. The debate is now whether this tool has been
too
effective and has weakened patent rights in a significant way.
The PREVAIL Act sponsors claim that it will restore The sponsors summarize the bill’s features as follows:
Standing Requirement. Only those sued or threatened by a patent could use IPRs to preemptively challenge that patent’s validity.
Limits to Duplicate Attacks. The act would prohibit an entity from funding one IPR and then bringing another IPR challenge. Limits on Duplicate Arguments. To allow IPRs based on evidence or arguments previously presented to the PTAB, the act would require “exceptional circumstances.”
Higher Burden of Proof. The act would require that patents be proven invalid by “clear and convincing” evidence (not just by a “preponderance” of the evidence).End USPTO Fee Diversion. The act would allow fees paid to the USPTO to be used only for USPTO activities (rather than the current practice of distributing some of this money to other government entities).The RESTORE Act
For almost two decades, the U.S. Supreme Court has shown a pattern of adjusting patent law. The project was designed to bring uniformity to law, and it was a success on the Court. However, because patents were often given a special status in the past, this had the effect of weakening patent rights For many years, patent owners could insist that infringers stop infringements, e.g. by removing offending products or service from the market, based on the 35 U.S.C. SS 283. This power was not unlimited, since the statute invokes “principles of equity” to enforce injunctions “as the court deems reasonable.” This power was not unlimited, since the statute invokes “principles of equity” to enforce injunctions “as the court deems reasonable.”
- In a 2006 case, the Supreme Court signaled that patent injunctions should not be favored or applied by default. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). The RESTORE Act would return to the old norm by adding clause (b), a rebuttable assumption that an injunction will apply:
- 35 U.S.C. SS 283
- In General.–The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.
- Rebuttable Presumption.–If, in a case under this title, the court enters a final judgment finding infringement of a right secured by the patent, the patent owner shall be entitled to a rebuttable presumption that the court should grant a permanent injunction with respect to that infringing conduct.
- Although there has been debate about the practical effect of the eBay case, there is no doubt that patent holders would benefit from a more definitive enforcement path for U.S. Patents. At a Senate Subcommittee hearing held on December 18, witnesses on opposing sides of the topic debated whether RESTORE strikes the right balance.
PERA
As IP Watchdog has documented for over a decade, the U.S. Supreme Court’s 2012 Mayo and 2014 Alice decisions made it more difficult to obtain and enforce many types of patents. The Mayo and Alice Courts changed the previously uncontroversial test for patentability as provided in 35 U.S.C. SS 101 (“Inventions patentable”):
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Before Mayo and Alice, this statute had been generally viewed as a formal requirement, requiring inventions to be categorized as a “process” (for method claims), a “machine” (for system claims), or a “manufacture” (for apparatus claims). Mayo and Alice, on the other hand, held that there was an “important implicit exception” to the range of patentable subject matters: claims that were too closely related to “laws and natural phenomena, or abstract ideas, Since the last decade, it has become more difficult to obtain new, broad patents. This problem exists even when the invention is new, non-obvious and adequately described. The inventors must still satisfy the substantive provisions of Chapter 10 of Patent Act (“Patentability of Inventions”), 35 U SSSS 102, 103, and 112 During this period, the general skepticism about patents increased, perhaps because of internet fame for some strange patents, but also because of lobby A single patent from an inventor or startup can be a major risk for such companies, which often have large patent portfolios. It could threaten their market position and level the playing field. Cont., Art. I, Section 8, Clause 8. Interestingly, both the Constitution and the Patent Act suggest that patents can and should be issued for
discoveries
- , as well as for
- inventions
.
In recognition of this constitutional system, the PERA seeks to limit confusion arising from the “judicial exceptions” relied on by the Mayo and Alice Courts. PERA’s proposed text would replace the “judicial exceptions” discussed above with express statutory ones. Under PERA, the default would be that “useful” discoveries are eligible:
Any invention or discovery that can be claimed as a useful process, machine, manufacture, or composition of matter, or any useful improvement thereof, is eligible for patent protection.
Exceptions would be limited to:
A mathematical formula standing alone (that is, if not claimed as part of a useful process, machine, manufacture, or composition of matter).
A mental process performed solely in the mind of a human being.
An unmodified gene as it exists in the human body.
An unmodified natural material as it exists in nature.A process that is substantially economic, financial, business, social, cultural, or artistic (even if a step in this process refers to a machine or manufacture).Recognizing the apparent breadth of the last exception, PERA would provide that if the process “cannot practically be performed without the use of a machine or manufacture” (e.g., a computer or other man-made device), it “shall not be excluded from eligibility.”PERA also further clarifies that “isolated, purified, enriched” or otherwise human-altered genes or natural materials are eligible for patenting.Opponents of PERA include a group called U.S. The U.S. Inventor argues that this bill does not go far enough in strengthening patents. Other groups argue that PERA will create “more opportunities for patents that could be abused.” Stay tuned during the lame duck session of Congress in late 2024, and as the calendar flips to 2025.
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