The Federalist Society on its website quotes former President Ronald Reagan as saying “The Federalist Society is … returning the values and concepts of law as our founders understood them to scholarly dialogue.” Recent commentary supporting the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act, a bill that would gut the U.S. Patent and Trademark Office’s (USPTOUnited States Patent and Trademark Office. See also PTO.) congressionally-mandated mission to strike down the sort of unjust monopolies that inhibit innovation the Founders so rightly abhorred, does just the opposite.
A patent is a monopoly, for a certain time, on the sale of something for profit. It follows that an improperly-granted patent unfairly denies others the right to sell something they should be allowed to sell. In other words, improperly-granted patents are unjust monopolies perpetuated by the federal government itself, unless corrected.
The USPTO’s Patent Trial and Appeal Board (PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA.) exists to fulfill the Founders’ insistence that there be avenues for individuals and industry to challenge improperly-granted patents, which unfairly give patentees monopolies they don’t deserve because their patents don’t meet the statutory requirements of noveltyA requirement for patentability, based on 35 U.S.C. § 102(a) of the Patent Act. An invention cannot have been disclosed, offered for sale, or used publicly more than a year before seeking a patent.. Under the PTAB’s review process, members of the public file petitions for review and, if there is a “reasonable likelihood” that a patent is invalid, expert judges make a final determination. PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. judges invalidate these improperly-granted patents – and remove the improperly-granted monopoly – more reliably, and at far less cost, than if patents are challenged through lawsuits.
The Founders despised unjust monopolies and sought to prevent their abuse. Indeed, the Boston Tea Party of 1773 itself was a protest over the unfair, exclusive control the British East India Company exercised over tea under its royal grant of monopoly. As James Madison later wrote, “Monopolies tho’ in certain cases useful, ought to be granted with caution, and guarded with strictness against abuse.”
The first Congress was keenly aware of the need to allow for prompt challenges to improperly-granted patents, because the longer an unjust monopoly goes on, the greater the harm to American innovation. Section 5 of the first Patent Act of 1790 allowed challenges to the validity of a patent “obtained … upon false suggestion,” with the patent enjoying no presumption of validity. The Act allowed challengers to prevail upon showing any “sufficient” evidence, and even provided that successful patent challengers have their legal costs covered. Even so, in subsequent years, infringement lawsuits brought by the owners of improperly-granted patents became so widespread that then-President Andrew Jackson, in an official message, quoted a report stating “the community at large is frequently deprived of its common right [to innovate], by [an unjust] monopoly of what ought to be free, unless some individual will step forward and subject himself to the risk of a vexatious [patent infringement] lawsuit.” That presidential message resulted in further reforms through legislation creating the modern patent examination system – the Patent Act of 1836. But as the Senate Committee Report on that legislation clearly recognized, even as a new examination system was being created, any such system would be fallible, and the bureaucrats acting as patent examiners would inevitably improperly grant patents on occasion, requiring prompt correction. That remains the case today, so much so that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. was expressly created by Congress in 2011 to allow the USPTOUnited States Patent and Trademark Office. See also PTO. to correct its own errors.
In the face of all this, PREVAIL Act advocates are pushing forward with their proposal to significantly cut down access to PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. review and make it more difficult to challenge the patents underlying unjust monopolies. This despite the fact that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. already exercises its authority judiciously, with only 12% of patents involved in PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. proceedings ending in FY23 being fully invalidated and just 67% of petitions for review being instituted at all.
PREVAIL’s supporters often claim that they are looking out for the little guy, but ensuring that the rights granted by a patent are legitimate have no small or large bias. When invalid patents are efficiently canceled, it increases competition and rewards inventors who develop truly novel technologies, whether they work out of their garage or for a Fortune 500 company. In what other context would you see arguments for protecting monopoly power (not to mention monopoly power that was wrongly granted) framed as championing the proverbial little guy? It is puzzling to see those assertions repeatedly appear related to this issue.
Despite some claims to the contrary, the evidence shows that the companies that tend to utilize the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. most often are also the companies that are most frequently targeted with nuisance intellectual property lawsuits at the hands of shell companies – called patent trolls or non-practicing entities – that attempt to leverage invalid patents for financial gain. It follows that, just as Congress intended when it enacted the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA., those most often targeted with meritless lawsuits are the ones that most often avail themselves of more efficient review.
The reality is that the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. has proven to be a more effective venue for everybody seeking to invalidate unjust monopolies. And just a few years ago, the primacy of the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. in evaluating patent validity was affirmed by the Supreme Court in a majority opinion written by originalist Justice Clarence Thomas. In Oil States Energy Services, LLC v. Greene’s Energy Group, Justice Thomas wrote for the majority that: “This Court has recognized, and the parties do not dispute, that the decision to grant a patent is a matter involving public rights – specifically, the grant of a public franchise. Inter partes reviewAn adversarial procedure created by the AIA for challenging patents. Intended to be similar to a court proceeding, the parties argue before an Administrative Patent Judge, not a patent examiner. The challenger must show a reasonable likelihood of successfully invalidating one claim before the PTAB will agree to grant a petition for review. [that is, the patent reviews conducted by the PTAB] is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration.” The PTAB’s expertise is also backed by case outcomes. PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. decisions are both more often affirmed and less often reversed than district court patent validity findings.
The anti-innovation PREVAIL Act, if enacted, would prevent improperly-granted patents from being promptly corrected by the PTABPatent Trial and Appeal Board. Reviews adverse decisions of examiners on written appeals of applicants and appeals of reexaminations, and conducts inter partes reviews and post-grant reviews. The Board also continues to decide patent interferences, as it was known as the Board of Patent Appeals and Interferences (BPAI) before the AIA. and create a system that would unfairly perpetuate unjust monopolies that deter innovation – in direct contradiction to the policies supported by both the Founders and advocates of effective patent policy.
