PREVAIL Act
Sponsored By: Senator Sen. Coons, Christopher A. [D-DE]
Introduced
Summary
Strengthening PTAB governance and tightening post-grant review standards. This bill would limit who can bring and fund reviews, raise proof standards for unpatentability, and reorganize USPTO fee handling to a dedicated revolving fund.
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- Petitioners and funders: Would limit petitioner eligibility by requiring certain nonprofit status and certifications about funding and standing. It would treat anyone who financially contributes to preparing or conducting an IPR or post‑grant review as a real party in interest.
- How reviews work and outcomes: Would require mandatory three‑member PTAB panels with public notice, raise the burden to prove unpatentability of issued claims to clear and convincing evidence while using a preponderance standard for substitute claims, tighten joinder and estoppel rules, and bar parallel court or ITC validity challenges when PTAB review is instituted.
- USPTO operations, small businesses, and universities: Would create an Innovation Promotion Fund as a dedicated revolving fund for patent and trademark fees to prevent fee diversion. It would expand the micro‑entity definition to cover certain higher‑education and 501(c)(3) arrangements, require free online Public Search Facility materials where feasible, and require the SBA to report within one year on small business patent impacts.
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Bill Overview
Analyzed Economic Effects
5 provisions identified: 2 benefits, 1 costs, 2 mixed.
Tighter PTAB trials and deadlines
If enacted, the Director would limit discovery in IPRs and PGRs to a few narrow categories, like depositions of affidavit witnesses and evidence identifying real parties. Previously issued claims would get the presumption of validity and require clear and convincing evidence to overcome; substitute claims would be judged by a lower preponderance standard. PTAB panels must be at least three members, panel changes must be recorded, supervisors who are not panel members could not influence merits decisions, and any member who voted to institute a review could not decide the final review. The bill would also set deadlines for PTAB actions, such as issuing trial certificates within 60 days and deciding rehearings and remand issues within set 45–120 day windows (with limited extensions).
Small business patent help and rules
If enacted, the Small Business Administration would have to report to Congress within one year on how patent ownership and patent lawsuits affect small businesses. The bill would also expand who can claim patent micro-entity status to include more people and entities tied to colleges, universities, and certain 501(c)(3) organizations, if they certify the required relationship.
Stop duplicate patent reviews
If enacted, the bill would stop the USPTO from starting or keeping a post-grant review or inter partes review (IPR/PGR) when a court or the International Trade Commission already issued a final decision on the same patent claim involving the same party. It would broaden estoppel so a petitioner (and people closely tied to them) could not later raise grounds they raised or reasonably could have raised earlier. Once an IPR or PGR is instituted, a petitioner and related parties could not raise the same validity arguments in federal court or at the ITC. Petitioners would also have to tell the Director about other cases on the same patent within 30 days so the Director can decide how matters should proceed.
New rules for funders and joinders
If enacted, the bill would treat people who pay to prepare or run a PTAB review or ex parte reexamination as real parties in interest. Requesters must list all real parties and certify they are not time-barred. The USPTO would start with a presumption against joining new parties in an IPR and limit time-barred joiners from being lead petitioners. Ex parte reexamination requests would be barred if filed more than one year after an infringement complaint against the requester or a real party in interest.
New USPTO fee fund and free search
If enacted, the bill would create a USPTO Innovation Promotion Fund and require patent and trademark fees to be deposited into it. The fund would let the Director use those fees without fiscal year limits for patent and trademark processing and a share of admin costs. On the fund's start date, unused balances from current PTO accounts would move into the new fund and the old fee reserve would be closed when obligations are paid. The Director would also be required to put the USPTO Public Search Facility's tools, databases, guides, and training online for free unless third-party licenses make that unviable.
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Sponsors & CoSponsors
Sponsor
Sen. Coons, Christopher A. [D-DE]
DE • D
Cosponsors
Sen. Tillis, Thomas [R-NC]
NC • R
Sponsored 5/1/2025
Sen. Durbin, Richard J. [D-IL]
IL • D
Sponsored 5/1/2025
Sen. Hirono, Mazie K. [D-HI]
HI • D
Sponsored 5/1/2025
Roll Call Votes
No roll call votes available for this bill.
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