PREVAIL Act
Sponsored By: Representative Moran
Introduced
Summary
The PREVAIL Act would strengthen enforceable patent rights and curb abusive post‑grant challenges. It tightens Patent Trial and Appeal Board procedures, raises evidence and claim construction standards, and would create an Innovation Promotion Fund to keep USPTO fees at the agency while expanding university and micro‑entity protections.
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- Patent owners: Requires minimum three‑member PTAB panels, a formal code of conduct, public records for panel changes, limits supervisor influence, and raises the unpatentability burden to clear and convincing. It also expands estoppel to discourage repeat attacks.
- Petitioners and challengers: Creates a certification regime, treats financial backers as real parties in interest, and bars petitioners and their backers from pursuing the same invalidity grounds in parallel court or International Trade Commission actions.
- Universities and small inventors: Expands micro‑entity treatment tied to higher education, allows license assignments and university patent‑holding organizations to access benefits, and orders Small Business Administration reporting on small business patent ownership.
- USPTO users and public access: Replaces fee diversion with a new United States Patent and Trademark Office Innovation Promotion Fund funded by fees and requires free online public patent and trademark tools where licensing allows.
- Litigation and procedure: Harmonizes claim construction with traditional standards, clarifies discovery and amendment rules, sets fixed timelines for rehearings and remands, and limits baseless or duplicative petitions absent exceptional circumstances.
Bill Overview
Analyzed Economic Effects
9 provisions identified: 6 benefits, 0 costs, 3 mixed.
More inventors qualify for micro-entity fees
The bill would let more applicants qualify for reduced USPTO fees. You could qualify if your main employer is a college or university, if you assigned (or must assign) the application to a college, if you are the college, or if you are a 501(c)(3) that holds patents for a college to help commercialization.
USPTO fund to keep services running
The bill would create a USPTO Innovation Promotion Fund that collects patent and trademark fees. Money in the fund could be used without yearly limits to run USPTO services and pay obligations. On the first day of the first fiscal year after enactment, leftover balances from older accounts would move into the new fund, and the old reserve fund would close after paying what it owes. Patent fees could only fund patent work (plus a fair share of admin costs). Trademark fees could only fund trademark work (plus a fair share of admin costs).
One forum and fewer repeat challenges
Once the Patent Office starts a review, a petitioner and its funders would not be able to also attack the patent’s validity in court or at the Trade Commission. The Office would block repeat petitions on grounds that were raised or reasonably could have been raised, with a narrow exception for later‑added claims tied to joinder. The Office would not start or keep a review if a court or the Trade Commission already issued a final validity judgment in a case involving the petitioner. The Director would manage overlapping Office cases and, unless there are exceptional circumstances, reject petitions that repeat the same prior art or arguments. A late joiner could be added only in limited cases, could not be the lead petitioner, and could stay only if an on‑time petitioner remains.
Free patent and trademark search tools online
The USPTO would put online, at no charge, the patent and trademark information available in its Alexandria public search room. This would include search tools, databases, info pages, and training. Items covered by third‑party licenses that make free access not financially workable could be excluded.
Faster patent review decisions and deadlines
The Director would need to decide rehearing requests on institution within 45 days, with one extension of up to 30 days for good cause. If a court sends a case back, the Board or Director would need to decide remand issues within 120 days, with up to a 60‑day extension for good cause. The Office would issue a trial certificate within 60 days after the appeal window ends or an appeal finishes. Rehearing of a final written decision would be due within 90 days, with up to a 60‑day extension. Any Director rehearing would be a separate public opinion and would count as a final decision for appeal.
Higher proof and court-like claim reading
Challengers would need clear and convincing evidence to invalidate issued claims. Substitute claims would be judged on a lower, preponderance standard. Claims would be read like courts read them, using ordinary meaning and the prosecution history, and considering any past court constructions. Patent owners could cancel claims or propose substitute claims, get guidance from the Board, and revise proposals. Discovery would be limited to depositions of declarants, evidence on real parties in interest, and what is needed in the interest of justice.
Stronger patent board panels and ethics
Appeals and patent reviews would be heard by at least three board members. Any panel change would be recorded publicly. Supervisors who are not on the panel could not try to influence the decision, and those who vote to start a review could not later decide it. The Director would set a code of conduct for board members, taking cues from the federal judges’ code.
Tighter filing rules and funder disclosure
Before a review starts, a petitioner would need to meet one of four tests, such as being a qualifying nonprofit with no infringing funders, planning U.S. conduct that could infringe, having court standing, or having been sued. Anyone who pays for a petition would be treated as a real party in interest and would need to be disclosed.
Time limit and funder disclosure for reexams
You could not request an ex parte reexamination more than one year after you (or your real party in interest or privy) were served with an infringement complaint. A request would need to list all real parties in interest and certify it is not time‑barred. The Office would usually reject requests that repeat the same prior art or arguments unless there are exceptional circumstances. The Office could also reject requests that use a prior Office decision to fix a previously weak filing.
Sponsors & CoSponsors
Sponsor
Moran
TX • R
Cosponsors
Ross
NC • D
Sponsored 5/1/2025
Suozzi
NY • D
Sponsored 10/8/2025
Roll Call Votes
No roll call votes available for this bill.
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