Getting your Trinity Audio player ready...

By Russell Slifer

The 119th Congress is in full swing, and one priority should be reforming the U.S. Patent and Trademark Office’s (USPTO) quasi-judicial patent review board.

The Patent Trial and Appeal Board (PTAB) — originally intended to provide a streamlined process for reviewing patents — is increasingly being utilized to harm small innovators and deter investment in critical American industries.

A bipartisan bill that sought to rebalance the scales in favor of start-ups — the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act — gained traction in the last Congress, but time ultimately ran out.

PTAB was created by Congress in 2011 as part of the Leahy-Smith America Invents Act. The idea was simple: provide a faster, more efficient way to challenge patents, reducing lengthy and expensive court battles.

It made sense in theory.

But in practice, PTAB has been leveraged in ways that place significant burdens on smaller innovators and patent holders, who may not have the same financial and legal resources as larger corporations.

The disparity in resources between larger companies and the smaller patent holders they may challenge via the PTAB is stark. Consider that Cisco, with a market capitalization of over $200 billion, can easily afford drawn-out legal battles, while a start-up like Centripetal Networks operates on a fraction of those resources. Similarly, Google, worth nearly $2 trillion, can outspend a small semiconductor company like Netlist many times over. Prolonged litigation is often an existential threat for smaller firms and a mere inconvenience for large, established companies.

Large corporations turn to the PTAB for a good reason: They know they’re likely to win. According to the USPTO’s own data, when PTAB reaches a final written decision, 80% of cases result in at least one patent claim being invalidated. Of course, this high invalidation rate wouldn’t necessarily mean the system is broken — except for the way it has been disproportionately weaponized against small patent owners.

The PREVAIL Act would restore balance to the system by addressing these abuses while preserving PTAB’s original — and completely valid — intent.

First, the bill would require standing for PTAB challengers, ensuring that only those with a legitimate interest in a patent can bring a case.

Second, PREVAIL would align PTAB’s burden of proof with district courts, ending the practice of applying a lower burden of proof to invalidate patents than what is required in federal court.

Third, it would prevent duplicative challenges, so patent owners don’t have to fight on multiple fronts simultaneously.

Fourth, it would close the joinder loophole, preventing time-barred parties from joining an existing PTAB proceeding after their filing deadline has expired.

Fifth, it would require PTAB to dismiss cases if another court has already upheld the validity of a patent, addressing the confusion created when PTAB rulings undercut district court findings of infringement. Such inconsistencies create uncertainty in the patent system, making it harder for innovators to attract investment in critical technologies.

For generations, the U.S. patent system has driven breakthrough innovations from the telegraph to mRNA vaccines. PTAB reform through the PREVAIL Act is essential to restoring a system that supports — rather than stifles — American ingenuity.

(Russell Slifer is a former deputy under secretary of commerce for intellectual property and deputy director of the U.S. Patent and Trademark Office.)