Efforts to Pass Pro-Patent Bills Get Delayed
Mike Waring
AUTM Advocacy and Alliances Coordinator
For the past several years, AUTM has worked with a broad coalition of pro-patent interests to move several pieces of positive legislation through the Senate Judiciary Committee.
For too long, patent applicants have run into major hurdles at the U.S. Patent and Trademark Office (USPTO) when dealing, in particular, with biological discoveries. Unfortunately, several U.S. Supreme Court decisions in recent years have muddied the waters about what is or is not “patent eligible,” the first sieve a discovery must pass through as it is being considered for patenting. Legislation led by Senators Chris Coons (D-DE) and Thom Tillis (R-NC), the Patent Eligibility Restoration Act (PERA), S. 2140, attempts to fix those ambiguities while making it clear that naturally occurring substances in nature are not and never will be patent eligible. Too many diagnostic tests and other health care improvements have been left out in the cold by these confusing court rulings, rulings that the Federal Circuit has begged Congress to clarify for years. PERA will provide such clarity and is endorsed by the AUTM Board.
Meanwhile, another bill led by those two same senators would help fix many of the procedural issues that patentees face when their patent is challenged in the Patent Trial and Appeals Board (PTAB) process. Here again, the challenge system designed in 2011 as part of the America Invents Act as a cheaper alternative to going to court has been hijacked by large tech companies who have repeatedly attacked valid patents. With its lower threshold of determining if a patent was wrongly issued, inventors too often find their ideas diminished or lost by PTAB judges. Even the lead House sponsor of the AIA testified that these reforms are needed. This legislation – the PREVAIL Act, S. 2220 – fixes that situation by making the threshold for patentability the same as federal court. The legislation also prohibits repeated serial challenges against patents. Here again, AUTM and its board strongly support this legislation.
Yet a third bill, the IDEA Act, also is a bill that is widely supported. This legislation would allow PTO to create a voluntary system for collecting demographic data on who patentees are. This way, we can track how the nation is doing in encouraging more women and underrepresented minorities to become patentees. AUTM similarly has endorsed this legislation and its recognition that more diversity in innovation in an ever more diverse nation makes sense.
These three bills were ready for committee action right after the August congressional recess. Unfortunately, the markup scheduled for September 19 was delayed when Senator Tillis had a family emergency. A subsequent markup on September 26 was then scheduled, but once again outside forces intervened with the arrival of Hurricane Helene to the Florida coast, forcing Congress to leave town the day before to beat the storm ashore. Congress is now out of session until after the November 5 election, pending any recall to work on hurricane relief funding before then.
A number of AUTM members had been encouraging passage of these three bills leading up to the canceled markups. But that work has not gone in vain. It appears the committee will look at marking them up after the election, so those of you who have weighed in on the legislation with your senators should continue to make the case for approval of all three bills.
While the House will not take up these bills this Congress, moving forward even this late in the current session in the Senate will help lay the groundwork for quicker activity in the next Congress come January. As we have often seen in the past, it can take several Congresses to pass important legislation. If your institution is represented by a senator on the Judiciary Committee, continue to advocate for passage of these three important bills before the end of 2024.