Pro-IP Bills Get a Rerun
Mike Waring
AUTM Advocacy and Alliances Coordinator
On May 1, two of our strongest IP allies in the Senate – Thom Tillis (R-NC) and Chris Coons (D-DE) – re-introduced two bills that AUTM enthusiastically supports. They were joined by four House members who introduced companion bills in the House.
Tillis – who chairs the IP subcommittee for the Senate Judiciary Committee – re-introduced the Patent Eligibility Restoration Act (PERA). This legislation is a direct response to the muddling by the Supreme Court in recent years about what is – or is not – patent eligible.
Remember that this issue revolves around Section 101 of patent law. It is the first “sieve” through which an invention is evaluated before passing onto other sections of patent law dealing with patent appropriateness. Unfortunately, numerous court decisions have made it very difficult for any number of discoveries – particularly therapeutics and diagnostics – to withstand even this initial review by the Patent Office. As a result, many potential lifesaving and health-improving inventions have fallen by the wayside or are never even brought to the Patent Office for review. Reps. Kevin Kiley (R-CA) and Scott Peters (D-CA) are leading the House bill.
Specifically, the bill makes clear that genes themselves cannot be patented. But it would allow that some genetic-related discoveries could be considered for patenting and clarifies other rules. In essence, it brings back clarity to a system that desperately needs it. Even the Federal Circuit – which takes up patent appeals cases – has called on Congress to act given the Supreme Court’s unwillingness to provide further specificity to the process.
Meanwhile, Senator Coons – a long-time patent advocate and former subcommittee chairman – has again offered the PREVAIL Act. This legislation addresses the problem of serial challenges and other unintended consequences from the Patent Trial and Appeals Board (PTAB). PTAB was created when Congress rewrote the patent laws in 2011 as an alternative to going to court to adjudicate patents. Instead, statistics show it has become a place where large tech companies come to block challenging technologies with a lower standard of proof required, often on top of legal challenges.
Coons’s bill would deny serial attacks on patents and would make the standard of proof the same for PTAB matters that we see in federal court. This will make the PTAB process fairer for patentees and allow them to hopefully have more quiet title to their inventions. This bill was marked up late last year, but now there will be more time to try and move it forward in the Senate. The House companion bill is led by Reps. Nathaniel Moran (R-TX) and Deborah Ross (D-NC).
As these bills begin their life in the 119th Congress, please stay in touch with your federal relations team and look for opportunities to express your institution’s support with senators on the Judiciary Committee and the four House members.
Pictured above: Lawmakers in Washington unveiled two pro-IP bills that AUTM supports at a May 1 press conference. From left to right: Rep. Kevin Kiley (R-CA); Rep. Deborah Ross (D-NC); Sen. Thom Tillis (R-NC); Sen. Chris Coons (D-DE); and Rep. Scott Peters (D-CA).