Senate Bills Target Problems with Patent Eligibility and PTAB

Mike Waring
AUTM Advocacy and Alliances Coordinator

Under the strong leadership of the two key US Senators known for their support of intellectual property, two new bills have been introduced to address some major issues affecting technology transfer. Specifically, these bills will clarify patent eligibility and make necessary changes to the way the US Patent and Trademark Office’s Patent Trial and Appeals Board (PTAB) operates.
Chairman Chris Coons (D-DE) and Ranking Member Thom Tillis (R-NC) of the Senate Intellectual Property Subcommittee introduced the legislation right before the Fourth of July recess. Here is a quick primer on the bills and what they do: 

Patent Eligibility Restoration Act (PERA) (S. 2140) 
This legislation led by Senator Tillis focuses on clearing up the murkiness of how federal courts (specifically the US Supreme Court) have interpreted Section 101 of patent law.  The legislation makes it clear that, while patenting genes or other things that already exist in nature will remain unpatentable, gene therapies and many other diagnostics or derivations should be considered patentable. By restoring patent protections that recent court decisions have deemed unworthy, this legislation will have a hugely positive impact on the ability to move ideas from the lab to marketplace.

PREVAIL (Promoting and Respecting Economically Vital American Innovation Leadership) Act (S. 2220)
This legislation led by Chairman Coons attempts to make needed reforms to the PTAB process, which has caused too many legitimate patents to be stymied by serial challenges, a lower threshold than courts for the level of evidence required to invalidate a patent, and other needed improvements. This legislation grew out of the Stronger Patents Act which Senator Coons has championed in the past. A companion bill in the House of Representatives will be introduced by Reps. Ken Buck (R-CO) and Deborah Ross (D-NC).

Both bills have gathered widespread support from the pro-IP community in Washington, including numerous coalitions in which AUTM participates. It is anticipated that action on the two bills could come in September, following the traditional Congressional recess in August. The AUTM Board has endorsed the PERA legislation and is taking a close look at the PREVAIL Act.

As technology transfer professionals, you have an opportunity to engage with your federal relations officers to alert them to the introduction of these bills. AUTM will have talking points posted on its website that provide more details about the bills.   
Senators Coons and Tillis have been long-time supporters of tech transfer, and the introduction of these two bills is further evidence that they understand – as we do – that without adequate patent protection, too many great ideas developed in our labs may never see the light of day in the commercial sector, where they can make a difference.