Two Bills Address Key Needs for Tech Transfer

Mike Waring
AUTM Advocacy and Alliances Coordinator

As technology transfer professionals know all too well, the current U.S. patent system has some serious challenges.  Among those are two we can easily identify: the need for more clarity about what is or is not eligible for patenting, and a fairer way for the Patent Trial and Appeal Board (PTAB) to adjudicate patent challenges.
In large measure due to erroneous and confusing Supreme Court rulings over the past ten years or so, it has become very difficult to get patents for any number of discoveries in critical technologies, such as biotechnology and personalized medicine.  Despite frequent requests from the Federal Circuit and Congress to clarify this uncertainty, the court has failed to act.  So the only remedy is for legislation to be enacted that resolves this issue.
The Patent Eligibility Restoration Act (PERA), S. 2140), authored by Senators Chris Coons (D-DE) and Thom Tillis (R-NC), would do exactly that.  Specifically the legislation would:

  • Define the categories of inventions that are eligible for patent consideration
  • Replace the court’s ambiguous exceptions with more clearly defined exceptions, such as mathematical formulas, processes that occur in nature independent of human activity, as well as unmodified human genes or other natural material 
Remember we are talking about eligibility only.  Any inventions that pass this introductory review would still need to show that they are new and nonobvious.  But too many promising technologies have been lost by courts misusing the broader “sieve” of eligibility. 
On the issue of PTAB, there have been problems ever since the process for challenging a patent’s validity was first created as part of larger patent reform legislation passed in 2011.  While PTAB was supposed to be a cheaper alternative to going to court to challenge a patent or protect against infringement, it has turned into a second hammer to kill potential technologies.
Indeed, statistics show that instead of protecting the smaller patent interests, most PTAB challenges are initiated by large high-tech firms, whose motives are often to quash potential challengers or take their technologies without having to license them. 
Here again, Senators Coons and Tillis have introduced S. 2220, the PREVAIL Act.  A similar House bill has been introduced as well.  This legislation restores fairness to the PTAB process by:
  • Requiring legal standing to challenge a patent
  • Limiting repeated petitions and ending duplicative filings by requiring challenges to choose between PTAB and court
  • Requiring a party to raise all its arguments in one challenge
  • Harmonizing the claim interpretation between PTAB and federal court, which has a higher burden of proof

As we move into May, the Senate Judiciary Committee is hopeful of marking up the PREVAIL Act and hopefully the PERA Act.  Your AUTM Board has endorsed both bills enthusiastically, so how can you help?
Speak to your federal relations team about these bills, especially if you have a senator on the committee.  Urge them to share your and AUTM’s support for the legislation in order to allow you to maximize the new technologies that can move from the lab to the marketplace for the betterment of our economy, national defense and health care system. 
Moving forward on these two bills will be a huge first step toward having the patent system become fairer and more friendly to the inventors who make American innovation the greatest in the world.