Make America Innovative Again, Part 2
In my previous article, I wrote about The Patent Eligibility Restoration Act of 2025 (PERA). I have just been informed that the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act has also been introduced in both the Senate and House of Representatives. This bill will also bring some degree of fairness back to the U.S. patent system.
In 2012, Sen. Patrick Leahy (D–VT) and Rep. Lamar Smith (R–TX) introduced the America Invents Act (AIA) that was ostensibly intended to stop “patent trolls,” which are actually free-market middlemen for patents, from “unfairly” accusing Big Tech of infringing patents. In doing so, it created the Patent Trial and Appeal Board (PTAB) where patents could be quickly and inexpensively challenged after they were examined and issued rather than going through a long and expensive legal proceeding. This post-grant exam is called an inter partes review (IPR).
That may sound great, but imagine that anytime after you got your driver’s license, anyone—another driver, your neighbor, your coworker, or some random person—could simply go to the DMV and claim that you didn’t deserve your license, at which time the DMV would call you in to retake your driver’s exam. That’s what was happening at these IPRs. Individual inventors and entrepreneurs would need to defend their patents, sometimes as many as ten times, before they could take the patent to court to sue infringers. If the patent got invalidated at any of these proceedings, the patent was deemed to be invalid for all time. Big Tech loves IPRs as a way to perform what has been called “efficient infringement” where it’s cheaper to keep infringing and file these challenges than actually pay an inventor a fee to license a patent.
The AIA had some rules that were open to interpretation, so some directors of the US Patent Office (USPTO) created rules and guidelines to interpret the act. President Obama’s first appointee, David Kappos, created rules that limited IPRs in a way that were actually favorable to inventors. During Obama’s second term, however, he appointed Michelle Lee to the position. She was previously deputy general counsel and head of patents at Google, so of course she undid much of what Kappos had done. President Trump appointed Andrei Iancu, who again set up rules and guidelines that interpreted the AIA in favor of inventors rather than infringers. He did more to help inventors than any patent office director in modern history. President Biden appointed Kathy Vidal, who acted more like a teenage girl posting selfies on social media and tweeting about diversity, equity, and inclusion (DEI) initiatives at the patent office. She not only reversed Iancu’s rules and guidelines, but reviewed every decision coming out of the patent office and overruled any that she didn’t like.
At one point, a mysterious company, OpenSky Industries, showed up at the patent office and filed an IPR against a patent from VLSI Technology after Intel’s IPR against that patent had failed. When it was discovered that OpenSky was funded by Intel and set up for the sole purpose to bring another IPR against VLSI, Director Vidal was so upset that she fined OpenSky about $400,000 (not a significant amount in a high tech litigation) and... unbelievably… let the IPR continue!
Fortunately, current USPTO acting director Coke Morgan Stewart has assured me that she will “follow in the footsteps of Andrei Iancu” and is already revising the rules and guidelines in that direction. Trump’s nominee for director, Howard Lutnick, will certainly continue these positive changes when he gets confirmed.
But for lasting fairness, we need the PREVAIL Act, which will limit IPRs and only allow one challenge from a party that is actually being accused of infringement. It will also bar companies from playing the game of filing IPRs while continuing with litigation, which drives up the costs for patent holders, and increases the chances of the patent being invalidated. The act will also boost the very low threshold for invalidating a patent at an IPR to a much higher one, which only makes sense because if the patent office already examined your patent and determined that it is valid, there should be a high standard for showing that the patent examiner made a mistake. These changes and other benefits of the PREVAIL Act can be found here.
In light of emerging technologies and international competition, the U.S. patent system must be strengthened, not weakened. Please contact your Representatives and Senators and encourage them to Make America Innovative Again by voting for Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. You can find your elected officials here.
About the author
Bob Zeidman is the creator of the field of software forensics and the founder of several successful high-tech Silicon Valley firms including Zeidman Consulting and Software Analysis and Forensic Engineering. His latest venture is Good Beat Poker, a new way to play and watch poker online. He is the author of textbooks on engineering and intellectual property as well as award-winning screenplays and novels. His latest book is Election Hacks, the true story of how he challenged his own beliefs about voting machine hacking in the 2020 presidential election and made international news and (possibly) $5 million.