[Congressional Bills 119th Congress]
[From the U.S. Government Publishing Office]
[H.R. 3160 Introduced in House (IH)]
<DOC>
119th CONGRESS
1st Session
H. R. 3160
To amend title 35, United States Code, to invest in inventors in the
United States, maintain the United States as the leading innovation
economy in the world, and protect the property rights of the inventors
that grow the economy of the United States, and for other purposes.
_______________________________________________________________________
IN THE HOUSE OF REPRESENTATIVES
May 1, 2025
Mr. Moran (for himself and Ms. Ross) introduced the following bill;
which was referred to the Committee on the Judiciary
_______________________________________________________________________
A BILL
To amend title 35, United States Code, to invest in inventors in the
United States, maintain the United States as the leading innovation
economy in the world, and protect the property rights of the inventors
that grow the economy of the United States, and for other purposes.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
SECTION 1. SHORT TITLE.
This Act may be cited as the ``Promoting and Respecting
Economically Vital American Innovation Leadership Act'' or the
``PREVAIL Act''.
SEC. 2. FINDINGS.
Congress finds the following:
(1) The patent property rights enshrined in the
Constitution of the United States provide the foundation for
the exceptional innovation environment in the United States.
(2) Reliable and effective patent protection encourages
United States inventors to invest their resources in creating
new inventions.
(3) United States inventors have made discoveries leading
to patient cures, positive changes to the standard of living
for all people in the United States, and improvements to the
agricultural, telecommunications, and electronics industries,
among others.
(4) The United States patent system is an essential part of
the economic success of the United States.
(5) Reliable and effective patent protection improves the
chances of success for individual inventors and small companies
and increases the chances of securing investments for those
inventors and companies.
(6) Intellectual property-intensive industries in the
United States--
(A) generate tens of millions of jobs for
individuals in the United States; and
(B) account for more than \1/3\ of the gross
domestic product of the United States.
(7) The National Security Commission on Artificial
Intelligence has emphasized that--
(A) the People's Republic of China is leveraging
and exploiting intellectual property as a critical tool
within its national strategies for emerging
technologies; and
(B) the United States has failed to similarly
recognize the importance of intellectual property in
securing its own national security, economic interests,
and technological competitiveness.
(8) In the highly competitive global economy, the United
States needs reliable and effective patent protections to
safeguard national security interests and maintain its position
as the most innovative country in the world.
(9) Congress last enacted comprehensive reforms of the
patent system in 2011.
(10) Unintended consequences of the comprehensive 2011
reform of patent laws have become evident during the decade
preceding the date of enactment of this Act, including the
strategic filing of post-grant review proceedings to depress
stock prices and extort settlements, the filing of repetitive
petitions for inter partes and post-grant reviews that have the
effect of harassing patent owners, and the unnecessary
duplication of work by the district courts of the United States
and the Patent Trial and Appeal Board, all of which drive down
investment in innovation and frustrate the purpose of those
patent reform laws.
(11) Efforts by Congress to reform the patent system
without careful scrutiny create a serious risk of making it
more costly and difficult for innovators to protect their
patents from infringement, thereby--
(A) disincentivizing United States companies from
innovating; and
(B) weakening the economy of the United States.
SEC. 3. PATENT TRIAL AND APPEAL BOARD.
Section 6 of title 35, United States Code, is amended--
(1) by redesignating subsections (b), (c), and (d) as
subsections (c), (d), and (e), respectively;
(2) by inserting after subsection (a) the following:
``(b) Code of Conduct.--
``(1) In general.--The Director shall prescribe regulations
establishing a code of conduct for the members of the Patent
Trial and Appeal Board.
``(2) Considerations.--In prescribing regulations under
paragraph (1), the Director shall consider the Code of Conduct
for United States Judges and how the provisions of that Code of
Conduct may apply to the Patent Trial and Appeal Board.'';
(3) by striking subsection (d), as so redesignated, and
inserting the following:
``(d) 3-Member Panels.--
``(1) In general.--Each appeal, derivation proceeding,
post-grant review, and inter partes review shall be heard by at
least 3 members of the Patent Trial and Appeal Board, who shall
be designated by the Director. The Patent Trial and Appeal
Board may grant rehearings.
``(2) Changes to constitution of panel.--After the
constitution of a panel of the Patent Trial and Appeal Board
under this subsection has been made public, any changes to the
constitution of that panel, including changes that were made
before the constitution of the panel was made public, shall be
noted in the record.
``(3) No direction or influence.--An officer who has
supervisory authority or disciplinary authority with respect to
an administrative patent judge of the Patent Trial and Appeal
Board (or a delegate of such an officer), and who is not a
member of a panel described in this subsection, shall refrain
from communications with the panel that direct or otherwise
influence any merits decision of the panel.
``(4) Ineligibility to hear review.--A member of the Patent
Trial and Appeal Board who participates in the decision to
institute an inter partes review or a post-grant review of a
patent shall be ineligible to hear the review.''; and
(4) in subsection (e), as so redesignated--
(A) in the first sentence--
(i) by striking ``the date of the enactment
of this subsection'' and inserting ``the date
of enactment of the Promoting and Respecting
Economically Vital American Innovation
Leadership Act'';
(ii) by striking ``by the Director'' and
inserting ``by the Director or the Secretary'';
and
(iii) by inserting ``or the Secretary, as
applicable,'' after ``on which the Director'';
and
(B) in the second sentence--
(i) by inserting after ``by the Director''
the following: ``, or, before the date of
enactment of the Promoting and Respecting
Economically Vital American Innovation
Leadership Act, having performed duties no
longer performed by administrative patent
judges,''; and
(ii) by striking ``that the administrative
patent judge so appointed'' and inserting
``that the applicable administrative patent
judge''.
SEC. 4. INTER PARTES REVIEW.
(a) Real Parties in Interest.--Section 311 of title 35, United
States Code, is amended by adding at the end the following:
``(d) Real Party in Interest.--For purposes of this chapter, a
person that, directly or through an affiliate, subsidiary, or proxy,
makes a financial contribution to the preparation for, or conduct
during, an inter partes review on behalf of a petitioner shall be
considered a real party in interest of that petitioner.''.
(b) Petitioner Certification and Director Determination.--Section
312(a) of title 35, United States Code, is amended--
(1) in paragraph (4), by striking ``and'' at the end;
(2) in paragraph (5), by striking the period at the end and
inserting ``and''; and
(3) by adding at the end the following:
``(6) the petitioner certifies, and the Director
determines, that the petitioner--
``(A) is a nonprofit organization that--
``(i) is exempt from taxation under section
501(a) of the Internal Revenue Code of 1986,
described in section 501(c)(3) of such Code,
and described in section 170(b)(1)(A) of such
Code, other than an organization described in
section 509(a)(3) of such Code;
``(ii) does not have any member, donor, or
other funding source that is, or reasonably
could be accused of, infringing 1 or more
claims of the challenged patent; and
``(iii) is filing the petition for the sole
purpose of ascertaining the patentability of
the challenged claims of the patent and not to
profit from or fund the operations of the
petitioner;
``(B) is currently engaging in, or has a bona fide
intent to engage in, conduct within the United States
that reasonably could be accused of infringing 1 or
more claims of the challenged patent;
``(C) would have standing to bring a civil action
in a court of the United States seeking a declaratory
judgment of invalidity with respect to 1 or more claims
of the challenged patent; or
``(D) has been sued in a court of the United States
for infringement of the challenged patent.''.
(c) Institution Decision Rehearing Timing.--Section 314 of title
35, United States Code, is amended by adding at the end the following:
``(e) Rehearing.--Not later than 45 days after the date on which a
request for rehearing from a determination by the Director under
subsection (b) is filed, the Director shall finally decide any request
for reconsideration, rehearing, or review with respect to the
determination, except that the Director may, for good cause shown,
extend that 45-day period by not more than 30 days.''.
(d) Eliminating Repetitive Proceedings.--
(1) In general.--Section 315 of title 35, United States
Code, is amended--
(A) in subsection (b), by amending the second
sentence to read as follows: ``The time limitation set
forth in the preceding sentence shall not bar a request
for joinder under subsection (d), but shall establish a
rebuttable presumption against joinder for the
requesting person.'';
(B) by redesignating subsections (c), (d), and (e)
as subsections (d), (e), and (f), respectively;
(C) by inserting after subsection (b) the
following:
``(c) Single Forum.--
``(1) In general.--If an inter partes review is instituted
challenging the validity of a patent, the petitioner, a real
party in interest, or a privy of the petitioner may not file or
maintain, in a civil action arising in whole or in part under
section 1338 of title 28, or in a proceeding before the
International Trade Commission under section 337 of the Tariff
Act of 1930 (19 U.S.C. 1337), a claim, a counterclaim, or an
affirmative defense challenging the validity of any claim of
the patent on any ground described in section 311(b).
``(2) Considerations.--In determining whether to institute
a proceeding under this chapter, subject to the provisions of
subsections (a)(1) and (g), the Director may not reject a
petition requesting an inter partes review on the basis of the
petitioner, a real party in interest, or a privy of the
petitioner filing or maintaining a claim, a counterclaim, or an
affirmative defense challenging the validity of the applicable
patent in any civil action arising in whole or in part under
section 1338 of title 28, or in a proceeding before the
International Trade Commission under section 337 of the Tariff
Act of 1930 (19 U.S.C. 1337).'';
(D) by amending subsection (d), as so redesignated,
to read as follows:
``(d) Joinder.--
``(1) In general.--If the Director institutes an inter
partes review, the Director, in the discretion of the Director,
may join as a party to that inter partes review any person that
properly files a request to join the inter partes review and a
petition under section 311 that the Director, after receiving a
preliminary response under section 313 or the expiration of the
time for filing such a response, determines warrants the
institution of an inter partes review under section 314.
``(2) Time-barred person.--Pursuant to paragraph (1), the
Director, in the discretion of the Director, may join as a
party to an inter partes review a person that did not satisfy
the time limitation under subsection (b) that rebuts the
presumption against joinder, except that any such person shall
not be permitted to serve as the lead petitioner and shall not
be permitted to maintain the inter partes review unless a
petitioner that satisfied the time limitation under subsection
(b) remains in the inter partes review.'';
(E) by amending subsection (e), as so redesignated,
to read as follows:
``(e) Multiple Proceedings.--
``(1) In general.--Notwithstanding sections 135(a), 251,
and 252, and chapter 30, after a petition to institute an inter
partes review is filed, if another proceeding or matter
involving the patent is before the Office--
``(A) the parties shall notify the Director of that
other proceeding or matter--
``(i) not later than 30 days after the date
of entry of the notice of filing date accorded
to the petition; or
``(ii) if the other proceeding or matter is
filed after the date on which the petition to
institute an inter partes review is filed, not
later than 30 days after the date on which the
other proceeding or matter is filed; and
``(B) the Director shall issue a decision
determining the manner in which the inter partes review
or other proceeding or matter may proceed, including
providing for stay, transfer, consolidation, or
termination of any such matter or proceeding.
``(2) Considerations.--In determining whether to institute
a proceeding under this chapter, the Director shall, unless the
Director determines that the petitioner has demonstrated
exceptional circumstances, reject any petition that presents
prior art or an argument that is the same or substantially the
same as prior art or an argument that previously was presented
to the Office.'';
(F) by amending subsection (f), as so redesignated,
to read as follows:
``(f) Estoppel.--
``(1) In general.--A petitioner that has previously
requested an inter partes review of a claim in a patent under
this chapter, or a real party in interest or a privy of such a
petitioner, may not request or maintain another proceeding
before the Office with respect to that patent on any ground
that the petitioner raised or reasonably could have raised in
the petition requesting or during the prior inter partes
review, unless--
``(A) after the filing of the initial petition, the
petitioner, or a real party in interest or a privy of
the petitioner, is charged with infringement of
additional claims of the patent;
``(B) a subsequent petition requests an inter
partes review of only the additional claims of the
patent that the petitioner, or a real party in interest
or a privy of the petitioner, is later charged with
infringing; and
``(C) that subsequent petition is accompanied by a
request for joinder to the prior inter partes review,
which overcomes the rebuttable presumption against
joinder set forth in subsection (b), and which the
Director shall grant if the Director authorizes an
inter partes review to be instituted on the subsequent
petition under section 314.
``(2) Joined party.--Any person joined as a party to an
inter partes review, and any real party in interest or any
privy of such person, shall be estopped under this subsection
and subsections (c)(1) and (e)(2) to the same extent as if that
person, real party in interest, or privy had been the first
petitioner in that inter partes review.''; and
(G) by adding at the end the following:
``(g) Federal Court and International Trade Commission Validity
Determinations.--An inter partes review of a patent claim may not be
instituted or maintained if, in a civil action arising in whole or in
part under section 1338 of title 28, or in a proceeding before the
International Trade Commission under section 337 of the Tariff Act of
1930 (19 U.S.C. 1337), in which the petitioner, a real party in
interest, or a privy of the petitioner is a party, the court, or the
International Tra