IP / Regulatory Law Watch New Law Requires Commerce to Report on Export of Key Tech to High-Risk Countries The PREVAIL Act stands for the Promoting and Respecting Economically Vital American Innovation Leadership Act. The purpose of this Act is to help promote the process of the Patent and Trial Appeal Board. The PREVAIL Act was introduced into the House of Representatives, the Senate, and the 118th Congress, but it did not pass. The Act was recently introduced in the 119th Congress pending review. The Patent and Trial Appeal Board (PTAB) is a board that conducts trials on business method patent reviews and hears appeals from patent applications. These appeals occur when the patent examiner makes a decision about the patentability or the claims of the patent that the patent applicant wants to refute. The PTAB is a tribunal inside the U.S. Patent and Trademark Office (USPTO). The PTAB, at its most basic, reviews patent rejections in what is known as ex parte appeals. The PTAB also decides patentability questions for third parties against patents that have already been issued in what is called America Invents Act (AIA) trials. The two processes that go through the PTAB are the inter partes review and the post-grant review. The inter partes review is an administrative trial challenging the validity of patents based on one or more claims before the patent is issued. And the post grant review is a challenge to previously issued patents. For this review, however, the challenge can be based on any ground, not just patentability. These two processes are important because the PREVAIL Act affects who can file for these two reviews. The Act would do so by requiring standing for the petitioners, meaning that the petitioners would need to be sued or threatened with patent infringement before being able to bring a petition for review. Additionally, the Act would limit financial contributors to a specific patent from being able to file multiple petitions on the same patent. These two differences would allow the PTAB to become more efficient and, like the name suggests, would promote innovation by opening the PTAB to more petitioners. Furthermore, the Act would propose limitations on joinder of parties, changing the time for attachment of estoppel, changing the burden of proof to “clear and convincing evidence” and “plain and ordinary meaning” to match federal district court standards, and limiting multiple forums of the petitions to not clog the system. These propositions are of great importance for the USPTO and the PTAB. These systems are continuously getting bogged down with petitions over the same patents and are using inefficient means to control who can file petitions. The PREVAIL Act would help change these issues by fostering the growth of innovations and keeping the PTAB fair and balanced. | 
