Title

Congress Considering Legislation Intended to Reverse the Recent Trend Toward Devaluation of the US Patent Right

Publication Date

2018

Document Type

Article

Abstract

Decisions of the United States Supreme Court spanning the last quarter of a century that have, in the aggregate, substantially devalued the patent right. The Court’s four decisions reinvigorating and substantially raising the patent eligibility bar have probably resulted in the most critical commentary, but a host of other decisions have also served to erode the patent right in multiple dimensions, including the scope of potentially patent-able subject matter as well as the strength and enforce-ability of issued patents. In 2011 Congress joined in when it enacted the America Invents Act (AIA), which includes multiple provisions tending to devalue patents, most notably the newly minted inter partes review (IPR) and post-grant review (PGR) processes intended to facilitate the invalidation of issued patents (referred to hereafter as “PTAB proceedings,” since both IPR and PGR are decided initially by the Patent Trial and Appeal Board, or PTAB). Subsequent to the passage of the AIA, Congress considered various proposed bills that would have further eroded the patent right. But recently the continued devaluation of the U.S. patent has provoked a response in Congress, where several bills have recently been introduced that would substantially rollback many of the patent devaluing aspects of the AIA and recent Supreme Court precedent. This article reviews some of the more noteworthy aspects of three of these legislative proposals, after first reviewing some of the patent-eroding provisions of the AIA and decisions of the Supreme Court that would be overturned, entirely or in part, by the proposed legislation.

Publication Title

Biotechnology Law Report

Volume

37

Issue

5

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