Either the plan’s deference is unneeded or it’s worse for validation because it requires relying on evaluations with less analysis.

PREVAIL would amend § 316(e) of title 35 to provide that the original claims of a patent are subject to a presumption of validity that can only be overcome by clear and convincing evidence. In addition, PREVAIL would enact a new § 315(e)(2) that would mandate that the USPTO reject any PTAB petition that “presents” prior art that is the same or substantially the same as prior art that was previously “presented” to an examiner.

The principal rationale for requiring clear and convincing evidence of invalidity in civil litigation—deference to the expert agency that issued the patent—does not apply when a patent is being reconsidered by the same expert agency. The USPTO remains just as expert, if not more so, on the second evaluation of a patent. There is no reason for the agency to defer to an earlier decision that is the product of less deliberation and that considered less evidence.

The USPTO itself highlighted this point in the Microsoft v. i4i case, which reaffirmed the use of an across-the-board clear and convincing standard in civil litigation. As the agency’s brief stated:

the clear-and-convincing-evidence standard reflects deference to the agency’s authority and expertise by ensuring that, when the factual questions on which validity turns are doubtful, the decision of the Patent Office must control.

USPTO Brief, p. 26.

It thus makes “particular sense” to use a clear and convincing standard when patent validity is being evaluated by “lay juries who lack technical expertise and specialized knowledge of the relevant fields.” Id. at pp. 26-27.

By contrast, there is no reason to require a PTAB panel to defer to an earlier decision by an examiner. That earlier decision is almost always the product of much less deliberation and analysis—and often did not consider the most relevant prior art.