Bills can transform as they become law – PREVAIL act proves
Thompson, 23 --- J.D. from Georgetown University Law Center and Master of Science in Law from Northwestern’s Pritzker School of Law (July 18, 2023, Bryan Thompson, “The PREVAIL Act – Does it Unfairly Hinder Patent Challengers’ Possibility of Prevailing at the PTAB?” https://www.jdsupra.com/legalnews/the-prevail-act-does-it-unfairly-hinder-2611079/, JMP))
In sum, the PREVAIL Act proposes numerous changes that may increase the efficiency of PTAB proceedings while remedying financial concerns for both the USTPO and patent owners. However, it may be necessary to rein in some of the requirements that potentially alter the functionality of raising a challenge before the PTAB. If patent challengers are restricted to the point where an action before the PTAB becomes less desirable than an invalidity challenge in another forum, then the overall purpose of the PTAB is lost.
Patent owners and challengers should not hold their breath waiting for the Act to come into effect nor should they proceed differently in anticipation of the proposed changes to the PTAB process. The STRONGER Patents Act (which the PREVAIL Act intends to supplement) has remained dormant since its introduction as a bill in July 2019.[6] Comparably, the text of the Prevail Act has yet to be submitted to the Library of Congress;[7] thus, the Act is in its infancy and will likely grow into a different form should it become law.