[Congressional Record Volume 167, Number 170 (Wednesday, September 29, 2021)]
[Senate]
[Pages S6782-S6783]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

      By Mr. LEAHY (for himself and Mr. Cornyn):
  S. 2891. A bill to amend title 35, United States Code, to address 
matters relating to the Patent Trial and Appeal Board of the United 
States Patent and Trademark Office, and for other purposes; to the 
Committee on the Judiciary.
  Mr. LEAHY. Mr. President, 10 years ago this month, Congress worked on 
a broad bipartisan basis to pass the Leahy-Smith America Invents Act, 
the biggest change to the United States patent laws in half a century. 
The patent system exists to create incentives that promote the progress 
of science and the useful arts for the benefit of the public. Our whole 
economy depends on a working patent system that reinforces high-quality 
patents while ensuring that poor-quality patents cannot throw a wrench 
into the gears. Today, I am proud to introduce, alongside Senator 
Cornyn, the bipartisan Restoring the America Invents Act to ensure that 
the improvements we made to maintain high patent quality in the Leahy-
Smith Act continue to work as Congress intended.
  One of the challenges we confronted 10 years ago was that too many 
invalid patents were being issued. Instead of rewarding true 
innovation, these patents were being used to indefinitely extend 
monopolies, quash competition, and harm American consumers. For 
example, in the pharmaceutical industry, brand-name drug companies 
would artificially extend a drug's patent term by patenting minor and 
insignificant changes to the underlying product. In other industries, 
entities that did not even make products would buy up tens of thousands 
of questionable patents covering simple and obvious actions like doing 
business on the internet, and they would sue thousands of small 
businesses that sold innovative products online.
  One of the biggest accomplishments of the Leahy-Smith Act was that it 
empowered members of the public to challenge a patent's validity at the 
U.S. Patent and Trademark Office--PTO--directly, providing a faster, 
less expensive, and more accessible avenue than litigation in the 
courts. These proceedings, called inter partes review

[[Page S6783]]

and post-grant review, have been wildly successful. According to one 
economic impact study, in one 5-year period, the Leahy-Smith Act saved 
the U.S. economy $2.64 billion in litigation costs alone, with more 
than $1 billion more in added personal income for Americans.
  The Leahy-Smith Act's new proceedings have been used thousands of 
times and have had the aggregate impact of improving the quality of 
patents in our patent system. Unfortunately, over time and especially 
during the last administration, the PTO has limited the availability of 
these proceedings beyond what Congress intended. The PTO began 
routinely declining to hear challenges brought by members of the 
public, even when those challenges met timing requirements, met all 
other statutory criteria, and would have likely succeeded on the 
merits. In 2020, roughly one in five challenges was summarily denied 
proceedings by the PTO, undermining the intent of the Leahy-Smith Act.
  Furthermore, whether a patent is valid should not depend on which 
party is in the White House or what individual is in charge of the 
agency. During the last administration, there was reported 
nontransparent meddling by the PTO Director in the work of the 
administrative patent judges who were making inter partes and post-
grant review decisions. While the Supreme Court has recently held that 
the PTO Director should have the last word on patentability decisions, 
the public deserves to know when decisions are being made by dedicated 
civil servant judges and when they are being made by the politically 
appointed Director.
  This bill fixes both problems and generally restores the Leahy-Smith 
Act to what Congress intended 10 years ago. It requires institution of 
inter partes review petitions that meet the statutory criteria and 
further encourages district courts to stay litigation when a parallel 
proceeding at the PTO will resolve the same validity issues. The stay 
factors in this bill are intended to put a heavy thumb on the scale in 
favor of a district court stay, preventing duplicative proceedings, and 
protecting patent owners from having to repeatedly defend their 
patents. The Restoring the America Invents Act further imposes 
transparency. The PTO Director must provide a separate written opinion 
when overriding part or all of a decision of administrative patent 
judges, and the PTO Director may not interfere in any way in the 
judges' initial decisionmaking. The public and any reviewing court 
should get to see the judges' decisions first, before any political 
actor might change the outcome.
  This bill further clarifies other aspects of the Leahy-Smith Act. It 
clarifies the intent of the Leahy-Smith Act that the PTO can address, 
in inter partes review proceedings, certain clear instances of 
invalidity: double patenting, where applicants amass dozens of patents 
covering trivial iterations of an already-patented drug or other 
product; and admissions by the patent owner, in the patent itself, that 
someone else first came up with the invention. It clarifies that, when 
patent owners want to amend their patent claims during these post-
issuance proceedings, the PTO must fully examine and vet those claims 
before issuing them. Likewise, the bill prohibits the PTO from issuing 
new claims to a patent that are essentially the same as existing 
claims, addressing the problem of patent thickets. And the Restoring 
the America Invents Act addresses multiple related proceedings pending 
at the PTO, specifying that the PTO must decide ahead of time how to 
proceed, to avoid conflicting outcomes from separate parts of the 
agency. This is in addition to the agency's ongoing obligation to make 
rules addressing common situations, such as under 35 U.S.C. 
Sec. 316(a)(4). The PTO should study frequent scenarios and determine 
whether new regulations are needed to address them.
  Fundamentally, we need to address why the PTO issues invalid patents 
in the first place. But when these invalid patents have already been 
issued, they need to be addressed on the back end. On this 10th 
anniversary of the Leahy-Smith Act, I am proud to introduce this bill--
the Restoring the America Invents Act, that will restore the patent 
system so it can continue to accomplish its goals into the next decade 
and beyond, reinforcing high-quality patents while ensuring that poor-
quality patents don't disrupt the American economy, costing Americans 
untold sums in unreasonable drug costs and overly inflated prices 
generally. I am excited to work alongside Senator Cornyn, on a 
bipartisan basis, to pass this important piece of legislation. The 
Founders envisioned the patent system to promote the progress of 
science and the useful arts for the benefit of the public. It is time 
to get back to the Founders' vision. I hope the Senate will act quickly 
to pass this critical legislation.
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