The PREVAIL Act — legislation to reform how the Patent Trial and Appeal Board (PTAB) handles challenges to already-issued patents — looked close to a floor vote in late 2024. Reintroduced in the current Congress, it has since stalled again in committee, and university technology-transfer offices with a stake in patent enforcement and licensing certainty have reason to keep tracking it rather than assume it is dead.
What the PREVAIL Act would actually change at PTAB
PTAB was created by the America Invents Act (AIA) of 2011 to give patent owners and challengers a faster, cheaper venue than federal district court for testing whether an issued patent should have been granted. Its most-used proceedings — inter partes review (IPR) and post-grant review — let almost any third party petition to have a patent’s claims cancelled. The PREVAIL Act — formally the Promoting and Respecting Economically Vital American Innovation Leadership Act — targets three specific mechanics of that process:
- Standing to file. Under current law, a petitioner does not need to have been sued, or even be at real risk of being sued, to challenge a patent at PTAB. PREVAIL would require a petitioner to certify it has been sued for infringement, or faces a real and substantial risk of suit, before PTAB will hear an IPR or post-grant review petition.
- Estoppel timing. A petitioner who loses at PTAB is currently barred from re-raising the same invalidity grounds in district court only after PTAB issues a final written decision. PREVAIL would move that estoppel trigger earlier, to the point the petition is filed, closing what patent owners describe as a way to run PTAB and district-court litigation in sequence rather than as genuine alternatives.
- Evidentiary standard. PTAB currently invalidates claims on a preponderance-of-the-evidence standard. District courts, by contrast, presume an issued patent valid and require clear and convincing evidence to invalidate it under 35 U.S.C. § 282. PREVAIL would harmonize PTAB’s standard and claim-construction approach with the district-court standard, making patents somewhat harder to invalidate at PTAB than they are today.
The bill’s supporters — including patent-owner and inventor advocacy groups — frame these changes as curbing repeat or opportunistic challenges to an already-issued patent. Opponents, prominently including generic and biosimilar drug manufacturers, argue the same changes would make it harder and slower to knock out weak pharmaceutical patents they say inflate drug prices. That tension has shaped the bill’s committee history and is a large part of why it keeps stalling.
From a narrow 2024 committee vote to a stalled 2026 status
The PREVAIL Act is not new. An earlier version, S. 2220, cleared the Senate Judiciary Committee on a narrow 11–10 vote on November 21, 2024, and was placed on the Senate’s legislative calendar — real momentum after years as a lower-profile bill. It did not receive a floor vote before the 118th Congress ended, and under normal congressional procedure that meant starting over: unenacted legislation expires at the end of a Congress regardless of how far it advanced.
Lead sponsors Sens. Chris Coons and Thom Tillis reintroduced the bill in the 119th Congress as S. 1553, with a House companion, H.R. 3160. As of this writing, public bill-tracking on congress.gov shows S. 1553 referred to the Senate Judiciary Committee with no markup yet scheduled — meaning the bill has not regained the committee-level traction it had under its previous number. That gap between 2024’s advance to the floor calendar and 2025–2026’s return to square one is the basis for describing the bill’s current progress as stalled rather than dead: it retains bipartisan, bicameral sponsorship but has not moved through committee again in the current Congress. Anyone tracking the bill for an active decision — timing a licensing negotiation or litigation strategy around it, for example — should check congress.gov directly, since committee schedules can shift with little notice.
Why university technology-transfer offices are watching this bill
Universities are patent owners and licensors far more often than they are patent challengers: under the Bayh-Dole Act framework, a university technology-transfer office (TTO) typically owns federally funded inventions and licenses them out rather than practicing them directly. That posture means most of PREVAIL’s proposed changes point in a direction TTOs would generally welcome.
A standing requirement would narrow who can file an IPR against a university-owned or university-licensed patent to parties with an actual stake in a live infringement dispute, reducing exposure to speculative or purely tactical challenges. A stricter, district-court-aligned evidentiary standard at PTAB would make it somewhat harder for any challenger to invalidate a licensed patent outside of litigation. That combination is part of why AUTM (the Association of University Technology Managers), whose members run TTOs at research institutions, has publicly supported the PREVAIL Act.
None of this is current law. Until the PREVAIL Act, or a materially similar successor, is enacted, PTAB continues to operate exactly as it does today — no standing requirement, the current estoppel trigger, and a preponderance-of-the-evidence standard — so TTO patent strategy and licensing risk assessments should be built on the rules as they actually stand, not on the rules the bill would create.
PREVAIL Act vs. PERA: two different patent bills, worth keeping straight
It is easy to conflate the PREVAIL Act with the Patent Eligibility Restoration Act (PERA) — both are pending, bipartisan Senate Judiciary Committee bills, both matter to university patent portfolios, and both surface in the same news cycle. They address genuinely different problems, however:
- PERA is about patent eligibility — what categories of invention can be patented at all under 35 U.S.C. § 101. It would rewrite the statute to override the Supreme Court’s Alice/Mayo “abstract idea” and “law of nature” exceptions, which have made diagnostic-method and software/AI inventions especially hard to patent. See CASRAI’s coverage of the July 2026 Senate Judiciary hearing on PERA and the underlying 35 U.S.C. § 101 framework.
- PREVAIL is about patent challenge procedure — once a patent has already been granted, who can contest its validity at PTAB, on what timeline, and under what evidentiary standard. It does not touch § 101 or what can be patented in the first place.
A university invention could in principle be touched by both bills at different points in its life: PERA-type questions arise at the patenting stage (can this diagnostic or AI-related invention be patented at all), while PREVAIL-type questions arise after a patent has issued and is being licensed or enforced (can a competitor or licensee knock it out at PTAB). Real-world PTAB proceedings — CASRAI covered the Broad Institute/UC Berkeley CRISPR-Cas9 priority dispute as one example — illustrate the kind of high-stakes validity fight PREVAIL’s standing and evidentiary provisions would directly affect.
What TTOs should do while the bill remains pending
Track S. 1553 and H.R. 3160 directly on congress.gov rather than relying on secondary coverage, since committee action can move quickly once a bill gets a hearing slot. In the meantime, current PTAB rules — not PREVAIL’s proposed rules — govern any live or anticipated IPR/PGR exposure, so licensing negotiations, freedom-to-operate assessments, and litigation-versus-licensing decisions should continue to be modeled on today’s standing, estoppel, and evidentiary rules. If the bill does advance, the standing requirement is the provision most likely to change how quickly a TTO even learns that a licensed patent is being challenged at all.
Frequently asked questions
Is the PREVAIL Act currently law?
No. As of this writing it is pending legislation — S. 1553 in the Senate, H.R. 3160 in the House — referred to committee in the 119th Congress. PTAB continues to operate under existing rules until and unless it is enacted.
What is PTAB, and how does it differ from federal court patent litigation?
PTAB (the Patent Trial and Appeal Board) is the USPTO tribunal created by the America Invents Act to hear administrative challenges to already-issued patents, mainly through inter partes review and post-grant review. It is faster and cheaper than district-court litigation and currently applies a lower evidentiary bar to invalidate a patent than a district court does.
Does AUTM support the PREVAIL Act?
AUTM, the association representing university technology-transfer professionals, has publicly supported the PREVAIL Act, consistent with universities’ general position as patent owners and licensors rather than patent challengers.
How is the PREVAIL Act different from the Patent Eligibility Restoration Act (PERA)?
PERA addresses what can be patented in the first place — patent-eligible subject matter under 35 U.S.C. § 101. PREVAIL addresses how an already-granted patent can be challenged at PTAB after issuance — standing, estoppel timing, and evidentiary standard. They are separate bills moving through the same committee, not two versions of the same proposal.
