The Persistent Challenge of PERA in Combating Substandard Patents

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Proposed Legislation Sparks Fears of Resurgent ‘Patent Trolls’

October 10, 2025

Washington D.C. – A contentious piece of legislation, known as the Patent Eligibility Restoration Act (PERA), is currently under consideration by the Senate Judiciary Committee, raising alarms among technology advocates and innovators. Critics contend that the bill could dismantle critical safeguards against frivolous patent lawsuits, effectively opening the floodgates for so-called “patent trolls” – entities that exploit the patent system for financial gain rather then innovation.

The Threat to Established Precedent

At the heart of the dispute lies the potential reversal of established legal precedent, specifically the landmark Supreme Court case Alice v. CLS Bank. This 2014 decision set a crucial standard by prohibiting patents on abstract ideas implemented using generic computing technology. The ruling has been instrumental in curbing the proliferation of low-quality software patents and fostering a more balanced innovation landscape.

PERA seeks to overturn this precedent,replacing the Alice framework with more ambiguous guidelines. Opponents argue that this shift would create loopholes, allowing dubious patents to be approved and aggressively enforced. The potential ramifications, they say, could stifle legitimate software growth and disproportionately harm small businesses.

A History of Problematic Patents

The Alice decision has long been credited with invalidating a wide range of questionable patents,including those covering commonplace online activities. Recent years have witnessed the successful challenging of patents related to online photo contests, online bingo games, upselling techniques, matchmaking services, and even digital scavenger hunts. These patents, observers note, often failed to represent genuine innovation, instead attempting to monopolize existing concepts applied to computers.

Did you Know? The United States Patent and trademark Office (USPTO) received over 500,000 patent applications in fiscal year 2023, highlighting the ongoing need for rigorous examination standards.

The Perfect Storm for Abuse

The potential dangers are exacerbated by recent changes that have limited access to the Patent Trial and Appeal Board (PTAB).The PTAB serves as a vital check on patent quality, offering a relatively affordable and efficient avenue for challenging questionable patents. Restricting access to this board, combined with the weakened standards proposed by PERA, could create a “perfect storm,” empowering both patent trolls and large corporations with extensive patent portfolios to aggressively pursue litigation.

Feature	Current Status (Post-Alice)	Potential Status (Post-PERA)
Patent quality	Generally Higher	Potentially Lower
PTAB Access	Relatively Accessible	Increasingly Restricted
Risk of Frivolous Lawsuits	Lower	Higher

Pro Tip: Businesses should regularly review their intellectual property portfolios and stay informed about changes in patent law to proactively mitigate risks.

Industry Opposition

A coalition of organizations, including the Electronic Frontier Foundation (EFF), Engine, the Public Interest Patent Law Institute, Public Knowledge, and R Street, have voiced strong opposition to PERA.They are urging the Senate Judiciary Committee to prioritize restoring the PTAB’s effectiveness rather than enacting legislation that could undermine the progress made in combating abusive patent practices.

Do you believe the current patent system adequately balances the rights of inventors with the need to foster innovation? What steps should be taken to prevent the resurgence of patent trolling?

Understanding patent Trolls

The term “patent troll” refers to non-practicing entities (NPEs) that acquire patents primarily to assert them against alleged infringers, rather than to develop or commercialize the patented technology. these entities frequently enough target small and medium-sized businesses, knowing they lack the resources to engage in costly and protracted litigation. The resulting financial burden can force legitimate businesses to settle for unfavorable terms, stifling innovation and competition.

Frequently Asked Questions about PERA and Patent Law

• What is the Alice decision? The Alice v. CLS Bank Supreme Court case established that abstract ideas implemented using computers are not eligible for patent protection.
• What is PERA attempting to do? The Patent Eligibility restoration Act aims to overturn the Alice framework and create new standards for patent eligibility.
• Why are technology companies concerned about PERA? Concerns stem from the potential for PERA to weaken patent standards and allow for the approval of low-quality patents.
• What is the role of the PTAB? The Patent Trial and Appeal Board provides a forum for challenging the validity of existing patents.
• What is a “patent troll”? A “patent troll” is an entity that acquires patents primarily to assert them against alleged infringers, rather than to develop or commercialize the underlying technology.
• How does PERA affect small businesses? experts fear PERA could increase the risk of costly patent litigation for small and medium-sized enterprises.
• What is the current status of PERA? The bill is currently under consideration by the Senate Judiciary Committee.

Share your thoughts on this developing story in the comments below!

How does the standard of review in a PERA proceeding differ from that of an IPR or PGR proceeding?

Understanding Post-Grant Review & PERA

Post-grant review (PGR) and inter partes review (IPR) – collectively known as Patent Trial and Appeal Board (PTAB) proceedings – where established by the America Invents Act (AIA) in 2011 to offer more efficient and cost-effective challenges to issued patents than traditional district court litigation. A key component of thes proceedings is the Petition for Expedited Examination of a patent (PERA). While intended to streamline the process, PERA faces ongoing challenges in effectively addressing substandard patents – those granted erroneously or lacking sufficient inventive merit. This article delves into these challenges, exploring the nuances of PERA, its limitations, and strategies for maximizing its impact.

What is PERA and How Does it Differ from IPR/PGR?

PERA, introduced in 2012, allows a third party to request the USPTO prioritize examination of a patent’s claims based on previously submitted prior art. It differs substantially from IPR and PGR in several key ways:

* Scope of Review: PERA focuses solely on prior art submitted with the petition. IPR and PGR allow for a broader range of prior art to be considered.

* standard of Review: PERA utilizes the same patentability standards as a standard ex parte examination. IPR and PGR employ a higher standard, requiring a “reasonable likelihood” that the patent is unpatentable.

* Estoppel Effects: PERA has no estoppel effect. A successful PERA doesn’t prevent a subsequent IPR or PGR challenge, or district court litigation. IPR and PGR do create estoppel.

* Cost & Speed: PERA is generally the least expensive and fastest PTAB proceeding.

These distinctions position PERA as a preliminary step, often used to quickly flag possibly invalid claims before committing to the more substantial investment of an IPR or PGR. However, this also contributes to its limitations.

The Core Challenges facing PERA Effectiveness

Despite its potential, PERA struggles to consistently eliminate low-quality patents. Several factors contribute to this:

* Limited Scope of Prior Art: The restriction to submitted prior art means a patent may remain valid despite other, undiscovered, invalidating references. This is a critical weakness.

* Lower Standard of Review: The ex parte examination standard makes it harder to invalidate claims compared to the “reasonable likelihood” standard of IPR/PGR. Examiners may be less inclined to reject claims based on the same prior art in a PERA than in a full trial.

* Lack of Estoppel: The absence of estoppel encourages serial challenges. Competitors may use PERA to delay enforcement while preparing a more complete IPR or PGR.

* USPTO resource Constraints: Even with prioritization, the USPTO faces a significant backlog.PERA requests can still experience delays, diminishing their effectiveness.

* Strategic Patenting: Some entities intentionally file broad, weak patents, anticipating challenges.They may rely on PERA’s limitations to delay or deter more serious challenges.

Maximizing PERA’s Impact: Strategic Considerations

While PERA isn’t a silver bullet, strategic application can increase its effectiveness in combating patent abuse and substandard patents:

1. Thorough Prior Art Search: Invest in a comprehensive prior art search before filing a PERA petition. focus on the most compelling and directly relevant references.
2. Targeted Petitioning: Focus PERA petitions on patents with claims most likely to be invalidated by the available prior art. Prioritize patents actively being asserted in litigation.
3. Combine with IPR/PGR Planning: View PERA as a potential precursor to an IPR or PGR. Use the PERA to gather facts and refine arguments for a subsequent, more comprehensive challenge.
4. Monitor USPTO Decisions: Track PERA outcomes to identify trends and refine petitioning strategies. Pay attention to examiner reasoning and successful arguments.
5. Leverage Data Analytics: Utilize patent analytics tools to identify potentially weak patents and prioritize PERA petitions based on risk and potential impact.

Real-World Examples & Case Studies

While specific, detailed case studies are often confidential, the trend is clear. PERA has seen success in cases where the submitted prior art is exceptionally strong and directly anticipates or renders obvious the challenged claims. Though, many petitions are denied, particularly when the prior art is less compelling or the examiner interprets it differently.

A notable exmaple involves challenges to patents related to smartphone technology. Several PERA petitions were filed targeting patents covering specific features. While some resulted in claim amendments or rejections, others were unsuccessful, highlighting the importance of strong prior art and persuasive argumentation.

The Future of PERA and Patent Challenges

The ongoing debate surrounding PERA’s effectiveness has led to calls for reform. Potential changes include:

* Lowering the Threshold for Institution: Making it easier to initiate a PERA proceeding.

* Expanding the Scope of Review: Allowing consideration of additional prior art.

* introducing Limited Estoppel: creating some estoppel effect