1. This bill doesn't appear to address Alice/Mayo unpatentability under 35 USC § 101. https://www.congress.gov/bill/118th-congress/senate-bill/222...
2. My concern is that this bill seems to inappropriately raise the evidentiary bar for a patent challenger to prove invalidity in an inter partes review in the USPTO:
- Existing law, at 35 USC § 316(e) says a challenger in an IPR must prove invalidity by a preponderance of the evidence. https://www.law.cornell.edu/uscode/text/35/316
(In a court challenge to validity, the Supreme Court has ruled that invalidity must be proved by clear and convincing evidence, the highest standard in civil litigation, just short of beyond a reasonable doubt.)
- Section 4 of this amendment, when it comes to issued claims, would raise the IPR challenger's burden to clear and convincing evidence. For new claims, the challenger would still have the burden of proof, but by a preponderance.
Both standards are bad public policy, because in most cases a single, very-busy patent examiner is in effect making national industrial policy — and granting the patent applicant a nationwide monopoly on the claimed subject matter — all by his- or her lonesome after doing a prior-art search; the applicant must disclose material information known to him/her but is under no obligation to do a search. That's been the law for a long time.
It'd be as if a graduate school made a rule that a Ph.D. candidate must be issued the degree unless his (or her) dissertation committee does a literature search and shows that the candidate's research wasn't sufficiently novel. (As I understand it, every reputable Ph.D.-granting institution requires the candidate to do a literature search to demonstrate novelty.)
But of course it's worse than that, because — unlike a new patent holder — a newly-minted Ph.D. can't weaponize his- or her dissertation to try to "extract" royalties from other researchers.