Congress is again debating two companion bills that could redefine U.S. patent practice: the Patent Eligibility Restoration Act (PERA) and the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. PERA would rewrite Patentability §101 to roll back the Alice/Mayo line of cases, while PREVAIL would tighten procedures at the Patent Trial and Appeal Board (PTAB). The PERA and PREVAIL Acts signal a policy shift toward strengthening U.S. software patents, especially in high-tech sectors. Together, the bills aim to make it easier to obtain and harder to invalidate U.S. patents. Whether you see the reforms as an overdue correction or a threat to innovation depends on your vantage point.

Supporters say PERA restores the “anything under the sun made by man” standard, because it states that an invention “shall not be excluded if it cannot practically be performed without the use of a machine,” thereby reopening the door for software, AI, and diagnostic claims previously rejected as abstract ideas. In an age where software is inextricably intertwined with everyday life, proponents advocate that the law needs its own software update. Early drafts also contemplate retroactive effect, meaning already‑issued patents and pending applications stuck in Alice/Mayo limbo could get a new lease on life. For clients with sizeable software portfolios, the bill promises clearer eligibility rules and fewer §101 battles at the USPTO and in court.

On the other hand, digital‑rights groups warn that PERA would open the floodgates to vague, overbroad software patents, inviting more litigation from non‑practicing entities. PREVAIL compounds that risk by curbing inter partes review—shortening filing windows, expanding estoppel, and barring “serial” petitions—thereby weakening the public’s best tool for clearing out bad patents. Critics see the effect as twofold, allowing for easier issuance plus reduced avenues for challenging patents.

While PERA and PREVAIL are still working their way through Congress, patent owners and practitioners should be alert to their potential. If PERA passes with retroactive effect, companies with once-rejected software or diagnostics claims might revisit their application strategies. But even without retroactivity, the mere prospect of reform could influence examiner behavior (i.e., result in fewer §101 rejections) and shift litigation dynamics to be more plaintiff friendly.

Nonetheless, nothing in the Acts alters the burdens of §§102 (Novelty), 103 (Nonobviousness), or 112 (Written Description). Strong technical disclosures and clear claim drafting will remain essential. And with PREVAIL potentially reducing PTAB access, the front-end strength of a patent and early prosecution and planning would matter more than ever. For now, it is important for patent counsel to stay nimble, monitor the legislative process closely, and think strategically about how these changes might impact portfolio value, enforcement strategy, and innovation investment going forward.

Note the Acts can be found with the following links:

• PERA can be found here.
• PREVAIL can be found here.

This IP Tip of the Month has been prepared by Tucker Ellis LLP for the use of our clients. Although prepared by professionals, it should not be used as a substitute for legal counseling in specific situations. Readers should not act upon the information contained herein without professional guidance.