In July, the Suiter Swantz staff reported on the introduction of Senate Bill 1390, also known as the STRONGER Patent Act, by Senator Chris Coons of Delaware. The bill is in the first stage of the legislative process, currently assigned to the Senate Judiciary Committee. The text of the bill might change a lot before it ever comes up for a vote, if it ever does; but I thought we might pinpoint the specific changes proposed, and how they might impact patentees.

Inter Partes Review

The amendments of the bill would require a patent owner to provide a standard for interpreting any substitute claims, in light of the ordinary meaning of the terms in the claims and any admissions made during prosecution or findings in litigation. Challenged claims would be presumed valid, and the challenger would have to provide unpatentability by clear and convincing evidence (as compared to the current, lesser standard “preponderance of the evidence”). A substantial new set of rules would be provided for presenting amendments and substitute claims, which implies amendments and substitute claims might be considered a matter of right.

Inter Partes Review (IPR) could only be instituted by party that was actually sued for infringement of the patent, or under such threat of legal action that the party could have sought a declaratory judgement. Also, no claim can be challenged more than once; and, while a decision not to institute an IPR would still be nonappealable, the patent owner could appeal the director’s decision to institute such a review, including interlocutory appeal which could be useful during an infringement action.

Estoppel would apply to any party that contributed to a petition, including financial contributions; and all claim construction situations would be interpreted in a unified way, and in harmony with each other. Also, an IPR will be estopped by a final determination of novelty and non-obviousness during litigation or a federal trade commission proceeding, or stayed pending the outcome of such a proceeding.

Post Grant Review and Reexamination

The appeal and estoppel rules for IPRs would be generally replicated to Post Grant Reviews.


A finding by a court that a valid, enforceable patent has been infringed would carry the presumption that further infringement would cause irreparable harm and have an inadequate remedy at law; so injunction would be available to the patent owner, though preliminary injunctions may still be difficult to obtain.

Patentable Subject Matter


The STRONGER Patent Act, if enacted as written, would provide some additional assurances to patent owners as to the likely validity of their patents. Also, patent owners could be more confident that any claim in a patent would only be subject to a single art based challenge, at least from any one challenger. However, the bill does nothing to assuage a patent applicant’s uncertainty over the patentability of the subject matter. Subject matter patentability in high tech industries such as computer software and biotechnology, must be considered at least as critical to the value of those industries as post issuance challenges. Any comprehensive reform intended to provide greater clarity cannot ignore the chaos of the current state of subject matter patentability.

For those interested in taking a deeper dive, click here to read the proposed amendments.

Suiter Swantz IP is a full-service intellectual property law firm, based in Omaha, NE, serving all of Nebraska, Iowa, and South Dakota. If you have any intellectual property questions or need assistance with any patent, trademark, or copyright matters and would like to speak with one of our patent attorneys please contact us.