Prior User Rights Defense

Patent Law Blog (Patently-O):
Later today I will be testifying in Congress at a hearing on Prior User Rights being held by the House of Representatives Subcommittee on Intellectual Property, Competition and the Internet chaired by Republican Representatives Bob Goodlatte of Virginia and Ben Quayle of Arizona along with Congressman Mel Watt as the ranking member of the Subcommittee. The hearing comes in the wake of the USPTO’s recent Report on Prior User Rights. The primary focus of my testimony is my estimation that prior user rights as circumscribed in the Leahy-Smith America Invents Act are unlikely to have any real or measurable impact on the market for US patents, demand for innovation, or process of patent litigation. I explain this as follows:

There are host of conditions that must be met before the prior user defense can be exerted. Most notably, an accused infringer must be able to show that it (or its predecessor in title based upon limited transfer rights) began to commercially use the invention at least one year before the patentee’s filing date (and even further in advance if the patentee publicly disclosed the invention before filing). In the new statute, the defense only applies if the prior user’s version of the invention was created independently and without derivation from the patentee’s version and the prior user acted in good faith. When formed together, these requirements look something like the eye of the needle and are difficult to pass through.

Further marginalizing the impact of prior user rights is the reality that the defense only adds actual value when the patent being asserted is valid. I.e., if the patent is invalid then there is no need for a prior user defense. The setup of a prior user situation suggests two likely scenarios that would lead to …

Published:
01.02.12
Category:
IP News