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Friday Oct 14, 2011

Overview of Prior User Rights Study

From: Mary Critharis, Senior Level Patent Attorney and Prior User Rights Study Leader

The recently-enacted Leahy Smith America Invents Act introduces a number of fundamental changes to US patent law.  In addition to changing the US system from first-to-invent to first-inventor-to-file, the new law also expands the scope of the existing prior user rights regime set forth in 35 U.S.C. 273 to apply to all inventions, not merely those related to methods of doing business.  While this approach to prior user rights is similar to that applied in many countries throughout the world, it represents a new concept in US law.  In light of this change, Congress has mandated the USPTO to undertake a study and report on prior user rights by January 16, 2012.  Congress has identified, in particular, the following issues for study:

  1. A comparison between patent laws of the United States and the laws of other industrialized countries, including members of the European Union and Japan, Canada, and Australia
  2. An analysis of the effect of prior user rights on innovation rates in the selected countries
  3. An analysis of the correlation, if any, between prior user rights and start-up enterprises and the ability to attract venture capital to start new companies
  4. An analysis of the effect of prior user rights, if any, on small businesses, universities, and individual inventors
  5. An analysis of legal and constitutional issues, if any, that arise from placing trade secret law in patent law
  6. An analysis of whether the change to a first-to-file patent system creates a particular need for prior user rights

Pursuant to this mandate, the USPTO will be hosting a public hearing on October 25, from 8:30 AM to 11:30 AM in the USPTO Madison Auditorium to gather input on these and related issues.  Written comments will also be accepted.  More information can be found in the USPTO Federal Register notice at http://www.gpo.gov/fdsys/pkg/FR-2011-10-07/html/2011-26154.htm and here for a PDF version.

As the PTO leader of the prior user rights study, I encourage members of the public, and especially those with experience with prior user rights regimes in other countries, to attend the hearing and/or to submit comments.  Your input is invaluable to the agency in preparing our report for Congress.

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