USPTO Issues Reports Required by the America Invents Act

USPTO Issues Reports Required by the America Invents Act on the Prior User Rights Defense Study and the International Patent Protection for Small Business Study

WASHINGTON—The United States Patent and Trademark Office (USPTO) has submitted reports for two intellectual property law studies required by the America Invents Act (AIA) to Congress. The first report was prepared under Section 3 of the AIA and addresses the scope of prior user rights defense in industrialized countries. The second report was prepared under Section 31 of the AIA and concerns international patent protection for small businesses. Both reports can be accessed from the USPTO’s website at http://www.uspto.gov/americainventsact.

The Prior User Rights Defense Report includes a comparison of prior user rights in industrialized countries; the impact of prior user rights on innovation, start-up enterprises, small businesses, individual inventors, and universities; an analysis of the legal and constitutional issues with placing trade secret law in patent law; and an analysis of whether a first-to-file system creates a need for prior user rights. The Prior User Rights Defense Study was conducted in consultation with the Department of State, Department of Justice, and United States Trade Representative. The Prior User Rights Defense Report offers ten specific fact findings and makes five recommendations regarding the defense.

The International Patent Protection for Small Business Report considers how to best help small businesses with patent protection overseas, including whether a loan or grant program should be established to help small businesses cover the costs of application, maintenance, and enforcement fees or related technical assistance. The International Patent Protection for Small Business Study was developed in consultation with the Small Business Administration. The International Patent Protection for Small Business Report presents ten fact findings and contains four recommendations.

The USPTO and partner agencies held public hearings and solicited written public comments for both studies. For the Prior User Rights Study, the agency received 28 public comments, and six witnesses testified at the hearing. For the International Patent Protection for Small Business Study, the agency received 19 public comments, and twelve witnesses testified at the hearing. The USPTO integrated the public input into the reports in both the fact findings and recommendations.

In additional to these two studies, Congress has required the USPTO to conduct five additional studies in the upcoming months. Next, the USPTO will study secondary genetic testing following the same protocol for the Prior User Rights Defense and International Patent Protection for Small Business Studies of hosting public hearings and seeking written public comments. The USPTO will soon publish a Federal Register Notice with details about the genetic testing study.

U.S.P.T.O.

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Join the Discussion

14 comments so far.

Anon
January 20, 2012 09:15 am
Stan,

I just posted on another thread (which now intertwines three threads) concerning the Golan decision.

See the Patently-O thread, especially the post this morning by my namesake. A take off on the Trade Secret route – not only having the capability of what we are discussing here, but the capability of earning a patent after long being in the publid domain seems to be a real possibility, or at least one that is not barred by Constitutional restraints.
Stan E. Delo
January 20, 2012 12:04 am
Anon-

Interesting that a trade secret can be kept confidential while challenging a patent. It seems somewhat at odds wiith the whole spirit of the patent right, but the gonzo engineer part of me seems to really like it a lot. Perhaps the Trade Secret is kept confidential by the USPTO (who should know absolutely nothing about it) while assessing the merits? Once again, confusing States rights with possible Federal patent rights? Perhaps that is the Achilles Heel of the whole deal, wherein the Feds are trying to incorporate an inherently States right into Federal law. I would vote NO, they should not be allowed to do so. But that is just me, and not our duly elected Representatives or Senators.
Stan E. Delo
January 19, 2012 11:01 pm
Paul-
As I had already mentioned a few weeks ago, I sometimes worry that a PUR might just amount to a *foot in the door* by an initial challenger that is desirous of doing business as usual. What is to prevent one of their buddies from then challenging the validity of the patent that was ostensibly determined to be new and novel and not obvious by the USPTO? Since the initial challenger is not allowed to invalidate the patent, perhaps the second to litigate could find other ways around that problem. The initial challenger would just defend their PUR’s, and then another entity could try to invalidate the patent using what the prior user had discovered about the metes and bounds of the invention per se. If they can team up to invalidate the patent, why wouldn’t they like that scenario? Perhaps colour me as a paranoid inventor, but that doesn’t mean that they aren’t out to get me! (I borrowed this from a good friend of mine that is an inventor and patent agent)

Stan~
Anon
January 19, 2012 10:01 pm
“The prior commercial user defense expressly cannot invalidate any claim of any patent.”

That’s part of the problem – IT SHOULD. No one has yet explained why something meeting the requirements of the prior commercial user defense (including something that de facto must be involved with the public) should be allowed to provide a personal defense on something that shows the patent should not have issued in the first place.
Paul F. Morgan
January 19, 2012 09:17 pm
Re the above comment “..unless they just want to be a spoiler, and invalidate some of the claims.”
The prior commercial user defense expressly cannot invalidate any claim of any patent. It does not creaste any prior art. It is solely a personal defense just for the prior invention company which also became a prior secret commercial user ahead of patents of others, and its product customers. It is not even a defense to any earlier-filed patents.
There are serious public policy arguments both for it and against it [e.g., it may discourage some patent application filings.] But unfortunately many of the arguments against it have instead been based on prior internet missinformation by persons who had obviously not read the actual statute.
Anon
January 19, 2012 07:06 pm
Stan,

Trade Secrets can be used to challenge – and still be kept.

Witness the disciplinary thread over at Patently-O. There are ways of submitting your information and maintaining the trade secrets thereof.
Anon
January 19, 2012 07:04 pm
“and a great deal of commercial software is neither patented [or even considered patentable] or publicly disclosed by its originator or user.‘

Not sure I buy this statement.
Inventor0875
January 19, 2012 06:29 pm
A Major Deficiency in the “International Patent Protection for Small Business Report”:

The report fails to note the huge detrimental impact of USPTO backlog/delays, on international filings by SME’s and hence U.S. competitiveness in other countries.

SME’s are more likely to international file, when they know (within the 1 year priority window) that a quality U.S. examination indicates that broad claims are allowable. To find out 2 to 5+ years later, which SME applications will actually yield broad claims, really hurts.

Preliminary Track-1 data show that a <1 year timeline is doable. Since the same examination is being done, the fee for Track 1 should be the same/similar to the standard fee.

The ratio of the Track-1 fee to the standard fee (currently ~5x for small), is one measure of the extent that USPTO delays are limiting U.S. competitiveness in international markets.
Stan E. Delo
January 19, 2012 04:28 pm
Paul-

Your logic is well taken, and it tends to allay some of my concerns about Prior User Rights. For instance, if an entity was using Trade Secrets to protect their IP, why would they ever want to challenge a granted patent? It seems to me as if they would be shooting themselves in the foot by doing so, as their Trade Secret would be gone forever just to prevent a patentee from profiting for a few years, because they would have to get down to brass tacks to be able to invoke PUR’s. Why not remain mute about it, unless the patentee can figure out somehow that the prior user is possibly infringing their patent?

That being said, the prior user would seem to be the actual first to invent, but with a first to file regime, it seems to become a moot point, as they obviously elected not to file for a patent, and take their chances that someone won’t come up with something superior in the reasonably near future. That is unless they just want to be a spoiler, and invalidate some of the claims, but wouldn’t they irrevocably compromise those portions of their Trade Secrets? The only hitch I can see in my posit is if the prior user has some duty of candor to step forward, but since Trade Secret is governed by State law, I have my doubts that a Federal law would be able to dictate what they do with their properly protected TS rights. I am not a practitioner, so this is all just a “what if” sort of conjecture on my part.

Stan~
Paul F. Morgan
January 19, 2012 02:16 pm
EG, the answer to your last sentence is that the AIA eliminates all “first to invent” defenses, and a great deal of commercial software is neither patented [or even considered patentable] or publicly disclosed by its originator or user.
The main reason a prior commercial use defense is so rarely even raised is that most commercial uses other than some software and chemical processes are not secret – they becomes legally pubicly available as soon as the product is sold or publicly used, and thus becomes normal prior art ,which is both much easier and much safer to assert as a defense than the prior commercial use defense .
EG
January 19, 2012 09:38 am
Paul,

I would be careful in relying upon U.S. experience under 35 USC 273 or the experience of other countries with PURD. First, 35 USC 273 was a fairly focused PURD: it had to be a patent “business method” (whatever that means). What we have now (with the exception of university patents) is a much broader PURD in that in covers ALL patents. Second, that PURD has not been raised in other countries that have it on the books may not extrapolate to the U.S. The U.S. is a much more “litigious” environment when it comes to patents. Also, expanded PURD was pushed strongly by the computer, software, and financial Goliaths: there must at least be a belief that PURD would be beneficial to them, otherwise why would they push it so hard?
Paul F. Morgan
January 18, 2012 09:39 pm
The Prior User Rights Defense Report does include ample evidence of how rarely such a defense has ever been raised in the several other countries that have had such a law on their books for many years. That is also consistent with the uncontested fact that the present, existing, prior commercial users defense against any and all business method patents has never been successfully raised against any patent.
I was surprised to read in this report that the U.S. even had a prior users statute of some kind early in the 19th century.
Stan E. Delo
January 18, 2012 06:37 pm
EG-
I got exactly the same reaction after reading Kevin’s excellent if somewhat reserved analysis. Of course there is no evidence that PURD will harm innovation or independents for instance, YET, because there is no evidence to consider at ALL. The report seems more like just trying to convince Congress that they didn’t really screw up by passing this very unfortunate AIA legislation.

Stan~
EG
January 18, 2012 09:52 am
Gene,

Kevin Noonan’s assessment on Patent Docs that it is simply too early to assess the impact of PURD because there’s is insufficient empirical data/studies is on target. That this Report would suggest otherwise undermines its credibility and supports the comment by another that this Report was primarily a “whitewash” to satisfy the legislative mandate and “appease” the Congressional overseerers. Yet another reason why the AIA is the Abominable Inane Act.