Posts Tagged: "prior user rights"

BIO also is concerned about the inclusion of broader prior user rights in the House bill, and believes that this issue, coupled with the harmful inter partes review changes, could set back efforts to pass meaningful patent reform this year by undermining the broad coalition of American innovators currently supporting patent reform.

A prior user rights defense prevents those who have previously used the patented invention from being infringers. In many parts of the world there are strong prior user rights, which allow those who keep innovation as a trade secret hidden away from the public to later use those trade secrets as a defense to a patent infringement lawsuit. You can’t sue me for patent infringement because I have been hiding, using that innovation you patented as a trade secret. So the party that disseminates the information for the benefit of the public loses in favor of the party that kept the innovation a closely guarded secret. This has never struck me as fair, a good idea or even in keeping with the Constitutional purpose for patents.

Late in the afternoon on Thursday, March 24, 2011, the purported patent reform bill from the House of Representatives began circulating. The House patent reform bill is largely identical to the Senate version – S. 23. There are some differences, one rather major difference, but the Senate first to file provisions remain intact. The House bill would still grant the Patent Office the right to use all of the funds collected, as did S. 23. The House bill also would grant the United States Patent and Trademark Office fee setting authority, as did S. 23, but then curiously goes on to set the fees that the USPTO charges. It seems unclear why on one hand you would set the fees and in another section of the bill say that the USPTO can vary any fees defined.

Where this decision takes on a surreal quality is how the various Justices viewed the impact of 35 U.S.C. § 273 in determining whether “business methods” are patent-eligible. Justice Stevens and 3 other Justices (Ginsburg, Breyer and Sotamayor) are completely WRONG in treating 35 U.S.C. § 273 as if this statute doesn’t exist. Even Scalia, who obviously doesn’t like patents on “business methods” (by his refusal to join Part II B-2 of Kennedy’s opinion) couldn’t stomach rendering the language of 35 U.S.C. § 273 a nullity.