U.S. Patent Office Conducts Two Studies Pursuant to the America Invents Act

October 21, 2011

By: Mary K. Murray, Ph.D.

The U.S. Patent and Trademark Office (USPTO) is seeking comments regarding prior user rights and international patent protection for small businesses pursuant to the Leahy-Smith America Invents Act (the Act), which was signed into law on September 16, 2011. Public hearings will be held at the USPTO in Alexandria, VA on October 25, 2011 for prior user rights and October 27, 2011 for international patent protection for small businesses. Written comments must be submitted for both studies no later than November 8, 2011. Click here for the USPTO press release regarding these studies.

Depending on your business needs, goals and size of your organization, you may wish to consider providing written or oral comment for inclusion in these studies by the USPTO. The USPTO considers comments by the public in formulating rules of practice before the USPTO and in its implementation of programs to assist inventors.

Prior Use Rights Study
The Leahy-Smith Act extends a defense to infringement based on prior commercial use to include any process, a machine or composition. Prior to the Act, the defense of prior user rights was limited to a defense to infringement of business method patents. Concerns were expressed that a first inventor to file system under the Act would increase liability to inventors who chose to commercialize their inventions without filing patent applications. The Act requires that the USPTO report to the Senate and Congress by January 16, 2012 findings and recommendations “on the operation of prior user rights in selected countries in the industrialized world,” which include the effect of prior user rights on innovation, small businesses, universities and individual inventors. Click here for the details as published in the Federal Register.

International Protection Study
The Act provides for a study on international patent protection for small businesses, due to the Senate and Congress by January 14, 2012. Comments of small businesses are asked to comment on several questions including the importance of international patent protection to small companies, when does international patent protection become important to small companies and what challenges do small companies experience if international patent protection is not obtained early in the innovation process. The purpose of the study is to determine how the USPTO can help small businesses with international patent protection including whether the USPTO should establish loan or grant programs for small businesses to defray costs of international patent filings. Click here for details as published in the Federal Register.

Study Comments Available to the Public
Transcripts of the hearings and the written comments for both studies will be available to the public at the Office of Policy and External Affairs in the Executive Library in the Madison Building, 600 Dulany Street, Alexandria, Virginia and at the following link. Questions regarding the hearings and written comments can be directed to Ms. Elizabeth Shaw at the USPTO or (571) 272 8494).

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October 21, 2011

By: Mary K. Murray, Ph.D.

The U.S. Patent and Trademark Office (USPTO) is seeking comments regarding prior user rights and international patent protection for small businesses pursuant to the Leahy-Smith America Invents Act (the Act), which was signed into law on September 16, 2011. Public hearings will be held at the USPTO in Alexandria, VA on October 25, 2011 for prior user rights and October 27, 2011 for international patent protection for small businesses. Written comments must be submitted for both studies no later than November 8, 2011. Click here for the USPTO press release regarding these studies.

Depending on your business needs, goals and size of your organization, you may wish to consider providing written or oral comment for inclusion in these studies by the USPTO. The USPTO considers comments by the public in formulating rules of practice before the USPTO and in its implementation of programs to assist inventors.

Prior Use Rights Study
The Leahy-Smith Act extends a defense to infringement based on prior commercial use to include any process, a machine or composition. Prior to the Act, the defense of prior user rights was limited to a defense to infringement of business method patents. Concerns were expressed that a first inventor to file system under the Act would increase liability to inventors who chose to commercialize their inventions without filing patent applications. The Act requires that the USPTO report to the Senate and Congress by January 16, 2012 findings and recommendations “on the operation of prior user rights in selected countries in the industrialized world,” which include the effect of prior user rights on innovation, small businesses, universities and individual inventors. Click here for the details as published in the Federal Register.

International Protection Study
The Act provides for a study on international patent protection for small businesses, due to the Senate and Congress by January 14, 2012. Comments of small businesses are asked to comment on several questions including the importance of international patent protection to small companies, when does international patent protection become important to small companies and what challenges do small companies experience if international patent protection is not obtained early in the innovation process. The purpose of the study is to determine how the USPTO can help small businesses with international patent protection including whether the USPTO should establish loan or grant programs for small businesses to defray costs of international patent filings. Click here for details as published in the Federal Register.

Study Comments Available to the Public
Transcripts of the hearings and the written comments for both studies will be available to the public at the Office of Policy and External Affairs in the Executive Library in the Madison Building, 600 Dulany Street, Alexandria, Virginia and at the following link. Questions regarding the hearings and written comments can be directed to Ms. Elizabeth Shaw at the USPTO or (571) 272 8494).

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