PTO Announces Hearings, Comment Requests For Prior User, Small Business Patent Studies

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By Tony Dutra

In accordance with the recently enacted America Invents Act (H.R. 1249, Pub. L. No. 112-29), the Patent and Trademark Office issued two Federal Register notices Oct. 7 announcing public hearings and requesting comments on the AIA's expansion of prior user rights and on how the government might help small businesses in international patenting. 76 Fed. Reg. 62,388 and 62,389.

President Obama signed the AIA into law Sept. 16 after six years of debate finally produced a compromise bill acceptable to the patent community. However, Congress also added provisions to the legislation requiring PTO-led studies on a number of issues. The first two of those studies—on prior user rights and international patenting for small businesses—are due in mid-January.

Hearings will be held Oct. 25 and Oct. 27, respectively, at PTO headquarters in Alexandria, Va. Stakeholders wishing to participate should contact the PTO no less than one week earlier. Written comments may be submitted up to Nov. 8 for both.

Study on Prior User Rights Due Jan. 16.

Section 3 of the AIA primarily laid out the statutory changes moving the United States to a first-inventor-to-file (FITF) system. Some stakeholders were concerned that a FITF system could lead to a potential infringement liability for first inventors who might have reasons not to file a patent application but who have already commercialized their inventions.

Congress thus added Section 5, titled “Defense to infringement based on prior commercial use.” The provision expands the prior user rights infringement defense for such inventors under 35 U.S.C. §273, which previously applied only to prior commercializations of business method patents.

Section 3(m) also provided for a "Report on Prior User Rights"—more specifically, "on the operation of prior user rights in selected countries in the industrialized world"—to be written by the PTO and delivered to the judiciary committees of each branch of Congress, due Jan. 16, 2012.

The PTO's Oct. 7 announcement gives stakeholders the opportunity to contribute to the report.

The notice echoes the report requirements as laid out in Section 3(m), covering six points:

(1)comparisons between the patent laws of the United States and the laws of other industrialized countries;
(2) the effect of prior user rights on innovation rates;
(3) the correlation, if any, between prior user rights and start-up enterprises as well as the ability to attract venture capital to start new companies;
(4) the effect of prior user rights, if any, on small businesses, universities, and individual inventors;
(5) legal and constitutional issues with placing trade secret law in patent law; and
(6) whether or not the change to a first-to-file patent system creates any particular need for prior user rights.

The PTO asked the patent community to provide written comments or hearing testimony on “experiences”—including empirical data if available—as to the first four and “views” as to the last two.

The hearing is Oct. 25. Written comments can be submitted up to Nov. 8.

The AIA also requires the PTO, in preparing the report, to consult with the Office of the U.S. Trade Representative, the secretary of state, and the attorney general.

Small Business Study Due Jan. 14.

Section 31 of the AIA, titled “USPTO study on international patent protections for small businesses,” requires PTO completion two days earlier than the prior user study.

The patent community is invited to provide testimony at the hearing or written comments on 10 separate questions. The first four questions ask for comments about current experiences of small businesses:

(1) Overall, how important is international patent protection to small business?
(2) At what point, if ever, in the growth of small companies does international patent protection become important?
(3) What challenges, if any, interfere with the growth and competitiveness of small companies if international patent protection is not sought early in the innovation process?
(4) What specific role does international patent protection play in the successful internationalization strategies (such as franchising, exporting, or foreign-direct-investment) of small businesses? Does this role differ by industry or sector?

The remaining questions relate to if and how the federal government should assist small businesses regarding international patenting. Question 5 divides the possible assistance into how small businesses can obtain, maintain, and enforce international patents.

The next four questions relate to financing, asking whether the federal government should defray the costs of filing, maintaining, and enforcing international patents. The AIA asked whether a "revolving loan fund program" or a grant program would be appropriate, and the PTO asked for preferences if only one of those two options is to be made available.

Finally, the PTO asked, "Are there circumstances under which the Federal Government should not consider establishing any of these programs?"

The hearing is Oct. 27. Written comments can be submitted up to Nov. 8.

In preparing this report, the AIA requires the PTO to consult with the secretary of commerce and the administrator of the Small Business Administration.

By Tony Dutra

Prior user rights notice at

Small business notice at

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