Prior User Rights Study Report to Congress - America Invents Act

Product-inventions and product-by-process inventions encompass a significant amount of activities underthe rubric of exploitation. 79 One of the many activities under this nomenclature is offering to sell. Incontrast, exploitation with respect to a pure process invention is limited to actual use only. 80 Thus,offering to sell a process invention does not trigger prior user rights. Similar to Australia, the countries ofJapan 81 and the Republic of Korea 82 have different meanings based on the subject matter of aninvention. 83 It should be noted, however, that most of the other studied countries do not have thispiecemeal approach, and apply the same “use” standard across the board.Unlike Australia, prior use activity under the AIA is not defined differently based on statutorysubject matter. That is to say, the same “commercial use” standard is applied to all statutory subjectmatter, specifically defined in the AIA as, “subject matter consisting of a process, or consisting of amachine, manufacture, or composition of matter.” 84b. Qualifying Prior UserA second inquiry for qualifying for the benefit of prior user right laws is “who” is a prior user.This inquiry focuses on ascertaining whether a prior user has to be the actual inventor, or alternatively, ifa prior user may encompass someone who acquired the invention from another. In most countries,anyone who acquired an infringing invention, prior to the date of filing of the patent application, mayassert a prior user rights defense. Most of these countries also have a requirement of good faith, discussedmore fully below.A requirement of invention in a prior user rights regime means that only an earlier inventor mayassert prior user rights. Under such a system, prior user rights originally vest in a prior inventor. Fromthat point, the right (or defense) can be transferred according to the legal standard of a particular country(discussed further below). The only country with a pure invention requirement appears to be Russia. 85http://www.wipo.int/export/sites/www/scp/en/exceptions/submissions/australia.pdf (last visited Dec. 16, 2011), andComments of Inst. of Patent and Trade Mark Attorneys of Australia, supra note 37.79 Australian Patent Law, at § 119(5).80 Id.81 Japanese Patent Act, at art. 2(3).82 Korean Patent Act, at art. 103.83 Of note is that prior use in Japan also encompasses “providing [computer software] through an electrictelecommunication line.” Japanese Patent Act art. 2(3); see also Yuichiro Nakaya & Gen Aida, Deputy Director &Assistant Director, Japan Patent Office, Response to WIPO Questionnaire on Exceptions and Limitations to PatentRights 8-12, http://www.wipo.int/export/sites/www/scp/en/exceptions/submissions/japan_rev.pdf (last visited Jan.13, 2012).84 § 5, 125 Stat. at 297 (to be codified at 35 U.S.C. § 273(a)).85 Russian Patent Law, at art. 12.17