Prior User Rights Study Report to Congress - America Invents Act

locality of prior use. 119 More specifically, the prior use must take place within the borders of eachrespective country. Thus, activities taking place within a foreign country are not taken into account indetermining whether the prior use defense is available.For example, in Japan, any activity constituting prior use must take place in Japan. 120 Thisterritorial requirement may also span territories owned by a particular country. For example, like Japan,France requires prior use to take place within its borders as well. 121 Since France also encompassesterritories outside continental Europe, this area includes overseas departments such as French Polynesia,the Wallis and Futuna Islands, the French territories of the Southern Hemisphere, Antarctic, NewCaledonia, and Mayotte. 122Denmark, France, Germany, and the United Kingdom are all members of the European Union.Therefore, it should be noted that some scholars have indicated that limiting the territorial scope of prioruser rights to within the national borders of member states may contravene European Competition Law. 123The AIA is in harmony with all studied countries, as it provides that only commercial use in theUnited States may provide the basis for a prior use defense. 124Thus, the USPTO finds that:Finding 1:The AIA strikes the right balance by limiting the prior user rights defense tothose parties that can prove commercial use at least one year prior to thefiling date of the patent application by clear and convincing evidence.2. Scope of Prior User Rights DefenseThe scope of the prior user rights defense varies somewhat from country to country. Thefollowing is a summary and comparison of the scope of the defense, which in general is fairly consistentacross the vast majority of the jurisdictions studied. The scope of the prior use defense can generally be119 See generally: U.K. Patent Act, at § 64; German Patent Act § 12; Danish Patents Act, at § 4(1); French Intell’lProp. Law, at art. L613-7; Canadian Patent Act, at § 56(1); Brazilian Patent Law, at art. 45; Mexican IP Law, at Art.22.III; Australian Patent Law, at § 119; Japanese Patent Act, at art. 79; Korean Patent Act, at art. 103; and ChinesePatent Law, at art. 69(2).120 Japanese Patent Act art. 79.121 French Intell’l Prop. Law, at art. L613-7.122 Pochart, supra note 56, at slide 3.123 Webb, supra note 65 at 7.1-7.3 (noting that the territorial requirement in U.K. may contravene EuropeanCompetition Law by discriminating between acts carried on in different states of the EU).124 § 5, 125 Stat. at 297 (to be codified at 35 U.S.C. § 273(a)).22