Prior User Rights Study Report to Congress - America Invents Act

in which it has arisen or in which the exploitation was intended.” 144 Germany 145 and China 146 havesimilar laws in this respect.Japan also limits transfer of prior user rights to an assignment in conjunction with a business.However, Japan also provides other avenues of transfer. Generally speaking, Japanese prior user rightsmay be transferred whenever the business involving “the working of” the relevant invention is alsotransferred. But in addition to this, the prior user right may be transferred where the consent of the patentholder is obtained or where the transfer occurs as a result of general succession (including inheritance). 147The same is true for the Republic of Korea. 148The third category is transferability of the right alongside a business or a production unit of saidbusiness. More specifically, rather than limiting conveyance of said prior user right to an assignment inconjunction with a whole business, said conveyance may include an assignment in conjunction with theparticular business unit that is responsible for the triggering prior use activity. This type of transfer isactually of a lower threshold than the preceding category. For example, French prior user rights can “betransferred together with the business, the enterprise or the part of the enterprise to which it belongs.” 149Transfer of prior user rights is also similarly restricted in the Russian Federation, where the right of aprior user “may be transferred together with the production unit in which actual use or necessarypreparations for said use have been made.” 150 Brazil 151 has laws similar to France and the RussianFederation.The United Kingdom also has similar but perhaps even more restrictive provisions on transfer ofprior user rights as compared to France, the Russian Federation and Brazil. Prior users may assign ortransmit their right upon death to any person who acquires that part of the business. 152 Furthermore, the144 Id. at § 4(2).145 German Patent Act, at § 12.146 Chinese Patent Law, at art. 69(2).147 Japanese Patent Act, Article 94(1); see also Yuichiro Nakaya & Gen Aida, Deputy Director & Assistant Director,Japan Patent Office, Submission re WIPO Questionnaire on Exceptions and Limitations to Patent Rights, 8-9,http://www.wipo.int/export/sites/www/scp/en/exceptions/submissions/japan_rev.pdf (last visited Dec. 21, 2011).148 Maeda, supra note 133, at 55; see also Hyun-suk Lim, Senior Deputy Director, Korean Intell’l Prop. Office,Submission re Questionnaire on Exceptions and Limitations to Patent Rights, 8-9,http://www.wipo.int/export/sites/www/scp/en/exceptions/submissions/rep_of_korea.pdf (A prior user right in theRepublic of Korea can be transferred together with the business, in the case of inheritance or other generalsuccession, or with consent of the patent holder).149 French Intell’l Prop. Law, at art. L613-7.150 Russian Patent Law, at art. 12.151 Brazilian Patent Law at art. 45(2) (under Brazilian law prior user rights “may only be assigned together with thebusiness or company, or part thereof that is directly related to the exploitation of the object of the patent, by transferor leasing.”)152 U.K. Patent Act, at § 64.26