Prior User Rights Study Report to Congress - America Invents Act

United Kingdom allows a prior user in a partnership to authorize his partners to perform the prior useactivities. 153The final category bars the transfer of the prior user right. While Mexican law does not appear toexplicitly address transfer of prior user rights, it is understood in practice that prior user rights are nottransferable. 154 As such, prior user rights appear to be a purely personal and non-transferable right inMexico. 155Finally, it should be noted that Canada was not classified into any of the categories above. Aspreviously stated, Canada’s prior user right encompasses the purchase, construction, or acquisition ofclaimed subject matter. 156 Therefore, any party in a product supply chain, or business transaction, mayalso be able to assert the prior user rights defense. However, it is not clear whether the right may betransferred to (and asserted by) someone outside of this nexus. Canadian law appears silent on this issueand Canadian case law does not appear to provide a definitive conclusion, with some suggesting that it islogical that they can be “passed on to another.” 157Like most of the studied countries, the prior user rights defense under the AIA may be transferredas long as it is in conjunction with a business unit. More specifically, the AIA specifies that prior userrights can only be transferred, except to the actual patent owner, as part of a good faith assignment ortransfer of the entire enterprise or line of business to which the defense relates. 158 That is, the right toassert said defense may not “be licensed or assigned or transferred to another person except as anancillary and subordinate part of a good-faith assignment or transfer for other reasons of the entireenterprise or line of business to which the defense relates.” 159c. Limitations on Enforceability of the DefenseUnder section 273(e)(5) of the AIA, a prior user right defense to infringement may not beasserted if “the claimed invention with respect to which the defense is asserted was, at the time theinvention was made, owned or subject to an obligation of assignment to either an institution of higher153 VAN EECKE, supra note 125, at 105; see also Hazel Craven, Senior Legal Adviser, UK Intell’l Prop. Office,Submission re WIPO Questionnaire on Exceptions and Limitations to Patent Rights, 16-18,http://www.wipo.int/export/sites/www/scp/en/exceptions/submissions/uk.pdf; and Webb, supra note 65, at 6.154 Mexican IP Law, Art. 22.155 Fabian R. Salazar, Divisional Director for Patents, Mexican Institute for Indus. Prop., Submission re WIPOQuestionnaire on Exceptions and Limitations to Patent Rights, 10, http://www.wipo.int/export/sites/www/scp/es/exceptions/submissions/mexico.pdf.156 Canadian Patent Act at § 56(1).157 Binkley at 208.158 § 5, 125 Stat. at 298 (to be codified at 35 U.S.C. § 273(e)(1)(B)).159 Id.27