Prior User Rights Study Report to Congress - America Invents Act

and that prior user rights protected their “legitimate know-how [from being] taken away.” 193 Becausemany U.S. universities have a more direct involvement with the patent system, as often do their licenseestart-up companies, this example from Germany may have less relevance to the U.S. case.Commentary to the Federal Register Notice offered by several higher education associations 194 aswell as a university-linked patent management organization, 195 expressed concerns about possiblenegative effects that a future strengthening of prior user rights could have upon innovation at universitiesin the US. These respondents recognized that prior user rights may be important in particular technologysectors, particularly those in which “complex products and manufacturing processes” may make itdifficult to patent every component. However, they also expressed concern that extending prior user rightsinto the university arena could create disincentives for information disclosure and collaboration in theuniversity environment (for instance, through peer-reviewed journals and conference presentations). Sinceinnovations from universities tend to be basic research, early-stage, and highly risky, these respondingassociations expressed a concern that allowing prior use rights in the university environment could“expand the pool of trade secrets immune from assertion of patent rights,” thereby reducing the certaintyover what a patent excludes and discouraging private companies from licensing university patents. 196Congress mandated that all university and university-associated technology transfer organizations’patents will be exempted from the availability of a prior user rights defense (excepting non-Federallyfunded activities). 197 Accordingly, the associations’ joint comments assert that the Act “effectivelybalances the concerns and interests of universities and private sector companies … while inhibiting thedevelopment of a massive pool of trade secrets immune from the assertion of patent rights, as wellas … products that could be derived from early disclosures.” 198 In summation, because prior user rights(and the university exclusion) have only recently been permitted to be widely available here in the U.S.,there is insufficient evidence at this time to determine the impact on universities. 199193 Comments of Freischem, supra note 39.194 Comments from Various Higher Edu. Ass’n to the USPTO, Higher Educ. Comments on Prior User Rights 2(Nov. 8, 2011) [hereinafter “Comments of Various Higher Educ. Ass’n”], http://www.uspto.gov/aia_implementation/pur-2011nov08-higher-education-associations.pdf.195 Comments from Carl E. Gulbrandsen, Managing Director, Wis. Alumni Research Found., to Elizabeth Shaw, IPResearch Specialist Supervisor, USPTO, Office of Policy and External Affairs, In the Matter of Notice of PublicHearing and Request for Comments on Study of Prior User Rights 5-6 (Nov. 3, 2011) [hereinafter “Comments ofWis. Alumni Research Found.”], http://www.uspto.gov/aia_implementation/pur-2011nov04-wisconsin_alumni_research_foundation.pdf.196 Comments of Various Higher Educ. Ass’n, supra note 194.197 § 5, 125 Stat. at 292, 297-299.198 Comments of Various Higher Educ. Ass’n, supra note 194.199 See Comments of AIPLA, supra note 164.37