Prior User Rights Study Report to Congress - America Invents Act

inventions for a limited time. In exchange for these exclusive rights, the patent holder is required todisclose to the world how that invention is made and used. 223 Because a prior use defense is viewed as anexception to the right of an inventor to exclude others from making and using the claimed invention, somehave questioned the legal basis for such a defense. This section will offer an analysis of the legality of aprior use defense in United States patent law along with an analysis of the relationship between tradesecret law and patent law.In response to the Federal Register Notice requesting comments on the operation and impact ofthe prior user rights defense on patent infringement, the vast majority of respondents supported a prior usedefense in United States patent law and did not address the legality of the prior use provision in the AIA.Of those who did address the legality of the provision, the majority did not express any concerns. 224In the majority view, there are no constitutional issues associated with adopting a prior user rightsdefense. The majority asserted that the Supreme Court previously addressed the compatibility of tradesecret and patent laws in Kewanee Oil Co. v. Bicron Corp., sanctioning the co-existence of two. 225 Themajority also asserted that the prior use defense has existed in the United States prior to the 1952 PatentAct, and was not deemed unconstitutional or even challenged based on constitutionality. 226 Additionally,some companies indicated that they should not be forced to disclose discoveries, which, even if patented,could be copied by others. 227223 Rebecca S. Eisenberg, Patents and the Progress of Science: Exclusive Rights and Experimental Use, 56 U. CHI.L. REV. 1017, 1022 (1989).224 See, e.g., Comments of AIPLA, supra note 164, at 4 (“AIPLA does not believe that there are any legal orconstitutional issues raised by the proposal to implement a prior inventor rights system, with the appropriatelimitations as presently exist.”); Testimony of Thomas Kowalski, supra note 47, at 15 (“The extent of theexclusivity of patent rights is among other things within Congress’s discretion. . . . I do not see the prior user rightsdefense as granting any rights but only defining contours of the exclusivity granted by a patent.”); Comments of theComputer & Commc’ns. Ind. Ass’n, supra note 185, at 3 (“Most arguments against prior user rights focus on thepublic disclosure function of the patent system—the principle that the patentee receives a limited monopoly in returnfor disclosing new knowledge to the public. Prior user rights do not change this basic quid pro quo.”); See generallyComments at the Public Hearing on the Study of Prior User Rights (Oct. 25, 2011), http://www.uspto.gov/aia_implementation/20111025-prior-user-rights-transcript.pdf; and Comments on the Study of Prior User Rights,supra note 33.225 Comments of AIPLA, supra note 164, at 4 (noting that the “U.S. Supreme Court addressed the compatibility oftrade secret and patent laws in Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974), based upon the common goalof encouraging the development of new inventions.”).226 Testimony of Thomas Kowalski, supra note 47 at 15-17 (noting that: (i) Congress has the power to define theright of exclusivity of a patent, and (ii) that a prior user rights defense existed in the U.S. prior to the 1952 PatentAct).227 See, e.g., Comments from Google and Verizon, supra 173, at 3-6 (“[T]he courts and the PTO have longrecognized that innovation is best served by giving companies the freedom ‘to choose . . . the most commerciallysound approach to commercially exploiting’ their innovations.”); Comments of Space Exploration Techs. Corp.,supra note 47, at 2 (“At SpaceX, we believe that we must protect many of our innovations as trade secrets. . . . Dueto well-known difficulties associated with enforcing patent rights in certain foreign jurisdictions, patents alone42