[This is the ninth in a series of postings regarding the various proposals in the Patent Act of 2005.]

Prior User Rights

The proposed legislation expands the prior user rights defense. Currently, 35 U.S.C. 273(b) provides that it shall be a defense to infringement if the accused, acting in good faith, had actually reduced the subject matter of the patent being asserted to practice at least 1 year before the effective filing date of that patent AND commercially used the subject matter of the patent before the effective filing date of the patent – the sale or other disposition of a useful end product produced by a patented method qualifies as a commercial use. The proposed bill would expand this by striking the requirement that the infringement involve a “useful end product“.

This change would have the effect of extending the defense to methods of doing business. It also enhances the safe harbor for non-patentees in that they only have to beat the filing date of the patent application, through commercial use, rather than that date plus one year to qualify for the defense. The benefit of this provision is clearly directed toward the non-patentee but seems reasonable in our ultra-competitive country as it goes to the balance between trade secret protection versus patent protection.

Previous: Part 8. Inter Partes Reexamination.
Next Up: Part 10. Post Grant Oppositions, etc.

Today’s post comes from Guest Barista Ria Schalnat, a registered patent attorney in Frost Brown Todd’s Cincinnati office.

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