USPTO Issues Reports Required by the America Invents Act on the Prior User Rights Defense Study and the International Patent Protection for Small Business Study

The United States Patent and Trademark Office (USPTO) has submitted reports for two intellectual property law studies required by the America Invents Act (AIA) to Congress.

The first report was prepared under Section 3 of the AIA and addresses the scope of prior user rights defense in industrialized countries.  The second report was prepared under Section 31 of the AIA and concerns international patent protection for small businesses.

The Prior User Rights Defense Report includes a comparison of prior user rights in industrialized countries; the impact of prior user rights on innovation, start-up enterprises, small businesses, individual inventors, and universities; an analysis of the legal and constitutional issues with placing trade secret law in patent law; and an analysis of whether a first-to-file system creates a need for prior user rights.

The Prior User Rights Defense Study was conducted in consultation with the Department of State, Department of Justice, and United States Trade Representative.  The Prior User Rights Defense Report offers ten specific fact findings and makes five recommendations regarding the defense.

The International Patent Protection for Small Business Report considers how to best help small businesses with patent protection overseas, including whether a loan or grant program should be established to help small businesses cover the costs of application, maintenance, and enforcement fees or related technical assistance.

The International Patent Protection for Small Business Study was developed in consultation with the Small Business Administration.  The International Patent Protection for Small Business Report presents ten fact findings and contains four recommendations.

The USPTO and partner agencies held public hearings and solicited written public comments for both studies.  For the Prior User Rights Study, the agency received 28 public comments, and six witnesses testified at the hearing.

For the International Patent Protection for Small Business Study, the agency received 19 public comments, and twelve witnesses testified at the hearing.  The USPTO integrated the public input into the reports in both the fact findings and recommendations.

In additional to these two studies, Congress has required the USPTO to conduct five additional studies in the upcoming months.

Next, the USPTO will study secondary genetic testing following the same protocol for the Prior User Rights Defense and International Patent Protection for Small Business Studies of hosting public hearings and seeking written public comments.  The USPTO will soon publish a Federal Register Notice with details about the genetic testing study.

Also See:

USPTO to Implement Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act

U.S. Patent and Trademark Office Seeks Public Input on Proposed Fees

USPTO to Test New Post Final Rejection Option

USPTO Expands Patent Law School Clinic Certification Pilot Program

USPTO Launches Small Business Innovation Research Pilot Program