Partner Jeffrey Johnson Talks to Law360 About America Invents Act
Pryor Cashman Partner, Jeffrey Johnson, spoke to Law360 for its article, “Prior Use Rule May Lead To More Secrets, Fewer Patents.”
The November 10, 2011 article explains that a provision of the America Invents Act creates a defense to infringement based on prior commercial use of an invention. The prior user rights provision, applies to situations where someone came up with an invention, used it commercially and chose not to apply for patent protection, then was sued for infringement by someone who had later obtained a patent on the same invention. The law provides for a defense of infringement if the defendant can prove by clear and convincing evidence that it had engaged in commercial use of the patented subject matter at least one year before the patent's effective filing date.
According to the article, an aspect of prior user rights that has sparked the most debate is the possibility that it will dissuade some inventors from filing for patents and instead keep their inventions as trade secrets.
When prompted on such a possibility, Johnson responded that the prior use defense reshapes what had been the patent system's carrot-and-stick approach for encouraging people to get patents, by effectively removing the stick.
He explains further, “the carrot is the chance to gain exclusive rights to an invention, while the stick is the risk that if you don't get a patent, someone else can and will stop you from using it.” With prior user rights, Johnson said, "the worst-case scenario is that someone else gets a patent but you're still able to protect against claims of infringement, even if you don't get the benefit of the patent yourself.” That could lead some companies to keep more trade secrets, possibly as a way to reduce their patent application expenses, he said.
To read the entire article, please click here.
