F charges of patent infringement for enti- or at least two - PDF document

did university Patents Become transfer organization whose primary pur- pose is to facilitate the commercialization of technologies developed by one or more the World’s Most Valuable such institutions of higher education”. 2 See , 35 u.S.c. § 273(e)(5)(a) (2010). Patents claiming such inventions are referred to as Patents Following enactment “university Patents” herein. Whereas university Patents used to be no different from other patents in the of the America Invents Act? enforcement context, their newly created carve out to the assertion of any form of prior user defenses gives them distinct characteristics that should significantly BY ROBERT BARRETT, MARGAUX BIRDSALL & RACHAL WINGER, K&L GATES LLP affect how they are licensed and enforced. PrIor user rIghts deFenses Prior user rights are designed to provide a first inventor with a limited, personal defense against charges of patent infringe- ment by a second inventor while not affect- ing the validity of the second inventor’s patent. this approach is intended to protect the true first inventor while maintaining the second inventor’s rights in the invention Robert M. Barrett Margaux Birdsall Rachal Winger against other third parties. this outcome Robert M. Barrett , a partner in K&L that no american patent has ever had. It ensures that the second inventor is not Gates’ Chicago office, concentrates his prac- is too early to fully appreciate the impact unduly penalized for coming forward with tice in intellectual property law and patent these powerful patents will have in the the invention and disclosing the knowledge related issues, including litigation, prosecu- market. We propose that early movers to the public – a goal of uS Patent law. It tion, licensing, due diligence, and counsel- in securing patent assignments, licensing also prevents a second inventor from enforc- ing. He is a practice area leader of K&L rights and collaborative relationships with ing its rights against a true first inventor. Gates’ intellectual property practice. universities may well find themselves in Prior User Rights Defenses Before AIA strong competitive positions compared to Margaux Birdsall, an associate in K&L two types of “prior user rights” defenses those who do not capitalize on the new- Gates’ Chicago office, focuses her practice existed in the uS before the enactment of found status of university patents. on intellectual property matters and has aIa. experience in the prosecution of applications IntroductIon 1. Quasi-Prior User Rights Defenses for a wide range of technologies. before AIA the america Invents act (aIa) brings Prior user defenses are not new to Rachal Winger, a partner in K&L Gates’ major changes to the united States (uS) american patent law. Since at least 1952, Seattle and Orange County offices, focuses Patent System. Some of these changes 35 u.S.c. § 102(g) created a “quasi” prior her practice on intellectual property law with include transition to a first inventor to file user rights defense. under this section, an emphasis in life sciences patent-related system, availability of post-grant opposi- a person was entitled to a patent unless matters. She counsels clients in the creation tion proceedings, and the creation of a another had made the invention before and commercialization of intellectual prop- new microentity status. also among these the patent application in the uS and had erty and in the assessment of intellectual changes is the expansion of prior user rights not abandoned, suppressed, or concealed property in corporate transactions and com- defenses. Following enactment of aIa on it. See 35 u.S.c. § 102(g) (2010). this petitive analyses. September 16, 2011, 1 prior user rights defense is called a “quasi” prior user became a personal affirmative defense to defense here because while it protected F charges of patent infringement for enti- or at least two generations, and the first true inventor, it also rendered the ties that can demonstrate commercial use most likely throughout the history of second inventor’s patent invalid. 3 of a “machine, manufacture or composi- american jurisprudence, a true first tion of matter used in a manufacturing or 2. True Prior User Rights Defenses inventor could defeat a patent infringement other commercial process” at least one claim by a second inventor through a “prior before AIA year before the filing date of the asserted true prior user defenses also were found user” rights defense. Following enactment patent. 35 u.S.c. § 273(a)(1) (2010). of the america Invents act, prior user in the uS Patent law before aIa, albeit in a However, there is one notable exception very limited context. Before aIa, and since defenses have expanded significantly with to the defense. It is not available “if the 1999, true prior user rights have been avail- one notable exception. Patented inventions claimed invention … was, at the time the made, owned or subject to transfer to an able as a personal defense against patents invention was made, owned or subject to an claiming a method of doing or conducting institution of higher education are immune from all forms of prior user defenses. these obligation of assignment to either an insti- business. See american Inventors Protection patents thus have a level of enforceability tution of higher education, or a technology act of 1999, Pub. l. 106-113, §§ 273(a) 32 Intellectual ProPerty today July, 2012