Defenses to Patent Infringement Under the America Invents Act

Defenses to Patent Infringement Under the America Invents Act

By Daniel H. Sherr

Excerpt:

History

Prior to the AIA, in 1999 the American Inventors Protection Act re-established prior user rights (under certain conditions), but limited only to business method technologies. Prior User Rights provisions in the 1999 Patent Act were primarily in response to the CAFC's State Street 1 decision that opened the door to business method patents. Obviously, there was some minor outrage in Congress about this judge-made expansion of patent rights, and the quick solution was to allow a prior user defense for this business method category of inventions.

Many, if not most, Patent Attorneys probably think that the 1999 Patent Act was the first time that that there was a prior user defense in U.S. Patent Law. However, prior user rights have been part of U.S. Patent Law for the majority of the history of the U.S. Patent System. In fact, prior to the Patent Act of 1952 (which was the preceding overhaul of the U.S. Patent System), prior user rights were a part of U.S. patent law beginning with the Patent Act of 1793, either explicitly or implicitly. However, in the Patent Act of 1952, provisions for prior user rights were explicitly repealed. 2 Essentially, only for the short 47 year portion of American History between 1952 and 1999 were there no prior user rights in U.S. Patent Law.

Most importantly, through the history of prior user rights in U.S. Patent Law, the focus has always been "fairness," not functionality, of the U.S. Patent System. In all likelihood, prior user rights will be part of U.S. Patent Law for at least the next century, if not beyond.

ABOUT THE AUTHOR:

Daniel H. Sherr has over 13 years experience in Intellectual Property Law. His specializations include Patent Transactions, Patent Prosecution, Patent Licensing, and Litigation Management. His experience includes government service, employment at law firms, and building a medium sized law practice. He is a founding partner of Sherr & Vaughn. He may be reached at dsherr@sherr-law.com.

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