HR 400/ S507: Prior User Rights

As someone concerned about the rights of the small inventor I offer some information about the problems about these bills' "Prior User Rights" provisions:

It would impair the ability of small inventors to profit from the technology they invent.

The case law already invalidates any patent filed more than one year after the invention was commercialized by the inventor or anyone else. The federal appeals court that handles all patent cases has stated "it is well settled that the 'on sale' [commercialization] bar applies to sales made by the inventor or another, with or without the inventor's consent." So what does this legislation accomplish? It allows patent infringers to defeat an inventor without having to generate the evidence necessary to invalidate the inventor's patent. It is likely that the current Senate bill will be interpreted by the courts to require less evidence of commercial use than the "clear and convincing" evidence required to invalidate a patent.

This legislation allows patent infringers, who are notorious for harassing and cheating entrepreneurial inventors, to more easily get around patent rights. Those unscrupulous enough to infringe a patent will not always be discouraged from "manufacturing" evidence to avoid paying the price for that infringement. This legislation makes it easier for them to do.

Contrary to what has been claimed by its proponents, it would actually slow the introduction of new technology in many cases.

As an entrepreneurial inventor, my strategy for dealing with this legislation will be to file a provisional patent application to effectively delay the whole process by a year. If I see that no commercial products are on the horizon that might use my invention, I will then proceed with a patent. The provisional application will preserve my filing date, so that a future patent infringer will need to produce evidence going back one full year more than he otherwise would need to.
This strategy will help to protect me from unscrupulous infringers, but my technology will take an extra year to reach the public through the disclosure of the patent system.

The Constitution's intent of an "exclusive Right" would be thwarted by its elimination of patent rights against those who profit from their inventions without any disclosure for the benefit of the public.

The Congressional Record shows some of the same complaints that have always been thrown at the patent system by those who wish to weaken the "exclusive Right" to patent protection sanctioned by the Constitution. Complaints were made about the Campbell amendment that it would weaken the prior user "right." The right in question is the constitutional patent right, which the Campbell Amendment would help to protect. A valid patent serves the public by denying rights to the public for a short length of time, solely to give inventors an incentive to do their work. As stated by the U.S. Supreme Court,
By the Patent laws Congress has given the inventor opportunity to secure the material rewards for his invention for a limited time, on condition that he make full disclosure for the benefit of the public of the manner of making and using the invention. 326 U.S. 249, 255.

This legislation tears up this contract between Congress and the inventor by granting an exception for those who secure the material rewards for their inventions without any disclosure for the benefit of the public.

Legislative Suggestions

I respectfully request that the Senator consider the following legislative suggestions:

  • Sponsor an equivalent to the Campbell Amendment. This amendment would have simply prevented the prior user from expanding his use of the patented technology beyond what he was doing before the patent holder brought the technology to the public by filing a patent. The amendment was supported by a majority of Republican members, including most of the Arizona delegation, but was narrowly defeated in the House.

  • Rep. Campbell makes the case for his amendment more eloquently than I can, so I have enclosed his comments from the Congressional Record. Rep. Campbell is still very interested in this issue and his office has indicated that he will be happy to speak personally with the staff of any Senator considering a version of his amendment. Contact Suhail Kahn at (202) 225-2631.

  • Ensure that the "Effective and Serious Preparation" language is removed from the bill. This language would even further open the door for harassment of inventors. Infringers would be able to claim their development work, which does not always invalidate a patent under current law, as "prior commercial use" as long as they don't pack everything up and quit before the inventor's patent is actually filed. As an inventor, I hope to never see this language cited as law.
  • Consider including language present in the House bill as an amendment to the Senate bill which would explicitly place the burden of proof of the infringer. This might help to limit the harassment problem, especially if the language causes the courts to require the "clear and convincing evidence" standard for establishing prior commercial use.
  • Appendix: House Amendment 27, Rep. Campbell

    The original legislation without the Cambell language applied:

             `(1) DERIVATION- A person may not assert the defense under
                  this section if the subject matter on which the defense is
                  based was derived from the patentee or persons in privity with
                  the patentee.
            `(2) NOT A GENERAL LICENSE- The defense asserted by a person
                  under this section is not a general license under all claims of
                  the patent at issue, but extends only to the subject matter
                  claimed in the patent with respect to which the person can
                  assert a defense under this chapter, except that the defense
                  shall also extend to variations in the quantity or volume of
                  use of the claimed subject matter, and to improvements in the
                  claimed subject matter that do not infringe additional
                  specifically claimed subject matter of the patent.

           `(6) PERSONAL DEFENSE- The defense under this section may
                  only be asserted by the person who performed the acts necessary
                  to establish the defense and, except for any transfer to the
                  patent owner, the right to assert the defense shall not be
                  licensed or assigned or transferred to another person except in
                  connection with the good faith assignment or transfer of the
                  entire enterprise or line of business to which the defense

    Source: Ed Suominen, inventor and concerned citizen.
    This is a political opinion protected by the First Amendment, not legal advice.
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    Page last updated 1/12/98