If the Shoe Fits—Keep It: Document Retention Polices to Maximize Prior User Rights as a Patent Infringement Defense at Home and Abroad


Originally published in BNA’s Patent, Trademark & Copyright Journal, 84 PTCJ 376, 06/29/2012.

The authors compare prior user rights provisions of the new America Invents Act with prior user rights laws of other major jurisdictions, and they provide guidance on optimizing retention of documents or data at home and abroad.

Most patent systems contain infringement defense provisions for innocent prior users of a later patented invention. The theory behind prior user rights is that someone secretly using a process or composition who either has no intention of patenting it or fails to win the first-to-file race should have some protection from an infringement suit by the eventual patentee. How far these rights extend varies greatly on a country-by-country basis.

In the United States, prior user rights have always been something of an enigma. They have existed for commercially used methods and activities at nonprofit research entities such as universities. These rights, however, were severely limited in the commercial sense to methods of doing or conducting business only (i.e., a business method patent), with activities in the nonprofit area being further limited to uses for which the public was the intended beneficiary. As a result of these limitations, and the defense’s fairly recent addition to U.S. patent law (1999), judicial interpretation of prior user rights is limited.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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