USPTO to Conduct Studies of Prior User Rights and International Patent Protection for Small Businesses per America Invents Act

The United States Patent and Trademark Office (USPTO) released two Federal Register Notices on October 7, 2011, seeking written comments and announcing two public hearings for two studies the agency is required to conduct under the America Invents Act. Specifically, Congress is requiring the USPTO to study and report on the availability of prior user rights in foreign countries as well as options to aid small businesses and independent inventors in securing patent protection for their inventions. The USPTO reports for both studies are due in mid-January 2012.

“The objective of the written comments and hearings is to collect information from the public on the scope of the two studies,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “Public participation in both the Prior User Rights Study and the International Patent Protection Study is necessary to assist the agency in preparing for Congress the most informed and accurate report possible.”

Prior User Rights Study

USPTO will hold a public hearing for the Prior User Rights Study on October 25 from 8:30 to 11:30 am EST in the Madison Auditorium at its Alexandria, Virginia campus. Congress has identified targeted areas for study and the agency seeks input on several topics including: experiences relating to the use of prior user rights in foreign jurisdictions; the frequency or regularity with which individuals engage in business abroad and opinions as to why prior user rights are or are not needed in the particular jurisdiction(s); experiences in analyzing the effect of prior user rights on innovation rates in selected countries; and views as to whether there are any legal or constitutional issues with placing trade secret law in United States patent law. A full list of questions is available at the USPTO website.

International Protection Study

USPTO will also hold a first public hearing for the International Protection Study on October 27 from 1 to 4 pm EST in the Madison Auditorium at its Alexandria, Virginia campus. A second public hearing will be held at the University of Southern California, Gould School of Law in Los Angeles, California on November 1, 2011, from 9 am to noon PST. USPTO is interested in receiving testimony and/or written comments on several topics including: how important is international patent protection to small business; at what point in the growth of small companies does international patent protection become important; what challenges interfere with the growth and competitiveness of small companies if international patent protection is not sought early in the innovation process; and what specific role does international patent protection play in the successful internationalization strategies (such as franchising, exporting, or foreign-direct-investment) of small businesses and does this role differ by industry or sector. A full list of questions is available at the USPTO website.

Written comments for either study may be submitted until November 8, 2011. Further information about the studies may be found in the Federal Register Notices available at the USPTO’s America Invents Act webpage.