Here's an interesting opinion about prior use rights against infringement,
thanks to one of the readers.

Greg Aharonian
Internet Patent News Service
(for subscription info, send 'help' to   patents@world.std.com)
(for prior art search services info, send 'prior' to patents@world.std.com)

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Greg Aharonian said, about S. Bill 2272 - Prior use rights against infringement

> Why a separate bill is needed for such rights is puzzling,
> since anyone sued for infringement can prove such prior use in
> public can therefore undermine the validity of the patent.

The need for this kind of reform was first seen in the US in 1939.
The Supreme Court in the 'Shimadzu' case regretted that the US
patent law sometimes treats an inventor worse (as regards his own
right to use an invention) if he seeks no patent and is 'willing to
dedicate his invention to the public', than it treats him if he
'had promoted his own interest by securing a patent' to reserve the
technique for himself (307 US 5;  41 USPQ 155).  The Shimadzu case
involved a foreign inventor, and this was the stimulus that
triggered the passage of the much-criticised 'Boykin Act', now 35 USC 104.
But a somewhat similar effect can arise with a purely domestic US scenario.

Under current conditions, suppose that an independent innovator
markets an inventive product.  He seeks no patent.  He is content
to release the invention to the public. But this scenario leaves
him at risk.  He can be careful and in good faith about third
party rights.  He can make patent searches and find them clear.
It can even be, that no current unpublished patent application
exists, that would affect him.  Yet still the prior invention of
another can be validly filed later as a patent application, up to
a year after the innovator starts his public sales, and it can then
mature into a patent.  Such a patent could totally block the innovator.

Even if the third party invention was of doubtfully prior date, a
patent is presumed valid, and the innovator, if sued, must prove
the third-party patent invalid if he wants to be sure of avoiding
injunction against continuing his trade.  A heavy and costly burden
of proof is on the innovator.

If the innovator had not dedicated the invention to the public,
but filed his own patent application at about the same time as he
put the invention on sale, he has a substantial extra protection.
The patent application of the other inventor, who files later,
will be the junior of two applications, prima facie subject to 35
USC 102(e) in due course and/or to an interference, in which the
later to file is the junior party.  Burden of proof of priority
initially falls in this scenario on the junior party.  Here the
innovator is more likely to win out, the other side has to make the
initial running and carry the initial burden of proof. A patent
application does not represent total protection for an innovator
who sets out innocently and carefully on to the market. But it is
better than his position if he does not ask a patent for himself at all.

Bill S.2272 would help the innovator who does not seek a patent
for himself, by relieving him of the need to do the difficult
thing and prove invalidity of a later-filed third-party patent.
Instead it would be enough for him to do a simpler thing and
prove his own activities before the patent was first filed, and
claim a personal right of use that covers those proved
activities.  The personal activities would not even need to
antedate the patent owner's conception or reduction to pactice,
as long as they antedate first or priority filing.  They might
leave the validity of the patent otherwise intact, but that need
be of no further interest to the accused innovator, who would be
able to leave any dispute to the patent owner and the rest of the world.

Quite likely, such claims of personal rights would be easier to
prove and to settle out of court than a charge of patent
invalidity.  In that way, a fair result would become more easily
accessible to the small-scale innovator.  A concession of personal
use rights would probably be more easily acceptable to most patent
owners in negotiation than to handle an all-or-nothing assault on
their patent rights.

So Senator Deconcini's personal-possession bill 2272 seems useful
and necessary for justice, even if it will be used only seldom.
It would go some way to remove that defect in the law which, in
type, was already pointed out by the Supreme Court back in 1939,
and it represents the kind of solution that it would have been
more just to adopt in 1946 instead of the Boykin Act (S.104) which
went off on the invidious side issue of anti-foreign discrimination
instead, which is now officially disapproved under NAFTA and GATT/TRIPS.

For what it's worth, the English statute of monopolies of 1623-4
long ago made it a condition that patents to 'true and first inventors'
should only be valid if made for inventions 'which others at the Time
of making such Letters Patents and Grants shall not use', i.e. only for
inventions not already in use.  The purpose was similar, to prevent the
injustice of having a new patent strangle a trade that already exists.

Senator Deconcini's bill 2272 seems in keeping with this original spirit of
the patent system, even though it does not go as far as the 1623-4 legislation!

Terence C Stancliffe           18 Ryfold Road  Wimbledon
tpat@sound.demon.co.uk         London SW19 8BZ
tel/fax (+44) 81-947 2749