The U.S. Patent and Trademark Office on Friday released a “Report on the Prior User Rights Defense” provisions of the Leahy-Smith America Invents Act. This Report was prepared as part of a mandate by Congress in §§ 3(m) and 31 of the Act that the Office perform studies relating to the effects of the Prior User Rights Defense (PURD) of the Act
The Report was based on testimony at an October 25, 2011 hearing and written comments; testimony was provided by Gary Griswold (on his own behalf; Mr. Griswold is a long time supporter of these provisions, see, Gary L. Griswold & F. Andrew Ubel, Prior User Right—A Necessary Part of a First-to-File System, 26 J. MARSHALL L. REV. 567, 572 (1993)); Alan Kasper (from the American Intellectual Property Law Association); Thomas Kurkowski (on his own behalf); Dan Lang (Cisco) and MaCharri Vorndran-Jones (American Bar Association-IP Group). In addition, Intellectual Property Organizations (including the AIPLA, ABA-IP Group, Coalition for Patent Fairness, Computer and Communications Industry Association, Institute of Patent and Trade Mark Attorneys of Australia, International Federation of Intellectual Property Attorneys (FICPI), Japan Intellectual Property Association Innovation Alliance, Japan Patent Attorneys Association, and New Zealand Institute of Patent Attorneys), Academic and Research Institutions (including the Wisconsin Alumni Research Foundation, Berkeley Center for Law and Technology and Greentech Industries, Regents of University of California Board and Higher Education Associations); companies (including Belz Consulting, Cisco, Google and Verizon (Joint Comments), Hospira, Inc., Lex Machina, Microsoft Corp., Space Exploration Technologies Corp., and Telstra Corporation) and individuals (including Stephan Freischem, Asamichi Kato, Thomas E. Kelley, Thomas Kowalski, Paul Morgan, Tony Tether, and Neil Thomas) provided written comments. Conspicuously absent from this list are biotechnology or innovative pharmaceutical companies.