[Federal Register Volume 76, Number 195 (Friday, October 7, 2011)]
[Notices]
[Pages 62388-62389]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2011-26154]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No.: PTO-P-2011-0060]


Notice of Public Hearing and Request for Comments on the Study of 
Prior User Rights

    The United States Patent and Trademark Office (USPTO) is interested 
in gathering information on patent prior user rights for purposes of 
preparing a report on the subject as required by the America Invents 
Act. In particular, the USPTO seeks information about the following as 
specified in the America Invents Act: (1) Comparison(s) between the 
patent laws of the United States and the laws of other industrialized 
countries; (2) the effect of prior user rights on innovation rates; (3) 
the correlation, if any, between prior user rights and start-up 
enterprises as well as the ability to attract venture capital to start 
new companies; (4) the effect of prior user rights, if any, on small 
businesses, universities, and individual inventors; (5) legal and 
constitutional issues with placing trade secret law in patent law; and 
(6) whether or not the change to a first-to-file patent system creates 
any particular need for prior user rights. To assist in gathering this 
information, the USPTO is holding a public hearing at which interested 
members of the public are invited to testify on the issues outlined 
above and in the supplementary information section of this notice. In 
addition, members of the public may submit written comments.
    Public Hearing: A public hearing will be held on Tuesday, October 
25, 2011, beginning at 8:30 a.m. Eastern Daylight Time (EDT) and ending 
at 11:30 a.m. EDT. The public hearing will be held at the USPTO, 
Madison Auditorium, Concourse Level, Madison Building, 600 Dulany 
Street, Alexandria, Virginia 22314.
    Those wishing to present oral testimony at the hearing must request 
an opportunity to do so in writing by e-mail to IP.Policy@uspto.gov no 
later than October 18, 2011. Requests to testify at the hearing must 
indicate the following information: (1) The name of the person desiring 
to testify; (2) the person's contact information (telephone number and 
electronic mail address); and (3) the organization(s) the person 
represents, if any; and (4) a preliminary written copy of their 
testimony. Based on the requests received, an agenda of scheduled 
testimony will be sent to testifying respondents, and posted on the 
USPTO Internet Web site (address: http://www.uspto.gov/americainventsact).
    Speakers selected to provide testimony at the hearing should 
provide a final written copy of their testimony for inclusion in the 
record of the proceedings no later than October 21, 2011.
    The USPTO plans to make the public hearing available via webcast. 
Webcast information will be available on the USPTO's Internet Web site 
(address: http://www.uspto.gov/americainventsact) before the public 
hearing.

[[Page 62389]]

    Written Comments: Written comments should be sent by e-mail to 
IP.Policy@uspto.gov. Comments may also be submitted by postal mail 
addressed to: Mail Stop OPEA, P.O. Box 1450, Alexandria, VA 22313-1450, 
ATTN: Elizabeth Shaw. Although comments may be submitted by postal 
mail, the USPTO prefers to receive comments via e-mail. The deadline 
for receipt of written comments for consideration by the USPTO is 
November 8, 2011. Written comments should be identified in the subject 
line of the e-mail or postal mailing as ``Prior User Rights.''
    Because comments will be made available for public inspection, 
information that is not desired to be made public, such as an address 
or phone number, should not be included in the comments.
    Availability of Hearing Transcript and Written Comments: A 
transcript of the hearing and the written comments will be available 
for public inspection at the Office of Policy and External Affairs in 
the Executive Library located in the Madison West Building, Tenth 
Floor, 600 Dulany Street, Alexandria, Virginia 22314. Contact: 
Elizabeth Shaw at elizabeth.shaw2@uspto.gov or 571-272-8494. In 
addition, the hearing transcript and the comments from the public will 
also be available via the USPTO Internet Web site (address: http://www.uspto.gov/americainventsact).
    Contact: Mary Critharis, Office of Policy and External Affairs, by 
phone 571-272-9300; by e-mail at mary.critharis@uspto.gov; or by postal 
mail addressed to: Mail Stop OPEA, United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, ATTN: Mary 
Critharis; or Charles Eloshway, Office of Policy and External Affairs, 
by phone at 571-272-9300; by e-mail at charles.eloshway@uspto.gov; or 
by postal mail addressed to: Mail Stop OPEA, United States Patent and 
Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, ATTN: 
Charles Eloshway.
    The America Invents Act, Section 3, calls for the Director of the 
USPTO to report to the Committee on the Judiciary of the Senate and the 
Committee on the Judiciary of the House of Representatives regarding 
findings and recommendations on the operations of prior user rights in 
selected countries in the industrialized world no later than the end of 
the four-month period beginning on the date of enactment of the Act 
(i.e., by January 16, 2012). In preparing the report, the USPTO is 
required to consult with the United States Trade Representative, the 
Secretary of State, and the Attorney General. The Act also specifically 
identifies items for USPTO consideration as part of the report.
    Issues for Testimony and/or Written Comment: Interested members of 
the public are invited to submit testimony and/or written comments on 
issues that they believe relevant to operation of prior user rights. 
The topics and questions listed below reflect the information that the 
USPTO is required to study per the prior user rights study provision of 
the America Invents Act. The tenor of the following questions should 
not be taken as an indication that the USPTO has taken a position or is 
predisposed to any particular views.
    1a. Please share your experiences relating to the use of prior user 
rights in foreign jurisdictions including, but not limited to, members 
of the European Union and Japan, Canada, and Australia.
    In doing so, please include the following:
    (a) An identification of the foreign jurisdiction(s);
    (b) The frequency or regularity with which prior user rights were 
utilized or asserted in the particular jurisdiction(s);
    (c) Whether prior user rights were asserted as a defense by you or 
your organization;
    (d) Whether another entity alleged prior user rights as a defense 
to a patent infringement claim asserted by you or your organization;
    (e) The technology or industry involved;
    (f) The operation of the prior user rights regime in the particular 
jurisdiction(s); and
    (g) The advantages/disadvantages of the prior user rights regime in 
the particular jurisdiction(s).
    1b. If you do not have any experiences relating to the use of prior 
user rights in foreign jurisdictions, please identify the following:
    (a) The frequency or regularity with which you engage in business 
abroad including, but limited to, the following foreign economies: 
members of the European Union and Japan, Canada, and Australia;
    (b) Your opinion as to why you believe prior user rights are or are 
not needed in the particular jurisdiction(s).
    2. Please share your experiences in analyzing the effect, if any, 
of prior user rights on innovation rates in selected countries 
including, but not limited to, members of the European Union and Japan, 
Canada, and Australia. Please include empirical and anecdotal data, as 
well as opinions as to how this analysis may be conducted.
    3. Please share your experiences in analyzing the correlation, if 
any, between prior user rights and start-up enterprises and the ability 
to attract venture capital to start new companies. Please include 
empirical and anecdotal data, as well as opinions as to how this 
analysis may be conducted.
    4. Please share your experiences in analyzing the effect, if any, 
of prior user rights on small businesses, universities, and individual 
inventors. Please include empirical and anecdotal data, as well as 
opinions as to how this analysis may be conducted.
    5. Please share your views, along with any corresponding analysis, 
as to whether there are any legal or constitutional issues with placing 
trade secret law in United States patent law.
    6. Please share your views, along with any corresponding analysis, 
as to whether the change to a first-to-file patent system creates any 
particular need for prior user rights in the United States.

    Dated: October 4, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-26154 Filed 10-6-11; 8:45 am]
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