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The 'New' Prior User Rights Defense Under The AIA: What's To Come For The Clean Technology Industry?

By Bryan J. Vogel1 and Ryan Schultz2

President Obama signed into law the American Invents Act (“AIA”) on September 16, 2011. This has been touted as the most substantial overhaul of U.S. patent law in generations. In an apparent effort to enhance protection available for non-patented inventions and trade secrets, the AIA expanded the prior user rights defense. Generally, the “new” prior user rights defense is a defense to infringement based on one’s prior use of the claimed invention before the patent holder filed for patent protection.

This defense may have a particular impact on the clean technology industry. Inventions in the clean technology space often have high capital requirements, with substantial economic, technical and regulatory risks. Many clean technology companies forego patent protection and instead maintain an invention as trade secret to avoid their invention falling into the wrong hands. Consistent with this, the clean technology industry was a main proponent of expanding the prior user rights defense.3

In addition, over the past few years, there has been a significant increase in the number of patent applications expedited through the patent system under the U.S. Patent and Tradema...

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