Guest Blog: Prior-User Intellectual Property Protections Protect Patients

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Today's guest blogger is Brian Barrett, Associate General Patent Counsel here at Lilly.

I look forward to being on a panel this afternoon at the BIO International Convention to discuss the Prior Commercial User Defense (PCUD) to patent infringement that was recently enacted as part of the America Invents Act (AIA), and to discuss its benefits over pre-AIA law and how it could be modified to further encourage U.S. manufacturing and job creation.

I'll be providing the larger biopharmaceutical company perspective while other views will be provided by Mary Ann Dillahunty, Vice President, IP for Oncolytics Biotech; Jason Duncan, Associate General Counsel of EMD Serono; and Andrew Torrance, Visiting Professor at MIT Sloan School of Management. Tom Kelly, Consulting Patent Counsel of Monsanto and Mark Halligan, Partner at Nixon Peabody, are moderators.

A PCUD is available in many countries and provides a defense to patent infringement that applies in the limited situation when subject matter is patented by a subsequent inventor who enforces the patent against a person that previously commercially used the invention, but did not file a prior patent application or otherwise publicly disclose the invention. Without a PCUD, a U.S. manufacturer who is making a product publicly available could be subject to patent infringement, and even prevented from continuing to manufacture the product, if a subsequent inventor patents subject matter that is being used to make the product.

BIO Guest Blogger Badge The U.S. patent office studied the issue and found the PCUD to be "pro-manufacturing and pro-jobs, as it rewards businesses that put new technology promptly into commercial use ...," and further stated "there is a strong preference that United States businesses be afforded the same advantages in terms of prior use protections in the United States that their competitors enjoy abroad."

You can find more information about the panel here.