The recently signed Leahy-Smith Patent Reform Act, better known as
the America Invents Act, significantly expands the defense to patent
infringement based on prior commercial use and applies to any patent
issued on or after September 16, 2011.
that defense was limited to actions involving business method patents.
Now, it includes prior commercial use of any process or machine,
manufacture, or composition of matter used in a manufacturing or other
commercial process. To rely on this defense, an accused infringer must
have, acting in good faith, commercially used the subject matter in the
United States. The use must have been either in connection with an
internal (inter-company) commercial use or a bona fide sale or other
commercial transfer. Finally, the commercial use must have occurred at
least one year before the earlier of the effective filing date of the
asserted invention or a public disclosure of the asserted invention.
The defense must be proved by clear and convincing evidence.
the America Invents Act also expands the scope of those eligible to
assert the defense to include an entity that controls, is controlled by,
or is under common control with a person that performed or directed the
performance of the commercial use.
defense is not absolute. It is not available against patents owned by
universities or technical transfer organizations whose primary purpose
is to facilitate commercialization of technologies developed by
the America Invents Act provides an important potential safe harbor
from patent infringement for commercial uses occurring more than one
year prior to the filing date of or public disclosure relating to the
asserted invention.© 2011 McNees Wallace & Nurick LLC
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