The recently enacted Leahy-Smith America Invents Act expands the “prior commercial use” defense to patent infringement to benefit companies that choose to keep key technologies used in manufacturing and other commercial processes as trade secrets instead of protecting them with patents. While the defense cannot be used to invalidate a patent, it prevents a new patentee from interfering in the continued practice of a technology developed well before the patentee invented it. Previously, the “commercial use” defense could only be asserted against business method patents.
Effective Sept. 16, 2011, any patent issued on or after that date is subject to the defense that an alleged infringer "commercially used” the subject matter of the patent in the United States more than one year prior to the earlier of the filing date of the patent or the date the claimed invention was publicly disclosed. The expanded defense covers all patent-eligible subject matter used in a manufacturing or other commercial process. The Act expands the definition of “commercial use” to include: (i) premarketing regulatory review during which the safety or efficacy of the subject matter is established, and (ii) use by a nonprofit entity for which the public is the intended beneficiary. Technology that is commercially used, abandoned, and then used again cannot claim the benefit of the earlier use.