IP: Certain trade secrets are now exempt from patent infringement

A new law expands “prior commercial use” defense.

The recently enacted Leahy-Smith America Invents Act expands the “prior commercial use” defense to patent infringement in order to benefit companies choosing to keep key technologies used in manufacturing and other commercial processes as trade secrets instead of protecting them with patents.

Although the defense cannot be used to invalidate a patent, it can prevent 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.


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Eric Lobenfeld

Eric Lobenfeld is the co-head of the U.S. Intellectual Property Practice of Hogan Lovells. He has more than 35 years of experience litigating cases involving...

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