The America Invents Act significantly expands the “prior commercial use” defense for patent infringement cases. The defense allows a defendant to avoid patent infringement by proving that the defendant used the patented subject matter at least one year before the earlier of a) the effective filing date of the patent-in-suit or b) the date the invention was disclosed to the public as envisioned under the new Section 102(b). The defense previously only applied to business methods, but now includes the entire gamut of patentable subject matter.
This defense is particularly pertinent to companies that prefer to keep their inventions as trade secrets rather than make a public disclosure in a patent application. But to take advantage of the defense, a company must routinely document its products and processes regardless of whether the company intends to disclose that documentation to the public. Without such evidence, a defendant will be hard-pressed to prove use of the patented invention by clear and convincing evidence.
For any company, whether a technology company or not, it is important to properly document internal processes. This will serve a two-fold purpose of 1) helping the company identify and protect the processes that are most important to the company, and 2) provide evidence of prior use in the event the company is sued for infringing a patent covering one of its internal processes. If you have never done this, you should consult with your patent attorney for advice regarding best practices in documenting internal processes.
Vincent Allen is a shareholder at Carstens & Cahoon, LLP. He focuses on the litigation of intellectual property disputes and the prosecution of patent and trademark applications.
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