Leveraging the AIA's Expanded Prior Use Defense for Patent Infringement Claims

Recording of a 90-minute premium CLE webinar with Q&A

Conducted on Thursday, November 21, 2013

Recorded event now available

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Course Materials

This CLE course will examine the expanded prior commercial use defense, its requirements and limitations. The panel will discuss the strategic considerations for patents issued both before and after Sept. 16, 2011, and offer best practices for using the defense.


The America Invents Act (AIA) expands the prior commercial use defense, providing protection for innocent infringement under certain circumstances. The defense may arise when a company is surprised by liability claims for patent infringement simply for selling its long-standing products.

The expanded defense applies only to patents issued after Sept. 16  15, 2011. An alleged patent infringer can avoid liability by showing with clear and convincing evidence that it meets the requirements of the defense. However, the defense in no way acts as a license to the patent.

Patent counsel must learn the nuances and strategies for effectively establishing and using the expanded prior commercial use defense.
Further, counsel may also have to address potential infringement claims for patents issued before Sept. 16, 2011, when the defense existed, but not in its more expansive AIA form.

Listen as our authoritative panel of patent attorneys examines the prior commercial use defense before and after the AIA. The panel will discuss strategic considerations for pursuing or defending infringement of patents issued before and after Sept. 16, 2011. The panel will outline their best practices for making the most of the defense.



  1. Prior commercial use defense pre-AIA
  2. Prior commercial use post-AIA
    1. How to qualify
    2. Limitations and exceptions
    3. Third parties
  3. Strategic considerations for patents issued before Sept. 16, 2011
  4. Strategic considerations for patents issued after Sept. 16, 2011
  5. Best practices


The panel will review these and other key questions:

  • How does the AIA expand the prior commercial use defense?
  • What are the limitations and exceptions to application of the prior user rights defense to patent infringement?
  • What are the strategic considerations for counsel in determining whether to use the commercial prior use defense?

Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.


Irving, Thomas
Thomas L. Irving

Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Colleen Kramer
Colleen Kramer
Associate General Counsel - Intellectual Property
Mars Global Chocolate

Ms. Kramer provides intellectual property counsel for Mars’ global chocolate business.  After working in...  |  Read More

Amy J. Hoffman
Amy J. Hoffman
Intellectual Property Counsel

Ms. Hoffman has over 20 years of experience in-house and in private practice. Her patent prosecution experience...  |  Read More

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