The AIA provides a new defense effectively allowing an accused infringer to maintain trade secrets as to its products and methods of manufacture while also providing the accused infringer a defense due to its relatively long running use of the more recently patented technology.

An accused infringer will have a defense against infringement if it can prove by clear and convincing evidence that it in good faith made commercial use of the accused device or the method at least one year before either:  i)  the effective filing date of the patent; or ii)  the inventor’s public disclosure of the invention.

Premarketing regulatory review of products and nonprofit lab uses are deemed “commercial” uses under the statute.  Notably this defense is generally not available against patents owned by colleges and universities.  The defense is also only applicable to patents issued on or after the enactment of the AIA.  Defendants should use caution in asserting the defense as if its assertion is not reasonable, the statute states that attorneys fees may be awarded to the plaintiff.