Tech Transfer Central
Archer Norris

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

Published by Strafford Publications, Inc.
Format: On-Demand or DVD
Originally presented: November 21, 2013

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Price: $297
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Please note: You will be taken to the Strafford website to complete your order.

This CLE webinar 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. Prior to the AIA, a company could be surprised by liability claims for patent infringement—simply for selling its products.

The new defense applies only to patents issued after Sept. 16, 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 using the prior commercial use defense. Further, counsel may also have to address potential infringement claims for patents issued before Sept. 16, 2011, when the expanded defense did not apply.

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.


  • Prior commercial use defense pre-AIA
  • Prior commercial use post-AIA
    • How to qualify
    • Limitations and exceptions
    • Third parties
  • Strategic considerations for patents issued before Sept. 16, 2011
  • Strategic considerations for patents issued after Sept. 16, 2011
  • 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.


Thomas L. IrvingPartner
Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.
Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution, reissue and reexamination, patent interferences, and counseling, including prelitigation, Orange Book listings of patents covering FDA-approved drugs, and infringement and validity analysis in the chemical fields, as well as litigation. He has served as lead counsel in many patent interferences.

Colleen Kramer, Associate General Counsel – Intellectual Property
Mars Global Chocolate, Hackettstown, N.J.
Ms. Kramer provides intellectual property counsel for Mars’ global chocolate business.  After working in the food industry as a product developer for 20 years, she has practiced IP law as in-house counsel for the past 8 years.  Her practice includes patent portfolio management, patent prosecution, patent opinions, and trade secret counseling.

Amy J. Hoffman, Intellectual Property Counsel
Ecolab, St. Paul, Minn.
Ms. Hoffman has over 20 years of experience in-house and in private practice. Her patent prosecution experience includes working with inventors from around the world on pre-drafting strategy through appeals before the Board of Patent Appeals and Interferences. She has created and implemented global strategies for protecting intellectual property assets of corporations. Her work also includes transactions involving intellectual property.

Register Today!

Price covers an unlimited number of staff at your office location. Can’t participate in the live seminar? A CD of the full event proceedings, including Q&A and PDF files of all handouts, will be available 10 days after the seminar.

Continuing Legal Education

Continuing Legal Education credits are granted for an additional $65 per person. Please refer to the options on the order page to take advantage of these credits.

order button
Please note: You will be taken to the Strafford
website to complete your order.