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In an article published November 7, 2012, Buchanan Ingersoll & Rooney Intellectual Property Associate Ralph G. Fischer detailed best practices for the new “commercial use defense” to patent infringement, set forth in the America Invents Act.

“The commercial use defense is available if it can be shown that an accused infringer has secretly utilized the claimed invention at least one year before” either the effective filing date of the claimed invention or the first publication date to which priority is awarded for the claimed invention, the article explains.

Read the full article – “Commercial Use Defense’s Effect on Patent and M&A Strategies,” (The Legal Intelligencer, November 7, 2012).

Accordingly, “documentation policies should be revised to help ensure that important trade secrets for a product line can take advantage of this new defense,” Fischer said.

Fischer also recommends “due diligence checklists for mergers and acquisitions…be updated to ensure that important information related to this new defense be obtained and evaluated.”

“[E] arly assessments of such information can impact the negotiation strategy and valuation of the acquisition target,” he concluded.