Don't Let Your Patent Be A Guinea Pig
By: JOHN F. DOLAN & ADONIS A. NEBLETT
Spring 2002
When is an experiment not an experiment? The answer can be extremely important for a company trying to protect a new product or process under U.S. patent laws. Recent cases decided by the Court of Appeals for the Federal Circuit have focused on the question of when the public use or sale of a product for experimental purposes may jeopardize patent protection.
Experimental Use Exception
United States Code Title 35, section 102 provides that a person is entitled to a patent unless (among other things), "the invention was in public use or on sale in this country more than one year prior to the date of the application for patent in the United States." An "experimental use exception" can be used to avoid the application of Section 102 if the inventor can show that the sale or use was primarily for experimental purposes. Otherwise, any public use or sale more than one year before the patent application is filed will prevent issuance of the patent (or will invalidate the patent if it issued without the Patent and Trademark Office knowing of the use/sale).
Obviously, the best scenario is one where there is no need to rely on the experimental use exception, as by filing an application well within one year of any such "public" use or "onsale" activity. However, products must often be tested and refined before the underlying invention is ready for patenting. Products that require testing to be done in the open (a new road surface, for example), or by a third-party (a new design for a tractor-trailer rig, for example), can often raise the most concerns.
The court decisions that have set the standards for determining whether a particular sale or use qualifies for the experimental use exception make it clear that an inventor's subjective intent alone will not suffice.
Experimental Do's
There are a number of things an inventor or company can do to make it more likely that an otherwise potentially invalidating sale or use will fall within the experimental use exception. These include:
- Exercise control and ongoing supervision over the experimental use.
- Maintain records of the experimentation or require the third party to do so on the inventor/company's behalf.
- Document the experimental nature of third party experiments in a contract, possibly a confidential disclosure agreement.
- Recover and/or dispose of tested prototypes.
- Make sure the customer is aware of the experimentation, and that something, such as reduction in price, makes this clear.
Commercial Don'ts
Likewise, there are a number of activities that should be avoided (i.e. activities that would suggest that the use or sale is primarily for commercial purposes). They include:
- Preparation of various contemporaneous commercial documents, e.g. orders, invoices, receipts, delivery schedules price lists and price quotations.
- Demonstration of models or prototypes to prospective customers, even though no orders are actually obtained.
- Use of an invention where an admission fee is charged.
- Advertising or market testing to determine product acceptance or market interest.
- Testing that is merely for minor 'tune up' purposes, as compared to true experimentations.
Primary Purpose Is Key
The courts have made it clear that the key factor in determining if the exception applies is whether the primary purpose for the activity was commercial or experimental. If a sale or public use represents a bona fide effort to perfect the invention or ascertain whether it will work for its intended purpose, then it will come within the exception assuming such intent is well documented.
Failure to take the steps necessary can mean denial of your patent application, or worse, a ruling that your patent is invalid when you attempt to enforce it against potential infringers. A party charged with infringement will do everything possible to prove that what you considered innocent experimentation was, in fact, impermissible prior sale or public use. Don't let your patent be a guinea pig. Consult with knowledgeable patent counsel before beginning any testing, and certainly before any testing that involves a "sale" of the product to third party.