EXPERIMENTAL USE AND PRESERVING PATENT RIGHTS
EMPOWERING INDIVIDUALS TO MAKE THE BEST DECISIONS WHEN CONSIDERING THEIR INTELLECTUAL PROPERTY RIGHTS
UNDERSTANDING THE ON SALE BAR IN U.S. PATENT LAW
A patent shall not issue if the invention was "on sale in this country, more than one year prior to the date of the application for patent in the United States." 35 U.S.C. § 102(b). Known as the " On Sale Bar ," one year after the first offer for sale, the inventor's own invention becomes prior art against their application. A sale for the purpose of technical experiment, however, may not activate the On Sale Bar. This is referred to as the "experimental use" exception to the On Sale Bar. The experimental use exception similarly applies to any public use of the invention that might otherwise become blocking prior art.
WHAT QUALIFIES AS EXPERIMENTAL USE?
Experimental use requires that the sale or use of the invention is designed to (1) test claimed features of the invention, or (2) determine whether an invention will work for its intended purpose. The experimental use must be for the purpose of filing a patent application. Market testing is not a qualifying experimental use.
EXPERIMENTAL USE DURING PATENT PROSECUTION
The experimental use exception may be asserted during prosecution of the patent. The best practice is to disclose the prior sale or use of the invention and then to present evidence to the examiner establishing the experimental use.
During litigation, the accused infringer will first carry the burden of proving the sale or public use of the invention before the bar date by clear and convincing evidence. The patent holder can then seek to establish the applicability of the experimental use exception.
EXPERIMENTAL USE DURING LITIGATION
KEY FACTORS IN LITIGATION
During litigation, courts consider 13 factors in assessing whether a transaction was a commercial sale or instead for the purpose of an experimental use. The same factors govern the application of the experimental use exception to the public use bar. Several important factors are: (1) whether payment was made, (2) whether there was a secrecy obligation, (3) the degree of commercial exploitation during testing, and (4) whether the invention reasonably requires evaluation under actual conditions of use.
ADDITIONAL EXPERIMENTAL USE CRITERIA
Additional factors are: (5) the necessity for public testing, (6) the amount of control over the experiment retained by the inventor, (7) the nature of the invention, (8) the length of the test period, (9) whether records of the experiment were kept, (10) who conducted the experiment, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the
invention during testing, and (13) the nature of contacts made with potential customers.
IMPORTANCE OF CUSTOMER AWARENESS
It is critical that the customer is aware of the testing in the context of a sale. Otherwise, the transaction will normally be viewed as a commercial sale.
WHAT QUALIFIES AS EXPERIMENTAL USE?
If you are considering patent protection, need to involve third parties in your experimentation, and may be unable to file your application within one year, it is important to have a written agreement noting the intent of the parties. Often such agreements take the form of a nondisclosure, confidentiality, or beta test agreement.
Any such agreement—and the parties' performance under that agreement—should address the 13 factors courts consider in evaluating experimental use.
CONTRIBUTORS
Emily Ferriter Russo is an associate at Day Pitney and assists clients in intellectual property litigation (including patents, trade secrets, copyrights, and trademarks) and patent prosecution matters. Emily started Patently Enabled , because she believes in empowering individuals to make the best decisions when considering their intellectual property rights. eferriterrusso@daypitney.com
Our Intellectual Property and Technology Group Every day, Day Pitney intellectual property attorneys help clients acquire, secure, transfer, defend, enforce and understand their intellectual property rights. We prosecute patents and trademarks; negotiate and draft agreements for the license and sale of intellectual property rights; litigate intellectual property disputes in federal and state courts around the country, including before the International Trade Commission (ITC) and the U.S. Patent and Trademark Office; and advise clients on the entire array of evolving intellectual property issues modern businesses confront, including workplace policies relating to Internet access and use, social media, and privacy.
George Chaclas is a partner at Day Pitney and the chair of its Patent Prosecution and Client Counseling Group. gchaclas@daypitney.com
Thank you for considering this post, which is a general summary meant to reduce complex issues for general practitioners and inventors. It is not intended to be exhaustive by any means. For any comments, questions, or other inquiries, please contact registered patent attorneys Emily Ferriter Russo or George Chaclas at Day Pitney LLP. This communication is provided for educational and informational purposes only and is not intended and should not be construed as legal advice, nor does its distribution or receipt create an attorney-client relationship. This communication may be deemed advertising under applicable state laws. Prior results do not guarantee a similar outcome. If you have any questions regarding this communication, please contact Day Pitney LLP at 605 Third Avenue, 31st Floor, New York, NY 10158, (212) 297 5800.
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