The following article appears in the journal JOM,
46 (8) (1994), p. 78.

JOM is a publication of The Minerals, Metals & Materials Society

Experimental Use as a Potential Bar to Patentability in the U.S.

George K. Stacey

There are a number of activities that, by statute, prevent an inventor from obtaining a valid U.S. patent on an invention. Two of the most common statutory bars to patentability are the "on-sale" bar and the "public use" bar. Section 102(b) of the patent statute provides that a patent may be obtained unless "the invention was . . . in public use or on sale in this country, more than one year prior to the date for application for patent in the United States." Public use may not mean commercial use, but commercial use is typically considered public use. An invention is considered on sale if it is sold or offered for sale.

However, the doctrine of experimental use allows an inventor, or others cooperating with the inventor, to engage in activities that would otherwise fall under the public use or on-sale bars, provided that the use or sale is incidental to experimentation. By showing that the activity falls within the limits of experimental use, it is possible to refute a charge that the activity in question rendered the invention unpatentable.

The experimental use doctrine has been developed by the courts and is not expressly set forth in the statute. As such, there is no clear definition of what constitutes experimental use. Generally, the purpose or intent of the inventor must be determined. If the purpose was to perfect the invention or verify its operability, then the use was experimental. The inventor can even benefit financially from the use or sale provided that the benefit is incidental to the experimental purpose. However, activities designed to gauge consumer demand for the invention (e.g., market testing) are not considered experimental use.

In order to determine whether a use or sale is for experimental purposes, it is necessary to consider the "totality of the circumstances" surrounding the activity. The courts have enumerated several factors that should be considered when making this determination. These factors include the nature of the invention, the length of time over which testing occurred, the complexity of the invention, the level of supervision or control maintained by the inventor over the tests, obligations or limitations placed on users during experimentation, whether feedback was received by the inventor, the environment for which the invention is intended, and the testing environment. Since experimental use can occur in many scenarios, one must consider all circumstances relating to use to determine if the purpose was experimental.

In 1877, for example, the U.S. Supreme Court held that the testing of a paving material on a publicly traveled road constituted experimental use. The court concluded that the nature of the invention required that it be tested in a relatively public place over a substantial period of time. In addition, the testing was performed under the supervision, control, and regular inspection of the inventor.

Situations under which experimental use may occur vary greatly. At one extreme, businesses with established research and development departments are likely to conduct tests under strict controls, with the results being carefully documented. Under such conditions, it is a relatively simple matter to distinguish experimental from public uses.

At the other extreme, many individual inventors test their inventions very informally. For example, friends and relatives may be asked to "try out the invention to see if it works." In such cases, the test results may be oral instead of written. Nevertheless, since it is not necessary for an inventor to set up a formal testing program and since the inventor's purpose was to establish the workability of the invention, this procedure would fall under experimental use. The key is to determine if the activity was intended by the inventor to perfect or verify the operability of the invention. If so, the use is experimental.

Another factor that may help determine experimental use is the number of units tested. A relatively small number of units may indicate experimental purposes, particularly if the units tested were prototypes. On the other hand, a large number of units could suggest that the use was for market testing or other commercial purpose, particularly if the tests encompassed a wide geographic area.

When an invention is sold or offered for sale, the guidelines for determining experimental purposes are similar to those involving public use. The inventor's purpose in making the sale must be determined, and the sale must be made in order for the inventor to perfect or verify the operability of the invention. A sale for the buyer to "try out" the invention and see if he or she is interested in making further purchases would not constitute a sale for experimental purposes. Also, if a there was a definite sale or offer to sell the invention and the buyer knew exactly what was being purchased or offered, it would be difficult to prove that the sale was for experimental purposes. However, offering or selling a concept for an invention, where it can be shown that the price is directly related to the cost of providing the invention to the buyer in a condition suitable for testing its operability (i.e., less than the expected regular selling price), could be considered experimental use.

Generally, it is more difficult to prove that sales or offers for sale are for experimental purposes than it is to prove that uses are for experimental purposes.

Regardless of how tests are performed, inventors should keep accurate records of tests performed on their inventions. If other people are involved in testing, the inventor should make sure that those individuals understand that they are testing the invention. The participants should give the inventor feedback on the test results, and the inventor should be permitted to inspect the invention before, during, and after testing. The people involved in the testing should also be obligated to keep the invention and testing activities secret. Ideally, agreements between the inventor and testing participants should be in writing. Likewise, reports should be provided in writing, although it is not necessary to prove the inventor's experimental purpose in conducting tests.

In summary, the use of, sale of, and offer to sell an invention have the potential to keep one from obtaining a valid patent on that invention. It is advisable to consult a patent attorney or agent before undertaking any use, sale, or publication of an invention for which a patent may be sought. When ultimately applying for the patent, notify the attorney or agent preparing the application of any use, sale, or offers to sell as early as possible. Thus, the activity can be evaluated to determine its possible effect on patentability.

George K. Stacey is an associate in the law firm Eckert Seamans Cherin & Mellott, 600 Grant Street, 42nd Floor, Pittsburgh, PA 15219; telephone (412) 566-6000; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.

Copyright © 1994 by The Minerals, Metals & Materials Society.

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