Experimental Sale Or Use

  • BASICS: A patent applicant is permitted pre critical date offers and uses for experimental purposes. “The use of an invention by the inventor himself, or of any other person under his direction, by way of experiment, and in order to bring the invention to perfection, has never been regarded as such a [barring public] use.” Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 134 (1877); Atlanta Attachment (Fed. Cir. 02/21/08) (offer to sell commercial quantities defeats any experimental use argument; sale/use to determine if product satisfies a customer’s purposes is not experimental sale/use); Allen (Fed. Cir. 08/01/02) (13 factors that might be considered); Energy Heating (Fed. Cir. 05/04/18) (aff’g inequitable conduct finding, citing Allen factors to support finding that pre critical date uses and sales were not experimental); Barry (Fed. Cir. 01/24/19) (2-1) (three surgeries were experimental; surgeon kept control of inventive method and was only one who used it; he charged patients a fee but not a premium; witnesses had implied confidentiality obligation and some knew it was experiment, etc.); Polara (Fed. Cir. 07/10/18) (aff’g jury verdict that experimental use negated any public use based on “the need for testing to ensure the durability and safety of the claimed” pedestrian traffic signaling device, which testing also related to claimed features).
  • “Loss Of Control” Of Invention Is Important Factor: Surgical methods were experimental in large part because surgeon maintained control over the method; a factor that this court has stressed “‘is critically important'” to experimental use determination. Barry (Fed. Cir. 01/24/19) (2-1) (three surgeries were experimental; surgeon kept control of inventive method and was only one who used it: “No person left the operating room with the (method) invention, and no person learned the method without an obligation of confidentiality.”)
  • Customer Need Not Always Be Told Use Is Experimental: Only when a device is placed into a customer’s control, and out of the inventor’s control, is it necessary that experimenter inform customer that use is expertimental. Barry (Fed. Cir. 01/24/19) (2-1) (aff’g jury verdict of no public use bar).
  • “Experimental” Is Not Separate Issue: “It is incorrect to impose on the patent owner … the burden of proving that a ‘public use’ was ‘experimental.’ These are not two separable issues. It is incorrect to ask: ‘Was it public use?’ and then, ‘Was it experimental?’ Rather, the court is faced with a single issue: Was it public use under § 102(b)? … This does not mean, of course, that the challenger has the burden of proving that the use is not experimental. Nor does it mean that the patent owner is relieved of explanation. It means that if a prima facie case is made of public use, the patent owner must be able to point to or must come forward with convincing evidence to counter that showing.” TP Labs. (Fed. Cir. 01/04/84). Experimental use may negate either commercial use (or public use) or ready for patenting prongs. Barry (Fed. Cir. 01/24/19) (2-1) (aff’g jury verdict of no public use bar).
  • Experimental Period Cut Off By Reduction To Practice, Probably: The en banc Fed. Cir. vacated panel decision and refused to reach amici assertion that reduction-to-practice does not cut-off experimental use. The Medicines Co. II (Fed. Cir. 07/11/16) (en banc). “Several of this Court’s early decisions stating that an invention is not complete until it has been reduced to practice are best understood as indicating that the invention’s reduction to practice demonstrated that the concept was no longer in an experimental phase.” Pfaff (U.S. 11/10/1998). “[E]xperimental use cannot negate a public use when it is shown that the invention was reduced to practice before the experimental use.” In Re Omeprazole Patent Litig. (Fed. Cir. 08/20/08); Clock Spring (Fed. Cir. 03/25/09). No experimental use after inventor aware that the invention has been reduced to practice.
  • Testing Must Be Of Claimed Features: “A use may be experimental only if it is designed to (1) test claimed features of the invention or (2) determine whether an invention will work for its intended purpose—itself a requirement of patentability.” Energy Heating (Fed. Cir. 05/04/18) (aff’g inequitable conduct finding, in part based on finding that pre critical date uses and sales were not experimental; none of the supposed experimental purposes of the pre-critical date uses “are reflected in the claims of the patent.”). Where, e.g., a compound is claimed with no limitation as to a particular use, testing efficacy for that use does not negate a public use bar (i.e., is not an “experimental use”). SmithKline (Fed. Cir. 04/23/04).
  • “Experimental” Use/Sale Applies To Applicants, Not Third Parties: Remember that “experimental use/sale” does not rebut a public use or on sale by a third party unrelated to the applicant/“inventor.” See In re Hamilton (Fed. Cir. 08/16/89) (“The experimental use doctrine operates in the inventor’s favor to allow the inventor to refine his invention or to assess its value relative to the time and expense of prosecuting a patent application. If it is not the inventor or someone under his control or “surveillance” who does these things, there appears to us no reason why he should be entitled to rely upon them to avoid the statute.”); cf. New Railhead Mfg. v. Vermeer Mfg., 298 F.3d 1290, 1298 (Fed. Cir. 2002) (invalid due to use by party not controlled by applicant); In re Caveney, 761 F.2d 671, 675-76 (Fed. Cir. 1985) (invalid due to offer for sale between separate entities).
  • TIPS: