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Patentability and the experimental use exception

published in McAfee & Taft tIPsheet | June 1, 2020

Young man, I have not failed 999 times. I have simply found 999 ways how not to create a light bulb.”
— Thomas Edison

The basics

The U.S. Patent Act precludes the granting of a patent if the claimed invention was in public use, on sale or otherwise available to the public more than one year prior to the effective filing date of the corresponding patent application. But wait, every rule has an exception. An exception to the statutory one-year time bar is the experimental use exception. Under the experimental use exception, the statutory one-year time bar will not apply if the applicant can demonstrate that the actions relating to the use or sale were experimental in nature.

Decided on a case-by-case basis, the experimental use exception can negate both the public use and the first sale time bars. A prior use may qualify as experimental if the use is intended to: (1) test a claimed feature of the invention; or, (2) determine whether an invention will work for its intended purpose. In other words, if the evidence shows that the inventor was uncertain as to whether or not the invention would work as intended, then the testing will likely qualify as experimental.

In some instances — for example, the testing of a new paving material — the use will necessarily occur in the public arena. Such use may or may not disclose the patentable material to the public. However, even if the public use does disclose the patentable improvement, such use may still qualify for the experimental use exception depending on the nature of the activity, the degree of public access, the degree of control exercised by the inventor, and whether or not individuals with access to the disclosure were under an obligation of confidentiality.

The degree of control exercised by the inventor is of particular importance in demonstrating that a prior sale is negated by the experimental use exception. Even if the activity involves an actual sale, the experimental use exception may still apply. For example, if the circumstances of the sale allow the inventor to retain control over the invention and the inventor demonstrates objective evidence of experimental intent, then the commercial sale may be negated. Depending on the nature of the invention — for example, a new sensor — the inventor should inform the customer about the experimental aspect of the sale. However, notice of experimental use to the customer may not be required under some conditions — for example, when the inventor controls the testing of a method.

To help in determining whether a use qualifies as experimental, the courts have identified 13 factors that should be considered. These 13 factors are considered when assessing the totality of the circumstances surrounding the experimental use. Not all factors will be considered in every case, and some factors may carry more weight in one instance than in another. The 13 factors are as follows:

Factors for assessing whether a use is experimental

  1. the necessity for public testing
  2. the amount of control over the experiment retained by the inventor
  3. the nature of the invention
  4. the length of the test period
  5. whether payment was made
  6. whether there was a secrecy obligation
  7. whether records of the experiment were kept
  8. who conducted the experiment
  9. the degree of commercial exploitation during testing
  10. whether the invention reasonably requires evaluation under actual conditions of use
  11. whether testing was systematically performed
  12. whether the inventor continually monitored the invention during testing
  13. the nature of contacts made with potential customers

Practical applications

As evidenced by the 13 factors, documentation and records keeping are critical to demonstrating experimental use. If the experimental use involves a third party, we recommend executing an Experimental Use Agreement. This agreement will memorialize the experimental nature of the sale or disclosure and will include confidentiality clauses, provide for control of the experiment by the inventor, and clearly determine ownership of any additional improvements resulting from the experimental use.

Engineering or development records should be kept. These records will demonstrate the development process from inspiration to reduction to practice. In particular, records of failures will provide evidence of the need for further development at the time of experimental use, i.e. the invention is not yet ready for patenting. Preferably, development records will be created in accordance with company established standards.

Having the proper documentation and agreements in place will streamline the process of demonstrating experimental use in accordance with the factors outlined by the courts. Additionally, in order to fulfill the applicant’s duty of disclosure under the Patent Act, the patent applicant should submit the development documentation to the U.S. Patent and Trademark Office as part of an Information Disclosure Statement (IDS).

Finally, while the experimental use exception is a valuable option, patent applicants should endeavor to file the patent application within one year of the experimental use. Doing so will eliminate the question of experimental use altogether and potentially reduce the cost of enforcing the patent against infringers.