How does use by independent third parties affect public use determinations?
Use of an invention by independent third parties can constitute public use under pre-AIA 35 U.S.C. 102(b) in certain circumstances. The MPEP provides guidance on this issue:
“Any ‘nonsecret’ use of an invention by someone unconnected to the inventor, such as someone who has independently made the invention, in the ordinary course of a business for trade or profit may be a ‘public use,'”
Key points to consider regarding use by independent third parties:
- Even a “secret” use by another inventor can be “public” if the details of the invention are ascertainable by inspection or analysis of a publicly sold or displayed product.
- If the details of an inventive process are not ascertainable from the product and the third party has kept the invention as a trade secret, then that use is not a public use.
- A device qualifies as prior art if it places the claimed features in the public’s possession before the critical date, even if other unclaimed aspects were not publicly available.
The extent to which the public becomes “informed” of an invention through third-party use depends on the specific circumstances and how they align with the policies underlying the public use bar. For example, if a large number of employees have unrestricted access to the invention and are educated about its nature, the public may be considered “informed.”
It’s important to note that even if third-party use is not sufficiently “informing” to constitute public use, it may still provide grounds for rejection under other sections of pre-AIA 35 U.S.C. 102, such as sections (f) or (g).
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