What constitutes public use when an inventor allows another to use the invention?

When an inventor allows another person to use the invention, it may constitute public use under pre-AIA 35 U.S.C. 102(b) if certain conditions are met. The MPEP provides guidance on this issue:

“‘Public use’ of a claimed invention under pre-AIA 35 U.S.C. 102(b) occurs when the inventor allows another person to use the invention without limitation, restriction or obligation of secrecy to the inventor.”

(MPEP 2133.03(a))

Key factors in determining whether such use constitutes public use include:

• The presence or absence of a confidentiality agreement
• The time, place, and circumstances of the use
• The amount of control the inventor retained over the invention

It’s important to note that even if the invention is hidden from view during use, it may still be considered public use if the inventor did not impose an obligation of secrecy or restrictions on its use. For example, in Egbert v. Lippmann, the court found public use where an inventor allowed another to use an inventive corset insert, even though it was hidden from view during use, because there were no secrecy obligations or use restrictions imposed.

Therefore, inventors should be cautious when allowing others to use their invention and should consider implementing appropriate confidentiality measures and use restrictions to avoid potential public use issues.

To learn more:

• inventor allowing use
• public use
• pre-AIA 35 U.S.C. 102(b)
• patent bar
• confidentiality