MPEP § 2133.03(e)(4) — Factors Indicative of an Experimental Purpose (Annotated Rules)
§2133.03(e)(4) Factors Indicative of an Experimental Purpose
This page consolidates and annotates all enforceable requirements under MPEP § 2133.03(e)(4), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Factors Indicative of an Experimental Purpose
This section addresses Factors Indicative of an Experimental Purpose. Primary authority: 35 U.S.C. 100 and 35 U.S.C. 102. Contains: 1 permission.
Key Rules
On Sale Under AIA (MPEP 2152.02(d))
[Editor Note: This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
Citations
| Primary topic | Citation |
|---|---|
| On Sale Under AIA (MPEP 2152.02(d)) | 35 U.S.C. § 100 |
| On Sale Under AIA (MPEP 2152.02(d)) | 35 U.S.C. § 102 |
| – | MPEP § 2133.03(e)(1) |
| On Sale Under AIA (MPEP 2152.02(d)) | MPEP § 2150 |
| On Sale Under AIA (MPEP 2152.02(d)) | MPEP § 2152.02(c) |
| On Sale Under AIA (MPEP 2152.02(d)) | MPEP § 2159 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2133.03(e)(4) — Factors Indicative of an Experimental Purpose
Source: USPTO2133.03(e)(4) Factors Indicative of an Experimental Purpose [R-07.2022]
[Editor Note: This MPEP section may be applicable to applications subject to examination under the first inventor to file (FITF) provisions of the AIA as set forth in 35 U.S.C. 100 (note). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
The courts have considered a number of factors in determining whether a claimed invention was the subject of a commercial offer for sale primarily for purposes of experimentation. “These factors include: (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, and (13) the nature of contacts made with potential customers.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1353, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) (quoting EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1357, 61 USPQ2d 1289, 1296 (Fed. Cir. 2002)) (Linn, J., concurring). Another critical attribute of experimentation is the “customer’s awareness of the purported testing in the context of a sale.” Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1241, 75 USPQ2d 1650, 1658 (Fed. Cir. 2005).
Once alleged experimental activity is advanced by an applicant to explain a prima facie case of unpatentability, the examiner must determine whether the scope and length of the activity were reasonable in terms of the experimental purpose intended by the applicant and the nature of the subject matter involved. No one of, or particular combination of, factors is necessarily determinative of this purpose.
See MPEP § 2133.03(e)(1) for factors indicative of commercial exploitation.