MPEP § 2133.03(e) — Permitted Activity; Experimental Use (Annotated Rules)
§2133.03(e) Permitted Activity; Experimental Use
This page consolidates and annotates all enforceable requirements under MPEP § 2133.03(e), 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.
Permitted Activity; Experimental Use
This section addresses Permitted Activity; Experimental Use. Primary authority: 35 U.S.C. 100, 35 U.S.C. 102, and 35 U.S.C. 102(b). Contains: 2 requirements, 1 permission, and 6 other statements.
Key Rules
Commercial vs. Experimental Purpose
The question posed by the experimental use doctrine is “whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1354, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) (quoting EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1356-57, 61 USPQ2d 1289, 1295-96 (Fed. Cir. 2002)) (Linn, J., concurring). Experimentation must be the primary purpose and any commercial exploitation must be incidental in order for the sale to be a permitted activity that does not create a bar under pre-AIA 35 U.S.C. 102(b).
The question posed by the experimental use doctrine is “whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1354, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) (quoting EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1356-57, 61 USPQ2d 1289, 1295-96 (Fed. Cir. 2002)) (Linn, J., concurring). Experimentation must be the primary purpose and any commercial exploitation must be incidental in order for the sale to be a permitted activity that does not create a bar under pre-AIA 35 U.S.C. 102(b).
If the use or sale was experimental, there is no bar under pre-AIA 35 U.S.C. 102(b). “A use or sale is experimental for purposes of [pre-AIA] section 102(b) if it represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose.… If any commercial exploitation does occur, it must be merely incidental to the primary purpose of the experimentation to perfect the invention.” LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)). “The experimental use exception…does not include market testing where the inventor is attempting to gauge consumer demand for his claimed invention. The purpose of such activities is commercial exploitation and not experimentation.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).
If the use or sale was experimental, there is no bar under pre-AIA 35 U.S.C. 102(b). “A use or sale is experimental for purposes of [pre-AIA] section 102(b) if it represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose.… If any commercial exploitation does occur, it must be merely incidental to the primary purpose of the experimentation to perfect the invention.” LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)). “The experimental use exception…does not include market testing where the inventor is attempting to gauge consumer demand for his claimed invention. The purpose of such activities is commercial exploitation and not experimentation.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).
If the use or sale was experimental, there is no bar under pre-AIA 35 U.S.C. 102(b). “A use or sale is experimental for purposes of [pre-AIA] section 102(b) if it represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose.… If any commercial exploitation does occur, it must be merely incidental to the primary purpose of the experimentation to perfect the invention.” LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)). “The experimental use exception…does not include market testing where the inventor is attempting to gauge consumer demand for his claimed invention. The purpose of such activities is commercial exploitation and not experimentation.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).
AIA vs Pre-AIA Practice
If the use or sale was experimental, there is no bar under pre-AIA 35 U.S.C. 102(b). “A use or sale is experimental for purposes of [pre-AIA] section 102(b) if it represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose.… If any commercial exploitation does occur, it must be merely incidental to the primary purpose of the experimentation to perfect the invention.” LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)). “The experimental use exception…does not include market testing where the inventor is attempting to gauge consumer demand for his claimed invention. The purpose of such activities is commercial exploitation and not experimentation.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).
If the use or sale was experimental, there is no bar under pre-AIA 35 U.S.C. 102(b). “A use or sale is experimental for purposes of [pre-AIA] section 102(b) if it represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose.… If any commercial exploitation does occur, it must be merely incidental to the primary purpose of the experimentation to perfect the invention.” LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)). “The experimental use exception…does not include market testing where the inventor is attempting to gauge consumer demand for his claimed invention. The purpose of such activities is commercial exploitation and not experimentation.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).
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.]
Experimental Use Exception (MPEP 2133.03(e))
The question posed by the experimental use doctrine is “whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1354, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) (quoting EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1356-57, 61 USPQ2d 1289, 1295-96 (Fed. Cir. 2002)) (Linn, J., concurring). Experimentation must be the primary purpose and any commercial exploitation must be incidental in order for the sale to be a permitted activity that does not create a bar under pre-AIA 35 U.S.C. 102(b).
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 |
| AIA vs Pre-AIA Practice Commercial vs. Experimental Purpose Experimental Use Exception (MPEP 2133.03(e)) | 35 U.S.C. § 102(b) |
| 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 |
| AIA vs Pre-AIA Practice Commercial vs. Experimental Purpose | In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983) |
| AIA vs Pre-AIA Practice Commercial vs. Experimental Purpose | quoting Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984) |
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) — Permitted Activity; Experimental Use
Source: USPTO2133.03(e) Permitted Activity; Experimental Use [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 question posed by the experimental use doctrine is “whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.” Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1354, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) (quoting EZ Dock v. Schafer Sys., Inc., 276 F.3d 1347, 1356-57, 61 USPQ2d 1289, 1295-96 (Fed. Cir. 2002)) (Linn, J., concurring). Experimentation must be the primary purpose and any commercial exploitation must be incidental in order for the sale to be a permitted activity that does not create a bar under pre-AIA 35 U.S.C. 102(b).
If the use or sale was experimental, there is no bar under pre-AIA 35 U.S.C. 102(b). “A use or sale is experimental for purposes of [pre-AIA] section 102(b) if it represents a bona fide effort to perfect the invention or to ascertain whether it will answer its intended purpose.… If any commercial exploitation does occur, it must be merely incidental to the primary purpose of the experimentation to perfect the invention.” LaBounty Mfg. v. United States Int’l Trade Comm’n, 958 F.2d 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting Pennwalt Corp. v. Akzona Inc., 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)). “The experimental use exception…does not include market testing where the inventor is attempting to gauge consumer demand for his claimed invention. The purpose of such activities is commercial exploitation and not experimentation.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).