Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (6)
What are the key factors in determining if an activity qualifies as experimental use?
Determining whether an activity qualifies as experimental use involves considering several factors. According to MPEP 2133.03(e), key factors include:
- The nature of the activity
- The length of the test period
- Whether payment was made for the device
- Whether there was a secrecy agreement
- Whether records were kept
- Who conducted the experiments
- The degree of commercial exploitation during testing
The MPEP states, “Once alleged experimental activity is advanced by an applicant to negate a pre-AIA 35 U.S.C. 102(b) rejection, 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.” This assessment helps distinguish genuine experimentation from activities that might trigger the public use or on-sale bar.
To learn more:
The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
To learn more:
The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.
As stated in 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.’”
Key factors in determining if the experimental use exception applies include:
- The necessity for public testing
- The amount of control retained by the inventor
- The nature of the invention
- The length of the test period
- Whether payment was made
- Whether there was a secrecy obligation
- Whether records of the experiment were kept
- The degree of commercial exploitation during testing
It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.
To learn more:
For inventions with no known utility, certain types of testing are allowed as experimental use. The MPEP 2133.03(e)(6) provides guidance on this:
“[W]here an invention relates to a chemical composition with no known utility, i.e., a patent application for the composition could not be filed (35 U.S.C. 101; 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph), continued testing to find utility would likely be permissible, absent a sale of the composition or other evidence of commercial exploitation.”
This means that for inventions lacking a known utility, ongoing experimentation to discover a utility is generally allowed and won’t be considered public use or sale. However, any commercial exploitation during this period could jeopardize the experimental nature of the activity.
To learn more:
According to the MPEP and relevant case law, the key factors in proving experimental use are:
- Inventor Control: The extent of supervision and control maintained by the inventor over the invention during the alleged period of experimentation.
- Customer Awareness: The level of awareness customers or third parties have about the experimental nature of the use.
The MPEP states: The significant determinative factors in questions of experimental purpose are the extent of supervision and control maintained by an inventor over an invention during an alleged period of experimentation, and the customer’s awareness of the experimentation.
This is further supported by the Federal Circuit in Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., which emphasizes that control and customer awareness ordinarily must be proven if experimentation is to be found
.
Inventors and patent attorneys should focus on documenting these aspects to strengthen claims of experimental use and avoid potential public use bars.
To learn more:
The level of supervision during experimental use can significantly impact whether an activity is considered public use under patent law. According to MPEP 2133.03(e)(5):
“The degree of supervision and control over the invention required of the inventor to establish experimental use is generally high.”
This means that inventors must maintain substantial control over their invention during testing to ensure it qualifies as experimental use rather than public use. Lack of proper supervision may lead to the activity being classified as public use, potentially affecting patent rights.
To learn more:
MPEP 2133.03 – Rejections Based On "Public Use" Or "On Sale" (1)
The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.
As stated in 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.’”
Key factors in determining if the experimental use exception applies include:
- The necessity for public testing
- The amount of control retained by the inventor
- The nature of the invention
- The length of the test period
- Whether payment was made
- Whether there was a secrecy obligation
- Whether records of the experiment were kept
- The degree of commercial exploitation during testing
It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.
To learn more:
MPEP 2133.03(E) – Permitted Activity; Experimental Use (1)
What are the key factors in determining if an activity qualifies as experimental use?
Determining whether an activity qualifies as experimental use involves considering several factors. According to MPEP 2133.03(e), key factors include:
- The nature of the activity
- The length of the test period
- Whether payment was made for the device
- Whether there was a secrecy agreement
- Whether records were kept
- Who conducted the experiments
- The degree of commercial exploitation during testing
The MPEP states, “Once alleged experimental activity is advanced by an applicant to negate a pre-AIA 35 U.S.C. 102(b) rejection, 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.” This assessment helps distinguish genuine experimentation from activities that might trigger the public use or on-sale bar.
To learn more:
MPEP 2133.03(E)(2) – Intent (1)
The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
To learn more:
MPEP 2133.03(E)(5) – Experimentation And Degree Of Supervision And Control (2)
According to the MPEP and relevant case law, the key factors in proving experimental use are:
- Inventor Control: The extent of supervision and control maintained by the inventor over the invention during the alleged period of experimentation.
- Customer Awareness: The level of awareness customers or third parties have about the experimental nature of the use.
The MPEP states: The significant determinative factors in questions of experimental purpose are the extent of supervision and control maintained by an inventor over an invention during an alleged period of experimentation, and the customer’s awareness of the experimentation.
This is further supported by the Federal Circuit in Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., which emphasizes that control and customer awareness ordinarily must be proven if experimentation is to be found
.
Inventors and patent attorneys should focus on documenting these aspects to strengthen claims of experimental use and avoid potential public use bars.
To learn more:
The level of supervision during experimental use can significantly impact whether an activity is considered public use under patent law. According to MPEP 2133.03(e)(5):
“The degree of supervision and control over the invention required of the inventor to establish experimental use is generally high.”
This means that inventors must maintain substantial control over their invention during testing to ensure it qualifies as experimental use rather than public use. Lack of proper supervision may lead to the activity being classified as public use, potentially affecting patent rights.
To learn more:
MPEP 2133.03(E)(6) – Permitted Experimental Activity And Testing (1)
For inventions with no known utility, certain types of testing are allowed as experimental use. The MPEP 2133.03(e)(6) provides guidance on this:
“[W]here an invention relates to a chemical composition with no known utility, i.e., a patent application for the composition could not be filed (35 U.S.C. 101; 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph), continued testing to find utility would likely be permissible, absent a sale of the composition or other evidence of commercial exploitation.”
This means that for inventions lacking a known utility, ongoing experimentation to discover a utility is generally allowed and won’t be considered public use or sale. However, any commercial exploitation during this period could jeopardize the experimental nature of the activity.
To learn more:
Patent Law (6)
What are the key factors in determining if an activity qualifies as experimental use?
Determining whether an activity qualifies as experimental use involves considering several factors. According to MPEP 2133.03(e), key factors include:
- The nature of the activity
- The length of the test period
- Whether payment was made for the device
- Whether there was a secrecy agreement
- Whether records were kept
- Who conducted the experiments
- The degree of commercial exploitation during testing
The MPEP states, “Once alleged experimental activity is advanced by an applicant to negate a pre-AIA 35 U.S.C. 102(b) rejection, 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.” This assessment helps distinguish genuine experimentation from activities that might trigger the public use or on-sale bar.
To learn more:
The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
To learn more:
The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.
As stated in 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.’”
Key factors in determining if the experimental use exception applies include:
- The necessity for public testing
- The amount of control retained by the inventor
- The nature of the invention
- The length of the test period
- Whether payment was made
- Whether there was a secrecy obligation
- Whether records of the experiment were kept
- The degree of commercial exploitation during testing
It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.
To learn more:
For inventions with no known utility, certain types of testing are allowed as experimental use. The MPEP 2133.03(e)(6) provides guidance on this:
“[W]here an invention relates to a chemical composition with no known utility, i.e., a patent application for the composition could not be filed (35 U.S.C. 101; 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph), continued testing to find utility would likely be permissible, absent a sale of the composition or other evidence of commercial exploitation.”
This means that for inventions lacking a known utility, ongoing experimentation to discover a utility is generally allowed and won’t be considered public use or sale. However, any commercial exploitation during this period could jeopardize the experimental nature of the activity.
To learn more:
According to the MPEP and relevant case law, the key factors in proving experimental use are:
- Inventor Control: The extent of supervision and control maintained by the inventor over the invention during the alleged period of experimentation.
- Customer Awareness: The level of awareness customers or third parties have about the experimental nature of the use.
The MPEP states: The significant determinative factors in questions of experimental purpose are the extent of supervision and control maintained by an inventor over an invention during an alleged period of experimentation, and the customer’s awareness of the experimentation.
This is further supported by the Federal Circuit in Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., which emphasizes that control and customer awareness ordinarily must be proven if experimentation is to be found
.
Inventors and patent attorneys should focus on documenting these aspects to strengthen claims of experimental use and avoid potential public use bars.
To learn more:
The level of supervision during experimental use can significantly impact whether an activity is considered public use under patent law. According to MPEP 2133.03(e)(5):
“The degree of supervision and control over the invention required of the inventor to establish experimental use is generally high.”
This means that inventors must maintain substantial control over their invention during testing to ensure it qualifies as experimental use rather than public use. Lack of proper supervision may lead to the activity being classified as public use, potentially affecting patent rights.
To learn more:
Patent Procedure (6)
What are the key factors in determining if an activity qualifies as experimental use?
Determining whether an activity qualifies as experimental use involves considering several factors. According to MPEP 2133.03(e), key factors include:
- The nature of the activity
- The length of the test period
- Whether payment was made for the device
- Whether there was a secrecy agreement
- Whether records were kept
- Who conducted the experiments
- The degree of commercial exploitation during testing
The MPEP states, “Once alleged experimental activity is advanced by an applicant to negate a pre-AIA 35 U.S.C. 102(b) rejection, 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.” This assessment helps distinguish genuine experimentation from activities that might trigger the public use or on-sale bar.
To learn more:
The intent of the inventor is not sufficient alone to determine whether a public use or on-sale bar applies. As stated in MPEP 2133.03(e)(2):
“When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to ‘experiment,’ even if true, is unavailing without objective evidence to support the contention.”
This means that objective evidence is crucial in determining whether a use or sale was experimental, rather than commercial. The inventor’s secret intent is not enough to overcome a statutory bar.
To learn more:
The experimental use exception is a legal doctrine that can negate what would otherwise be considered a public use or sale under pre-AIA 35 U.S.C. 102(b). This exception allows inventors to test and perfect their inventions without triggering the statutory bars.
As stated in 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.’”
Key factors in determining if the experimental use exception applies include:
- The necessity for public testing
- The amount of control retained by the inventor
- The nature of the invention
- The length of the test period
- Whether payment was made
- Whether there was a secrecy obligation
- Whether records of the experiment were kept
- The degree of commercial exploitation during testing
It’s important to note that market testing or commercial exploitation under the guise of experimentation will not qualify for this exception. The primary purpose must be experimentation, not commercial gain.
To learn more:
For inventions with no known utility, certain types of testing are allowed as experimental use. The MPEP 2133.03(e)(6) provides guidance on this:
“[W]here an invention relates to a chemical composition with no known utility, i.e., a patent application for the composition could not be filed (35 U.S.C. 101; 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph), continued testing to find utility would likely be permissible, absent a sale of the composition or other evidence of commercial exploitation.”
This means that for inventions lacking a known utility, ongoing experimentation to discover a utility is generally allowed and won’t be considered public use or sale. However, any commercial exploitation during this period could jeopardize the experimental nature of the activity.
To learn more:
According to the MPEP and relevant case law, the key factors in proving experimental use are:
- Inventor Control: The extent of supervision and control maintained by the inventor over the invention during the alleged period of experimentation.
- Customer Awareness: The level of awareness customers or third parties have about the experimental nature of the use.
The MPEP states: The significant determinative factors in questions of experimental purpose are the extent of supervision and control maintained by an inventor over an invention during an alleged period of experimentation, and the customer’s awareness of the experimentation.
This is further supported by the Federal Circuit in Electromotive Div. of Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co., which emphasizes that control and customer awareness ordinarily must be proven if experimentation is to be found
.
Inventors and patent attorneys should focus on documenting these aspects to strengthen claims of experimental use and avoid potential public use bars.
To learn more:
The level of supervision during experimental use can significantly impact whether an activity is considered public use under patent law. According to MPEP 2133.03(e)(5):
“The degree of supervision and control over the invention required of the inventor to establish experimental use is generally high.”
This means that inventors must maintain substantial control over their invention during testing to ensure it qualifies as experimental use rather than public use. Lack of proper supervision may lead to the activity being classified as public use, potentially affecting patent rights.
To learn more: