Can an inventor’s secret intent to experiment prevent a statutory bar?
No, an inventor’s secret intent to experiment is not sufficient to prevent a statutory bar. The MPEP 2133.03(e)(2) cites the case of Paragon Podiatry Laboratory, Inc. v. KLM Labs., Inc., stating: “Evidence of the inventor’s secretly held belief that the units were not durable and may not be satisfactory for consumers was not sufficient, alone,…
Read MoreHow do courts weigh objective evidence against inventor testimony?
Courts typically give more weight to objective evidence than to inventor testimony when determining whether a use or sale was experimental. The MPEP 2133.03(e)(2) cites a recent case: “Sunoco Partners Mktg. & Terminals LP v. U.S. Venture, Inc., 32 F.4th 1161, 1171-72, 2022 USPQ2d 417 (Fed. Cir. 2022) (The Federal Circuit relied on the objective…
Read MoreWhat constitutes objective evidence of experimental use?
Objective evidence of experimental use typically includes documentation and actions that demonstrate the inventor’s intent to experiment rather than commercialize the invention. While the MPEP 2133.03(e)(2) doesn’t provide an exhaustive list, it suggests that such evidence may include: Informing customers about the experimental nature of the product or process Maintaining control over the invention during…
Read MoreWhat is the significance of intent in determining public use or on-sale bar?
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…
Read MoreHow does customer awareness affect experimental use claims?
Customer awareness is a crucial factor in establishing experimental use. According to MPEP 2133.03(e)(2): “Under such circumstances, the customer at a minimum must be made aware of the experimentation.” This means that if an inventor claims experimental use, they must provide evidence that customers were informed about the experimental nature of the product or process.…
Read MoreHow does the AIA affect the interpretation of public use and on-sale bar?
The America Invents Act (AIA) has introduced changes to the interpretation of public use and on-sale bar. The MPEP 2133.03(e)(2) notes: “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).” For a detailed discussion…
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