What constitutes a “public use” under pre-AIA 35 U.S.C. 102(b)?
A “public use” under pre-AIA 35 U.S.C. 102(b) occurs when the invention is both in public use before the critical date and ready for patenting. The Federal Circuit in Invitrogen Corp. v. Biocrest Manufacturing L.P. outlined a two-part test: The purported use was accessible to the public; or The invention was commercially exploited. The court…
Read MoreWhat constitutes a “public use” under AIA 35 U.S.C. 102(a)(1)?
Under AIA 35 U.S.C. 102(a)(1), a “public use” that can bar patentability is any use that is available to the public, regardless of geographic location. The MPEP states: “Under AIA 35 U.S.C. 102(a)(1), there is no geographic limitation on where prior public use or public availability occurs.” This means that public uses anywhere in the…
Read MoreIs public knowledge the same as public use under pre-AIA 35 U.S.C. 102(b)?
No, public knowledge is not necessarily the same as public use under pre-AIA 35 U.S.C. 102(b). The MPEP clearly states: “Mere knowledge of the invention by the public does not warrant rejection under pre-AIA 35 U.S.C. 102(b). Pre-AIA 35 U.S.C. 102(b) bars public use or sale, not public knowledge.” (MPEP 2133.03(a)) However, it’s important to…
Read MoreWhat does “known or used by others in this country” mean in pre-AIA 35 U.S.C. 102(a)?
According to the MPEP, “The statutory language ‘known or used by others in this country’ [pre-AIA 35 U.S.C. 102(a)], means knowledge or use which is accessible to the public.” This interpretation was established in the case of Carella v. Starlight Archery. The MPEP further clarifies that for knowledge or use to be considered accessible to…
Read MoreWhat is the examiner’s role in evaluating experimental use claims?
When an applicant claims experimental use to counter a prima facie case of unpatentability, the patent examiner has a specific role in evaluating these claims. According to MPEP 2133.03(e)(4): “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…
Read MoreWhat is the purpose of the on-sale and public use provisions in patent law?
The primary purpose of the on-sale and public use provisions in 35 U.S.C. 102 is to prevent inventors from commercially exploiting their inventions for more than one year before filing a patent application. As stated in the MPEP: “One policy of the on sale and public use provisions of 35 U.S.C. 102 is the prevention…
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 MoreIs market testing considered experimental activity for patent purposes?
No, market testing is not considered experimental activity for patent purposes. The MPEP 2133.03(e)(6) clearly states: “Experimentation to determine product acceptance, i.e., market testing, is typical of a trader’s and not an inventor’s experiment and is thus not within the area of permitted experimental activity.” This means that testing an invention to gauge consumer interest…
Read MoreWhat issues are not considered in inter partes reexamination?
Inter partes reexamination is limited in scope and does not consider all potential issues related to patent validity. According to the MPEP, the following issues are not considered: Public use or on-sale activities Conduct issues Abandonment under pre-AIA 35 U.S.C. 102(c) Other issues not based on patents or printed publications The MPEP states: “If questions…
Read MoreDoes an inventor’s private use of an invention constitute public use?
Generally, an inventor’s private use of an invention for their own enjoyment does not constitute public use under pre-AIA 35 U.S.C. 102(b). The MPEP provides guidance on this matter: “An inventor’s private use of the invention, for his or her own enjoyment is not a public use.” (MPEP 2133.03(a)) This principle is illustrated in the…
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