How does disposal of prototypes affect patent rights?
The disposal of prototypes before the critical date (typically one year before the patent application filing date) can affect patent rights. The MPEP provides guidance on how examiners should evaluate such situations: Where a prototype of an invention has been disposed of by an inventor before the critical date, inquiry by the examiner should focus upon the intent of the inventor and the reasonableness of the disposal under all circumstances.
(MPEP 2133.03(e)(3))
It’s important to note that incidental income from a reasonable disposal is not necessarily problematic: The fact that an otherwise reasonable disposal of a prototype involves incidental income is not necessarily fatal.
However, if the inventor considers the prototype complete and has ceased all experimentation, unrestricted disposal can be problematic: However, if a prototype is considered “complete” by an inventor and all experimentation on the underlying invention has ceased, unrestricted disposal of the prototype constitutes a bar under pre-AIA 35 U.S.C. 102(b).
This means that inventors should be cautious about disposing of prototypes, especially if they believe the invention is complete, as it could potentially bar them from obtaining a patent.
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