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Experimental Testing or Public Use?

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© 2002, Gallagher & Dawsey Co., LPA
August 2002

Few inventors are so sure of their invention's operability that they will proceed with a patent application without some measure of testing their idea. Yet testing entails a certain risk, as 35 U.S.C. S 102(a) and (b) can bar the grant of a patent to any invention that has been "in public use" for a year or more. How can an inventor be sure that a "test" cannot be viewed as "public use?" Fortunately, there are some guidelines that can help keep an inventor on the right side of this requirement.

Firstly, in evaluating a charge that an invention has been in public use, factors considered are the length of the test period, the number of tests, with both these evaluated in light of the general need for testing of inventions of a given type; whether payment was made for the device; the execution of non-disclosure agreements by the testers; the extent and nature of test records; whether persons other than the inventor conducted the tests; and to what extent the inventor controlled the testing. Summarizing these factors; a finding of an experimental test is favored by a short testing period, or at least one that is comparable to industry standards, without payment (or low payment) by the testers, with non-disclosure agreements in place, with scrupulous records, and with tests conducted personally by the inventor or under the inventor's direct control.

It is vital to remember that testing must only be conducted to refine and perfect the invention as claimed. This has a number of important ramifications. First, market "testing" to determine consumer acceptance or displaying the invention in an attempt to attract investors is not experimental use and triggers the running of the one year limit under 35 U.S.C. S 102. Also, testing to further refine an invention beyond that which is contained in the claims is not an experimental use.

The key concept is to identify the dominant motive behind any public testing. If the test is really necessary to test the device as claimed, even a long testing period may be justified. In fact, a court, in the case of a paving material that required an extended period of durability testing, allowed a six year experimental period without a finding of public use. While such a long period is the exception, it is important to remember that it is the nature of the testing, rather than the length of the test, that is the key issue.

© 2006 Gallagher & Dawsey Co., L.P.A. - Cincinnati, Columbus, Dayton, Ohio

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