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.
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