440-600-1992

Patents and the Experimental Use Doctrine

Decided on November 19, 2010, In re Ceccarelli concerns the on sale bar to patentability.[i] According to 35 U.S.C. §102(b), which states that "[a] person shall be entitled to a patent unless...the invention was... in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States" (emphasis added), had Ceccarelli commercially sold his invention more than one year prior to his patent filing date, he would be barred from registering the patent.[ii]

Ceccarelli, along with other inventors, had devised a side puller accessory frame for a tow truck.[iii] Thereafter, Ceccarelli desired to test and revise the design before beginning to commercialize on the invention.[iv] In order to do so, Ceccarelli arrived at an agreement, memorialized in an invoice, with a tow truck owner to mount the invention on the truck. Roughly a year and a month later, Ceccarelli submitted a provisional application.[v] Within a year of that date, a utility application was filed.[vi] Upon rejection for anticipation under §102(b) and obviousness under §103 in light of the product sold, Ceccarelli appealed to the Board of Patent Appeals and Interferences, which in turn affirmed the examiner's rejection.[vii] Ceccarelli then appealed the Board's decision to the Federal Circuit.[viii]

Ceccarelli argued that the invoice between the tow truck owner and himself was not a commercial sale as the examiner had determined, but was instead an experimental endeavor to further develop and revise the invention.[ix] If this was indeed the case, the Federal Circuit stated, the "sale for experimental use negates the on-sale bar."[x] The dissent argued that the experimental use doctrine could not apply because the invention had been reduced to practice at the time of the sale and the inventor admitted that no further experimentation was necessary. However, the Court rejected that approach quoting,

"[t]he question posed by the experimental use doctrine...is not whether the invention was under development, subject to testing, or otherwise still in its experimental stage at the time of the asserted sale. Instead, the question is whether the transaction constituting the sale was not incidental to the primary purposes of experimentation, i.e., whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation."[xi]

Concluding that the intention of the sale was for experimentation and not commercial gain, the Court reversed the Examiner's rejection.[xii] Although the application ultimately prevailed, this case illustrates the importance of filing a patent application prior to making sales or disclosing your invention to others. Ceccarelli could have save substantial litigation expenses simply by filing a patent application before making his first sale.

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