Examples - Experimental Exception

General. The following hypothetical examples teach this concept:

Hypothetical Example No. 1. Otto invented a novel widget and built a prototype. He was unsure that his widget would work as he intended it to work so he set it up in a local mall and invited people to use it. He watched the users and discovered ways to improve his widget. Two years later, when he filed an application for a U.S. patent he disclosed the results of his experiment in the application and when it occurred. The Examiner noted the date and rejected his claims, but Otto was able to overcome the rejections by showing that the use was permitted by the experimental use exception. Otto was granted a patent on his widget.

Hypothetical Example No. 2. Laurens offered an early version of his invention for sale incidental to an ongoing effort to perfect it. Based on information on the warranty cards, he sought out the buyers to elicit their input on the usefulness of critical features of the invention. One year and one day later, Laurens filed a U.S. patent application on the invention. He was granted a patent on the invention because the sale was permitted by the experimental exception.

Hypothetical Example No. 3. Because he was running out of money, Elwood sold 400 units of his invention to a local retailer on an unrestricted basis. He used some of the money to make 400 more of the same unit which he offered for sale in a local newspaper. Two years later, he used the rest of the money to file a U.S. patent application on his invention. He also filed an Information Disclosure Statement with the USPTO which described the sales, as was his obligation under 37 CFR 1.56 (MPEP 2001). The USPTO rejected his application under 35 U.S.C. 102(b).

Hypothetical Example No. 4. Bessie placed the first model of her invention on sale at a price that was significantly less than she could reasonably have expected to have received once the invention was perfected. In return for the low price, the users were obligated not to use the invention in public for a period of three years and to report back to Bessie at quarterly intervals on the performance of the invention. Two years into the three year period, the performance results convinced Bessie that her invention would indeed function as intended under its expected conditions of use and she filed a U.S. patent application on the invention. Bessie was granted a U.S. patent on the invention because the use was an bona fide experiment.

Case Law. The following examples from U.S. case law teach this concept:

Baker Oil Tools Inc. v. Geo. Vann Inc., 828 F.2d 1558, 4 USPQ2d 1210 (CAFC 1987)
Continental Can Co. USA Inc. v. Monsanto Co., 948 F.2d 1264 (CAFC 1991)
Paragon Podiatry Laboratory, Inc. v. KLM Laboratories, Inc. 984 F.2d 1182, 25 USPQ2d 1561 (CAFC 1993)

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