Experimental use exception – Part 1

There are actually two doctrines with this name – one that handles patentability and one that handles infringement cases. Today I will post about the former.

First of all, this doctrine does not exist per se anywhere in Title 35 of the U.S.C. Rather, it was developed by the courts to make sure innovation is not suffocated by scientists playing with proofs of concepts.

Regarding experimental use in patentability, the MPEP reads: “Experimentation must be the primary purpose and any commercial exploitation must be incidental”. Basically, a scientist can develop some technology, while not letting the public use it (unless it helps the proof of concept) and still file an application more than 12 months after it came with the idea for said technology.

One important fact that must be taken into consideration when you decide if you developed your invention more than 12 months prior to application filing is this: “The experimental use exception does not include market testing where the inventor is attempting to gauge consumer demand for his claimed invention. The purpose of such activities is commercial exploitation and not experimentation.” In re Smith, 714 F.2d 1127, 1134, 218 USPQ 976, 983 (Fed. Cir. 1983).

The conclusion: you cannot file a patent application if you developed the technology more than 12 months prior to the filing date, unless what you did before that 12 months was only experimental use as defined above.