United States Experimental Use Exception to Public Disclosure for Inventions
The experimental use exception is an exception to making a public disclosure of your invention that could bring a statutory bar into effect potentially barring your filing a patent application by either making a public disclosure of your invention more than one year prior to filing a U.S. patent application or making any public disclosure of your invention prior to filing a patent application for a foreign country. Also, if you have an issued patent, failing the experimental use exception requirement on a public disclosure prior to your filing the patent application can invalidate your foreign patent, or your U.S. patent if the failed experimental use exception on a public disclosure was more than a year prior to your U.S. patent file date.
It is important to remember that courts have a very low bar for what constitutes making a public disclosure of your invention, thus it pays to be conservative in this area of keeping your invention confidential prior to filing a patent application, especially to preserve your foreign filing rights.
The key factor is to remember that the experimental use exception absolutely requires that the public disclosure be totally technical in nature and NOT commercial in nature.
What you must do:
- Only loan your product to others for testing with the understanding that the testers will return your product to you when testing is complete. Control and monitoring must be maintained over the testing and the product. Selling your product will fail this requirement and will be a public disclosure.
- Maintain records related to the ongoing testing, i.e. the tester having a procedure for completing test data for you.
- Have a confidentiality agreement.
- Take all precautions reasonably possible for hiding the experimentation from the public.
- Items 1-4 above MUST be totally technical in nature and have full supporting documentation, any form of commercially related activities will be considered a public disclosure. Thus all of the aforementioned “must do” conditions need be spelled out in an agreement to unequivocally show that all parties completely understand that the experimental testing requires the above 5 conditions. If insufficient documentation exists to prove experimental testing, the inventor’s (Company’s) subjective intent in stating the disclosure was for experimental testing will be inadequate proof, resulting in a default to a public disclosure and losing the experimental testing exception to public disclosure, potentially causing a loss of your patent.
What you cannot do:
- Avoid all commercially related documents, such as orders, invoices, receipts, delivery schedules, price lists, price quotations, and the like.
- Do not demonstrate your product to a customer or potential customer, it is irrelevant if you do not receive an order, this is still a public disclosure, in the form of an offer for sale.
- Use your invention in front of others whether for a fee or not, again it is irrelevant if you do not receive an order, this is still a public disclosure.
- Advertise or test market your product.
- Fine tuning testing as opposed to true experimentation will be considered a public disclosure.
- Any parts or hardware exchanged with another party that is not directly related to the experimental testing as defined above could be considered a public disclosure.
Note, that the experimental use exception is not available and does not apply to:
- Design Patents.
- Prior art defined as “Offers for Sale”.
- Inventions that are “Reduced to Practice” i.e. fully functionally prototyped, i.e. no need for experimental testing at that point.