Does the Experimental Use Exception in Patent Law Have a Future?, 0118 COBJ, Vol. 47, No. 1 Pg. 32

Position:Vol. 47, 1 [Page 32]

47 Colo.Law. 32

Does the Experimental Use Exception in Patent Law Have a Future?

Vol. 47, No. 1 [Page 32]

The Colorado Lawyer

January, 2018



This article examines the evolution and current status of the experimental use exception in patent law.

The experimental use exception, part of U.S. patent law for nearly two centuries, is becoming obsolete. Recent court decisions and changes under the America Invents Act (AIA)1 have raised doubts about the continued viability of the doctrine. Additionally, other legal provisions that offer protections similar to those of the experimental use doctrine and reduce the need for its use have gained prominence. This article explores the development and current state of the experimental use exception and its place in patent law.2

The Experimental Use Doctrine

The experimental use exception is a judge-made doctrine that provides protection for experimental uses of an invention.3 The doctrine is primarily invoked as protection against (1) the “public use” bar under 35 USC § 102, and (2) claims of patent infringement under 35 USC § 271(a).4 Courts created the experimental use exception in these contexts to align with the underlying policies of U.S. patent law.

Patent law in the United States is a “carefully crafted bargain” that balances the competing interests of the inventor and the public.5 An inventor receives a limited-time monopoly to exploit his innovations and, in exchange, the public receives the full disclosure of the invention and the right to practice it when the patent term expires.6 This give and take between the inventor and the public is called the “patent bargain” or “quid pro quo.”[7]

The patent bargain reflects the policy of the U.S. Constitution’s Patent and Copyright clause, which seeks to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”8 The drafters believed that the Constitution needed this clause to promote science and literature.9 This ultimate goal of promoting science and art laid the foundation for creation of the experimental use exception.

The Public Use Bar

In one context, the experimental use exception is a defense against the public use bar under 35 USC § 102. Historically, patent statutes have contained provisions that prevent an inventor from receiving a patent on an invention that she used in public before fling a patent application. This prohibition placed a burden on the inventive process because it limited inventors’ ability to test the qualities of their inventions in public before fling a patent. Courts addressed this issue by creating an exception for public uses that were experimental. However, changes under the AIA may have eliminated the experimental use exception in this context.

Public Use Prohibitions

Since their earliest iterations, patent statutes have included some form of prohibition against the “public use” of an invention before fling a patent application for that invention. The first patent statute, the Patent Act of 1790, stated that an inventor can receive a patent on “any useful art, manufacture, engine, machine, or device, or any improvement therein not before known or used.” 10 The next statute, the Patent Act of 1793, elaborated on this language and more explicitly stated that the inventor could not receive a patent on an invention “known or used before the application.”11 The next two laws, the Patent Act of 1836 and Patent Act of 1839, codified the modern form of the ban against public use by prohibiting inventors from receiving a patent on an invention that they used in public more than two years before fling the application.12

Today, the public use prohibition is governed by two statutes. For patent applications fled on or after March 16, 2013, the AIA § 102(a)(1) governs and prohibits inventors from receiving a patent on an invention that was in public use before the fling date of the patent application.13 For patent applications fled before March 16, 2013, pre-AIA § 102(b) governs and prohibits inventors from receiving a patent on an invention that was in public use more than one year before fling an application for the invention. Section 102(b) provides a one year grace period for an inventor to file a patent within one year of her first public use of the invention. Under pre-AIA §102(b), the public use test is whether the use was (1) accessible to the public or (2) commercially exploited.14 This test includes consideration of “the nature of the activity that occurred in public; public access to the use; confidentiality obligations imposed on the members of the public who observed the use; and commercial exploitation.”15

Also, “public use” under pre-AIA §102(b) does not include a “public knowledge” requirement.16 In other words, the public does not need to know that the invention is being used in public for the use to be public use. For example, suppose you invent and install a small device in your smartphone that greatly improves the screen resolution without impacting the phone’s battery life. The device is perfected and does not need any additional improvements or experimentation. You may use the device on your phone for years and show the phone’s impressive screen resolution to friends and colleagues without disclosing the device’s existence within the phone. Although the public was not aware of the device and did not have knowledge of it, your use of the device would still constitute public use under pre-AIA § 102(b).

The limitations on public use encouraged inventors to file their patents quickly and to disclose their inventions to the public.17 Congress believed that such quick disclosures in the public domain helped promote the progress of science and literature.18 But limiting public use also conflicts with the underlying polices of patent law. As part of the patent bargain, the public receives the disclosure of the invention, but the public benefits more from the disclosure of an invention that has been properly perfected and tested before it is patented.[19] Some inventions, by their nature, must be tested and perfected in public.20 Such public testing may constitute public use under pre-AIA §102(b) and thus bar the inventors from obtaining patents on their inventions. To address this issue, courts recognized that a public use may avoid the pre-AIA §102(b) bar to patentability “if the use was done primarily to experiment with the claimed invention by testing it to improve its qualities before the invention is completed.”21 The experimental use exception was born from this recognition.

The Public Use Exception

One of the first cases to recognize experimental use as an exception to public use was the U.S. Supreme Court case City of Elizabeth v. American Nicholson Pavement Company.22 In City of Elizabeth, inventor Samuel Nicholson received a patent on a new and improved wooden pavement.23 He sued the City of Elizabeth for infringement of his patent when the city installed wooden pavement in Elizabeth, New Jersey.24 The city countered by arguing that Nicholson’s patent was invalid because his invention was in public use for six years before he applied for a patent.25 At the time Nicholson obtained his patent, the Patent Acts of 1836 and 1839 prohibited the public use of an invention more than two years before an application.26 The city alleged that Nicholson tested his invention by laying the wooden pavement down on a public road in Boston in 1848.27 The City of Elizabeth argued that the Boston public used the invention for six years before Nicholson fled his patent application,28 and that this use should bar Nicholson from obtaining a patent on his wooden pavement invention.29

As discussed in the Court’s opinion, Nicholson laid the pavement on the road at his own expense to test the durability of his invention.30 He chose this location because it was a well-traveled road in Boston and frequently used by teams of horses having a load of five or six tons.31 These teams had to stop to pay a toll at a nearby toll-house.32 The teams’ constant stopping and starting made the location “as severe a trial to the pavement as it could be put to.”33 In addition, the local toll-collector testified that

Mr. Nicholson was there almost daily, and when he came he would examine the pavement, would often walk over it, cane in hand, striking it with his cane, and making particular examination of its condition. . . . I have heard him say a number of times that this was his first experiment with this pavement, and he thought that it was wearing very well.34

The Court acknowledged that Nicholson’s use of the pavement was public...

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