Experimental-use agreements: tips to avoid on-sale bar to patentability

In Sunoco Partners Marketing & Terminals LP v. U.S. Venture Inc.,[1] the court found that the experimental-use exception did not apply for two reasons.

First, the transaction was a commercial sale of the patented equipment, even though the transaction did not include a payment requirement for the equipment, because the transaction for the equipment was related to a commitment by the same purchaser to pay for something other than the equipment.

Second, the testing of the equipment that was alleged to support the experimental-use exception to the sale of the equipment was not necessary to show that the equipment worked because, among other things, subsequent sales of the equipment — that were not alleged to be experimental use — also included the same testing of the equipment.

The article continues with sections on best practices for satisfying the experimental-use exception to the on-sale bar.

Read the full article in Law360.