Experimental-use agreements: tips to avoid on-sale bar to patentability
Associate LiJen Shen and Partners Cory Smith and George Chen authored an article published Sept. 14 in Law360 concerning the U.S. Court of Appeals for the Federal Circuit recently revisiting the application of the experimental-use exception to the on-sale bar to patentability.
In Sunoco Partners Marketing & Terminals LP v. U.S. Venture Inc., 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.
This document provides a general summary and is for information/educational purposes only. It is not intended to be comprehensive, nor does it constitute legal advice. Specific legal advice should always be sought before taking or refraining from taking any action.