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+[
+# 2133 Pre-AIA 35 U.S.C. 102(b) [R-10.2019]
+
+
+*[Editor Note: This MPEP section is **not applicable** to applications
+ subject to examination under the first inventor to file (FITF) provisions of the AIA as
+ set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is subject to
+ examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to those
+ provisions. See **[MPEP § 2152](s2152.html#ch2100_d20033_18e23_3ce)** et seq. for a detailed
+ discussion of **[AIA 35 U.S.C. 102(a) and (b)](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+
+#### *Pre-AIA 35 U.S.C. 102   
+ Conditions for patentability; novelty and loss of right to patent.*
+
+
+A person shall be entitled to a patent unless -
+
+
+\*\*\*\*\*
+
+
+* (b) the invention was patented or described in a printed publication
+ in this or a foreign country or in public use or on sale in this country, more
+ than one year prior to the date of application for patent in the United
+ States.
+
+
+\*\*\*\*\*
+
+
+**I.** **THE 1-YEAR GRACE PERIOD IS EXTENDED TO THE NEXT WORKING DAY IF IT WOULD OTHERWISE
+ END ON A HOLIDAY OR WEEKEND**Publications, patents, public uses and sales must occur "more than one
+ year prior to the date of application for patent in the United States" in order to bar a
+ patent under **[pre-AIA
+ 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. However, applicant’s own activity will not bar a
+ patent if the 1-year grace period expires on a Saturday, Sunday, or federal holiday and
+ the application’s U.S. filing date is the next succeeding business day. *Ex
+ parte Olah,* 131 USPQ 41 (Bd. App. 1960). Despite changes to
+ **[37 CFR
+ 1.6(a)(2)](mpep-9020-appx-r.html#d0e313447)** and **[37 CFR 1.10](mpep-9020-appx-r.html#d0e313951)** which require the PTO to
+ accord a filing date to an application as of the date of deposit as Priority Express
+ Mail® with the U.S. Postal Service in accordance with **[37 CFR 1.10](mpep-9020-appx-r.html#d0e313951)** (e.g.,
+ a Saturday filing date), the rule changes do not affect applicant's concurrent right to
+ defer the filing of an application until the next business day when the last day for
+ "taking any action" falls on a Saturday, Sunday, or a federal holiday (e.g., the last
+ day of the 1-year grace period falls on a Saturday).
+ 
+
+**II.** **THE 1-YEAR TIME BAR IS MEASURED FROM THE U.S. FILING DATE**If one discloses one's own work more than 1 year before the filing of
+ the patent application, that person is barred from obtaining a patent. *In re
+ Katz,* 687 F.2d 450, 454, 215 USPQ 14, 17 (CCPA 1982). The 1-year time bar
+ is measured from the U.S. filing date. Thus, applicant will be barred from obtaining a
+ patent if the public came into possession of the invention on a date before the 1-year
+ grace period ending with the U.S. filing date. It does not matter how the public came
+ into possession of the invention. Public possession could occur by a public use, public
+ sale, a publication, a patent or any combination of these. In addition, the prior art
+ need not be identical to the claimed invention but will bar patentability if it is an
+ obvious variant thereof. *In re Foster,* 343 F.2d 980, 145 USPQ 166
+ (CCPA 1966). See **[MPEP § 2139.01](s2139.html#ch2100_d2c184_12530_2b6)** regarding the effective
+ U.S. filing date of an application. 
+ 
+
+
+
+# 2133.01 Rejections of Continuation-In-Part (CIP) Applications [R-10.2019]
+
+
+*[Editor Note: This MPEP section is **not applicable** to applications
+ subject to examination under the first inventor to file (FITF) provisions of the AIA
+ as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP
+ § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152](s2152.html#ch2100_d20033_18e23_3ce)** et seq. for a detailed
+ discussion of **[AIA 35 U.S.C. 102(a) and
+ (b)](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The effective filing date of a claimed invention is determined on a
+ claim-by-claim basis and not an application-by-application basis. See
+ **[MPEP §
+ 2139.01](s2139.html#ch2100_d2c184_12530_2b6)** for guidance in determining the effective filing date
+ of a claimed invention under **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**.
+ 
+
+
+When applicant files a continuation-in-part application,
+ none of whose claims are supported by the parent application under **[pre-AIA 35 U.S.C.
+ 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph, the effective filing date is the filing date
+ of the child CIP. Any prior art disclosing the invention or an obvious variant thereof
+ having a critical reference date more than 1 year prior to the filing date of the child
+ will bar the issuance of a patent under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. *Paperless Accounting v. Bay Area Rapid Transit System,* 804 F.2d 659, 665,
+ 231 USPQ 649, 653 (Fed. Cir. 1986). 
+ 
+
+
+Any claim that only contains subject matter that is
+ fully supported in compliance with the statutory requirements of **[pre-AIA 35 U.S.C.
+ 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph, by the parent application of a CIP will have
+ the effective filing date of the parent application. On the other hand, any claim that
+ contains a limitation that is only supported as required by **[pre-AIA 35 U.S.C.
+ 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph, by the disclosure of the CIP application
+ will have the effective filing date of the CIP application. See, e.g.,*Santarus, Inc. v. Par Pharmaceutical, Inc.,* 694 F.3d 1344, 104 USPQ2d 1641
+ (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art
+ against the claims in CIPs that did not find support in the parent application);
+ *Studiengesellschaft Kohle, m.b.H. v. Shell Oil Co.,* 112 F.3d 1561,
+ 1564, 42 USPQ2d 1674 (Fed. Cir. 1997)("To qualify for an earlier filing date, section
+ 120 requires, *inter alia,* that the earlier-filed U.S. patent
+ application contain a disclosure which complies with **[35 U.S.C. § 112](mpep-9015-appx-l.html#d0e302824)**, p 1 (1994) for each
+ claim in the newly filed application. Thus, this benefit only applies to claims that
+ recite subject matter adequately described in an earlier application, and does not
+ extend to claims with subject matter outside the description in the earlier
+ application."). 
+ 
+
+
+
+
+# 2133.02 Rejections Based on Publications and Patents [R-11.2013]
+
+
+*[Editor Note: This MPEP section is **not applicable** to applications
+ subject to examination under the first inventor to file (FITF) provisions of the AIA
+ as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP
+ § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152](s2152.html#ch2100_d20033_18e23_3ce)** et seq. for a detailed
+ discussion of **[AIA 35 U.S.C. 102(a) and
+ (b)](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **APPLICANT’S OWN WORK WHICH WAS AVAILABLE TO THE PUBLIC BEFORE THE GRACE PERIOD
+ MAY BE USED IN A PRE-AIA 35 U.S.C. 102(b) REJECTION**"Any invention described in a printed publication more than one year
+ prior to the date of a patent application is prior art under **[Section 102(b)](mpep-9015-appx-l.html#d0e302395)**,
+ even if the printed publication was authored by the patent applicant." *De
+ Graffenried v.**United States,* 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990). "Once an
+ inventor has decided to lift the veil of secrecy from his [or her] work, he [or she]
+ must choose between the protection of a federal patent, or the dedication of his [or
+ her] idea to the public at large." *Bonito Boats, Inc. v. Thunder Craft
+ Boats, Inc.,* 489 U.S. 141, 148, 9 USPQ2d 1847, 1851 (1989).
+ 
+
+**II.** **A PRE-AIA 35 U.S.C. 102(b) REJECTION CREATES A STATUTORY BAR TO PATENTABILITY
+ OF THE REJECTED CLAIMS** A rejection under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** cannot
+ be overcome by affidavits and declarations under **[37 CFR
+ 1.131](mpep-9020-appx-r.html#aia_d0e323504)** (Rule 131 Declarations), foreign priority dates, or
+ evidence that applicant himself invented the subject matter. Outside the 1-year grace
+ period, applicant is barred from obtaining a patent containing any anticipated or
+ obvious claims. *In re Foster,* 343 F.2d 980, 984, 145 USPQ 166, 170
+ (CCPA 1965).
+ 
+
+
+
+# 2133.02(a) Overcoming a Pre-AIA 35 U.S.C. 102(b)
+ Rejection Based on a Printed Publication or Patent [R-10.2019]
+
+
+In all applications, an applicant may overcome a
+ **[pre-AIA 35
+ U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejection by persuasively arguing that the claims
+ are patentably distinguishable from the prior art, or by amending the claims to
+ patentably distinguish over the prior art. Additional ways available to overcome a
+ rejection based on **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** prior art depend on the applicable
+ paragraph of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP § 2132.01](s2132.html#d0e203530)** for
+ overcoming a rejection under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** and
+ **[MPEP §
+ 2136.05](s2136.html#d0e206333)***et seq.* for overcoming a rejection under **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**. 
+ 
+
+
+A rejection based on **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#al_d1d85b_11e7d_156)** can be
+ overcome by:
+ 
+
+
+* (A) Persuasively arguing that the claims are patentably
+ distinguishable from the prior art;
+* (B) Amending the claims to patentably distinguish over the prior
+ art;
+* (C) Submitting and perfecting a benefit claim under
+ **[35
+ U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)**, within the time period set in
+ **[37 CFR
+ 1.78](mpep-9020-appx-r.html#aia_d0e320670)** (or by filing a grantable petition to accept an
+ unintentionally delayed claim under **[37 CFR 1.78](mpep-9020-appx-r.html#aia_d0e320670)** as explained in
+ **[MPEP § 211.04](s211.html#ch200_d1ff71_24f8b_4a)**):
+	+ (1)
+		- (a) for applications filed on or after
+		 September 16, 2012, by filing a corrected application data sheet
+		 under **[37 CFR 1.76](mpep-9020-appx-r.html#plt_d0e320348)**
+		 which contains a specific reference to a prior application in
+		 accordance with **[37 CFR 1.78](mpep-9020-appx-r.html#aia_d0e320662)**, or
+		- (b) for applications filed prior to
+		 September 16, 2012, by amending the specification of the
+		 application to contain a specific reference to a prior application
+		 or by filing a corrected application data sheet under
+		 **[37 CFR 1.76](mpep-9020-appx-r.html#d0e320348)**
+		 which contains a specific reference to a prior application in
+		 accordance with **[37 CFR
+		 1.78](mpep-9020-appx-r.html#aia_d0e320662)**,
+	and
+	+ (2) by establishing that the prior application
+	 satisfies the enablement and written description requirements of
+	 **[35 U.S.C. 112(a)](mpep-9015-appx-l.html#d0e302824912)** (for applications filed on or
+	 after September 16, 2012), or **[35 U.S.C. 112](mpep-9015-appx-l.html#d0e302824)**, first
+	 paragraph (for applications filed prior to September 16, 2012). See
+	 **[MPEP § 211](s211.html#ch200_d1ff71_1bd25_18b)** *et
+	 seq.*;or
+* (D) Submitting and perfecting a benefit claim under
+ **[35 U.S.C.
+ 119(e)](mpep-9015-appx-l.html#d0e302951)** by complying with the requirements of
+ **[37 CFR
+ 1.78](mpep-9020-appx-r.html#aia_d0e320670)** or filing a grantable petition to accept an
+ unintentionally delayed claim under **[37 CFR 1.78](mpep-9020-appx-r.html#aia_d0e320670)** (see item (C)
+ above). Because a provisional application could not have been filed more than
+ one year prior to the filing of a nonprovisional application that claims
+ benefit to the provisional application, once the benefit claim under
+ **[35 U.S.C.
+ 119(e)](mpep-9015-appx-l.html#d0e302951)**) is perfected, the rejection must be reconsidered
+ to determine whether the prior art still qualifies as prior art under
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302395)** or whether the prior art qualifies as prior
+ art under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**. Note, however, effective
+ December 18, 2013, title II of the Patent Law Treaties Implementation Act
+ (PLTIA) provides for restoration of the right to claim benefit of a provisional
+ application filed after the expiration of the twelve-month period in
+ **[35 U.S.C.
+ 119(e)](mpep-9015-appx-l.html#d0e302951)**. See **[MPEP §
+ 211.01(a)](s211.html#ch200_d1ff71_20a5e_149)**, subsection II. If the prior art qualifies
+ as prior art under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**,
+ see **[MPEP §
+ 2132.01](s2132.html#d0e203530)** as to how to overcome the **[pre-AIA 35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#d0e302391)** rejection.
+
+
+
+
+
+# 2133.03 Rejections Based on "Public Use" or "On Sale" [R-10.2019]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP
+ § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for a
+ detailed discussion of the public use and on sale provisions of **[AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+An applicant may make an admission, or submit evidence of
+ sale of the invention or knowledge of the invention by others, or the examiner may have
+ personal knowledge that the invention was sold by applicant or known by others. If the
+ activity is by an entity other than the inventors or assignee, such as sale by another,
+ manufacture by another or disclosure of the invention by the inventor or assignee to
+ another then both **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)** and **[(b)](mpep-9015-appx-l.html#d0e302395)** may be applicable. If the
+ evidence only points to knowledge within the year prior to the effective filing date
+ then **[pre-AIA 35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#d0e302391)** applies. However, no rejection under **[pre-AIA 35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#d0e302391)** should be made if there is evidence that applicant made the
+ invention and only disclosed it to others within the year prior to the effective filing
+ date. **[Pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** is applicable if the activity occurred more than 1
+ year prior to the effective filing date of the application.
+ 
+
+
+**[Pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** "contains several distinct bars to patentability, each of
+ which relates to activity or disclosure more than one year prior to the date of the
+ application. Two of these - the ‘public use’ and the ‘on sale’ objections - are
+ sometimes considered together although it is quite clear that either may apply when the
+ other does not." *Dart Indus. v. E.I. du Pont de Nemours & Co.,*
+ 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an
+ invention absent any sales activity. Likewise, there may be a nonpublic, e.g., "secret,"
+ sale or offer to sell an invention which nevertheless constitutes a statutory bar.
+ *Hobbs v.**United States,* 451 F.2d 849, 859-60, 171 USPQ 713, 720 (5th Cir.
+ 1971).
+ 
+
+
+In similar fashion, not all "public use" and "on sale" activities will
+ necessarily occasion the identical result. Although both activities affect how an
+ inventor may use an invention prior to the filing of a patent application,
+ "non-commercial" **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** activity may not be viewed the same as
+ similar "commercial" activity. See **[MPEP § 2133.03(a)](s2133.html#d0e203899)** and
+ **[§ 2133.03(e)(1)](s2133.html#d0e204712)**. Likewise, "public use" activity by
+ an applicant may not be considered in the same light as similar "public use" activity by
+ one other than  an applicant. See **[MPEP § 2133.03(a)](s2133.html#d0e203899)** and
+ **[§ 2133.03(e)(7)](s2133.html#d0e205133)**. Additionally, the concept of "experimental
+ use" may have different significance in "commercial" and "non-commercial" environments.
+ See **[MPEP
+ § 2133.03(c)](s2133.html#d0e204494)** and **[§ 2133.03(e)](s2133.html#d0e204670)** - **[§ 2133.03(e)(6)](s2133.html#d0e205061)**. 
+ 
+
+
+It should be noted that **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** may create
+ a bar to patentability either alone, if the device in public use or placed on sale
+ anticipates a later claimed invention, or in conjunction with **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, if
+ the claimed invention would have been obvious from the device in conjunction with the
+ prior art. *LaBounty Mfg.**v.**United States Int’l Trade Comm’n,* 958 F.2d 1066, 1071, 22 USPQ2d
+ 1025, 1028 (Fed. Cir. 1992).
+ 
+
+ **POLICY CONSIDERATIONS*** (A) "One policy underlying the [on-sale] bar is to obtain
+ widespread disclosure of new inventions to the public via patents as soon as
+ possible." *RCA Corp*. *v. Data Gen. Corp.,*
+ 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989).
+* (B) Another policy underlying the public use and on-sale bars is
+ to prevent the inventor from commercially exploiting the exclusivity of his [or
+ her] invention substantially beyond the statutorily authorized period.
+ *RCA Corp.**v.**Data Gen. Corp.,* 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454
+ (Fed. Cir. 1989). See **[MPEP § 2133.03(e)(1)](s2133.html#d0e204712)**.
+* (C) Another underlying policy for the public use and on-sale bars
+ is to discourage "the removal of inventions from the public domain which the
+ public justifiably comes to believe are freely available." *Manville
+ Sales**Corp. v. Paramount Sys., Inc.,* 917 F.2d 544, 549, 16 USPQ2d
+ 1587, 1591 (Fed. Cir. 1990).
+
+
+
+# 2133.03(a) "Public Use" [R-08.2017]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** . See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **TEST FOR "PUBLIC USE** The public use bar under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ arises where the invention is in public use before the critical date and is ready
+ for patenting. *Invitrogen Corp. v. Biocrest Manufacturing L.P.,*
+ 424 F.3d 1374, 76 USPQ2d 1741 (Fed. Cir. 2005). As explained by the court, 
+ 
+
+
+
+> 
+>  The proper test for the public use prong of the
+>  **[[pre-AIA]
+>  § 102(b)](mpep-9015-appx-l.html#d0e302383)** statutory bar is whether the purported use: (1)
+>  was accessible to the public; or (2) was commercially exploited. Commercial
+>  exploitation is a clear indication of public use, but it likely requires more
+>  than, for example, a secret offer for sale. Thus, the test for the public use
+>  prong includes the consideration of evidence relevant to experimentation, as
+>  well as, *inter alia* , the nature of the activity that
+>  occurred in public; public access to the use; confidentiality obligations
+>  imposed on members of the public who observed the use; and commercial
+>  exploitation…. That evidence is relevant to discern whether the use was a
+>  public use that could raise a bar to patentability, but it is distinct from
+>  evidence relevant to the ready for patenting component of
+>  *Pfaff* ’s two-part test, another necessary requirement of
+>  a public use bar.
+>  
+> 
+> 
+> 
+
+
+*Id.* at 1380, 76 USPQ2d at 1744 (citations omitted). See
+ **[MPEP §
+ 2133.03(c)](s2133.html#d0e203781)** for a discussion of the "ready for patenting"
+ prong of the public use and on sale statutory bars.
+ 
+
+
+"[T]o constitute the public use of an invention it is not
+ necessary that more than one of the patent articles should be publicly used. The
+ use of a great number may tend to strengthen the proof, but one well defined case
+ of such use is just as effectual to annul the patent as many." Likewise, it is not
+ necessary that more than one person use the invention. *Egbert
+ v.**Lippmann,* 104 U.S. 333, 336 (1881).
+ 
+
+**II.** **PUBLIC KNOWLEDGE IS NOT NECESSARILY PUBLIC USE UNDER Pre-AIA 35 U.S.C.
+ 102(b)**Mere knowledge of the invention by the public does not warrant
+ rejection under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. **[Pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** bars public use or sale, not public knowledge.
+ *TP**Labs., Inc. v. Professional Positioners, Inc.,* 724 F.2d 965,
+ 970, 220 USPQ 577, 581 (Fed. Cir. 1984).
+ 
+
+
+Note, however, that public knowledge may provide grounds for
+ rejection under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP § 2132](s2132.html#d0e203390)**. 
+ 
+
+***A.*** ***Commercial Versus Noncommercial Use and the Impact of
+ Secrecy***There are limited circumstances in which a secret or
+ confidential use of an invention may give rise to the public use bar.
+ "[S]ecrecy of use alone is not sufficient to show that existing knowledge has
+ not been withdrawn from public use; commercial exploitation is also forbidden."
+ *Invitrogen,* 424 F.3d at 1382, 76 USPQ2d at 1745-46 (The
+ fact that patentee secretly used the claimed invention internally before the
+ critical date to develop future products that were never sold was by itself
+ insufficient to create a public use bar to patentability.).
+ 
+
+**1.** **"Public Use" and "Non-secret Use" Are Not Necessarily
+ Synonymous**"Public" is not necessarily synonymous with "non- secret."
+ The fact "that non-secret uses of the device were made [by the inventor or
+ someone connected with the inventor] prior to the critical date is not
+ itself dispositive of the issue of whether activity barring a patent under
+ **[pre-AIA
+ 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** occurred. The fact that the device
+ was not hidden from view may make the use not secret, but nonsecret use is
+ not *ipso facto* ‘public use’ activity. Nor, it must be
+ added, is all secret use *ipso facto* not ‘public use’
+ within the meaning of the statute," if the inventor is making commercial use
+ of the invention under circumstances which preserve its secrecy. *TP
+ Labs., Inc.**v.**Professional Positioners, Inc.,* 724 F.2d 965, 972, 220
+ USPQ 577, 583 (Fed. Cir. 1983) (citations omitted). 
+ 
+
+**2.** **Even If the Invention Is Hidden, Inventor Who Puts Machine or Article
+ Embodying the Invention in Public View Is Barred from Obtaining a Patent
+ as the Invention Is in Public Use** When the inventor or someone connected to the inventor puts
+ the invention on display or sells it, there is a "public use" within the
+ meaning of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** even though by its very
+ nature an invention is completely hidden from view as part of a larger
+ machine or article, if the invention is otherwise used in its natural and
+ intended way and the larger machine or article is accessible to the public.
+ *In re Blaisdell,* 242 F.2d 779, 783, 113 USPQ 289, 292
+ (CCPA 1957); *Hall**v. Macneale,* 107 U.S. 90, 96-97 (1882); *Ex
+ parte**Kuklo,* 25 USPQ2d 1387, 1390 (Bd. Pat. App. & Inter.
+ 1992) (Display of equipment including the structural features of the claimed
+ invention to visitors of laboratory is public use even though public did not
+ see inner workings of device. The person to whom the invention is publicly
+ disclosed need not understand the significance and technical complexities of
+ the invention.).
+ 
+
+**3.** **There Is No Public Use If Inventor Restricted Use to Locations Where
+ There Was a Reasonable Expectation of Privacy and the Use Was for His or
+ Her Own Enjoyment** An inventor’s private use of the invention, for his or her
+ own enjoyment is not a public use. *Moleculon Research
+ Corp.**v. CBS, Inc.,* 793 F.2d 1261, 1265, 229 USPQ 805, 809
+ (Fed. Cir. 1986) (Inventor showed inventive puzzle to close friends while in
+ his dorm room and later the president of the company at which he was working
+ saw the puzzle on the inventor’s desk and they discussed it. Court held that
+ the inventor retained control and thus these actions did not result in a
+ "public use.").
+ 
+
+**4.** **The Presence or Absence of a Confidentiality Agreement is Not
+ Dispositive of the Public Use Issue**"The presence or absence of a confidentiality agreement is
+ not dispositive of the public use issue, but ‘is one factor to be considered
+ in assessing all the evidence.’" *Bernhardt, L.L.C. v. Collezione
+ Europa USA, Inc.,* 386 F.3d 1371, 1380-81, 72 USPQ2d 1901, 1909
+ (Fed. Cir. 2004) (quoting *Moleculon Research Corp. v. CBS
+ Inc.,* 793 F.2d 1261, 1266, 229 USPQ 805, 808 (Fed. Cir. 1986)).
+ The court stressed that it is necessary to analyze the evidence of public
+ use in the context of policies that underlie the public use and on sale bar
+ that include "‘discouraging removal of inventions from the public domain
+ that the public justifiably believes are freely available, prohibiting an
+ extension of the period for exploiting an invention, and favoring prompt and
+ widespread disclosure of inventions.’" *Bernhardt,* 386
+ F.3d at 1381, 72 USPQ2d at 1909. See also *Invitrogen,* 424
+ F.3d at 1379, 76 USPQ2d at 1744; **[MPEP § 2133.03](s2133.html#d0e203781)**, subsection
+ I. Evidence that the court emphasized included the "‘nature of the activity
+ that occurred in public; the public access to and knowledge of the public
+ use; [and] whether there were any confidentiality obligations imposed on
+ persons who observed the use.’" *Bernhardt,* 386 F.3d at
+ 1381, 72 USPQ2d at 1909. For example, the court in
+ *Bernhardt* noted that an exhibition display at issue in
+ the case "was not open to the public, that the identification of attendees
+ was checked against a list of authorized names by building security and
+ later at a reception desk near the showroom, that attendees were escorted
+ through the showroom, and that the attendees were not permitted to make
+ written notes or take photographs inside the showroom."
+ *Id.* The court remanded the issue of whether the
+ exhibition display was a public use for further proceedings since the
+ district court "focused on the absence of any confidentiality agreements and
+ did not discuss or analyze how the totality of the circumstances
+ surrounding" the exhibition "comports with the policies underlying the
+ public use bar." *Id.*
+
+***B.*** ***Use by Third Parties Deriving the Invention from
+ Applicant**** 
+
+**An Invention Is in Public Use If the Inventor Allows Another To Use
+ the Invention Without Restriction or Obligation of Secrecy**"Public use" of a claimed invention under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** occurs when the inventor allows another person
+ to use the invention without limitation, restriction or obligation of
+ secrecy to the inventor."  *In re Smith,* 714 F.2d 1127,
+ 1134, 218 USPQ 976, 983 (Fed. Cir. 1983). The presence or absence of a
+ confidentiality agreement is not itself determinative of the public use
+ issue, but is one factor to be considered along with the time, place, and
+ circumstances of the use which show the amount of control the inventor
+ retained over the invention. *Moleculon Research Corp.**v. CBS, Inc.,* 793 F.2d 1261, 1265, 229 USPQ 805, 809
+ (Fed. Cir. 1986). See *Ex parte C,* 27 USPQ2d 1492, 1499
+ (Bd. Pat. App. & Inter. 1992) (Inventor sold inventive soybean seeds to
+ growers who contracted and were paid to plant the seeds to increase stock
+ for later sale. The commercial nature of the use of the seed coupled with
+ the "on-sale" aspects of the contract and apparent lack of confidentiality
+ requirements rose to the level of a "public use" bar.); *Egbert
+ v.**Lippmann,* 104 U.S. 333, 336 (1881) (Public use found
+ where inventor allowed another to use inventive corset insert, though hidden
+ from view during use, because he did not impose an obligation of secrecy or
+ restrictions on its use.). 
+ 
+
+***C.*** ***Use by Independent Third Parties**** 
+
+Use by an Independent Third Party Is Public Use If
+ It Sufficiently "Informs" the Public of the Invention or a Competitor Could
+ Reasonably Ascertain the Invention
+ Any "nonsecret" use of an invention by someone unconnected
+ to the inventor, such as someone who has independently made the invention,
+ in the ordinary course of a business for trade or profit may be a "public
+ use," *Bird Provision Co. v. Owens Country Sausage,**Inc.,* 568 F.2d 369, 374-76, 197 USPQ 134, 138-40 (5th
+ Cir. 1978). Additionally, even a "secret" use by another inventor of a
+ machine or process to make a product is "public" if the details of the
+ machine or process are ascertainable by inspection or analysis of the
+ product that is sold or publicly displayed. *Gillman v.
+ Stern,* 114 F.2d 28, 46 USPQ 430 (2d Cir. 1940); *Dunlop
+ Holdings, Ltd. v. Ram Golf Corp.,* 524 F.2d 33, 36-7, 188 USPQ
+ 481, 483-484 (7th Cir. 1975). If the details of an inventive process are not
+ ascertainable from the product sold or displayed and the third party has
+ kept the invention as a trade secret then that use is not a public use and
+ will not bar a patent issuing to someone unconnected to the user.
+ *W.L. Gore & Assocs. v. Garlock, Inc.,* 721 F.2d
+ 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). However, a device qualifies
+ as prior art if it places the claimed features in the
+ public's possession before the critical date even if other
+ unclaimed aspects of the device were not publicly
+ available. *Lockwood v. American Airlines, Inc.,* 107 F.3d
+ 1505, 1570-71, 41 USPQ2d 1961, 1964-65 (Fed. Cir. 1997) (Computer
+ reservation system was prior art even though "essential algorithms of the
+ SABRE software were proprietary and confidential and...those aspects of the
+ system that were readily apparent to the public would not have been
+ sufficient to enable one skilled in the art to duplicate the [unclaimed
+ aspects of the] system."). The extent that the public becomes "informed" of
+ an invention involved in public use activity by one other than an applicant
+ depends upon the factual circumstances surrounding the activity and how
+ these comport with the policies underlying the on sale and public use bars.
+ *Manville Sales Corp. v. Paramount Sys., Inc*., 917 F.2d
+ 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990) (quoting *King
+ Instrument Corp.**v. Otari Corp.,* 767 F.2d 833, 860, 226 USPQ 402, 406
+ (Fed. Cir. 1985)). By way of example, in an allegedly "secret" use by a
+ third party other than an applicant, if a large number of employees of such
+ a party, who are not under a promise of secrecy, are permitted unimpeded
+ access to an invention, with affirmative steps by the party to educate other
+ employees as to the nature of the invention, the public is "informed."
+ *Chemithon Corp.**v.**Proctor & Gamble Co.,* 287 F. Supp. 291, 308, 159 USPQ
+ 139, 154 (D.Md. 1968), *aff’d.,* 427 F.2d 893, 165 USPQ 678
+ (4th Cir. 1970).
+ 
+
+
+Even if public use activity by one other than an applicant
+ is not sufficiently "informing," there may be adequate grounds upon which to
+ base a rejection under **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302383)**
+ and **[pre-AIA 35 U.S.C. 102(g)](mpep-9015-appx-l.html#d0e302383)**. See  *Dunlop
+ Holdings Ltd. v. Ram Golf Corp.,* 524 F.2d 33, 188 USPQ 481 (7th
+ Cir. 1975). See **[MPEP § 2137](s2137.html#d0e206570)** and
+ **[§
+ 2138](s2138.html#d0e207005)**. 
+ 
+
+
+
+
+# 2133.03(b) "On Sale" [R-10.2019]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** . See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+An impermissible sale has occurred if there was a definite sale, or
+ offer to sell, more than 1 year before the effective filing date of the claimed
+ invention and the subject matter of the sale, or offer to sell, fully anticipated the
+ claimed invention or would have rendered the claimed invention obvious by its
+ addition to the prior art. *Ferag AG v. Quipp, Inc.,* 45 F.3d 1562,
+ 1565, 33 USPQ2d 1512, 1514 (Fed. Cir. 1995). The on-sale bar of **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** is triggered if the invention is both (1) the subject of
+ a commercial offer for sale not primarily for experimental purposes and (2) ready for
+ patenting. *Pfaff v. Wells Elecs., Inc.,* 525 U.S. 55, 67, 48 USPQ2d
+ 1641, 1646-47 (1998). Traditional contract law principles are applied when
+ determining whether a commercial offer for sale has occurred. See *Linear
+ Tech. Corp. v. Micrel, Inc.,* 275 F.3d 1040, 1048, 61 USPQ2d 1225, 1229
+ (Fed. Cir. 2001), *petition for cert. filed,* 71 USLW 3093 (July 03,
+ 2002) (No. 02-39); *Group One, Ltd. v. Hallmark Cards, Inc.,* 254
+ F.3d 1041,1047, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001) ("As a general proposition, we
+ will look to the Uniform Commercial Code (‘UCC’) to define whether … a communication
+ or series of communications rises to the level of a commercial offer for sale.").
+ 
+
+**I.** **THE MEANING OF "SALE"**A sale is a contract between parties wherein the seller agrees
+ "to give and to pass rights of property" in return for the buyer’s payment or
+ promise "to pay the seller for the things bought or sold." *In re
+ Caveney,* 761 F.2d 671, 676, 226 USPQ 1, 4 (Fed. Cir. 1985). A
+ contract for the sale of goods requires a concrete offer and acceptance of that
+ offer. See, e.g., *Linear Tech.,* 275 F.3d at 1052-54, 61 USPQ2d
+ at 1233-34 (Court held there was no sale within the meaning of **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** where prospective purchaser submitted an order for
+ goods at issue, but received an order acknowledgement reading "will advise-not
+ booked." Prospective purchaser would understand that order was not accepted.).
+ 
+
+
+"[T]o be ‘on sale’ under **[§ 102(b)](mpep-9015-appx-l.html#d0e302395)**, a
+ product must be the subject of a commercial sale or offer for sale," and to be a
+ commercial sale it must be "one that bears the general hallmarks of a sale
+ pursuant to Section 2-106 of the Uniform Commercial Code." *Medicines Co.
+ v. Hospira, Inc.,* 827 F.3d 1363, 1364 119 USPQ2d 1329, 1330 (Fed.
+ Cir. 2016) (en banc). The court in *Medicines Co.* went on to
+ explain "[s]ection 2-106(1) of the Uniform Commercial Code describes a ‘sale’ as
+ ‘the passing of title from the seller to the buyer for a price.’ U.C.C. §
+ 2-106(1). The passage of title is a helpful indicator of whether a product is ‘on
+ sale,’ as it suggests when the inventor gives up its interest and control over the
+ product." *Id.* at 1375, 119 USPQ2d at 1338. The
+ *Medicines Co.* court held "a contract manufacturer’s sale to
+ the inventor of manufacturing services where neither title to the embodiments nor
+ the right to market the same passes to the supplier does not constitute an
+ invalidating sale under **[§ 102(b)](mpep-9015-appx-l.html#d0e302395)**."
+ *Id.* at 1381, 119 USPQ2d at 1342.
+ 
+
+***A.******Conditional Sale May Bar a Patent***An invention may be deemed to be "on sale" even though the
+ sale was conditional. The fact that the sale is conditioned on buyer
+ satisfaction does not, without more, prove that the sale was for an
+ experimental purpose. *Strong v. General Elec. Co.,* 434 F.2d
+ 1042, 1046, 168 USPQ 8, 12 (5th Cir. 1970).
+ 
+
+***B.******Nonprofit Sale May Bar a Patent***A "sale" need not be for profit to bar a patent. If the sale
+ was for the commercial exploitation of the invention, it is "on sale" within
+ the meaning of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.
+ *In re Dybel,* 524 F.2d 1393, 1401, 187 USPQ 593, 599 (CCPA
+ 1975) ("Although selling the devices for a profit would have demonstrated the
+ purpose of commercial exploitation, the fact that appellant realized no profit
+ from the sales does not demonstrate the contrary.").
+ 
+
+***C.******A Single Sale or Offer To Sell May Bar a Patent***Even a single sale or offer to sell the invention may bar
+ patentability under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.
+ *Consolidated**Fruit-Jar Co. v. Wright,* 94 U.S. 92, 94 (1876);
+ *Atlantic Thermoplastics Co. v. Faytex Corp.,* 970 F.2d
+ 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).
+ 
+
+***D.******A Sale of Rights Is Not a Sale of the Invention and Will Not in
+ Itself Bar a Patent***"[A]n assignment or sale of the rights in the invention and
+ potential patent rights is not a sale of ‘the invention’ within the meaning of
+ **[[pre-AIA]
+ section 102(b)](mpep-9015-appx-l.html#d0e302383)**." *Moleculon Research Corp. v.
+ CBS, Inc.,* 793 F.2d 1261, 1267, 229 USPQ 805, 809 (Fed. Cir.
+ 1986); see also *Elan Corp., PLC v. Andrx Pharms. Inc.,*
+ 366 F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004); *In re
+ Kollar,* 286 F.3d 1326, 1330 n.3, 1330-1331, 62 USPQ2d 1425, 1428
+ n.3, 1428-1429 (Fed. Cir. 2002) (distinguishing licenses which trigger the
+ on-sale bar (e.g., a standard computer software license wherein the product is
+ just as immediately transferred to the licensee as if it were sold), from
+ licenses that merely grant rights to an invention which do not *per
+ se* trigger the on-sale bar (e.g., exclusive rights to market the
+ invention or potential patent rights)); *Group One, Ltd. v. Hallmark
+ Cards, Inc.,* 254 F.3d 1041, 1049 n. 2, 59 USPQ2d 1121, 1129 n. 2
+ (Fed. Cir. 2001).
+ 
+
+
+"[T]he mere sale of manufacturing services by a
+ contract manufacturer to an inventor to create embodiments of a patented
+ product for the inventor does not constitute a ‘commercial sale’ of the
+ invention." *Medicines Co. v. Hospira, Inc.,* 827 F.3d 1363,
+ 1373 119 USPQ2d 1329, 1336 (Fed. Cir. 2016) (*en banc*). The
+ court in *Medicines Co.* further stated that "commercial
+ benefit—even to both parties in a transaction—is not enough to trigger the
+ on-sale bar of **[§ 102(b)](mpep-9015-appx-l.html#d0e302395)**; the transaction
+ must be one in which the product is ‘on sale’ in the sense that it is
+ ‘commercially marketed.’" *Id.* at 1373-74, 119 USPQ2d at
+ 1336-37.
+ 
+
+***E.******Buyer Must Be Uncontrolled by the Seller or Offerer***A sale or offer for sale must take place between separate
+ entities. *In re Caveney,* 761 F.2d 671, 676, 226 USPQ 1, 4
+ (Fed. Cir. 1985). Where the parties to the alleged sale are related, whether
+ there is a statutory bar depends on whether the seller so controls the
+ purchaser that the invention remains out of the public’s hands. *Ferag
+ AG v. Quipp, Inc.,* 45 F.3d 1562, 1566, 33 USPQ2d 1512, 1515 (Fed.
+ Cir. 1995) (Where the seller is a parent company of the buyer company, but the
+ President of the buyer company had "essentially unfettered" management
+ authority over the operations of the buyer company, the sale was a statutory
+ bar.).
+ 
+
+**II.** **OFFERS FOR SALE**"Only an offer which rises to the level of a commercial offer for
+ sale, one which the other party could make into a binding contract by simple
+ acceptance (assuming consideration), constitutes an offer for sale under
+ **[§102(b)](mpep-9015-appx-l.html#d0e302395)**." *Group One, Ltd. v. Hallmark Cards,
+ Inc.,* 254 F.3d 1041,1048, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001). 
+ 
+
+***A.******Rejected or Unreceived Offer for Sale Is Enough To Bar a
+ Patent***Since the statute creates a bar when an invention is placed
+ "on sale," a mere offer to sell is sufficient commercial activity to bar a
+ patent. *In re Theis,* 610 F.2d 786, 791, 204 USPQ 188, 192
+ (CCPA 1979). Even a rejected offer may create an on sale bar. *UMC
+ Elecs. v. United States,* 816 F.2d 647, 653, 2 USPQ2d 1465, 1469
+ (Fed. Cir. 1987). In fact, the offer need not even be actually received by a
+ prospective purchaser. *Wende v. Horine,* 225 F. 501 (7th Cir.
+ 1915). 
+ 
+
+***B.******Delivery of the Offered Item Is Not Required***"It is not necessary that a sale be consummated for the bar to
+ operate." *Buildex v. Kason Indus.,**Inc.,* 849 F.2d 1461, 1463-64, 7 USPQ2d 1325, 1327-28 (Fed.
+ Cir. 1988) (citations omitted). See also *Weatherchem Corp. v. J.L.
+ Clark, Inc.,* 163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed.
+ Cir. 1998) (A signed purchase agreement prior to the critical date constituted
+ a commercial offer; it was immaterial that there was no delivery of later
+ patented caps and no exchange of money until after critical date.).
+ 
+
+***C.******Seller Need Not Have the Goods "On Hand" When the Offer for Sale Is
+ Made***Goods need not be "on hand" and transferred at the time of the
+ sale or offer. The date of the offer for sale is the effective date of the "on
+ sale" activity. *J. A. La Porte, Inc. v. Norfolk Dredging
+ Co.,* 787 F.2d 1577, 1582, 229 USPQ 435, 438 (Fed. Cir. 1986).
+ However, the invention must be complete and "ready for patenting" (see
+ **[MPEP §
+ 2133.03(c)](s2133.html#d0e204494)**) before the critical date. *Pfaff
+ v. Wells Elecs., Inc.,* 525 U.S. 55, 67, 48 USPQ2d 1641, 1647
+ (1998). See also *Micro Chemical, Inc. v. Great Plains Chemical
+ Co.,* 103 F.3d 1538, 1545, 41 USPQ2d 1238, 1243 (Fed. Cir. 1997)
+ (The on-sale bar was not triggered by an offer to sell because the inventor
+ "was not close to completion of the invention at the time of the alleged offer
+ and had not demonstrated a high likelihood that the invention would work for
+ its intended purpose upon completion."); *Shatterproof Glass Corp. v.
+ Libbey-Owens Ford Co.,* 758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985)
+ (Where there was no evidence that the samples shown to the potential customers
+ were made by the new process and apparatus, the offer to sell did not rise to
+ the level of an on sale bar.). Compare *Barmag Barmer Maschinenfabrik
+ AG v. Murata Mach., Ltd.,* 731 F.2d 831, 221 USPQ 561 (Fed. Cir.
+ 1984) (Where a "make shift" model of the inventive product was shown to the
+ potential purchasers in conjunction with the offer to sell, the offer was
+ enough to bar a patent under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.).
+ 
+ 
+
+***D.******Material Terms of an Offer for Sale Must be Present***"[A] communication that fails to constitute a definite offer
+ to sell the product and to include material terms is not an ‘offer’ in the
+ contract sense." *Elan Corp., PLC v. Andrx Pharms. Inc.,* 366
+ F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004). The court stated that
+ an "offer to enter into a license under a patent for future sale of the
+ invention covered by the patent when and if it has been developed... is not an
+ offer to sell the patented invention that constitutes an on-sale bar."
+ *Id.,* 70 USPQ2d at 1726. Accordingly, the court concluded
+ that Elan’s letter was not an offer to sell a product. In addition, the court
+ stated that the letter lacked material terms of a commercial offer such as
+ pricing for the product, quantities, time and place of delivery, and product
+ specifications and that the dollar amount in the letter was not a price term
+ for the sale of the product but rather the amount requested was to form and
+ continue a partnership, explicitly referred to as a "licensing fee."
+ *Id.*
+
+**III.** **SALE BY INVENTOR, ASSIGNEE OR OTHERS ASSOCIATED WITH THE INVENTOR IN THE
+ COURSE OF BUSINESS*****A.******Sale Activity Need Not Be Public***Unlike questions of public use, there is no requirement that
+ "on sale" activity be "public." "Public" as used in **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** modifies "use" only. "Public" does not modify
+ "sale." *Hobbs v. United States,* 451 F.2d 849, 171 USPQ 713,
+ 720 (5th Cir. 1971). 
+ 
+
+***B.******Inventor’s Consent to the Sale Is Not a Prerequisite To Finding an
+ On Sale Bar***If the invention was placed on sale by a third party who
+ obtained the invention from the inventor, a patent is barred even if the
+ inventor did not consent to the sale or have knowledge that the invention was
+ embodied in the sold article. *Electric Storage Battery Co. v.
+ Shimadzu,* 307 U.S. 5, 41 USPQ 155 (1938); *In re
+ Blaisdell,* 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA 1957);
+ *CTS Corp. v. Electro Materials Corp. of America,* 469 F.
+ Supp. 801, 819, 202 USPQ 22, 38 (S.D.N.Y. 1979). 
+ 
+
+***C.******Objective Evidence of Sale or Offer To Sell Is Needed***In determining if a sale or offer to sell the claimed
+ invention has occurred, a key question to ask is whether the inventor sold or
+ offered for sale a product that embodies the invention claimed in the
+ application. Objective evidence such as a description of the inventive product
+ in the contract of sale or in another communication with the purchaser controls
+ over an uncommunicated intent by the seller to deliver the inventive product
+ under the contract for sale. *Ferag AG v. Quipp, Inc.,* 45
+ F.3d 1562, 1567, 33 USPQ2d 1512, 1516 (Fed. Cir. 1995) (On sale bar found where
+ initial negotiations and agreement containing contract for sale neither clearly
+ specified nor precluded use of the inventive design, but an order confirmation
+ prior to the critical date did specify use of inventive design.). The purchaser
+ need not have actual knowledge of the invention for it to be on sale. The
+ determination of whether "the offered product is in fact the claimed invention
+ may be established by any relevant evidence, such as memoranda, drawings,
+ correspondence, and testimony of witnesses." *RCA Corp. v. Data Gen.
+ Corp.,* 887 F.2d 1056, 1060, 12 USPQ2d 1449, 1452 (Fed. Cir. 1989).
+ However, "what the purchaser reasonably believes the inventor to be offering is
+ relevant to whether, on balance, the offer objectively may be said to be of the
+ patented invention." *Envirotech Corp. v. Westech Eng’g,
+ Inc.,* 904 F.2d 1571, 1576, 15 USPQ2d 1230, 1234 (Fed. Cir. 1990)
+ (Where a proposal to supply a general contractor with a product did not mention
+ a new design but, rather, referenced a prior art design, the uncommunicated
+ intent of the supplier to supply the new design if awarded the contract did not
+ constitute an "on sale" bar to a patent on the new design, even though the
+ supplier’s bid reflected the lower cost of the new design.). 
+ 
+
+**IV.** **SALES BY INDEPENDENT THIRD PARTIES*** 
+
+***A.******Sales or Offers for Sale by Independent Third Parties Will Bar a
+ Patent***Sale or offer for sale of the invention by an independent
+ third party more than 1 year before the filing date of applicant’s patent will
+ bar applicant from obtaining a patent. "An exception to this rule exists where
+ a patented method is kept secret and remains secret after a sale of the
+ unpatented product of the method. Such a sale prior to the critical date is a
+ bar if engaged in by the patentee or patent applicant, but not if engaged in by
+ another." *In re Caveney,* 761 F.2d 671, 675-76, 226 USPQ 1,
+ 3-4 (Fed. Cir. 1985).
+ 
+
+***B.******Nonprior Art Publications Can Be Used as Evidence of Sale Before
+ the Critical Date***Abstracts identifying a product’s vendor containing
+ information useful to potential buyers such as whom to contact, price terms,
+ documentation, warranties, training and maintenance along with the date of
+ product release or installation before the inventor’s critical date may provide
+ sufficient evidence of prior sale by a third party to support a rejection based
+ on **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** or **[103](mpep-9015-appx-l.html#d0e302450)**. *In re
+ Epstein,* 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Examiner's
+ rejection was based on nonprior art published abstracts which disclosed
+ software products meeting the claims. The abstracts specified software release
+ dates and dates of first installation which were more than 1 year before
+ applicant’s filing date.).
+ 
+
+
+
+
+# 2133.03(c) The "Invention" [R-10.2019]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+
+#### *Pre-AIA 35 U.S.C. 102   
+ Conditions for patentability; novelty and loss of right to
+ patent.*
+
+
+A person shall be entitled to a patent unless -
+
+
+\*\*\*\*\*
+
+
+* (b) the invention was…in public use or on sale in this
+ country, more than one year prior to the date of the application for patent
+ in the United States
+
+
+\*\*\*\*\*
+
+
+(Emphasis added).
+
+
+**I.** **THE INVENTION MUST BE "READY FOR PATENTING"**In *Pfaff v. Wells Elecs., Inc.,* 525 U.S. 55,
+ 66-68, 48 USPQ2d 1641, 1647 (1998), the Supreme Court enunciated a two-prong test
+ for determining whether an invention was "on sale" within the meaning of
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302395)** even if it has not yet been reduced to
+ practice. "[T]he on-sale bar applies when two conditions are satisfied before the
+ critical date [more than one year before the effective filing date of the claimed
+ invention]. First, the product must be the subject of a commercial offer for
+ sale…. Second, the invention must be ready for patenting." *Id.*
+ at 67, 119 S.Ct. at 311-12, 48 USPQ2d at 1646-47. 
+ 
+
+
+The Federal Circuit explained that the Supreme Court’s "ready for
+ patenting" prong applies in the context of both the on sale and public use bars.
+ *Invitrogen Corp. v. Biocrest Manufacturing L.P.,* 424 F.3d
+ 1374, 1379, 76 USPQ2d 1741, 1744 (Fed. Cir. 2005) ("A bar under **[[pre-AIA] section
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** arises where, before the critical date, the invention
+ is in public use and ready for patenting."). "Ready for patenting," the second
+ prong of the *Pfaff* test, "may be satisfied in at least two
+ ways: by proof of reduction to practice before the critical date; or by proof that
+ prior to the critical date the inventor had prepared drawings or other
+ descriptions of the invention that were sufficiently specific to enable a person
+ skilled in the art to practice the invention." *Id.* at 67, 199
+ S.Ct. at 311-12, 48 USPQ2d at 1647 (The patent was held invalid because the
+ invention for a computer chip socket was "ready for patenting" when it was offered
+ for sale more than one year prior to the application filing date. Even though the
+ invention had not yet been reduced to practice, the manufacturer was able to
+ produce the claimed computer chip sockets using the inventor’s detailed drawings
+ and specifications, and those sockets contained all elements of invention claimed
+ in the patent.). See also *Weatherchem Corp. v. J.L. Clark Inc.,*
+ 163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed. Cir. 1998) (The invention was
+ held "ready for patenting" since the detailed drawings of plastic dispensing caps
+ offered for sale "contained each limitation of the claims and were sufficiently
+ specific to enable person skilled in art to practice the invention".). 
+ 
+
+
+If the invention was actually reduced to practice before being
+ sold or offered for sale more than 1 year before filing of the application, a
+ patent will be barred. *Vanmoor v. Wal-Mart Stores, Inc.,* 201
+ F.3d 1363, 1366-67, 53 USPQ2d 1377, 1379 (Fed. Cir. 2000) ("Here the pre-critical
+ date sales were of completed cartridges made to specifications that remained
+ unchanged to the present day, showing that any invention embodied in the accused
+ cartridges was reduced to practice before the critical date. The
+ *Pfaff* ready for patenting condition is also satisfied
+ because the specification drawings, available prior to the critical date, were
+ actually used to produce the accused cartridges."); *In re
+ Hamilton,* 882 F.2d 1576, 1580, 11 USPQ2d 1890, 1893 (Fed. Cir. 1989).
+ 
+ "If a product that is offered for sale
+ inherently possesses each of the limitations of the claims, then the invention
+ is on sale, whether or not the parties to the transaction recognize that the
+ product possesses the claimed characteristics."
+ 
+ 
+ *Abbott Laboratories v. Geneva Pharmaceuticals, Inc.,* 182 F.3d
+ 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999) (Claim for a particular
+ anhydrous crystalline form of a pharmaceutical compound was held invalid under the
+ on-sale bar of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**, even though the parties to the
+ U.S. sales of the foreign manufactured compound did not know the identity of the
+ particular crystalline form.); *STX LLC. v. Brine Inc.,* 211 F.3d
+ 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (Claim for a lacrosse stick was
+ held invalid under the on-sale bar despite the argument that it was not known at
+ the time of sale whether the sticks possessed the recited "improved playing and
+ handling characteristics." "Subjective qualities inherent in a product, such as
+ ‘improved playing and handling’, cannot serve as an escape hatch to circumvent an
+ on-sale bar."). Actual reduction to practice in the context of an on-sale bar
+ issue usually requires testing under actual working conditions in such a way as to
+ demonstrate the practical utility of an invention for its intended purpose beyond
+ the probability of failure, unless by virtue of the very simplicity of an
+ invention its practical operativeness is clear. *Field v.
+ Knowles,* 183 F.2d 593, 601, 86 USPQ 373, 379 (CCPA 1950);
+ *Steinberg v. Seitz,* 517 F.2d 1359, 1363, 186 USPQ 209, 212
+ (CCPA 1975). 
+ 
+
+
+The invention need not be ready for satisfactory commercial
+ marketing for sale to bar a patent. *Atlantic Thermoplastics Co. v. Faytex
+ Corp.,* 970 F.2d 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).
+ 
+ 
+
+**II.** **INVENTOR HAS SUBMITTED A 37 CFR 1.131 AFFIDAVIT OR DECLARATION**Affidavits or declarations submitted under **[37 CFR
+ 1.131](mpep-9020-appx-r.html#aia_d0e323504)** to swear behind a reference may constitute, among
+ other things, an admission that an invention was "complete" more than 1 year
+ before the filing of an application. See *In re Foster,* 343 F.2d
+ 980, 987-88, 145 USPQ 166, 173 (CCPA 1965); *Dart Indus. v. E.I. duPont de
+ Nemours & Co.,* 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir.
+ 1973). Also see **[MPEP
+ § 715.10](s715.html#d0e92043)**. 
+ 
+
+**III.** **SALE OF A PROCESS**A claimed process, which is a series of acts or steps, is not
+ sold in the same sense as is a claimed product, device, or apparatus, which is a
+ tangible item. "‘Know-how’ describing what the process consists of and how the
+ process should be carried out may be sold in the sense that the buyer acquires
+ knowledge of the process and obtains the freedom to carry it out pursuant to the
+ terms of the transaction. However, such a transaction is not a ‘sale’ of the
+ invention within the meaning of **[[pre-AIA] §102(b)](mpep-9015-appx-l.html#d0e302383)** because the
+ process has not been carried out or performed as a result of the transaction."
+ *In re Kollar,* 286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429
+ (Fed. Cir. 2002). However, sale of a product made by the claimed process by the
+ patentee or a licensee would constitute a sale of the process within the meaning
+ of **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. See *id.* at 1333, 62 USPQ2d
+ at 1429; *D.L. Auld Co. v. Chroma Graphics Corp.,* 714 F.2d 1144,
+ 1147-48, 219 USPQ 13, 15-16 (Fed. Cir. 1983) (Even though the sale of a product
+ made by a claimed method before the critical date did not reveal anything about
+ the method to the public, the sale resulted in a "forfeiture" of any right to a
+ patent to that method); *W.L. Gore & Assocs., Inc. v. Garlock,
+ Inc.,* 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). The
+ application of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** would also be triggered by
+ actually performing the claimed process itself for consideration. See
+ *Scaltech, Inc. v. Retec/Tetra, L.L.C.,* 269 F.3d 1321, 1328,
+ 60 USPQ2d 1687, 1691(Fed. Cir. 2001) (Patent was held invalid under
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** based on patentee’s offer to perform the
+ claimed process for treating oil refinery waste more than one year before filing
+ the patent application). Moreover, the sale of a device embodying a claimed
+ process may trigger the on-sale bar. *Minton v. National Ass’n. of
+ Securities Dealers, Inc.,* 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1618
+ (Fed. Cir. 2003) (finding a fully operational computer program implementing and
+ thus embodying the claimed method to trigger the on-sale bar). However, the sale
+ of a prior art device different from that disclosed in a patent that is asserted
+ after the critical date to be capable of performing the claimed method is not an
+ on-sale bar of the process. *Poly-America LP v. GSE Lining Tech.
+ Inc.,* 383 F.3d 1303, 1308-09, 72 USPQ2d 1685, 1688-89 (Fed. Cir.
+ 2004) (stating that the transaction involving the sale of the prior art device did
+ not involve a transaction of the claimed method but instead only a device
+ different from that described in the patent for carrying out the claimed method,
+ where the device was not used to practice the claimed method until well after the
+ critical date, and where there was evidence that it was not even known whether the
+ device could perform the claimed process).
+ 
+
+
+
+
+# 2133.03(d) "In This Country" [R-10.2019]
+
+
+*[Editor Note: This MPEP section is **not applicable** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The language "in this country" in **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** does not include other WTO or NAFTA member countries,
+ but includes any State of the United States, the District of Columbia, and any
+ commonwealth, territory, or possession of the United States. See also
+ **[35 U.S.C.
+ 105](mpep-9015-appx-l.html#d0e302614)**. For purposes of judging the applicability of the
+ **[pre-AIA
+ 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** bars, public use or on sale activity must take
+ place in the United States. The "on sale" bar does not generally apply where both
+ manufacture and delivery occur in a foreign country. *Gandy v. Main Belting
+ Co.,* 143 U.S. 587, 593 (1892). However, "on sale" status can be found if
+ substantial activity prefatory to a "sale" occurs in the United States.
+ *Robbins Co. v. Lawrence Mfg. Co.,* 482 F.2d 426, 433, 178 USPQ
+ 577, 583 (9th Cir. 1973). An offer for sale, made or originating in this country, may
+ be sufficient prefatory activity to bring the offer within the terms of the statute,
+ even though sale and delivery take place in a foreign country. The same rationale
+ applies to an offer by a foreign manufacturer which is communicated to a prospective
+ purchaser in the United States prior to the critical date. *CTS Corp. v.
+ Piher Int’l Corp.,* 593 F.2d 777, 201 USPQ 649 (7th Cir. 1979).
+ 
+
+
+
+
+# 2133.03(e) Permitted Activity; Experimental Use [R-10.2019]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The question posed by the experimental use doctrine is "whether the
+ primary purpose of the inventor at the time of the sale, as determined from an
+ objective evaluation of the facts surrounding the transaction, was to conduct
+ experimentation." *Allen Eng’g Corp. v. Bartell Indus., Inc.,* 299
+ F.3d 1336, 1354, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) (quoting *EZ Dock v.
+ Schafer Sys., Inc.,* 276 F.3d 1347, 1356-57, 61 USPQ2d 1289, 1295-96
+ (Fed. Cir. 2002)) (Linn, J., concurring). Experimentation must be the primary purpose
+ and any commercial exploitation must be incidental in order for the sale to be a
+ permitted activity that does not create a bar under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)**. 
+ 
+
+
+If the use or sale was experimental, there is no bar under
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. "A use or sale is experimental for purposes of
+ **[[pre-AIA]
+ section 102(b)](mpep-9015-appx-l.html#d0e302383)** if it represents a *bona fide*
+ effort to perfect the invention or to ascertain whether it will answer its intended
+ purpose.… If any commercial exploitation does occur, it must be merely incidental to
+ the primary purpose of the experimentation to perfect the invention."
+ *LaBounty Mfg. v. United States Int’l Trade Comm’n,* 958 F.2d
+ 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting *Pennwalt Corp. v.
+ Akzona Inc.,* 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)).
+ "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).
+ 
+
+
+
+# 2133.03(e)(1) Commercial Exploitation [R-08.2017]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+One policy of the on sale and public use bars is the prevention
+ of inventors from exploiting their inventions commercially more than 1 year prior
+ to the filing of a patent application. Therefore, if applicant’s precritical date
+ activity is a sale or offer for sale that is an attempt at market penetration, a
+ patent is barred. Thus, even if there is *bona fide* experimental
+ activity, an inventor may not commercially exploit an invention more than 1 year
+ prior to the filing date of an application. *In re Theis,* 610
+ F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
+ 
+
+**I.** **THE COMMERCIAL ACTIVITY MUST LEGITIMATELY ADVANCE DEVELOPMENT OF THE
+ INVENTION TOWARDS COMPLETION**As the degree of commercial exploitation surrounding
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** activity increases, the burden on an
+ applicant to establish clear and convincing evidence of experimental activity
+ with respect to a public use becomes more difficult. Where the examiner has
+ found a *prima facie* case of a sale or an offer to sell, this
+ burden will rarely be met unless clear and convincing necessity for the
+ experimentation is established by the applicant. This does not mean, of course,
+ that there are no circumstances which would permit alleged experimental
+ activity in an atmosphere of commercial exploitation. In certain circumstances,
+ even a sale may be necessary to legitimately advance the experimental
+ development of an invention if the primary purpose of the sale is experimental.
+ *In re Theis,* 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA
+ 1979); *Robbins Co. v. Lawrence Mfg. Co.,* 482 F.2d 426, 433,
+ 178 USPQ 577, 582 (9th Cir. 1973). However, careful scrutiny by the examiner of
+ the objective factual circumstances surrounding such a sale is essential. See
+ *Ushakoff v. United States,* 327 F.2d 669, 140 USPQ 341
+ (Ct.Cl. 1964); *Cloud v. Standard Packaging Corp.,* 376 F.2d
+ 384, 153 USPQ 317 (7th Cir. 1967). 
+ 
+
+**II.** **SIGNIFICANT FACTORS INDICATIVE OF "COMMERCIAL EXPLOITATION"**As discussed in **[MPEP § 2133.03](s2133.html#d0e203781)**, a policy
+ consideration in questions of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ activity is premature "commercial exploitation" of a "completed" or "ready for
+ patenting" invention (see **[MPEP § 2133.03(c)](s2133.html#d0e204494)**). The extent
+ of commercial activity which constitutes **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ "on sale" status depends upon the circumstances of the activity, the basic
+ indicator being the subjective intent of the inventor as manifested through
+ objective evidence. The following activities should be used by the examiner as
+ indicia of this subjective intent:
+ 
+
+
+* (A) Preparation of various contemporaneous "commercial"
+ documents, e.g., orders, invoices, receipts, delivery schedules, etc.;
+* (B) Preparation of price lists *(Akron
+ Brass**Co.**v. Elkhart Brass Mfg. Co.,* 353 F.2d 704, 709, 147 USPQ
+ 301, 305 (7th Cir. 1965)) and distribution of price quotations
+ *(Amphenol Corp.**v. Gen'l Time Corp.,* 397 F.2d 431, 436, 158 USPQ 113,
+ 117 (7th Cir. 1968));
+* (C) Display of samples to prospective customers
+ *(Cataphote Corp. v. DeSoto Chemical Coatings,**Inc.,* 356 F.2d 24, 27, 148 USPQ 527, 529 (9th Cir.
+ 1966) *mod. on other grounds,* 358 F.2d 732, 149 USPQ
+ 159 (9th Cir.), *cert. denied,* 385 U.S. 832 (1966);
+ *Chicopee Mfg. Corp. v. Columbus Fiber Mills Co.,*
+ 165 F.Supp. 307, 323-325, 118 USPQ 53, 65-67 (M.D.Ga. 1958));
+* (D) Demonstration of models or prototypes *(General
+ Elec. Co. v. United States,* 206 USPQ 260, 266-67 (Ct. Cl.
+ 1979); *Red Cross Mfg. v. Toro Sales Co.,* 525 F.2d
+ 1135, 1140, 188 USPQ 241, 244-45 (7th Cir. 1975); *Philco
+ Corp.**v. Admiral Corp.,* 199 F. Supp. 797, 815-16, 131 USPQ
+ 413, 429-30 (D. Del. 1961)), especially at trade conventions
+ *(Interroyal Corp.**v. Simmons Co.,* 204 USPQ 562, 563-65 (S.D. N.Y.
+ 1979)), and even though no orders are actually obtained
+ *(Monogram Mfg. v. F. & H. Mfg.,* 144 F.2d 412,
+ 62 USPQ 409, 412 (9th Cir. 1944));
+* (E) Use of an invention where an admission fee is charged
+ *(In re Josserand,* 188 F.2d 486, 491, 89 USPQ 371,
+ 376 (CCPA 1951); *Greenewalt v. Stanley,* 54 F.2d 195,
+ 12 USPQ 122 (3d Cir. 1931)); and
+* (F) Advertising in publicity releases, brochures, and
+ various periodicals *(In re Theis,* 610 F.2d 786, 792
+ n.6, 204 USPQ 188, 193 n. 6 (CCPA 1979); *Interroyal Corp. v.
+ Simmons Co.,* 204 USPQ 562, 564-66 (S.D.N.Y.1979);
+ *Akron Brass, Co. v. Elkhart Brass Mfg.,**Inc.,* 353 F.2d 704, 709, 147 USPQ 301, 305 (7th
+ Cir.1965); *Tucker Aluminum Prods. v. Grossman,* 312
+ F.2d 393, 394, 136 USPQ 244, 245 (9th Cir. 1963)).
+
+
+See **[MPEP § 2133.03(e)(4)](s2133.html#d0e203781)** for
+ factors indicative of an experimental purpose.
+ 
+
+
+
+
+# 2133.03(e)(2) Intent [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+"When sales are made in an ordinary commercial environment and
+ the goods are placed outside the inventor’s control, an inventor’s secretly held
+ subjective intent to ‘experiment,’ even if true, is unavailing without objective
+ evidence to support the contention. Under such circumstances, the customer at a
+ minimum must be made aware of the experimentation." *LaBounty Mfg., Inc.
+ v. United States Int’l Trade Comm’n,* 958 F.2d 1066, 1072, 22 USPQ2d
+ 1025, 1029 (Fed. Cir. 1992) (quoting  *Harrington Mfg. Co. v. Powell Mfg.
+ Co.,* 815 F.2d 1478, 1480 n.3, 2 USPQ2d 1364, 1366 n.3 (Fed. Cir.
+ 1986); *Paragon Podiatry Laboratory, Inc. v. KLM Labs., Inc.,*
+ 984 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir. 1993) (Paragon sold the inventive units
+ to the trade as completed devices without any disclosure to either doctors or
+ patients of their involvement in alleged testing. Evidence of the inventor’s
+ secretly held belief that the units were not durable and may not be satisfactory
+ for consumers was not sufficient, alone, to avoid a statutory bar.). 
+ 
+
+
+
+
+# 2133.03(e)(3) "Completeness" of the Invention [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **EXPERIMENTAL USE ENDS WHEN THE INVENTION IS ACTUALLY REDUCED TO
+ PRACTICE**Experimental use "means perfecting or completing an invention
+ to the point of determining that it will work for its intended purpose."
+ Therefore, experimental use "ends with an actual reduction to practice."
+ *RCA Corp.**v.**Data Gen. Corp.,* 887 F.2d 1056, 1061, 12 USPQ2d 1449, 1453
+ (Fed. Cir. 1989). If the examiner concludes from the evidence of record that an
+ applicant was satisfied that an invention was in fact "complete," awaiting
+ approval by the applicant from an organization such as Underwriters’
+ Laboratories will not normally overcome this conclusion. *Interroyal
+ Corp. v. Simmons Co.,* 204 USPQ 562, 566 (S.D.N.Y. 1979);
+ *Skil Corp. v. Rockwell Manufacturing Co.,* 358 F. Supp.
+ 1257, 1261, 178 USPQ 562, 565 (N.D.Ill. 1973), *aff’d. in part, rev’d
+ in part sub nom.**Skil Corp. v. Lucerne Products Inc.,* 503 F.2d 745, 183 USPQ
+ 396, 399 (7th Cir. 1974), *cert. denied,* 420 U.S. 974, 185
+ USPQ 65 (1975). See **[MPEP § 2133.03(c)](s2133.html#d0e204494)** for more
+ information of what constitutes a "complete" invention.
+ 
+
+
+The fact that alleged experimental activity does not lead to
+ specific modifications or refinements of an invention is evidence, although not
+ conclusive evidence, that such activity is not within the realm permitted by
+ the statute. This is especially the case where the evidence of record clearly
+ demonstrates to the examiner that an invention was considered "complete" by an
+ inventor at the time of the activity. Nevertheless, any modifications or
+ refinements which did result from such experimental activity must at least be a
+ feature of the claimed invention to be of any probative value. *In re
+ Theis,* 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
+ 
+
+**II.** **DISPOSAL OF PROTOTYPES**Where a prototype of an invention has been disposed of by an
+ inventor before the critical date, inquiry by the examiner should focus upon
+ the intent of the inventor and the reasonableness of the disposal under all
+ circumstances. The fact that an otherwise reasonable disposal of a prototype
+ involves incidental income is not necessarily fatal. *In re
+ Dybel,* 524 F.2d 1393, 1399, n.5, 187 USPQ 593, 597 n.5 (CCPA
+ 1975). However, if a prototype is considered "complete" by an inventor and all
+ experimentation on the underlying invention has ceased, unrestricted disposal
+ of the prototype constitutes a bar under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.
+ *In re Blaisdell,* 242 F.2d 779, 113 USPQ 289 (CCPA 1957);
+ *contra,**Watson v.**Allen,* 254 F.2d 342, 117 USPQ 68 (D.C. Cir. 1958).
+ 
+
+
+
+
+# 2133.03(e)(4) Factors Indicative of an Experimental Purpose [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The courts have considered a number of factors in determining
+ whether a claimed invention was the subject of a commercial offer for sale
+ primarily for purposes of experimentation. "These factors include: (1) the
+ necessity for public testing, (2) the amount of control over the experiment
+ retained by the inventor, (3) the nature of the invention, (4) the length of the
+ test period, (5) whether payment was made, (6) whether there was a secrecy
+ obligation, (7) whether records of the experiment were kept, (8) who conducted the
+ experiment, ... (9) the degree of commercial exploitation during testing[,] ...
+ (10) whether the invention reasonably requires evaluation under actual conditions
+ of use, (11) whether testing was systematically performed, (12) whether the
+ inventor continually monitored the invention during testing, and (13) the nature
+ of contacts made with potential customers." *Allen Eng’g Corp. v. Bartell
+ Indus., Inc.,* 299 F.3d 1336, 1353, 63 USPQ2d 1769, 1780 (Fed. Cir.
+ 2002) (quoting *EZ Dock v. Schafer Sys., Inc.,* 276 F.3d 1347,
+ 1357, 61 USPQ2d 1289, 1296 (Fed. Cir. 2002)) (Linn, J., concurring). Another
+ critical attribute of experimentation is the "customer’s awareness of the
+ purported testing in the context of a sale." *Electromotive Div. of Gen.
+ Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co.,* 417 F.3d
+ 1203, 1241, 75 USPQ2d 1650, 1658 (Fed. Cir. 2005).
+ 
+
+
+Once alleged experimental activity is advanced by an applicant to
+ explain a *prima facie* case under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)**, the examiner must determine whether the scope and
+ length of the activity were reasonable in terms of the experimental purpose
+ intended by the applicant and the nature of the subject matter involved. No one
+ of, or particular combination of, factors is necessarily determinative of this
+ purpose.
+ 
+
+
+See **[MPEP § 2133.03(e)(1)](s2133.html#d0e203781)** for factors
+ indicative of commercial exploitation.
+ 
+
+
+
+
+# 2133.03(e)(5) Experimentation and Degree of Supervision and Control [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**THE INVENTOR MUST MAINTAIN SUFFICIENT CONTROL OVER THE INVENTION DURING
+ TESTING BY THIRD PARTIES**The significant determinative factors in questions of
+ experimental purpose are the extent of supervision and control maintained by an
+ inventor over an invention during an alleged period of experimentation , and
+ the customer’s awareness of the experimentation. *Electromotive Div. of
+ Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co.,*
+ 417 F.3d 1203, 1214,75 USPQ2d 1650, 1658 (Fed. Cir. 2005)("control and customer
+ awareness ordinarily must be proven if experimentation is to be found"). Once a
+ period of experimental activity has ended and supervision and control has been
+ relinquished by an inventor without any restraints on subsequent use of an
+ invention, an unrestricted subsequent use of the invention is a
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** bar. *In re Blaisdell,*
+ 242 F.2d 779, 784, 113 USPQ 289, 293 (CCPA 1957). 
+ 
+
+
+
+
+# 2133.03(e)(6) Permitted Experimental Activity and Testing [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **DEVELOPMENTAL TESTING IS PERMITTED**Testing of an invention in the normal context of its
+ technological development is generally within the realm of permitted
+ experimental activity. Likewise, experimentation to determine utility, as that
+ term is applied in **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**, may also
+ constitute permissible activity. See *General Motors Corp. v. Bendix
+ Aviation Corp.,* 123 F. Supp. 506, 521, 102 USPQ 58, 69 (N.D.Ind.
+ 1954). For example, where an invention relates to a chemical composition with
+ no known utility, i.e., a patent application for the composition could not be
+ filed (**[35
+ U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**; **[35 U.S.C. 112(a)](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)** or
+ **[pre-AIA 35
+ U.S.C. 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph), continued testing to find
+ utility would likely be permissible under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**,
+ absent a sale of the composition or other evidence of commercial exploitation.
+ 
+ 
+
+**II.** **MARKET TESTING IS NOT PERMITTED**Experimentation to determine product acceptance, i.e., market
+ testing, is typical of a trader’s and not an inventor’s experiment and is thus
+ not within the area of permitted experimental activity. *Smith &
+ Davis Mfg. Co. v. Mellon,* 58 F. 705, 707 (8th Cir. 1893) Likewise,
+ testing of an invention for the benefit of appeasing a customer, or to conduct
+ "minor ‘tune up’ procedures not requiring an inventor’s skills, but rather the
+ skills of a competent technician," are also not within the exception.
+ *In re Theis,* 610 F.2d 786, 793, 204 USPQ 188, 193-94
+ (CCPA 1979).
+ 
+
+**III.** **EXPERIMENTAL ACTIVITY IN THE CONTEXT OF DESIGN APPLICATIONS**The public use of an ornamental design which is directed
+ toward generating consumer interest in the aesthetics of the design is not an
+ experimental use. *In re Mann,* 861 F.2d 1581, 8 USPQ2d 2030
+ (Fed. Cir. 1988) (display of a wrought iron table at a trade show held to be
+ public use). However, "experimentation directed to functional features of a
+ product also containing an ornamental design may negate what otherwise would be
+ considered a public use within the meaning of **[section
+ 102(b)](mpep-9015-appx-l.html#d0e302395)**." *Tone Brothers, Inc.**v.**Sysco Corp.,* 28 F.3d 1192, 1196, 31 USPQ2d 1321, 1326 (Fed.
+ Cir. 1994) (A study wherein students evaluated the effect of the functional
+ features of a spice container design may be considered an experimental
+ use.).
+ 
+
+
+
+
+# 2133.03(e)(7) Activity of an Independent Third Party Inventor [R-08.2017]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** . See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**EXPERIMENTAL USE EXCEPTION IS PERSONAL TO AN APPLICANT**The statutory bars of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ are applicable even though public use or on sale activity is by a party other
+ than an applicant. Where an applicant presents evidence of experimental
+ activity by such other party, the evidence will not overcome the *prima
+ facie* case under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ based upon the activity of such party unless the activity was under the
+ supervision and control of the applicant. *In re Hamilton,*
+ 882 F.2d 1576, 1581, 111 USPQ2d 1890, 1894 (Fed. Cir. 1989) ("The experimental
+ use doctrine operates in the inventor's favor to allow *the
+ inventor* to refine his invention or to assess its value relative
+ to the time and expense of prosecuting a patent application. If it is not the
+ inventor or someone under his control or ‘surveillance’ who does these things,
+ there appears to us no reason why he should be entitled to rely upon them to
+ avoid the statute.") (citing *Magnetics, Inc. v. Arnold Engineering
+ Co.,* 438 F.2d 72, 74, 168 USPQ 392, 394 (7th Cir.1971)). In other
+ words, the experimental use activity exception is personal to an applicant.
+ 
+
+
+
+
+
+[[top]](#top)
+
+
+, 
+# 2133.01 Rejections of Continuation-In-Part (CIP) Applications [R-10.2019]
+
+
+*[Editor Note: This MPEP section is **not applicable** to applications
+ subject to examination under the first inventor to file (FITF) provisions of the AIA
+ as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP
+ § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152](s2152.html#ch2100_d20033_18e23_3ce)** et seq. for a detailed
+ discussion of **[AIA 35 U.S.C. 102(a) and
+ (b)](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The effective filing date of a claimed invention is determined on a
+ claim-by-claim basis and not an application-by-application basis. See
+ **[MPEP §
+ 2139.01](s2139.html#ch2100_d2c184_12530_2b6)** for guidance in determining the effective filing date
+ of a claimed invention under **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**.
+ 
+
+
+When applicant files a continuation-in-part application,
+ none of whose claims are supported by the parent application under **[pre-AIA 35 U.S.C.
+ 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph, the effective filing date is the filing date
+ of the child CIP. Any prior art disclosing the invention or an obvious variant thereof
+ having a critical reference date more than 1 year prior to the filing date of the child
+ will bar the issuance of a patent under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. *Paperless Accounting v. Bay Area Rapid Transit System,* 804 F.2d 659, 665,
+ 231 USPQ 649, 653 (Fed. Cir. 1986). 
+ 
+
+
+Any claim that only contains subject matter that is
+ fully supported in compliance with the statutory requirements of **[pre-AIA 35 U.S.C.
+ 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph, by the parent application of a CIP will have
+ the effective filing date of the parent application. On the other hand, any claim that
+ contains a limitation that is only supported as required by **[pre-AIA 35 U.S.C.
+ 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph, by the disclosure of the CIP application
+ will have the effective filing date of the CIP application. See, e.g.,*Santarus, Inc. v. Par Pharmaceutical, Inc.,* 694 F.3d 1344, 104 USPQ2d 1641
+ (Fed. Cir. 2012)(patent issuing from parent application was relied upon as prior art
+ against the claims in CIPs that did not find support in the parent application);
+ *Studiengesellschaft Kohle, m.b.H. v. Shell Oil Co.,* 112 F.3d 1561,
+ 1564, 42 USPQ2d 1674 (Fed. Cir. 1997)("To qualify for an earlier filing date, section
+ 120 requires, *inter alia,* that the earlier-filed U.S. patent
+ application contain a disclosure which complies with **[35 U.S.C. § 112](mpep-9015-appx-l.html#d0e302824)**, p 1 (1994) for each
+ claim in the newly filed application. Thus, this benefit only applies to claims that
+ recite subject matter adequately described in an earlier application, and does not
+ extend to claims with subject matter outside the description in the earlier
+ application."). 
+ 
+
+
+, 
+# 2133.02 Rejections Based on Publications and Patents [R-11.2013]
+
+
+*[Editor Note: This MPEP section is **not applicable** to applications
+ subject to examination under the first inventor to file (FITF) provisions of the AIA
+ as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP
+ § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152](s2152.html#ch2100_d20033_18e23_3ce)** et seq. for a detailed
+ discussion of **[AIA 35 U.S.C. 102(a) and
+ (b)](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **APPLICANT’S OWN WORK WHICH WAS AVAILABLE TO THE PUBLIC BEFORE THE GRACE PERIOD
+ MAY BE USED IN A PRE-AIA 35 U.S.C. 102(b) REJECTION**"Any invention described in a printed publication more than one year
+ prior to the date of a patent application is prior art under **[Section 102(b)](mpep-9015-appx-l.html#d0e302395)**,
+ even if the printed publication was authored by the patent applicant." *De
+ Graffenried v.**United States,* 16 USPQ2d 1321, 1330 n.7 (Cl. Ct. 1990). "Once an
+ inventor has decided to lift the veil of secrecy from his [or her] work, he [or she]
+ must choose between the protection of a federal patent, or the dedication of his [or
+ her] idea to the public at large." *Bonito Boats, Inc. v. Thunder Craft
+ Boats, Inc.,* 489 U.S. 141, 148, 9 USPQ2d 1847, 1851 (1989).
+ 
+
+**II.** **A PRE-AIA 35 U.S.C. 102(b) REJECTION CREATES A STATUTORY BAR TO PATENTABILITY
+ OF THE REJECTED CLAIMS** A rejection under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** cannot
+ be overcome by affidavits and declarations under **[37 CFR
+ 1.131](mpep-9020-appx-r.html#aia_d0e323504)** (Rule 131 Declarations), foreign priority dates, or
+ evidence that applicant himself invented the subject matter. Outside the 1-year grace
+ period, applicant is barred from obtaining a patent containing any anticipated or
+ obvious claims. *In re Foster,* 343 F.2d 980, 984, 145 USPQ 166, 170
+ (CCPA 1965).
+ 
+
+
+
+# 2133.02(a) Overcoming a Pre-AIA 35 U.S.C. 102(b)
+ Rejection Based on a Printed Publication or Patent [R-10.2019]
+
+
+In all applications, an applicant may overcome a
+ **[pre-AIA 35
+ U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejection by persuasively arguing that the claims
+ are patentably distinguishable from the prior art, or by amending the claims to
+ patentably distinguish over the prior art. Additional ways available to overcome a
+ rejection based on **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** prior art depend on the applicable
+ paragraph of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP § 2132.01](s2132.html#d0e203530)** for
+ overcoming a rejection under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** and
+ **[MPEP §
+ 2136.05](s2136.html#d0e206333)***et seq.* for overcoming a rejection under **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**. 
+ 
+
+
+A rejection based on **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#al_d1d85b_11e7d_156)** can be
+ overcome by:
+ 
+
+
+* (A) Persuasively arguing that the claims are patentably
+ distinguishable from the prior art;
+* (B) Amending the claims to patentably distinguish over the prior
+ art;
+* (C) Submitting and perfecting a benefit claim under
+ **[35
+ U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)**, within the time period set in
+ **[37 CFR
+ 1.78](mpep-9020-appx-r.html#aia_d0e320670)** (or by filing a grantable petition to accept an
+ unintentionally delayed claim under **[37 CFR 1.78](mpep-9020-appx-r.html#aia_d0e320670)** as explained in
+ **[MPEP § 211.04](s211.html#ch200_d1ff71_24f8b_4a)**):
+	+ (1)
+		- (a) for applications filed on or after
+		 September 16, 2012, by filing a corrected application data sheet
+		 under **[37 CFR 1.76](mpep-9020-appx-r.html#plt_d0e320348)**
+		 which contains a specific reference to a prior application in
+		 accordance with **[37 CFR 1.78](mpep-9020-appx-r.html#aia_d0e320662)**, or
+		- (b) for applications filed prior to
+		 September 16, 2012, by amending the specification of the
+		 application to contain a specific reference to a prior application
+		 or by filing a corrected application data sheet under
+		 **[37 CFR 1.76](mpep-9020-appx-r.html#d0e320348)**
+		 which contains a specific reference to a prior application in
+		 accordance with **[37 CFR
+		 1.78](mpep-9020-appx-r.html#aia_d0e320662)**,
+	and
+	+ (2) by establishing that the prior application
+	 satisfies the enablement and written description requirements of
+	 **[35 U.S.C. 112(a)](mpep-9015-appx-l.html#d0e302824912)** (for applications filed on or
+	 after September 16, 2012), or **[35 U.S.C. 112](mpep-9015-appx-l.html#d0e302824)**, first
+	 paragraph (for applications filed prior to September 16, 2012). See
+	 **[MPEP § 211](s211.html#ch200_d1ff71_1bd25_18b)** *et
+	 seq.*;or
+* (D) Submitting and perfecting a benefit claim under
+ **[35 U.S.C.
+ 119(e)](mpep-9015-appx-l.html#d0e302951)** by complying with the requirements of
+ **[37 CFR
+ 1.78](mpep-9020-appx-r.html#aia_d0e320670)** or filing a grantable petition to accept an
+ unintentionally delayed claim under **[37 CFR 1.78](mpep-9020-appx-r.html#aia_d0e320670)** (see item (C)
+ above). Because a provisional application could not have been filed more than
+ one year prior to the filing of a nonprovisional application that claims
+ benefit to the provisional application, once the benefit claim under
+ **[35 U.S.C.
+ 119(e)](mpep-9015-appx-l.html#d0e302951)**) is perfected, the rejection must be reconsidered
+ to determine whether the prior art still qualifies as prior art under
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302395)** or whether the prior art qualifies as prior
+ art under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**. Note, however, effective
+ December 18, 2013, title II of the Patent Law Treaties Implementation Act
+ (PLTIA) provides for restoration of the right to claim benefit of a provisional
+ application filed after the expiration of the twelve-month period in
+ **[35 U.S.C.
+ 119(e)](mpep-9015-appx-l.html#d0e302951)**. See **[MPEP §
+ 211.01(a)](s211.html#ch200_d1ff71_20a5e_149)**, subsection II. If the prior art qualifies
+ as prior art under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**,
+ see **[MPEP §
+ 2132.01](s2132.html#d0e203530)** as to how to overcome the **[pre-AIA 35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#d0e302391)** rejection.
+
+
+
+, 
+# 2133.02(a) Overcoming a Pre-AIA 35 U.S.C. 102(b)
+ Rejection Based on a Printed Publication or Patent [R-10.2019]
+
+
+In all applications, an applicant may overcome a
+ **[pre-AIA 35
+ U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** rejection by persuasively arguing that the claims
+ are patentably distinguishable from the prior art, or by amending the claims to
+ patentably distinguish over the prior art. Additional ways available to overcome a
+ rejection based on **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** prior art depend on the applicable
+ paragraph of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP § 2132.01](s2132.html#d0e203530)** for
+ overcoming a rejection under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)** and
+ **[MPEP §
+ 2136.05](s2136.html#d0e206333)***et seq.* for overcoming a rejection under **[pre-AIA 35 U.S.C.
+ 102(e)](mpep-9015-appx-l.html#d0e302407)**. 
+ 
+
+
+A rejection based on **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#al_d1d85b_11e7d_156)** can be
+ overcome by:
+ 
+
+
+* (A) Persuasively arguing that the claims are patentably
+ distinguishable from the prior art;
+* (B) Amending the claims to patentably distinguish over the prior
+ art;
+* (C) Submitting and perfecting a benefit claim under
+ **[35
+ U.S.C. 120](mpep-9015-appx-l.html#d0e303023313)**, within the time period set in
+ **[37 CFR
+ 1.78](mpep-9020-appx-r.html#aia_d0e320670)** (or by filing a grantable petition to accept an
+ unintentionally delayed claim under **[37 CFR 1.78](mpep-9020-appx-r.html#aia_d0e320670)** as explained in
+ **[MPEP § 211.04](s211.html#ch200_d1ff71_24f8b_4a)**):
+	+ (1)
+		- (a) for applications filed on or after
+		 September 16, 2012, by filing a corrected application data sheet
+		 under **[37 CFR 1.76](mpep-9020-appx-r.html#plt_d0e320348)**
+		 which contains a specific reference to a prior application in
+		 accordance with **[37 CFR 1.78](mpep-9020-appx-r.html#aia_d0e320662)**, or
+		- (b) for applications filed prior to
+		 September 16, 2012, by amending the specification of the
+		 application to contain a specific reference to a prior application
+		 or by filing a corrected application data sheet under
+		 **[37 CFR 1.76](mpep-9020-appx-r.html#d0e320348)**
+		 which contains a specific reference to a prior application in
+		 accordance with **[37 CFR
+		 1.78](mpep-9020-appx-r.html#aia_d0e320662)**,
+	and
+	+ (2) by establishing that the prior application
+	 satisfies the enablement and written description requirements of
+	 **[35 U.S.C. 112(a)](mpep-9015-appx-l.html#d0e302824912)** (for applications filed on or
+	 after September 16, 2012), or **[35 U.S.C. 112](mpep-9015-appx-l.html#d0e302824)**, first
+	 paragraph (for applications filed prior to September 16, 2012). See
+	 **[MPEP § 211](s211.html#ch200_d1ff71_1bd25_18b)** *et
+	 seq.*;or
+* (D) Submitting and perfecting a benefit claim under
+ **[35 U.S.C.
+ 119(e)](mpep-9015-appx-l.html#d0e302951)** by complying with the requirements of
+ **[37 CFR
+ 1.78](mpep-9020-appx-r.html#aia_d0e320670)** or filing a grantable petition to accept an
+ unintentionally delayed claim under **[37 CFR 1.78](mpep-9020-appx-r.html#aia_d0e320670)** (see item (C)
+ above). Because a provisional application could not have been filed more than
+ one year prior to the filing of a nonprovisional application that claims
+ benefit to the provisional application, once the benefit claim under
+ **[35 U.S.C.
+ 119(e)](mpep-9015-appx-l.html#d0e302951)**) is perfected, the rejection must be reconsidered
+ to determine whether the prior art still qualifies as prior art under
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302395)** or whether the prior art qualifies as prior
+ art under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**. Note, however, effective
+ December 18, 2013, title II of the Patent Law Treaties Implementation Act
+ (PLTIA) provides for restoration of the right to claim benefit of a provisional
+ application filed after the expiration of the twelve-month period in
+ **[35 U.S.C.
+ 119(e)](mpep-9015-appx-l.html#d0e302951)**. See **[MPEP §
+ 211.01(a)](s211.html#ch200_d1ff71_20a5e_149)**, subsection II. If the prior art qualifies
+ as prior art under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)**,
+ see **[MPEP §
+ 2132.01](s2132.html#d0e203530)** as to how to overcome the **[pre-AIA 35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#d0e302391)** rejection.
+
+
+, 
+# 2133.03 Rejections Based on "Public Use" or "On Sale" [R-10.2019]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP
+ § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for a
+ detailed discussion of the public use and on sale provisions of **[AIA 35 U.S.C.
+ 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+An applicant may make an admission, or submit evidence of
+ sale of the invention or knowledge of the invention by others, or the examiner may have
+ personal knowledge that the invention was sold by applicant or known by others. If the
+ activity is by an entity other than the inventors or assignee, such as sale by another,
+ manufacture by another or disclosure of the invention by the inventor or assignee to
+ another then both **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)** and **[(b)](mpep-9015-appx-l.html#d0e302395)** may be applicable. If the
+ evidence only points to knowledge within the year prior to the effective filing date
+ then **[pre-AIA 35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#d0e302391)** applies. However, no rejection under **[pre-AIA 35 U.S.C.
+ 102(a)](mpep-9015-appx-l.html#d0e302391)** should be made if there is evidence that applicant made the
+ invention and only disclosed it to others within the year prior to the effective filing
+ date. **[Pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** is applicable if the activity occurred more than 1
+ year prior to the effective filing date of the application.
+ 
+
+
+**[Pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** "contains several distinct bars to patentability, each of
+ which relates to activity or disclosure more than one year prior to the date of the
+ application. Two of these - the ‘public use’ and the ‘on sale’ objections - are
+ sometimes considered together although it is quite clear that either may apply when the
+ other does not." *Dart Indus. v. E.I. du Pont de Nemours & Co.,*
+ 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir. 1973). There may be a public use of an
+ invention absent any sales activity. Likewise, there may be a nonpublic, e.g., "secret,"
+ sale or offer to sell an invention which nevertheless constitutes a statutory bar.
+ *Hobbs v.**United States,* 451 F.2d 849, 859-60, 171 USPQ 713, 720 (5th Cir.
+ 1971).
+ 
+
+
+In similar fashion, not all "public use" and "on sale" activities will
+ necessarily occasion the identical result. Although both activities affect how an
+ inventor may use an invention prior to the filing of a patent application,
+ "non-commercial" **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** activity may not be viewed the same as
+ similar "commercial" activity. See **[MPEP § 2133.03(a)](s2133.html#d0e203899)** and
+ **[§ 2133.03(e)(1)](s2133.html#d0e204712)**. Likewise, "public use" activity by
+ an applicant may not be considered in the same light as similar "public use" activity by
+ one other than  an applicant. See **[MPEP § 2133.03(a)](s2133.html#d0e203899)** and
+ **[§ 2133.03(e)(7)](s2133.html#d0e205133)**. Additionally, the concept of "experimental
+ use" may have different significance in "commercial" and "non-commercial" environments.
+ See **[MPEP
+ § 2133.03(c)](s2133.html#d0e204494)** and **[§ 2133.03(e)](s2133.html#d0e204670)** - **[§ 2133.03(e)(6)](s2133.html#d0e205061)**. 
+ 
+
+
+It should be noted that **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** may create
+ a bar to patentability either alone, if the device in public use or placed on sale
+ anticipates a later claimed invention, or in conjunction with **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, if
+ the claimed invention would have been obvious from the device in conjunction with the
+ prior art. *LaBounty Mfg.**v.**United States Int’l Trade Comm’n,* 958 F.2d 1066, 1071, 22 USPQ2d
+ 1025, 1028 (Fed. Cir. 1992).
+ 
+
+ **POLICY CONSIDERATIONS*** (A) "One policy underlying the [on-sale] bar is to obtain
+ widespread disclosure of new inventions to the public via patents as soon as
+ possible." *RCA Corp*. *v. Data Gen. Corp.,*
+ 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454 (Fed. Cir. 1989).
+* (B) Another policy underlying the public use and on-sale bars is
+ to prevent the inventor from commercially exploiting the exclusivity of his [or
+ her] invention substantially beyond the statutorily authorized period.
+ *RCA Corp.**v.**Data Gen. Corp.,* 887 F.2d 1056, 1062, 12 USPQ2d 1449, 1454
+ (Fed. Cir. 1989). See **[MPEP § 2133.03(e)(1)](s2133.html#d0e204712)**.
+* (C) Another underlying policy for the public use and on-sale bars
+ is to discourage "the removal of inventions from the public domain which the
+ public justifiably comes to believe are freely available." *Manville
+ Sales**Corp. v. Paramount Sys., Inc.,* 917 F.2d 544, 549, 16 USPQ2d
+ 1587, 1591 (Fed. Cir. 1990).
+
+
+
+# 2133.03(a) "Public Use" [R-08.2017]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** . See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **TEST FOR "PUBLIC USE** The public use bar under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ arises where the invention is in public use before the critical date and is ready
+ for patenting. *Invitrogen Corp. v. Biocrest Manufacturing L.P.,*
+ 424 F.3d 1374, 76 USPQ2d 1741 (Fed. Cir. 2005). As explained by the court, 
+ 
+
+
+
+> 
+>  The proper test for the public use prong of the
+>  **[[pre-AIA]
+>  § 102(b)](mpep-9015-appx-l.html#d0e302383)** statutory bar is whether the purported use: (1)
+>  was accessible to the public; or (2) was commercially exploited. Commercial
+>  exploitation is a clear indication of public use, but it likely requires more
+>  than, for example, a secret offer for sale. Thus, the test for the public use
+>  prong includes the consideration of evidence relevant to experimentation, as
+>  well as, *inter alia* , the nature of the activity that
+>  occurred in public; public access to the use; confidentiality obligations
+>  imposed on members of the public who observed the use; and commercial
+>  exploitation…. That evidence is relevant to discern whether the use was a
+>  public use that could raise a bar to patentability, but it is distinct from
+>  evidence relevant to the ready for patenting component of
+>  *Pfaff* ’s two-part test, another necessary requirement of
+>  a public use bar.
+>  
+> 
+> 
+> 
+
+
+*Id.* at 1380, 76 USPQ2d at 1744 (citations omitted). See
+ **[MPEP §
+ 2133.03(c)](s2133.html#d0e203781)** for a discussion of the "ready for patenting"
+ prong of the public use and on sale statutory bars.
+ 
+
+
+"[T]o constitute the public use of an invention it is not
+ necessary that more than one of the patent articles should be publicly used. The
+ use of a great number may tend to strengthen the proof, but one well defined case
+ of such use is just as effectual to annul the patent as many." Likewise, it is not
+ necessary that more than one person use the invention. *Egbert
+ v.**Lippmann,* 104 U.S. 333, 336 (1881).
+ 
+
+**II.** **PUBLIC KNOWLEDGE IS NOT NECESSARILY PUBLIC USE UNDER Pre-AIA 35 U.S.C.
+ 102(b)**Mere knowledge of the invention by the public does not warrant
+ rejection under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. **[Pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** bars public use or sale, not public knowledge.
+ *TP**Labs., Inc. v. Professional Positioners, Inc.,* 724 F.2d 965,
+ 970, 220 USPQ 577, 581 (Fed. Cir. 1984).
+ 
+
+
+Note, however, that public knowledge may provide grounds for
+ rejection under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP § 2132](s2132.html#d0e203390)**. 
+ 
+
+***A.*** ***Commercial Versus Noncommercial Use and the Impact of
+ Secrecy***There are limited circumstances in which a secret or
+ confidential use of an invention may give rise to the public use bar.
+ "[S]ecrecy of use alone is not sufficient to show that existing knowledge has
+ not been withdrawn from public use; commercial exploitation is also forbidden."
+ *Invitrogen,* 424 F.3d at 1382, 76 USPQ2d at 1745-46 (The
+ fact that patentee secretly used the claimed invention internally before the
+ critical date to develop future products that were never sold was by itself
+ insufficient to create a public use bar to patentability.).
+ 
+
+**1.** **"Public Use" and "Non-secret Use" Are Not Necessarily
+ Synonymous**"Public" is not necessarily synonymous with "non- secret."
+ The fact "that non-secret uses of the device were made [by the inventor or
+ someone connected with the inventor] prior to the critical date is not
+ itself dispositive of the issue of whether activity barring a patent under
+ **[pre-AIA
+ 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** occurred. The fact that the device
+ was not hidden from view may make the use not secret, but nonsecret use is
+ not *ipso facto* ‘public use’ activity. Nor, it must be
+ added, is all secret use *ipso facto* not ‘public use’
+ within the meaning of the statute," if the inventor is making commercial use
+ of the invention under circumstances which preserve its secrecy. *TP
+ Labs., Inc.**v.**Professional Positioners, Inc.,* 724 F.2d 965, 972, 220
+ USPQ 577, 583 (Fed. Cir. 1983) (citations omitted). 
+ 
+
+**2.** **Even If the Invention Is Hidden, Inventor Who Puts Machine or Article
+ Embodying the Invention in Public View Is Barred from Obtaining a Patent
+ as the Invention Is in Public Use** When the inventor or someone connected to the inventor puts
+ the invention on display or sells it, there is a "public use" within the
+ meaning of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** even though by its very
+ nature an invention is completely hidden from view as part of a larger
+ machine or article, if the invention is otherwise used in its natural and
+ intended way and the larger machine or article is accessible to the public.
+ *In re Blaisdell,* 242 F.2d 779, 783, 113 USPQ 289, 292
+ (CCPA 1957); *Hall**v. Macneale,* 107 U.S. 90, 96-97 (1882); *Ex
+ parte**Kuklo,* 25 USPQ2d 1387, 1390 (Bd. Pat. App. & Inter.
+ 1992) (Display of equipment including the structural features of the claimed
+ invention to visitors of laboratory is public use even though public did not
+ see inner workings of device. The person to whom the invention is publicly
+ disclosed need not understand the significance and technical complexities of
+ the invention.).
+ 
+
+**3.** **There Is No Public Use If Inventor Restricted Use to Locations Where
+ There Was a Reasonable Expectation of Privacy and the Use Was for His or
+ Her Own Enjoyment** An inventor’s private use of the invention, for his or her
+ own enjoyment is not a public use. *Moleculon Research
+ Corp.**v. CBS, Inc.,* 793 F.2d 1261, 1265, 229 USPQ 805, 809
+ (Fed. Cir. 1986) (Inventor showed inventive puzzle to close friends while in
+ his dorm room and later the president of the company at which he was working
+ saw the puzzle on the inventor’s desk and they discussed it. Court held that
+ the inventor retained control and thus these actions did not result in a
+ "public use.").
+ 
+
+**4.** **The Presence or Absence of a Confidentiality Agreement is Not
+ Dispositive of the Public Use Issue**"The presence or absence of a confidentiality agreement is
+ not dispositive of the public use issue, but ‘is one factor to be considered
+ in assessing all the evidence.’" *Bernhardt, L.L.C. v. Collezione
+ Europa USA, Inc.,* 386 F.3d 1371, 1380-81, 72 USPQ2d 1901, 1909
+ (Fed. Cir. 2004) (quoting *Moleculon Research Corp. v. CBS
+ Inc.,* 793 F.2d 1261, 1266, 229 USPQ 805, 808 (Fed. Cir. 1986)).
+ The court stressed that it is necessary to analyze the evidence of public
+ use in the context of policies that underlie the public use and on sale bar
+ that include "‘discouraging removal of inventions from the public domain
+ that the public justifiably believes are freely available, prohibiting an
+ extension of the period for exploiting an invention, and favoring prompt and
+ widespread disclosure of inventions.’" *Bernhardt,* 386
+ F.3d at 1381, 72 USPQ2d at 1909. See also *Invitrogen,* 424
+ F.3d at 1379, 76 USPQ2d at 1744; **[MPEP § 2133.03](s2133.html#d0e203781)**, subsection
+ I. Evidence that the court emphasized included the "‘nature of the activity
+ that occurred in public; the public access to and knowledge of the public
+ use; [and] whether there were any confidentiality obligations imposed on
+ persons who observed the use.’" *Bernhardt,* 386 F.3d at
+ 1381, 72 USPQ2d at 1909. For example, the court in
+ *Bernhardt* noted that an exhibition display at issue in
+ the case "was not open to the public, that the identification of attendees
+ was checked against a list of authorized names by building security and
+ later at a reception desk near the showroom, that attendees were escorted
+ through the showroom, and that the attendees were not permitted to make
+ written notes or take photographs inside the showroom."
+ *Id.* The court remanded the issue of whether the
+ exhibition display was a public use for further proceedings since the
+ district court "focused on the absence of any confidentiality agreements and
+ did not discuss or analyze how the totality of the circumstances
+ surrounding" the exhibition "comports with the policies underlying the
+ public use bar." *Id.*
+
+***B.*** ***Use by Third Parties Deriving the Invention from
+ Applicant**** 
+
+**An Invention Is in Public Use If the Inventor Allows Another To Use
+ the Invention Without Restriction or Obligation of Secrecy**"Public use" of a claimed invention under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** occurs when the inventor allows another person
+ to use the invention without limitation, restriction or obligation of
+ secrecy to the inventor."  *In re Smith,* 714 F.2d 1127,
+ 1134, 218 USPQ 976, 983 (Fed. Cir. 1983). The presence or absence of a
+ confidentiality agreement is not itself determinative of the public use
+ issue, but is one factor to be considered along with the time, place, and
+ circumstances of the use which show the amount of control the inventor
+ retained over the invention. *Moleculon Research Corp.**v. CBS, Inc.,* 793 F.2d 1261, 1265, 229 USPQ 805, 809
+ (Fed. Cir. 1986). See *Ex parte C,* 27 USPQ2d 1492, 1499
+ (Bd. Pat. App. & Inter. 1992) (Inventor sold inventive soybean seeds to
+ growers who contracted and were paid to plant the seeds to increase stock
+ for later sale. The commercial nature of the use of the seed coupled with
+ the "on-sale" aspects of the contract and apparent lack of confidentiality
+ requirements rose to the level of a "public use" bar.); *Egbert
+ v.**Lippmann,* 104 U.S. 333, 336 (1881) (Public use found
+ where inventor allowed another to use inventive corset insert, though hidden
+ from view during use, because he did not impose an obligation of secrecy or
+ restrictions on its use.). 
+ 
+
+***C.*** ***Use by Independent Third Parties**** 
+
+Use by an Independent Third Party Is Public Use If
+ It Sufficiently "Informs" the Public of the Invention or a Competitor Could
+ Reasonably Ascertain the Invention
+ Any "nonsecret" use of an invention by someone unconnected
+ to the inventor, such as someone who has independently made the invention,
+ in the ordinary course of a business for trade or profit may be a "public
+ use," *Bird Provision Co. v. Owens Country Sausage,**Inc.,* 568 F.2d 369, 374-76, 197 USPQ 134, 138-40 (5th
+ Cir. 1978). Additionally, even a "secret" use by another inventor of a
+ machine or process to make a product is "public" if the details of the
+ machine or process are ascertainable by inspection or analysis of the
+ product that is sold or publicly displayed. *Gillman v.
+ Stern,* 114 F.2d 28, 46 USPQ 430 (2d Cir. 1940); *Dunlop
+ Holdings, Ltd. v. Ram Golf Corp.,* 524 F.2d 33, 36-7, 188 USPQ
+ 481, 483-484 (7th Cir. 1975). If the details of an inventive process are not
+ ascertainable from the product sold or displayed and the third party has
+ kept the invention as a trade secret then that use is not a public use and
+ will not bar a patent issuing to someone unconnected to the user.
+ *W.L. Gore & Assocs. v. Garlock, Inc.,* 721 F.2d
+ 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). However, a device qualifies
+ as prior art if it places the claimed features in the
+ public's possession before the critical date even if other
+ unclaimed aspects of the device were not publicly
+ available. *Lockwood v. American Airlines, Inc.,* 107 F.3d
+ 1505, 1570-71, 41 USPQ2d 1961, 1964-65 (Fed. Cir. 1997) (Computer
+ reservation system was prior art even though "essential algorithms of the
+ SABRE software were proprietary and confidential and...those aspects of the
+ system that were readily apparent to the public would not have been
+ sufficient to enable one skilled in the art to duplicate the [unclaimed
+ aspects of the] system."). The extent that the public becomes "informed" of
+ an invention involved in public use activity by one other than an applicant
+ depends upon the factual circumstances surrounding the activity and how
+ these comport with the policies underlying the on sale and public use bars.
+ *Manville Sales Corp. v. Paramount Sys., Inc*., 917 F.2d
+ 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990) (quoting *King
+ Instrument Corp.**v. Otari Corp.,* 767 F.2d 833, 860, 226 USPQ 402, 406
+ (Fed. Cir. 1985)). By way of example, in an allegedly "secret" use by a
+ third party other than an applicant, if a large number of employees of such
+ a party, who are not under a promise of secrecy, are permitted unimpeded
+ access to an invention, with affirmative steps by the party to educate other
+ employees as to the nature of the invention, the public is "informed."
+ *Chemithon Corp.**v.**Proctor & Gamble Co.,* 287 F. Supp. 291, 308, 159 USPQ
+ 139, 154 (D.Md. 1968), *aff’d.,* 427 F.2d 893, 165 USPQ 678
+ (4th Cir. 1970).
+ 
+
+
+Even if public use activity by one other than an applicant
+ is not sufficiently "informing," there may be adequate grounds upon which to
+ base a rejection under **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302383)**
+ and **[pre-AIA 35 U.S.C. 102(g)](mpep-9015-appx-l.html#d0e302383)**. See  *Dunlop
+ Holdings Ltd. v. Ram Golf Corp.,* 524 F.2d 33, 188 USPQ 481 (7th
+ Cir. 1975). See **[MPEP § 2137](s2137.html#d0e206570)** and
+ **[§
+ 2138](s2138.html#d0e207005)**. 
+ 
+
+
+
+
+# 2133.03(b) "On Sale" [R-10.2019]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** . See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+An impermissible sale has occurred if there was a definite sale, or
+ offer to sell, more than 1 year before the effective filing date of the claimed
+ invention and the subject matter of the sale, or offer to sell, fully anticipated the
+ claimed invention or would have rendered the claimed invention obvious by its
+ addition to the prior art. *Ferag AG v. Quipp, Inc.,* 45 F.3d 1562,
+ 1565, 33 USPQ2d 1512, 1514 (Fed. Cir. 1995). The on-sale bar of **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** is triggered if the invention is both (1) the subject of
+ a commercial offer for sale not primarily for experimental purposes and (2) ready for
+ patenting. *Pfaff v. Wells Elecs., Inc.,* 525 U.S. 55, 67, 48 USPQ2d
+ 1641, 1646-47 (1998). Traditional contract law principles are applied when
+ determining whether a commercial offer for sale has occurred. See *Linear
+ Tech. Corp. v. Micrel, Inc.,* 275 F.3d 1040, 1048, 61 USPQ2d 1225, 1229
+ (Fed. Cir. 2001), *petition for cert. filed,* 71 USLW 3093 (July 03,
+ 2002) (No. 02-39); *Group One, Ltd. v. Hallmark Cards, Inc.,* 254
+ F.3d 1041,1047, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001) ("As a general proposition, we
+ will look to the Uniform Commercial Code (‘UCC’) to define whether … a communication
+ or series of communications rises to the level of a commercial offer for sale.").
+ 
+
+**I.** **THE MEANING OF "SALE"**A sale is a contract between parties wherein the seller agrees
+ "to give and to pass rights of property" in return for the buyer’s payment or
+ promise "to pay the seller for the things bought or sold." *In re
+ Caveney,* 761 F.2d 671, 676, 226 USPQ 1, 4 (Fed. Cir. 1985). A
+ contract for the sale of goods requires a concrete offer and acceptance of that
+ offer. See, e.g., *Linear Tech.,* 275 F.3d at 1052-54, 61 USPQ2d
+ at 1233-34 (Court held there was no sale within the meaning of **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** where prospective purchaser submitted an order for
+ goods at issue, but received an order acknowledgement reading "will advise-not
+ booked." Prospective purchaser would understand that order was not accepted.).
+ 
+
+
+"[T]o be ‘on sale’ under **[§ 102(b)](mpep-9015-appx-l.html#d0e302395)**, a
+ product must be the subject of a commercial sale or offer for sale," and to be a
+ commercial sale it must be "one that bears the general hallmarks of a sale
+ pursuant to Section 2-106 of the Uniform Commercial Code." *Medicines Co.
+ v. Hospira, Inc.,* 827 F.3d 1363, 1364 119 USPQ2d 1329, 1330 (Fed.
+ Cir. 2016) (en banc). The court in *Medicines Co.* went on to
+ explain "[s]ection 2-106(1) of the Uniform Commercial Code describes a ‘sale’ as
+ ‘the passing of title from the seller to the buyer for a price.’ U.C.C. §
+ 2-106(1). The passage of title is a helpful indicator of whether a product is ‘on
+ sale,’ as it suggests when the inventor gives up its interest and control over the
+ product." *Id.* at 1375, 119 USPQ2d at 1338. The
+ *Medicines Co.* court held "a contract manufacturer’s sale to
+ the inventor of manufacturing services where neither title to the embodiments nor
+ the right to market the same passes to the supplier does not constitute an
+ invalidating sale under **[§ 102(b)](mpep-9015-appx-l.html#d0e302395)**."
+ *Id.* at 1381, 119 USPQ2d at 1342.
+ 
+
+***A.******Conditional Sale May Bar a Patent***An invention may be deemed to be "on sale" even though the
+ sale was conditional. The fact that the sale is conditioned on buyer
+ satisfaction does not, without more, prove that the sale was for an
+ experimental purpose. *Strong v. General Elec. Co.,* 434 F.2d
+ 1042, 1046, 168 USPQ 8, 12 (5th Cir. 1970).
+ 
+
+***B.******Nonprofit Sale May Bar a Patent***A "sale" need not be for profit to bar a patent. If the sale
+ was for the commercial exploitation of the invention, it is "on sale" within
+ the meaning of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.
+ *In re Dybel,* 524 F.2d 1393, 1401, 187 USPQ 593, 599 (CCPA
+ 1975) ("Although selling the devices for a profit would have demonstrated the
+ purpose of commercial exploitation, the fact that appellant realized no profit
+ from the sales does not demonstrate the contrary.").
+ 
+
+***C.******A Single Sale or Offer To Sell May Bar a Patent***Even a single sale or offer to sell the invention may bar
+ patentability under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.
+ *Consolidated**Fruit-Jar Co. v. Wright,* 94 U.S. 92, 94 (1876);
+ *Atlantic Thermoplastics Co. v. Faytex Corp.,* 970 F.2d
+ 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).
+ 
+
+***D.******A Sale of Rights Is Not a Sale of the Invention and Will Not in
+ Itself Bar a Patent***"[A]n assignment or sale of the rights in the invention and
+ potential patent rights is not a sale of ‘the invention’ within the meaning of
+ **[[pre-AIA]
+ section 102(b)](mpep-9015-appx-l.html#d0e302383)**." *Moleculon Research Corp. v.
+ CBS, Inc.,* 793 F.2d 1261, 1267, 229 USPQ 805, 809 (Fed. Cir.
+ 1986); see also *Elan Corp., PLC v. Andrx Pharms. Inc.,*
+ 366 F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004); *In re
+ Kollar,* 286 F.3d 1326, 1330 n.3, 1330-1331, 62 USPQ2d 1425, 1428
+ n.3, 1428-1429 (Fed. Cir. 2002) (distinguishing licenses which trigger the
+ on-sale bar (e.g., a standard computer software license wherein the product is
+ just as immediately transferred to the licensee as if it were sold), from
+ licenses that merely grant rights to an invention which do not *per
+ se* trigger the on-sale bar (e.g., exclusive rights to market the
+ invention or potential patent rights)); *Group One, Ltd. v. Hallmark
+ Cards, Inc.,* 254 F.3d 1041, 1049 n. 2, 59 USPQ2d 1121, 1129 n. 2
+ (Fed. Cir. 2001).
+ 
+
+
+"[T]he mere sale of manufacturing services by a
+ contract manufacturer to an inventor to create embodiments of a patented
+ product for the inventor does not constitute a ‘commercial sale’ of the
+ invention." *Medicines Co. v. Hospira, Inc.,* 827 F.3d 1363,
+ 1373 119 USPQ2d 1329, 1336 (Fed. Cir. 2016) (*en banc*). The
+ court in *Medicines Co.* further stated that "commercial
+ benefit—even to both parties in a transaction—is not enough to trigger the
+ on-sale bar of **[§ 102(b)](mpep-9015-appx-l.html#d0e302395)**; the transaction
+ must be one in which the product is ‘on sale’ in the sense that it is
+ ‘commercially marketed.’" *Id.* at 1373-74, 119 USPQ2d at
+ 1336-37.
+ 
+
+***E.******Buyer Must Be Uncontrolled by the Seller or Offerer***A sale or offer for sale must take place between separate
+ entities. *In re Caveney,* 761 F.2d 671, 676, 226 USPQ 1, 4
+ (Fed. Cir. 1985). Where the parties to the alleged sale are related, whether
+ there is a statutory bar depends on whether the seller so controls the
+ purchaser that the invention remains out of the public’s hands. *Ferag
+ AG v. Quipp, Inc.,* 45 F.3d 1562, 1566, 33 USPQ2d 1512, 1515 (Fed.
+ Cir. 1995) (Where the seller is a parent company of the buyer company, but the
+ President of the buyer company had "essentially unfettered" management
+ authority over the operations of the buyer company, the sale was a statutory
+ bar.).
+ 
+
+**II.** **OFFERS FOR SALE**"Only an offer which rises to the level of a commercial offer for
+ sale, one which the other party could make into a binding contract by simple
+ acceptance (assuming consideration), constitutes an offer for sale under
+ **[§102(b)](mpep-9015-appx-l.html#d0e302395)**." *Group One, Ltd. v. Hallmark Cards,
+ Inc.,* 254 F.3d 1041,1048, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001). 
+ 
+
+***A.******Rejected or Unreceived Offer for Sale Is Enough To Bar a
+ Patent***Since the statute creates a bar when an invention is placed
+ "on sale," a mere offer to sell is sufficient commercial activity to bar a
+ patent. *In re Theis,* 610 F.2d 786, 791, 204 USPQ 188, 192
+ (CCPA 1979). Even a rejected offer may create an on sale bar. *UMC
+ Elecs. v. United States,* 816 F.2d 647, 653, 2 USPQ2d 1465, 1469
+ (Fed. Cir. 1987). In fact, the offer need not even be actually received by a
+ prospective purchaser. *Wende v. Horine,* 225 F. 501 (7th Cir.
+ 1915). 
+ 
+
+***B.******Delivery of the Offered Item Is Not Required***"It is not necessary that a sale be consummated for the bar to
+ operate." *Buildex v. Kason Indus.,**Inc.,* 849 F.2d 1461, 1463-64, 7 USPQ2d 1325, 1327-28 (Fed.
+ Cir. 1988) (citations omitted). See also *Weatherchem Corp. v. J.L.
+ Clark, Inc.,* 163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed.
+ Cir. 1998) (A signed purchase agreement prior to the critical date constituted
+ a commercial offer; it was immaterial that there was no delivery of later
+ patented caps and no exchange of money until after critical date.).
+ 
+
+***C.******Seller Need Not Have the Goods "On Hand" When the Offer for Sale Is
+ Made***Goods need not be "on hand" and transferred at the time of the
+ sale or offer. The date of the offer for sale is the effective date of the "on
+ sale" activity. *J. A. La Porte, Inc. v. Norfolk Dredging
+ Co.,* 787 F.2d 1577, 1582, 229 USPQ 435, 438 (Fed. Cir. 1986).
+ However, the invention must be complete and "ready for patenting" (see
+ **[MPEP §
+ 2133.03(c)](s2133.html#d0e204494)**) before the critical date. *Pfaff
+ v. Wells Elecs., Inc.,* 525 U.S. 55, 67, 48 USPQ2d 1641, 1647
+ (1998). See also *Micro Chemical, Inc. v. Great Plains Chemical
+ Co.,* 103 F.3d 1538, 1545, 41 USPQ2d 1238, 1243 (Fed. Cir. 1997)
+ (The on-sale bar was not triggered by an offer to sell because the inventor
+ "was not close to completion of the invention at the time of the alleged offer
+ and had not demonstrated a high likelihood that the invention would work for
+ its intended purpose upon completion."); *Shatterproof Glass Corp. v.
+ Libbey-Owens Ford Co.,* 758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985)
+ (Where there was no evidence that the samples shown to the potential customers
+ were made by the new process and apparatus, the offer to sell did not rise to
+ the level of an on sale bar.). Compare *Barmag Barmer Maschinenfabrik
+ AG v. Murata Mach., Ltd.,* 731 F.2d 831, 221 USPQ 561 (Fed. Cir.
+ 1984) (Where a "make shift" model of the inventive product was shown to the
+ potential purchasers in conjunction with the offer to sell, the offer was
+ enough to bar a patent under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.).
+ 
+ 
+
+***D.******Material Terms of an Offer for Sale Must be Present***"[A] communication that fails to constitute a definite offer
+ to sell the product and to include material terms is not an ‘offer’ in the
+ contract sense." *Elan Corp., PLC v. Andrx Pharms. Inc.,* 366
+ F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004). The court stated that
+ an "offer to enter into a license under a patent for future sale of the
+ invention covered by the patent when and if it has been developed... is not an
+ offer to sell the patented invention that constitutes an on-sale bar."
+ *Id.,* 70 USPQ2d at 1726. Accordingly, the court concluded
+ that Elan’s letter was not an offer to sell a product. In addition, the court
+ stated that the letter lacked material terms of a commercial offer such as
+ pricing for the product, quantities, time and place of delivery, and product
+ specifications and that the dollar amount in the letter was not a price term
+ for the sale of the product but rather the amount requested was to form and
+ continue a partnership, explicitly referred to as a "licensing fee."
+ *Id.*
+
+**III.** **SALE BY INVENTOR, ASSIGNEE OR OTHERS ASSOCIATED WITH THE INVENTOR IN THE
+ COURSE OF BUSINESS*****A.******Sale Activity Need Not Be Public***Unlike questions of public use, there is no requirement that
+ "on sale" activity be "public." "Public" as used in **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** modifies "use" only. "Public" does not modify
+ "sale." *Hobbs v. United States,* 451 F.2d 849, 171 USPQ 713,
+ 720 (5th Cir. 1971). 
+ 
+
+***B.******Inventor’s Consent to the Sale Is Not a Prerequisite To Finding an
+ On Sale Bar***If the invention was placed on sale by a third party who
+ obtained the invention from the inventor, a patent is barred even if the
+ inventor did not consent to the sale or have knowledge that the invention was
+ embodied in the sold article. *Electric Storage Battery Co. v.
+ Shimadzu,* 307 U.S. 5, 41 USPQ 155 (1938); *In re
+ Blaisdell,* 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA 1957);
+ *CTS Corp. v. Electro Materials Corp. of America,* 469 F.
+ Supp. 801, 819, 202 USPQ 22, 38 (S.D.N.Y. 1979). 
+ 
+
+***C.******Objective Evidence of Sale or Offer To Sell Is Needed***In determining if a sale or offer to sell the claimed
+ invention has occurred, a key question to ask is whether the inventor sold or
+ offered for sale a product that embodies the invention claimed in the
+ application. Objective evidence such as a description of the inventive product
+ in the contract of sale or in another communication with the purchaser controls
+ over an uncommunicated intent by the seller to deliver the inventive product
+ under the contract for sale. *Ferag AG v. Quipp, Inc.,* 45
+ F.3d 1562, 1567, 33 USPQ2d 1512, 1516 (Fed. Cir. 1995) (On sale bar found where
+ initial negotiations and agreement containing contract for sale neither clearly
+ specified nor precluded use of the inventive design, but an order confirmation
+ prior to the critical date did specify use of inventive design.). The purchaser
+ need not have actual knowledge of the invention for it to be on sale. The
+ determination of whether "the offered product is in fact the claimed invention
+ may be established by any relevant evidence, such as memoranda, drawings,
+ correspondence, and testimony of witnesses." *RCA Corp. v. Data Gen.
+ Corp.,* 887 F.2d 1056, 1060, 12 USPQ2d 1449, 1452 (Fed. Cir. 1989).
+ However, "what the purchaser reasonably believes the inventor to be offering is
+ relevant to whether, on balance, the offer objectively may be said to be of the
+ patented invention." *Envirotech Corp. v. Westech Eng’g,
+ Inc.,* 904 F.2d 1571, 1576, 15 USPQ2d 1230, 1234 (Fed. Cir. 1990)
+ (Where a proposal to supply a general contractor with a product did not mention
+ a new design but, rather, referenced a prior art design, the uncommunicated
+ intent of the supplier to supply the new design if awarded the contract did not
+ constitute an "on sale" bar to a patent on the new design, even though the
+ supplier’s bid reflected the lower cost of the new design.). 
+ 
+
+**IV.** **SALES BY INDEPENDENT THIRD PARTIES*** 
+
+***A.******Sales or Offers for Sale by Independent Third Parties Will Bar a
+ Patent***Sale or offer for sale of the invention by an independent
+ third party more than 1 year before the filing date of applicant’s patent will
+ bar applicant from obtaining a patent. "An exception to this rule exists where
+ a patented method is kept secret and remains secret after a sale of the
+ unpatented product of the method. Such a sale prior to the critical date is a
+ bar if engaged in by the patentee or patent applicant, but not if engaged in by
+ another." *In re Caveney,* 761 F.2d 671, 675-76, 226 USPQ 1,
+ 3-4 (Fed. Cir. 1985).
+ 
+
+***B.******Nonprior Art Publications Can Be Used as Evidence of Sale Before
+ the Critical Date***Abstracts identifying a product’s vendor containing
+ information useful to potential buyers such as whom to contact, price terms,
+ documentation, warranties, training and maintenance along with the date of
+ product release or installation before the inventor’s critical date may provide
+ sufficient evidence of prior sale by a third party to support a rejection based
+ on **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** or **[103](mpep-9015-appx-l.html#d0e302450)**. *In re
+ Epstein,* 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Examiner's
+ rejection was based on nonprior art published abstracts which disclosed
+ software products meeting the claims. The abstracts specified software release
+ dates and dates of first installation which were more than 1 year before
+ applicant’s filing date.).
+ 
+
+
+
+
+# 2133.03(c) The "Invention" [R-10.2019]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+
+#### *Pre-AIA 35 U.S.C. 102   
+ Conditions for patentability; novelty and loss of right to
+ patent.*
+
+
+A person shall be entitled to a patent unless -
+
+
+\*\*\*\*\*
+
+
+* (b) the invention was…in public use or on sale in this
+ country, more than one year prior to the date of the application for patent
+ in the United States
+
+
+\*\*\*\*\*
+
+
+(Emphasis added).
+
+
+**I.** **THE INVENTION MUST BE "READY FOR PATENTING"**In *Pfaff v. Wells Elecs., Inc.,* 525 U.S. 55,
+ 66-68, 48 USPQ2d 1641, 1647 (1998), the Supreme Court enunciated a two-prong test
+ for determining whether an invention was "on sale" within the meaning of
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302395)** even if it has not yet been reduced to
+ practice. "[T]he on-sale bar applies when two conditions are satisfied before the
+ critical date [more than one year before the effective filing date of the claimed
+ invention]. First, the product must be the subject of a commercial offer for
+ sale…. Second, the invention must be ready for patenting." *Id.*
+ at 67, 119 S.Ct. at 311-12, 48 USPQ2d at 1646-47. 
+ 
+
+
+The Federal Circuit explained that the Supreme Court’s "ready for
+ patenting" prong applies in the context of both the on sale and public use bars.
+ *Invitrogen Corp. v. Biocrest Manufacturing L.P.,* 424 F.3d
+ 1374, 1379, 76 USPQ2d 1741, 1744 (Fed. Cir. 2005) ("A bar under **[[pre-AIA] section
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** arises where, before the critical date, the invention
+ is in public use and ready for patenting."). "Ready for patenting," the second
+ prong of the *Pfaff* test, "may be satisfied in at least two
+ ways: by proof of reduction to practice before the critical date; or by proof that
+ prior to the critical date the inventor had prepared drawings or other
+ descriptions of the invention that were sufficiently specific to enable a person
+ skilled in the art to practice the invention." *Id.* at 67, 199
+ S.Ct. at 311-12, 48 USPQ2d at 1647 (The patent was held invalid because the
+ invention for a computer chip socket was "ready for patenting" when it was offered
+ for sale more than one year prior to the application filing date. Even though the
+ invention had not yet been reduced to practice, the manufacturer was able to
+ produce the claimed computer chip sockets using the inventor’s detailed drawings
+ and specifications, and those sockets contained all elements of invention claimed
+ in the patent.). See also *Weatherchem Corp. v. J.L. Clark Inc.,*
+ 163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed. Cir. 1998) (The invention was
+ held "ready for patenting" since the detailed drawings of plastic dispensing caps
+ offered for sale "contained each limitation of the claims and were sufficiently
+ specific to enable person skilled in art to practice the invention".). 
+ 
+
+
+If the invention was actually reduced to practice before being
+ sold or offered for sale more than 1 year before filing of the application, a
+ patent will be barred. *Vanmoor v. Wal-Mart Stores, Inc.,* 201
+ F.3d 1363, 1366-67, 53 USPQ2d 1377, 1379 (Fed. Cir. 2000) ("Here the pre-critical
+ date sales were of completed cartridges made to specifications that remained
+ unchanged to the present day, showing that any invention embodied in the accused
+ cartridges was reduced to practice before the critical date. The
+ *Pfaff* ready for patenting condition is also satisfied
+ because the specification drawings, available prior to the critical date, were
+ actually used to produce the accused cartridges."); *In re
+ Hamilton,* 882 F.2d 1576, 1580, 11 USPQ2d 1890, 1893 (Fed. Cir. 1989).
+ 
+ "If a product that is offered for sale
+ inherently possesses each of the limitations of the claims, then the invention
+ is on sale, whether or not the parties to the transaction recognize that the
+ product possesses the claimed characteristics."
+ 
+ 
+ *Abbott Laboratories v. Geneva Pharmaceuticals, Inc.,* 182 F.3d
+ 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999) (Claim for a particular
+ anhydrous crystalline form of a pharmaceutical compound was held invalid under the
+ on-sale bar of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**, even though the parties to the
+ U.S. sales of the foreign manufactured compound did not know the identity of the
+ particular crystalline form.); *STX LLC. v. Brine Inc.,* 211 F.3d
+ 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (Claim for a lacrosse stick was
+ held invalid under the on-sale bar despite the argument that it was not known at
+ the time of sale whether the sticks possessed the recited "improved playing and
+ handling characteristics." "Subjective qualities inherent in a product, such as
+ ‘improved playing and handling’, cannot serve as an escape hatch to circumvent an
+ on-sale bar."). Actual reduction to practice in the context of an on-sale bar
+ issue usually requires testing under actual working conditions in such a way as to
+ demonstrate the practical utility of an invention for its intended purpose beyond
+ the probability of failure, unless by virtue of the very simplicity of an
+ invention its practical operativeness is clear. *Field v.
+ Knowles,* 183 F.2d 593, 601, 86 USPQ 373, 379 (CCPA 1950);
+ *Steinberg v. Seitz,* 517 F.2d 1359, 1363, 186 USPQ 209, 212
+ (CCPA 1975). 
+ 
+
+
+The invention need not be ready for satisfactory commercial
+ marketing for sale to bar a patent. *Atlantic Thermoplastics Co. v. Faytex
+ Corp.,* 970 F.2d 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).
+ 
+ 
+
+**II.** **INVENTOR HAS SUBMITTED A 37 CFR 1.131 AFFIDAVIT OR DECLARATION**Affidavits or declarations submitted under **[37 CFR
+ 1.131](mpep-9020-appx-r.html#aia_d0e323504)** to swear behind a reference may constitute, among
+ other things, an admission that an invention was "complete" more than 1 year
+ before the filing of an application. See *In re Foster,* 343 F.2d
+ 980, 987-88, 145 USPQ 166, 173 (CCPA 1965); *Dart Indus. v. E.I. duPont de
+ Nemours & Co.,* 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir.
+ 1973). Also see **[MPEP
+ § 715.10](s715.html#d0e92043)**. 
+ 
+
+**III.** **SALE OF A PROCESS**A claimed process, which is a series of acts or steps, is not
+ sold in the same sense as is a claimed product, device, or apparatus, which is a
+ tangible item. "‘Know-how’ describing what the process consists of and how the
+ process should be carried out may be sold in the sense that the buyer acquires
+ knowledge of the process and obtains the freedom to carry it out pursuant to the
+ terms of the transaction. However, such a transaction is not a ‘sale’ of the
+ invention within the meaning of **[[pre-AIA] §102(b)](mpep-9015-appx-l.html#d0e302383)** because the
+ process has not been carried out or performed as a result of the transaction."
+ *In re Kollar,* 286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429
+ (Fed. Cir. 2002). However, sale of a product made by the claimed process by the
+ patentee or a licensee would constitute a sale of the process within the meaning
+ of **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. See *id.* at 1333, 62 USPQ2d
+ at 1429; *D.L. Auld Co. v. Chroma Graphics Corp.,* 714 F.2d 1144,
+ 1147-48, 219 USPQ 13, 15-16 (Fed. Cir. 1983) (Even though the sale of a product
+ made by a claimed method before the critical date did not reveal anything about
+ the method to the public, the sale resulted in a "forfeiture" of any right to a
+ patent to that method); *W.L. Gore & Assocs., Inc. v. Garlock,
+ Inc.,* 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). The
+ application of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** would also be triggered by
+ actually performing the claimed process itself for consideration. See
+ *Scaltech, Inc. v. Retec/Tetra, L.L.C.,* 269 F.3d 1321, 1328,
+ 60 USPQ2d 1687, 1691(Fed. Cir. 2001) (Patent was held invalid under
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** based on patentee’s offer to perform the
+ claimed process for treating oil refinery waste more than one year before filing
+ the patent application). Moreover, the sale of a device embodying a claimed
+ process may trigger the on-sale bar. *Minton v. National Ass’n. of
+ Securities Dealers, Inc.,* 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1618
+ (Fed. Cir. 2003) (finding a fully operational computer program implementing and
+ thus embodying the claimed method to trigger the on-sale bar). However, the sale
+ of a prior art device different from that disclosed in a patent that is asserted
+ after the critical date to be capable of performing the claimed method is not an
+ on-sale bar of the process. *Poly-America LP v. GSE Lining Tech.
+ Inc.,* 383 F.3d 1303, 1308-09, 72 USPQ2d 1685, 1688-89 (Fed. Cir.
+ 2004) (stating that the transaction involving the sale of the prior art device did
+ not involve a transaction of the claimed method but instead only a device
+ different from that described in the patent for carrying out the claimed method,
+ where the device was not used to practice the claimed method until well after the
+ critical date, and where there was evidence that it was not even known whether the
+ device could perform the claimed process).
+ 
+
+
+
+
+# 2133.03(d) "In This Country" [R-10.2019]
+
+
+*[Editor Note: This MPEP section is **not applicable** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The language "in this country" in **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** does not include other WTO or NAFTA member countries,
+ but includes any State of the United States, the District of Columbia, and any
+ commonwealth, territory, or possession of the United States. See also
+ **[35 U.S.C.
+ 105](mpep-9015-appx-l.html#d0e302614)**. For purposes of judging the applicability of the
+ **[pre-AIA
+ 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** bars, public use or on sale activity must take
+ place in the United States. The "on sale" bar does not generally apply where both
+ manufacture and delivery occur in a foreign country. *Gandy v. Main Belting
+ Co.,* 143 U.S. 587, 593 (1892). However, "on sale" status can be found if
+ substantial activity prefatory to a "sale" occurs in the United States.
+ *Robbins Co. v. Lawrence Mfg. Co.,* 482 F.2d 426, 433, 178 USPQ
+ 577, 583 (9th Cir. 1973). An offer for sale, made or originating in this country, may
+ be sufficient prefatory activity to bring the offer within the terms of the statute,
+ even though sale and delivery take place in a foreign country. The same rationale
+ applies to an offer by a foreign manufacturer which is communicated to a prospective
+ purchaser in the United States prior to the critical date. *CTS Corp. v.
+ Piher Int’l Corp.,* 593 F.2d 777, 201 USPQ 649 (7th Cir. 1979).
+ 
+
+
+
+
+# 2133.03(e) Permitted Activity; Experimental Use [R-10.2019]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The question posed by the experimental use doctrine is "whether the
+ primary purpose of the inventor at the time of the sale, as determined from an
+ objective evaluation of the facts surrounding the transaction, was to conduct
+ experimentation." *Allen Eng’g Corp. v. Bartell Indus., Inc.,* 299
+ F.3d 1336, 1354, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) (quoting *EZ Dock v.
+ Schafer Sys., Inc.,* 276 F.3d 1347, 1356-57, 61 USPQ2d 1289, 1295-96
+ (Fed. Cir. 2002)) (Linn, J., concurring). Experimentation must be the primary purpose
+ and any commercial exploitation must be incidental in order for the sale to be a
+ permitted activity that does not create a bar under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)**. 
+ 
+
+
+If the use or sale was experimental, there is no bar under
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. "A use or sale is experimental for purposes of
+ **[[pre-AIA]
+ section 102(b)](mpep-9015-appx-l.html#d0e302383)** if it represents a *bona fide*
+ effort to perfect the invention or to ascertain whether it will answer its intended
+ purpose.… If any commercial exploitation does occur, it must be merely incidental to
+ the primary purpose of the experimentation to perfect the invention."
+ *LaBounty Mfg. v. United States Int’l Trade Comm’n,* 958 F.2d
+ 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting *Pennwalt Corp. v.
+ Akzona Inc.,* 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)).
+ "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).
+ 
+
+
+
+# 2133.03(e)(1) Commercial Exploitation [R-08.2017]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+One policy of the on sale and public use bars is the prevention
+ of inventors from exploiting their inventions commercially more than 1 year prior
+ to the filing of a patent application. Therefore, if applicant’s precritical date
+ activity is a sale or offer for sale that is an attempt at market penetration, a
+ patent is barred. Thus, even if there is *bona fide* experimental
+ activity, an inventor may not commercially exploit an invention more than 1 year
+ prior to the filing date of an application. *In re Theis,* 610
+ F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
+ 
+
+**I.** **THE COMMERCIAL ACTIVITY MUST LEGITIMATELY ADVANCE DEVELOPMENT OF THE
+ INVENTION TOWARDS COMPLETION**As the degree of commercial exploitation surrounding
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** activity increases, the burden on an
+ applicant to establish clear and convincing evidence of experimental activity
+ with respect to a public use becomes more difficult. Where the examiner has
+ found a *prima facie* case of a sale or an offer to sell, this
+ burden will rarely be met unless clear and convincing necessity for the
+ experimentation is established by the applicant. This does not mean, of course,
+ that there are no circumstances which would permit alleged experimental
+ activity in an atmosphere of commercial exploitation. In certain circumstances,
+ even a sale may be necessary to legitimately advance the experimental
+ development of an invention if the primary purpose of the sale is experimental.
+ *In re Theis,* 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA
+ 1979); *Robbins Co. v. Lawrence Mfg. Co.,* 482 F.2d 426, 433,
+ 178 USPQ 577, 582 (9th Cir. 1973). However, careful scrutiny by the examiner of
+ the objective factual circumstances surrounding such a sale is essential. See
+ *Ushakoff v. United States,* 327 F.2d 669, 140 USPQ 341
+ (Ct.Cl. 1964); *Cloud v. Standard Packaging Corp.,* 376 F.2d
+ 384, 153 USPQ 317 (7th Cir. 1967). 
+ 
+
+**II.** **SIGNIFICANT FACTORS INDICATIVE OF "COMMERCIAL EXPLOITATION"**As discussed in **[MPEP § 2133.03](s2133.html#d0e203781)**, a policy
+ consideration in questions of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ activity is premature "commercial exploitation" of a "completed" or "ready for
+ patenting" invention (see **[MPEP § 2133.03(c)](s2133.html#d0e204494)**). The extent
+ of commercial activity which constitutes **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ "on sale" status depends upon the circumstances of the activity, the basic
+ indicator being the subjective intent of the inventor as manifested through
+ objective evidence. The following activities should be used by the examiner as
+ indicia of this subjective intent:
+ 
+
+
+* (A) Preparation of various contemporaneous "commercial"
+ documents, e.g., orders, invoices, receipts, delivery schedules, etc.;
+* (B) Preparation of price lists *(Akron
+ Brass**Co.**v. Elkhart Brass Mfg. Co.,* 353 F.2d 704, 709, 147 USPQ
+ 301, 305 (7th Cir. 1965)) and distribution of price quotations
+ *(Amphenol Corp.**v. Gen'l Time Corp.,* 397 F.2d 431, 436, 158 USPQ 113,
+ 117 (7th Cir. 1968));
+* (C) Display of samples to prospective customers
+ *(Cataphote Corp. v. DeSoto Chemical Coatings,**Inc.,* 356 F.2d 24, 27, 148 USPQ 527, 529 (9th Cir.
+ 1966) *mod. on other grounds,* 358 F.2d 732, 149 USPQ
+ 159 (9th Cir.), *cert. denied,* 385 U.S. 832 (1966);
+ *Chicopee Mfg. Corp. v. Columbus Fiber Mills Co.,*
+ 165 F.Supp. 307, 323-325, 118 USPQ 53, 65-67 (M.D.Ga. 1958));
+* (D) Demonstration of models or prototypes *(General
+ Elec. Co. v. United States,* 206 USPQ 260, 266-67 (Ct. Cl.
+ 1979); *Red Cross Mfg. v. Toro Sales Co.,* 525 F.2d
+ 1135, 1140, 188 USPQ 241, 244-45 (7th Cir. 1975); *Philco
+ Corp.**v. Admiral Corp.,* 199 F. Supp. 797, 815-16, 131 USPQ
+ 413, 429-30 (D. Del. 1961)), especially at trade conventions
+ *(Interroyal Corp.**v. Simmons Co.,* 204 USPQ 562, 563-65 (S.D. N.Y.
+ 1979)), and even though no orders are actually obtained
+ *(Monogram Mfg. v. F. & H. Mfg.,* 144 F.2d 412,
+ 62 USPQ 409, 412 (9th Cir. 1944));
+* (E) Use of an invention where an admission fee is charged
+ *(In re Josserand,* 188 F.2d 486, 491, 89 USPQ 371,
+ 376 (CCPA 1951); *Greenewalt v. Stanley,* 54 F.2d 195,
+ 12 USPQ 122 (3d Cir. 1931)); and
+* (F) Advertising in publicity releases, brochures, and
+ various periodicals *(In re Theis,* 610 F.2d 786, 792
+ n.6, 204 USPQ 188, 193 n. 6 (CCPA 1979); *Interroyal Corp. v.
+ Simmons Co.,* 204 USPQ 562, 564-66 (S.D.N.Y.1979);
+ *Akron Brass, Co. v. Elkhart Brass Mfg.,**Inc.,* 353 F.2d 704, 709, 147 USPQ 301, 305 (7th
+ Cir.1965); *Tucker Aluminum Prods. v. Grossman,* 312
+ F.2d 393, 394, 136 USPQ 244, 245 (9th Cir. 1963)).
+
+
+See **[MPEP § 2133.03(e)(4)](s2133.html#d0e203781)** for
+ factors indicative of an experimental purpose.
+ 
+
+
+
+
+# 2133.03(e)(2) Intent [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+"When sales are made in an ordinary commercial environment and
+ the goods are placed outside the inventor’s control, an inventor’s secretly held
+ subjective intent to ‘experiment,’ even if true, is unavailing without objective
+ evidence to support the contention. Under such circumstances, the customer at a
+ minimum must be made aware of the experimentation." *LaBounty Mfg., Inc.
+ v. United States Int’l Trade Comm’n,* 958 F.2d 1066, 1072, 22 USPQ2d
+ 1025, 1029 (Fed. Cir. 1992) (quoting  *Harrington Mfg. Co. v. Powell Mfg.
+ Co.,* 815 F.2d 1478, 1480 n.3, 2 USPQ2d 1364, 1366 n.3 (Fed. Cir.
+ 1986); *Paragon Podiatry Laboratory, Inc. v. KLM Labs., Inc.,*
+ 984 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir. 1993) (Paragon sold the inventive units
+ to the trade as completed devices without any disclosure to either doctors or
+ patients of their involvement in alleged testing. Evidence of the inventor’s
+ secretly held belief that the units were not durable and may not be satisfactory
+ for consumers was not sufficient, alone, to avoid a statutory bar.). 
+ 
+
+
+
+
+# 2133.03(e)(3) "Completeness" of the Invention [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **EXPERIMENTAL USE ENDS WHEN THE INVENTION IS ACTUALLY REDUCED TO
+ PRACTICE**Experimental use "means perfecting or completing an invention
+ to the point of determining that it will work for its intended purpose."
+ Therefore, experimental use "ends with an actual reduction to practice."
+ *RCA Corp.**v.**Data Gen. Corp.,* 887 F.2d 1056, 1061, 12 USPQ2d 1449, 1453
+ (Fed. Cir. 1989). If the examiner concludes from the evidence of record that an
+ applicant was satisfied that an invention was in fact "complete," awaiting
+ approval by the applicant from an organization such as Underwriters’
+ Laboratories will not normally overcome this conclusion. *Interroyal
+ Corp. v. Simmons Co.,* 204 USPQ 562, 566 (S.D.N.Y. 1979);
+ *Skil Corp. v. Rockwell Manufacturing Co.,* 358 F. Supp.
+ 1257, 1261, 178 USPQ 562, 565 (N.D.Ill. 1973), *aff’d. in part, rev’d
+ in part sub nom.**Skil Corp. v. Lucerne Products Inc.,* 503 F.2d 745, 183 USPQ
+ 396, 399 (7th Cir. 1974), *cert. denied,* 420 U.S. 974, 185
+ USPQ 65 (1975). See **[MPEP § 2133.03(c)](s2133.html#d0e204494)** for more
+ information of what constitutes a "complete" invention.
+ 
+
+
+The fact that alleged experimental activity does not lead to
+ specific modifications or refinements of an invention is evidence, although not
+ conclusive evidence, that such activity is not within the realm permitted by
+ the statute. This is especially the case where the evidence of record clearly
+ demonstrates to the examiner that an invention was considered "complete" by an
+ inventor at the time of the activity. Nevertheless, any modifications or
+ refinements which did result from such experimental activity must at least be a
+ feature of the claimed invention to be of any probative value. *In re
+ Theis,* 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
+ 
+
+**II.** **DISPOSAL OF PROTOTYPES**Where a prototype of an invention has been disposed of by an
+ inventor before the critical date, inquiry by the examiner should focus upon
+ the intent of the inventor and the reasonableness of the disposal under all
+ circumstances. The fact that an otherwise reasonable disposal of a prototype
+ involves incidental income is not necessarily fatal. *In re
+ Dybel,* 524 F.2d 1393, 1399, n.5, 187 USPQ 593, 597 n.5 (CCPA
+ 1975). However, if a prototype is considered "complete" by an inventor and all
+ experimentation on the underlying invention has ceased, unrestricted disposal
+ of the prototype constitutes a bar under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.
+ *In re Blaisdell,* 242 F.2d 779, 113 USPQ 289 (CCPA 1957);
+ *contra,**Watson v.**Allen,* 254 F.2d 342, 117 USPQ 68 (D.C. Cir. 1958).
+ 
+
+
+
+
+# 2133.03(e)(4) Factors Indicative of an Experimental Purpose [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The courts have considered a number of factors in determining
+ whether a claimed invention was the subject of a commercial offer for sale
+ primarily for purposes of experimentation. "These factors include: (1) the
+ necessity for public testing, (2) the amount of control over the experiment
+ retained by the inventor, (3) the nature of the invention, (4) the length of the
+ test period, (5) whether payment was made, (6) whether there was a secrecy
+ obligation, (7) whether records of the experiment were kept, (8) who conducted the
+ experiment, ... (9) the degree of commercial exploitation during testing[,] ...
+ (10) whether the invention reasonably requires evaluation under actual conditions
+ of use, (11) whether testing was systematically performed, (12) whether the
+ inventor continually monitored the invention during testing, and (13) the nature
+ of contacts made with potential customers." *Allen Eng’g Corp. v. Bartell
+ Indus., Inc.,* 299 F.3d 1336, 1353, 63 USPQ2d 1769, 1780 (Fed. Cir.
+ 2002) (quoting *EZ Dock v. Schafer Sys., Inc.,* 276 F.3d 1347,
+ 1357, 61 USPQ2d 1289, 1296 (Fed. Cir. 2002)) (Linn, J., concurring). Another
+ critical attribute of experimentation is the "customer’s awareness of the
+ purported testing in the context of a sale." *Electromotive Div. of Gen.
+ Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co.,* 417 F.3d
+ 1203, 1241, 75 USPQ2d 1650, 1658 (Fed. Cir. 2005).
+ 
+
+
+Once alleged experimental activity is advanced by an applicant to
+ explain a *prima facie* case under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)**, the examiner must determine whether the scope and
+ length of the activity were reasonable in terms of the experimental purpose
+ intended by the applicant and the nature of the subject matter involved. No one
+ of, or particular combination of, factors is necessarily determinative of this
+ purpose.
+ 
+
+
+See **[MPEP § 2133.03(e)(1)](s2133.html#d0e203781)** for factors
+ indicative of commercial exploitation.
+ 
+
+
+
+
+# 2133.03(e)(5) Experimentation and Degree of Supervision and Control [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**THE INVENTOR MUST MAINTAIN SUFFICIENT CONTROL OVER THE INVENTION DURING
+ TESTING BY THIRD PARTIES**The significant determinative factors in questions of
+ experimental purpose are the extent of supervision and control maintained by an
+ inventor over an invention during an alleged period of experimentation , and
+ the customer’s awareness of the experimentation. *Electromotive Div. of
+ Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co.,*
+ 417 F.3d 1203, 1214,75 USPQ2d 1650, 1658 (Fed. Cir. 2005)("control and customer
+ awareness ordinarily must be proven if experimentation is to be found"). Once a
+ period of experimental activity has ended and supervision and control has been
+ relinquished by an inventor without any restraints on subsequent use of an
+ invention, an unrestricted subsequent use of the invention is a
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** bar. *In re Blaisdell,*
+ 242 F.2d 779, 784, 113 USPQ 289, 293 (CCPA 1957). 
+ 
+
+
+
+
+# 2133.03(e)(6) Permitted Experimental Activity and Testing [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **DEVELOPMENTAL TESTING IS PERMITTED**Testing of an invention in the normal context of its
+ technological development is generally within the realm of permitted
+ experimental activity. Likewise, experimentation to determine utility, as that
+ term is applied in **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**, may also
+ constitute permissible activity. See *General Motors Corp. v. Bendix
+ Aviation Corp.,* 123 F. Supp. 506, 521, 102 USPQ 58, 69 (N.D.Ind.
+ 1954). For example, where an invention relates to a chemical composition with
+ no known utility, i.e., a patent application for the composition could not be
+ filed (**[35
+ U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**; **[35 U.S.C. 112(a)](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)** or
+ **[pre-AIA 35
+ U.S.C. 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph), continued testing to find
+ utility would likely be permissible under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**,
+ absent a sale of the composition or other evidence of commercial exploitation.
+ 
+ 
+
+**II.** **MARKET TESTING IS NOT PERMITTED**Experimentation to determine product acceptance, i.e., market
+ testing, is typical of a trader’s and not an inventor’s experiment and is thus
+ not within the area of permitted experimental activity. *Smith &
+ Davis Mfg. Co. v. Mellon,* 58 F. 705, 707 (8th Cir. 1893) Likewise,
+ testing of an invention for the benefit of appeasing a customer, or to conduct
+ "minor ‘tune up’ procedures not requiring an inventor’s skills, but rather the
+ skills of a competent technician," are also not within the exception.
+ *In re Theis,* 610 F.2d 786, 793, 204 USPQ 188, 193-94
+ (CCPA 1979).
+ 
+
+**III.** **EXPERIMENTAL ACTIVITY IN THE CONTEXT OF DESIGN APPLICATIONS**The public use of an ornamental design which is directed
+ toward generating consumer interest in the aesthetics of the design is not an
+ experimental use. *In re Mann,* 861 F.2d 1581, 8 USPQ2d 2030
+ (Fed. Cir. 1988) (display of a wrought iron table at a trade show held to be
+ public use). However, "experimentation directed to functional features of a
+ product also containing an ornamental design may negate what otherwise would be
+ considered a public use within the meaning of **[section
+ 102(b)](mpep-9015-appx-l.html#d0e302395)**." *Tone Brothers, Inc.**v.**Sysco Corp.,* 28 F.3d 1192, 1196, 31 USPQ2d 1321, 1326 (Fed.
+ Cir. 1994) (A study wherein students evaluated the effect of the functional
+ features of a spice container design may be considered an experimental
+ use.).
+ 
+
+
+
+
+# 2133.03(e)(7) Activity of an Independent Third Party Inventor [R-08.2017]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** . See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**EXPERIMENTAL USE EXCEPTION IS PERSONAL TO AN APPLICANT**The statutory bars of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ are applicable even though public use or on sale activity is by a party other
+ than an applicant. Where an applicant presents evidence of experimental
+ activity by such other party, the evidence will not overcome the *prima
+ facie* case under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ based upon the activity of such party unless the activity was under the
+ supervision and control of the applicant. *In re Hamilton,*
+ 882 F.2d 1576, 1581, 111 USPQ2d 1890, 1894 (Fed. Cir. 1989) ("The experimental
+ use doctrine operates in the inventor's favor to allow *the
+ inventor* to refine his invention or to assess its value relative
+ to the time and expense of prosecuting a patent application. If it is not the
+ inventor or someone under his control or ‘surveillance’ who does these things,
+ there appears to us no reason why he should be entitled to rely upon them to
+ avoid the statute.") (citing *Magnetics, Inc. v. Arnold Engineering
+ Co.,* 438 F.2d 72, 74, 168 USPQ 392, 394 (7th Cir.1971)). In other
+ words, the experimental use activity exception is personal to an applicant.
+ 
+
+
+
+
+, 
+# 2133.03(a) "Public Use" [R-08.2017]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** . See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **TEST FOR "PUBLIC USE** The public use bar under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ arises where the invention is in public use before the critical date and is ready
+ for patenting. *Invitrogen Corp. v. Biocrest Manufacturing L.P.,*
+ 424 F.3d 1374, 76 USPQ2d 1741 (Fed. Cir. 2005). As explained by the court, 
+ 
+
+
+
+> 
+>  The proper test for the public use prong of the
+>  **[[pre-AIA]
+>  § 102(b)](mpep-9015-appx-l.html#d0e302383)** statutory bar is whether the purported use: (1)
+>  was accessible to the public; or (2) was commercially exploited. Commercial
+>  exploitation is a clear indication of public use, but it likely requires more
+>  than, for example, a secret offer for sale. Thus, the test for the public use
+>  prong includes the consideration of evidence relevant to experimentation, as
+>  well as, *inter alia* , the nature of the activity that
+>  occurred in public; public access to the use; confidentiality obligations
+>  imposed on members of the public who observed the use; and commercial
+>  exploitation…. That evidence is relevant to discern whether the use was a
+>  public use that could raise a bar to patentability, but it is distinct from
+>  evidence relevant to the ready for patenting component of
+>  *Pfaff* ’s two-part test, another necessary requirement of
+>  a public use bar.
+>  
+> 
+> 
+> 
+
+
+*Id.* at 1380, 76 USPQ2d at 1744 (citations omitted). See
+ **[MPEP §
+ 2133.03(c)](s2133.html#d0e203781)** for a discussion of the "ready for patenting"
+ prong of the public use and on sale statutory bars.
+ 
+
+
+"[T]o constitute the public use of an invention it is not
+ necessary that more than one of the patent articles should be publicly used. The
+ use of a great number may tend to strengthen the proof, but one well defined case
+ of such use is just as effectual to annul the patent as many." Likewise, it is not
+ necessary that more than one person use the invention. *Egbert
+ v.**Lippmann,* 104 U.S. 333, 336 (1881).
+ 
+
+**II.** **PUBLIC KNOWLEDGE IS NOT NECESSARILY PUBLIC USE UNDER Pre-AIA 35 U.S.C.
+ 102(b)**Mere knowledge of the invention by the public does not warrant
+ rejection under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. **[Pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** bars public use or sale, not public knowledge.
+ *TP**Labs., Inc. v. Professional Positioners, Inc.,* 724 F.2d 965,
+ 970, 220 USPQ 577, 581 (Fed. Cir. 1984).
+ 
+
+
+Note, however, that public knowledge may provide grounds for
+ rejection under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP § 2132](s2132.html#d0e203390)**. 
+ 
+
+***A.*** ***Commercial Versus Noncommercial Use and the Impact of
+ Secrecy***There are limited circumstances in which a secret or
+ confidential use of an invention may give rise to the public use bar.
+ "[S]ecrecy of use alone is not sufficient to show that existing knowledge has
+ not been withdrawn from public use; commercial exploitation is also forbidden."
+ *Invitrogen,* 424 F.3d at 1382, 76 USPQ2d at 1745-46 (The
+ fact that patentee secretly used the claimed invention internally before the
+ critical date to develop future products that were never sold was by itself
+ insufficient to create a public use bar to patentability.).
+ 
+
+**1.** **"Public Use" and "Non-secret Use" Are Not Necessarily
+ Synonymous**"Public" is not necessarily synonymous with "non- secret."
+ The fact "that non-secret uses of the device were made [by the inventor or
+ someone connected with the inventor] prior to the critical date is not
+ itself dispositive of the issue of whether activity barring a patent under
+ **[pre-AIA
+ 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** occurred. The fact that the device
+ was not hidden from view may make the use not secret, but nonsecret use is
+ not *ipso facto* ‘public use’ activity. Nor, it must be
+ added, is all secret use *ipso facto* not ‘public use’
+ within the meaning of the statute," if the inventor is making commercial use
+ of the invention under circumstances which preserve its secrecy. *TP
+ Labs., Inc.**v.**Professional Positioners, Inc.,* 724 F.2d 965, 972, 220
+ USPQ 577, 583 (Fed. Cir. 1983) (citations omitted). 
+ 
+
+**2.** **Even If the Invention Is Hidden, Inventor Who Puts Machine or Article
+ Embodying the Invention in Public View Is Barred from Obtaining a Patent
+ as the Invention Is in Public Use** When the inventor or someone connected to the inventor puts
+ the invention on display or sells it, there is a "public use" within the
+ meaning of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** even though by its very
+ nature an invention is completely hidden from view as part of a larger
+ machine or article, if the invention is otherwise used in its natural and
+ intended way and the larger machine or article is accessible to the public.
+ *In re Blaisdell,* 242 F.2d 779, 783, 113 USPQ 289, 292
+ (CCPA 1957); *Hall**v. Macneale,* 107 U.S. 90, 96-97 (1882); *Ex
+ parte**Kuklo,* 25 USPQ2d 1387, 1390 (Bd. Pat. App. & Inter.
+ 1992) (Display of equipment including the structural features of the claimed
+ invention to visitors of laboratory is public use even though public did not
+ see inner workings of device. The person to whom the invention is publicly
+ disclosed need not understand the significance and technical complexities of
+ the invention.).
+ 
+
+**3.** **There Is No Public Use If Inventor Restricted Use to Locations Where
+ There Was a Reasonable Expectation of Privacy and the Use Was for His or
+ Her Own Enjoyment** An inventor’s private use of the invention, for his or her
+ own enjoyment is not a public use. *Moleculon Research
+ Corp.**v. CBS, Inc.,* 793 F.2d 1261, 1265, 229 USPQ 805, 809
+ (Fed. Cir. 1986) (Inventor showed inventive puzzle to close friends while in
+ his dorm room and later the president of the company at which he was working
+ saw the puzzle on the inventor’s desk and they discussed it. Court held that
+ the inventor retained control and thus these actions did not result in a
+ "public use.").
+ 
+
+**4.** **The Presence or Absence of a Confidentiality Agreement is Not
+ Dispositive of the Public Use Issue**"The presence or absence of a confidentiality agreement is
+ not dispositive of the public use issue, but ‘is one factor to be considered
+ in assessing all the evidence.’" *Bernhardt, L.L.C. v. Collezione
+ Europa USA, Inc.,* 386 F.3d 1371, 1380-81, 72 USPQ2d 1901, 1909
+ (Fed. Cir. 2004) (quoting *Moleculon Research Corp. v. CBS
+ Inc.,* 793 F.2d 1261, 1266, 229 USPQ 805, 808 (Fed. Cir. 1986)).
+ The court stressed that it is necessary to analyze the evidence of public
+ use in the context of policies that underlie the public use and on sale bar
+ that include "‘discouraging removal of inventions from the public domain
+ that the public justifiably believes are freely available, prohibiting an
+ extension of the period for exploiting an invention, and favoring prompt and
+ widespread disclosure of inventions.’" *Bernhardt,* 386
+ F.3d at 1381, 72 USPQ2d at 1909. See also *Invitrogen,* 424
+ F.3d at 1379, 76 USPQ2d at 1744; **[MPEP § 2133.03](s2133.html#d0e203781)**, subsection
+ I. Evidence that the court emphasized included the "‘nature of the activity
+ that occurred in public; the public access to and knowledge of the public
+ use; [and] whether there were any confidentiality obligations imposed on
+ persons who observed the use.’" *Bernhardt,* 386 F.3d at
+ 1381, 72 USPQ2d at 1909. For example, the court in
+ *Bernhardt* noted that an exhibition display at issue in
+ the case "was not open to the public, that the identification of attendees
+ was checked against a list of authorized names by building security and
+ later at a reception desk near the showroom, that attendees were escorted
+ through the showroom, and that the attendees were not permitted to make
+ written notes or take photographs inside the showroom."
+ *Id.* The court remanded the issue of whether the
+ exhibition display was a public use for further proceedings since the
+ district court "focused on the absence of any confidentiality agreements and
+ did not discuss or analyze how the totality of the circumstances
+ surrounding" the exhibition "comports with the policies underlying the
+ public use bar." *Id.*
+
+***B.*** ***Use by Third Parties Deriving the Invention from
+ Applicant**** 
+
+**An Invention Is in Public Use If the Inventor Allows Another To Use
+ the Invention Without Restriction or Obligation of Secrecy**"Public use" of a claimed invention under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** occurs when the inventor allows another person
+ to use the invention without limitation, restriction or obligation of
+ secrecy to the inventor."  *In re Smith,* 714 F.2d 1127,
+ 1134, 218 USPQ 976, 983 (Fed. Cir. 1983). The presence or absence of a
+ confidentiality agreement is not itself determinative of the public use
+ issue, but is one factor to be considered along with the time, place, and
+ circumstances of the use which show the amount of control the inventor
+ retained over the invention. *Moleculon Research Corp.**v. CBS, Inc.,* 793 F.2d 1261, 1265, 229 USPQ 805, 809
+ (Fed. Cir. 1986). See *Ex parte C,* 27 USPQ2d 1492, 1499
+ (Bd. Pat. App. & Inter. 1992) (Inventor sold inventive soybean seeds to
+ growers who contracted and were paid to plant the seeds to increase stock
+ for later sale. The commercial nature of the use of the seed coupled with
+ the "on-sale" aspects of the contract and apparent lack of confidentiality
+ requirements rose to the level of a "public use" bar.); *Egbert
+ v.**Lippmann,* 104 U.S. 333, 336 (1881) (Public use found
+ where inventor allowed another to use inventive corset insert, though hidden
+ from view during use, because he did not impose an obligation of secrecy or
+ restrictions on its use.). 
+ 
+
+***C.*** ***Use by Independent Third Parties**** 
+
+Use by an Independent Third Party Is Public Use If
+ It Sufficiently "Informs" the Public of the Invention or a Competitor Could
+ Reasonably Ascertain the Invention
+ Any "nonsecret" use of an invention by someone unconnected
+ to the inventor, such as someone who has independently made the invention,
+ in the ordinary course of a business for trade or profit may be a "public
+ use," *Bird Provision Co. v. Owens Country Sausage,**Inc.,* 568 F.2d 369, 374-76, 197 USPQ 134, 138-40 (5th
+ Cir. 1978). Additionally, even a "secret" use by another inventor of a
+ machine or process to make a product is "public" if the details of the
+ machine or process are ascertainable by inspection or analysis of the
+ product that is sold or publicly displayed. *Gillman v.
+ Stern,* 114 F.2d 28, 46 USPQ 430 (2d Cir. 1940); *Dunlop
+ Holdings, Ltd. v. Ram Golf Corp.,* 524 F.2d 33, 36-7, 188 USPQ
+ 481, 483-484 (7th Cir. 1975). If the details of an inventive process are not
+ ascertainable from the product sold or displayed and the third party has
+ kept the invention as a trade secret then that use is not a public use and
+ will not bar a patent issuing to someone unconnected to the user.
+ *W.L. Gore & Assocs. v. Garlock, Inc.,* 721 F.2d
+ 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). However, a device qualifies
+ as prior art if it places the claimed features in the
+ public's possession before the critical date even if other
+ unclaimed aspects of the device were not publicly
+ available. *Lockwood v. American Airlines, Inc.,* 107 F.3d
+ 1505, 1570-71, 41 USPQ2d 1961, 1964-65 (Fed. Cir. 1997) (Computer
+ reservation system was prior art even though "essential algorithms of the
+ SABRE software were proprietary and confidential and...those aspects of the
+ system that were readily apparent to the public would not have been
+ sufficient to enable one skilled in the art to duplicate the [unclaimed
+ aspects of the] system."). The extent that the public becomes "informed" of
+ an invention involved in public use activity by one other than an applicant
+ depends upon the factual circumstances surrounding the activity and how
+ these comport with the policies underlying the on sale and public use bars.
+ *Manville Sales Corp. v. Paramount Sys., Inc*., 917 F.2d
+ 544, 549, 16 USPQ2d 1587, 1591 (Fed. Cir. 1990) (quoting *King
+ Instrument Corp.**v. Otari Corp.,* 767 F.2d 833, 860, 226 USPQ 402, 406
+ (Fed. Cir. 1985)). By way of example, in an allegedly "secret" use by a
+ third party other than an applicant, if a large number of employees of such
+ a party, who are not under a promise of secrecy, are permitted unimpeded
+ access to an invention, with affirmative steps by the party to educate other
+ employees as to the nature of the invention, the public is "informed."
+ *Chemithon Corp.**v.**Proctor & Gamble Co.,* 287 F. Supp. 291, 308, 159 USPQ
+ 139, 154 (D.Md. 1968), *aff’d.,* 427 F.2d 893, 165 USPQ 678
+ (4th Cir. 1970).
+ 
+
+
+Even if public use activity by one other than an applicant
+ is not sufficiently "informing," there may be adequate grounds upon which to
+ base a rejection under **[pre-AIA 35 U.S.C. 102(f)](mpep-9015-appx-l.html#d0e302383)**
+ and **[pre-AIA 35 U.S.C. 102(g)](mpep-9015-appx-l.html#d0e302383)**. See  *Dunlop
+ Holdings Ltd. v. Ram Golf Corp.,* 524 F.2d 33, 188 USPQ 481 (7th
+ Cir. 1975). See **[MPEP § 2137](s2137.html#d0e206570)** and
+ **[§
+ 2138](s2138.html#d0e207005)**. 
+ 
+
+
+, 
+# 2133.03(b) "On Sale" [R-10.2019]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** . See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+An impermissible sale has occurred if there was a definite sale, or
+ offer to sell, more than 1 year before the effective filing date of the claimed
+ invention and the subject matter of the sale, or offer to sell, fully anticipated the
+ claimed invention or would have rendered the claimed invention obvious by its
+ addition to the prior art. *Ferag AG v. Quipp, Inc.,* 45 F.3d 1562,
+ 1565, 33 USPQ2d 1512, 1514 (Fed. Cir. 1995). The on-sale bar of **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** is triggered if the invention is both (1) the subject of
+ a commercial offer for sale not primarily for experimental purposes and (2) ready for
+ patenting. *Pfaff v. Wells Elecs., Inc.,* 525 U.S. 55, 67, 48 USPQ2d
+ 1641, 1646-47 (1998). Traditional contract law principles are applied when
+ determining whether a commercial offer for sale has occurred. See *Linear
+ Tech. Corp. v. Micrel, Inc.,* 275 F.3d 1040, 1048, 61 USPQ2d 1225, 1229
+ (Fed. Cir. 2001), *petition for cert. filed,* 71 USLW 3093 (July 03,
+ 2002) (No. 02-39); *Group One, Ltd. v. Hallmark Cards, Inc.,* 254
+ F.3d 1041,1047, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001) ("As a general proposition, we
+ will look to the Uniform Commercial Code (‘UCC’) to define whether … a communication
+ or series of communications rises to the level of a commercial offer for sale.").
+ 
+
+**I.** **THE MEANING OF "SALE"**A sale is a contract between parties wherein the seller agrees
+ "to give and to pass rights of property" in return for the buyer’s payment or
+ promise "to pay the seller for the things bought or sold." *In re
+ Caveney,* 761 F.2d 671, 676, 226 USPQ 1, 4 (Fed. Cir. 1985). A
+ contract for the sale of goods requires a concrete offer and acceptance of that
+ offer. See, e.g., *Linear Tech.,* 275 F.3d at 1052-54, 61 USPQ2d
+ at 1233-34 (Court held there was no sale within the meaning of **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** where prospective purchaser submitted an order for
+ goods at issue, but received an order acknowledgement reading "will advise-not
+ booked." Prospective purchaser would understand that order was not accepted.).
+ 
+
+
+"[T]o be ‘on sale’ under **[§ 102(b)](mpep-9015-appx-l.html#d0e302395)**, a
+ product must be the subject of a commercial sale or offer for sale," and to be a
+ commercial sale it must be "one that bears the general hallmarks of a sale
+ pursuant to Section 2-106 of the Uniform Commercial Code." *Medicines Co.
+ v. Hospira, Inc.,* 827 F.3d 1363, 1364 119 USPQ2d 1329, 1330 (Fed.
+ Cir. 2016) (en banc). The court in *Medicines Co.* went on to
+ explain "[s]ection 2-106(1) of the Uniform Commercial Code describes a ‘sale’ as
+ ‘the passing of title from the seller to the buyer for a price.’ U.C.C. §
+ 2-106(1). The passage of title is a helpful indicator of whether a product is ‘on
+ sale,’ as it suggests when the inventor gives up its interest and control over the
+ product." *Id.* at 1375, 119 USPQ2d at 1338. The
+ *Medicines Co.* court held "a contract manufacturer’s sale to
+ the inventor of manufacturing services where neither title to the embodiments nor
+ the right to market the same passes to the supplier does not constitute an
+ invalidating sale under **[§ 102(b)](mpep-9015-appx-l.html#d0e302395)**."
+ *Id.* at 1381, 119 USPQ2d at 1342.
+ 
+
+***A.******Conditional Sale May Bar a Patent***An invention may be deemed to be "on sale" even though the
+ sale was conditional. The fact that the sale is conditioned on buyer
+ satisfaction does not, without more, prove that the sale was for an
+ experimental purpose. *Strong v. General Elec. Co.,* 434 F.2d
+ 1042, 1046, 168 USPQ 8, 12 (5th Cir. 1970).
+ 
+
+***B.******Nonprofit Sale May Bar a Patent***A "sale" need not be for profit to bar a patent. If the sale
+ was for the commercial exploitation of the invention, it is "on sale" within
+ the meaning of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.
+ *In re Dybel,* 524 F.2d 1393, 1401, 187 USPQ 593, 599 (CCPA
+ 1975) ("Although selling the devices for a profit would have demonstrated the
+ purpose of commercial exploitation, the fact that appellant realized no profit
+ from the sales does not demonstrate the contrary.").
+ 
+
+***C.******A Single Sale or Offer To Sell May Bar a Patent***Even a single sale or offer to sell the invention may bar
+ patentability under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.
+ *Consolidated**Fruit-Jar Co. v. Wright,* 94 U.S. 92, 94 (1876);
+ *Atlantic Thermoplastics Co. v. Faytex Corp.,* 970 F.2d
+ 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).
+ 
+
+***D.******A Sale of Rights Is Not a Sale of the Invention and Will Not in
+ Itself Bar a Patent***"[A]n assignment or sale of the rights in the invention and
+ potential patent rights is not a sale of ‘the invention’ within the meaning of
+ **[[pre-AIA]
+ section 102(b)](mpep-9015-appx-l.html#d0e302383)**." *Moleculon Research Corp. v.
+ CBS, Inc.,* 793 F.2d 1261, 1267, 229 USPQ 805, 809 (Fed. Cir.
+ 1986); see also *Elan Corp., PLC v. Andrx Pharms. Inc.,*
+ 366 F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004); *In re
+ Kollar,* 286 F.3d 1326, 1330 n.3, 1330-1331, 62 USPQ2d 1425, 1428
+ n.3, 1428-1429 (Fed. Cir. 2002) (distinguishing licenses which trigger the
+ on-sale bar (e.g., a standard computer software license wherein the product is
+ just as immediately transferred to the licensee as if it were sold), from
+ licenses that merely grant rights to an invention which do not *per
+ se* trigger the on-sale bar (e.g., exclusive rights to market the
+ invention or potential patent rights)); *Group One, Ltd. v. Hallmark
+ Cards, Inc.,* 254 F.3d 1041, 1049 n. 2, 59 USPQ2d 1121, 1129 n. 2
+ (Fed. Cir. 2001).
+ 
+
+
+"[T]he mere sale of manufacturing services by a
+ contract manufacturer to an inventor to create embodiments of a patented
+ product for the inventor does not constitute a ‘commercial sale’ of the
+ invention." *Medicines Co. v. Hospira, Inc.,* 827 F.3d 1363,
+ 1373 119 USPQ2d 1329, 1336 (Fed. Cir. 2016) (*en banc*). The
+ court in *Medicines Co.* further stated that "commercial
+ benefit—even to both parties in a transaction—is not enough to trigger the
+ on-sale bar of **[§ 102(b)](mpep-9015-appx-l.html#d0e302395)**; the transaction
+ must be one in which the product is ‘on sale’ in the sense that it is
+ ‘commercially marketed.’" *Id.* at 1373-74, 119 USPQ2d at
+ 1336-37.
+ 
+
+***E.******Buyer Must Be Uncontrolled by the Seller or Offerer***A sale or offer for sale must take place between separate
+ entities. *In re Caveney,* 761 F.2d 671, 676, 226 USPQ 1, 4
+ (Fed. Cir. 1985). Where the parties to the alleged sale are related, whether
+ there is a statutory bar depends on whether the seller so controls the
+ purchaser that the invention remains out of the public’s hands. *Ferag
+ AG v. Quipp, Inc.,* 45 F.3d 1562, 1566, 33 USPQ2d 1512, 1515 (Fed.
+ Cir. 1995) (Where the seller is a parent company of the buyer company, but the
+ President of the buyer company had "essentially unfettered" management
+ authority over the operations of the buyer company, the sale was a statutory
+ bar.).
+ 
+
+**II.** **OFFERS FOR SALE**"Only an offer which rises to the level of a commercial offer for
+ sale, one which the other party could make into a binding contract by simple
+ acceptance (assuming consideration), constitutes an offer for sale under
+ **[§102(b)](mpep-9015-appx-l.html#d0e302395)**." *Group One, Ltd. v. Hallmark Cards,
+ Inc.,* 254 F.3d 1041,1048, 59 USPQ2d 1121, 1126 (Fed. Cir. 2001). 
+ 
+
+***A.******Rejected or Unreceived Offer for Sale Is Enough To Bar a
+ Patent***Since the statute creates a bar when an invention is placed
+ "on sale," a mere offer to sell is sufficient commercial activity to bar a
+ patent. *In re Theis,* 610 F.2d 786, 791, 204 USPQ 188, 192
+ (CCPA 1979). Even a rejected offer may create an on sale bar. *UMC
+ Elecs. v. United States,* 816 F.2d 647, 653, 2 USPQ2d 1465, 1469
+ (Fed. Cir. 1987). In fact, the offer need not even be actually received by a
+ prospective purchaser. *Wende v. Horine,* 225 F. 501 (7th Cir.
+ 1915). 
+ 
+
+***B.******Delivery of the Offered Item Is Not Required***"It is not necessary that a sale be consummated for the bar to
+ operate." *Buildex v. Kason Indus.,**Inc.,* 849 F.2d 1461, 1463-64, 7 USPQ2d 1325, 1327-28 (Fed.
+ Cir. 1988) (citations omitted). See also *Weatherchem Corp. v. J.L.
+ Clark, Inc.,* 163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed.
+ Cir. 1998) (A signed purchase agreement prior to the critical date constituted
+ a commercial offer; it was immaterial that there was no delivery of later
+ patented caps and no exchange of money until after critical date.).
+ 
+
+***C.******Seller Need Not Have the Goods "On Hand" When the Offer for Sale Is
+ Made***Goods need not be "on hand" and transferred at the time of the
+ sale or offer. The date of the offer for sale is the effective date of the "on
+ sale" activity. *J. A. La Porte, Inc. v. Norfolk Dredging
+ Co.,* 787 F.2d 1577, 1582, 229 USPQ 435, 438 (Fed. Cir. 1986).
+ However, the invention must be complete and "ready for patenting" (see
+ **[MPEP §
+ 2133.03(c)](s2133.html#d0e204494)**) before the critical date. *Pfaff
+ v. Wells Elecs., Inc.,* 525 U.S. 55, 67, 48 USPQ2d 1641, 1647
+ (1998). See also *Micro Chemical, Inc. v. Great Plains Chemical
+ Co.,* 103 F.3d 1538, 1545, 41 USPQ2d 1238, 1243 (Fed. Cir. 1997)
+ (The on-sale bar was not triggered by an offer to sell because the inventor
+ "was not close to completion of the invention at the time of the alleged offer
+ and had not demonstrated a high likelihood that the invention would work for
+ its intended purpose upon completion."); *Shatterproof Glass Corp. v.
+ Libbey-Owens Ford Co.,* 758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985)
+ (Where there was no evidence that the samples shown to the potential customers
+ were made by the new process and apparatus, the offer to sell did not rise to
+ the level of an on sale bar.). Compare *Barmag Barmer Maschinenfabrik
+ AG v. Murata Mach., Ltd.,* 731 F.2d 831, 221 USPQ 561 (Fed. Cir.
+ 1984) (Where a "make shift" model of the inventive product was shown to the
+ potential purchasers in conjunction with the offer to sell, the offer was
+ enough to bar a patent under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.).
+ 
+ 
+
+***D.******Material Terms of an Offer for Sale Must be Present***"[A] communication that fails to constitute a definite offer
+ to sell the product and to include material terms is not an ‘offer’ in the
+ contract sense." *Elan Corp., PLC v. Andrx Pharms. Inc.,* 366
+ F.3d 1336, 1341, 70 USPQ2d 1722, 1728 (Fed. Cir. 2004). The court stated that
+ an "offer to enter into a license under a patent for future sale of the
+ invention covered by the patent when and if it has been developed... is not an
+ offer to sell the patented invention that constitutes an on-sale bar."
+ *Id.,* 70 USPQ2d at 1726. Accordingly, the court concluded
+ that Elan’s letter was not an offer to sell a product. In addition, the court
+ stated that the letter lacked material terms of a commercial offer such as
+ pricing for the product, quantities, time and place of delivery, and product
+ specifications and that the dollar amount in the letter was not a price term
+ for the sale of the product but rather the amount requested was to form and
+ continue a partnership, explicitly referred to as a "licensing fee."
+ *Id.*
+
+**III.** **SALE BY INVENTOR, ASSIGNEE OR OTHERS ASSOCIATED WITH THE INVENTOR IN THE
+ COURSE OF BUSINESS*****A.******Sale Activity Need Not Be Public***Unlike questions of public use, there is no requirement that
+ "on sale" activity be "public." "Public" as used in **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** modifies "use" only. "Public" does not modify
+ "sale." *Hobbs v. United States,* 451 F.2d 849, 171 USPQ 713,
+ 720 (5th Cir. 1971). 
+ 
+
+***B.******Inventor’s Consent to the Sale Is Not a Prerequisite To Finding an
+ On Sale Bar***If the invention was placed on sale by a third party who
+ obtained the invention from the inventor, a patent is barred even if the
+ inventor did not consent to the sale or have knowledge that the invention was
+ embodied in the sold article. *Electric Storage Battery Co. v.
+ Shimadzu,* 307 U.S. 5, 41 USPQ 155 (1938); *In re
+ Blaisdell,* 242 F.2d 779, 783, 113 USPQ 289, 292 (CCPA 1957);
+ *CTS Corp. v. Electro Materials Corp. of America,* 469 F.
+ Supp. 801, 819, 202 USPQ 22, 38 (S.D.N.Y. 1979). 
+ 
+
+***C.******Objective Evidence of Sale or Offer To Sell Is Needed***In determining if a sale or offer to sell the claimed
+ invention has occurred, a key question to ask is whether the inventor sold or
+ offered for sale a product that embodies the invention claimed in the
+ application. Objective evidence such as a description of the inventive product
+ in the contract of sale or in another communication with the purchaser controls
+ over an uncommunicated intent by the seller to deliver the inventive product
+ under the contract for sale. *Ferag AG v. Quipp, Inc.,* 45
+ F.3d 1562, 1567, 33 USPQ2d 1512, 1516 (Fed. Cir. 1995) (On sale bar found where
+ initial negotiations and agreement containing contract for sale neither clearly
+ specified nor precluded use of the inventive design, but an order confirmation
+ prior to the critical date did specify use of inventive design.). The purchaser
+ need not have actual knowledge of the invention for it to be on sale. The
+ determination of whether "the offered product is in fact the claimed invention
+ may be established by any relevant evidence, such as memoranda, drawings,
+ correspondence, and testimony of witnesses." *RCA Corp. v. Data Gen.
+ Corp.,* 887 F.2d 1056, 1060, 12 USPQ2d 1449, 1452 (Fed. Cir. 1989).
+ However, "what the purchaser reasonably believes the inventor to be offering is
+ relevant to whether, on balance, the offer objectively may be said to be of the
+ patented invention." *Envirotech Corp. v. Westech Eng’g,
+ Inc.,* 904 F.2d 1571, 1576, 15 USPQ2d 1230, 1234 (Fed. Cir. 1990)
+ (Where a proposal to supply a general contractor with a product did not mention
+ a new design but, rather, referenced a prior art design, the uncommunicated
+ intent of the supplier to supply the new design if awarded the contract did not
+ constitute an "on sale" bar to a patent on the new design, even though the
+ supplier’s bid reflected the lower cost of the new design.). 
+ 
+
+**IV.** **SALES BY INDEPENDENT THIRD PARTIES*** 
+
+***A.******Sales or Offers for Sale by Independent Third Parties Will Bar a
+ Patent***Sale or offer for sale of the invention by an independent
+ third party more than 1 year before the filing date of applicant’s patent will
+ bar applicant from obtaining a patent. "An exception to this rule exists where
+ a patented method is kept secret and remains secret after a sale of the
+ unpatented product of the method. Such a sale prior to the critical date is a
+ bar if engaged in by the patentee or patent applicant, but not if engaged in by
+ another." *In re Caveney,* 761 F.2d 671, 675-76, 226 USPQ 1,
+ 3-4 (Fed. Cir. 1985).
+ 
+
+***B.******Nonprior Art Publications Can Be Used as Evidence of Sale Before
+ the Critical Date***Abstracts identifying a product’s vendor containing
+ information useful to potential buyers such as whom to contact, price terms,
+ documentation, warranties, training and maintenance along with the date of
+ product release or installation before the inventor’s critical date may provide
+ sufficient evidence of prior sale by a third party to support a rejection based
+ on **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** or **[103](mpep-9015-appx-l.html#d0e302450)**. *In re
+ Epstein,* 32 F.3d 1559, 31 USPQ2d 1817 (Fed. Cir. 1994) (Examiner's
+ rejection was based on nonprior art published abstracts which disclosed
+ software products meeting the claims. The abstracts specified software release
+ dates and dates of first installation which were more than 1 year before
+ applicant’s filing date.).
+ 
+
+
+, 
+# 2133.03(c) The "Invention" [R-10.2019]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+
+#### *Pre-AIA 35 U.S.C. 102   
+ Conditions for patentability; novelty and loss of right to
+ patent.*
+
+
+A person shall be entitled to a patent unless -
+
+
+\*\*\*\*\*
+
+
+* (b) the invention was…in public use or on sale in this
+ country, more than one year prior to the date of the application for patent
+ in the United States
+
+
+\*\*\*\*\*
+
+
+(Emphasis added).
+
+
+**I.** **THE INVENTION MUST BE "READY FOR PATENTING"**In *Pfaff v. Wells Elecs., Inc.,* 525 U.S. 55,
+ 66-68, 48 USPQ2d 1641, 1647 (1998), the Supreme Court enunciated a two-prong test
+ for determining whether an invention was "on sale" within the meaning of
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302395)** even if it has not yet been reduced to
+ practice. "[T]he on-sale bar applies when two conditions are satisfied before the
+ critical date [more than one year before the effective filing date of the claimed
+ invention]. First, the product must be the subject of a commercial offer for
+ sale…. Second, the invention must be ready for patenting." *Id.*
+ at 67, 119 S.Ct. at 311-12, 48 USPQ2d at 1646-47. 
+ 
+
+
+The Federal Circuit explained that the Supreme Court’s "ready for
+ patenting" prong applies in the context of both the on sale and public use bars.
+ *Invitrogen Corp. v. Biocrest Manufacturing L.P.,* 424 F.3d
+ 1374, 1379, 76 USPQ2d 1741, 1744 (Fed. Cir. 2005) ("A bar under **[[pre-AIA] section
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** arises where, before the critical date, the invention
+ is in public use and ready for patenting."). "Ready for patenting," the second
+ prong of the *Pfaff* test, "may be satisfied in at least two
+ ways: by proof of reduction to practice before the critical date; or by proof that
+ prior to the critical date the inventor had prepared drawings or other
+ descriptions of the invention that were sufficiently specific to enable a person
+ skilled in the art to practice the invention." *Id.* at 67, 199
+ S.Ct. at 311-12, 48 USPQ2d at 1647 (The patent was held invalid because the
+ invention for a computer chip socket was "ready for patenting" when it was offered
+ for sale more than one year prior to the application filing date. Even though the
+ invention had not yet been reduced to practice, the manufacturer was able to
+ produce the claimed computer chip sockets using the inventor’s detailed drawings
+ and specifications, and those sockets contained all elements of invention claimed
+ in the patent.). See also *Weatherchem Corp. v. J.L. Clark Inc.,*
+ 163 F.3d 1326, 1333, 49 USPQ2d 1001, 1006-07 (Fed. Cir. 1998) (The invention was
+ held "ready for patenting" since the detailed drawings of plastic dispensing caps
+ offered for sale "contained each limitation of the claims and were sufficiently
+ specific to enable person skilled in art to practice the invention".). 
+ 
+
+
+If the invention was actually reduced to practice before being
+ sold or offered for sale more than 1 year before filing of the application, a
+ patent will be barred. *Vanmoor v. Wal-Mart Stores, Inc.,* 201
+ F.3d 1363, 1366-67, 53 USPQ2d 1377, 1379 (Fed. Cir. 2000) ("Here the pre-critical
+ date sales were of completed cartridges made to specifications that remained
+ unchanged to the present day, showing that any invention embodied in the accused
+ cartridges was reduced to practice before the critical date. The
+ *Pfaff* ready for patenting condition is also satisfied
+ because the specification drawings, available prior to the critical date, were
+ actually used to produce the accused cartridges."); *In re
+ Hamilton,* 882 F.2d 1576, 1580, 11 USPQ2d 1890, 1893 (Fed. Cir. 1989).
+ 
+ "If a product that is offered for sale
+ inherently possesses each of the limitations of the claims, then the invention
+ is on sale, whether or not the parties to the transaction recognize that the
+ product possesses the claimed characteristics."
+ 
+ 
+ *Abbott Laboratories v. Geneva Pharmaceuticals, Inc.,* 182 F.3d
+ 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999) (Claim for a particular
+ anhydrous crystalline form of a pharmaceutical compound was held invalid under the
+ on-sale bar of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**, even though the parties to the
+ U.S. sales of the foreign manufactured compound did not know the identity of the
+ particular crystalline form.); *STX LLC. v. Brine Inc.,* 211 F.3d
+ 588, 591, 54 USPQ2d 1347, 1350 (Fed. Cir. 2000) (Claim for a lacrosse stick was
+ held invalid under the on-sale bar despite the argument that it was not known at
+ the time of sale whether the sticks possessed the recited "improved playing and
+ handling characteristics." "Subjective qualities inherent in a product, such as
+ ‘improved playing and handling’, cannot serve as an escape hatch to circumvent an
+ on-sale bar."). Actual reduction to practice in the context of an on-sale bar
+ issue usually requires testing under actual working conditions in such a way as to
+ demonstrate the practical utility of an invention for its intended purpose beyond
+ the probability of failure, unless by virtue of the very simplicity of an
+ invention its practical operativeness is clear. *Field v.
+ Knowles,* 183 F.2d 593, 601, 86 USPQ 373, 379 (CCPA 1950);
+ *Steinberg v. Seitz,* 517 F.2d 1359, 1363, 186 USPQ 209, 212
+ (CCPA 1975). 
+ 
+
+
+The invention need not be ready for satisfactory commercial
+ marketing for sale to bar a patent. *Atlantic Thermoplastics Co. v. Faytex
+ Corp.,* 970 F.2d 834, 836-37, 23 USPQ2d 1481, 1483 (Fed. Cir. 1992).
+ 
+ 
+
+**II.** **INVENTOR HAS SUBMITTED A 37 CFR 1.131 AFFIDAVIT OR DECLARATION**Affidavits or declarations submitted under **[37 CFR
+ 1.131](mpep-9020-appx-r.html#aia_d0e323504)** to swear behind a reference may constitute, among
+ other things, an admission that an invention was "complete" more than 1 year
+ before the filing of an application. See *In re Foster,* 343 F.2d
+ 980, 987-88, 145 USPQ 166, 173 (CCPA 1965); *Dart Indus. v. E.I. duPont de
+ Nemours & Co.,* 489 F.2d 1359, 1365, 179 USPQ 392, 396 (7th Cir.
+ 1973). Also see **[MPEP
+ § 715.10](s715.html#d0e92043)**. 
+ 
+
+**III.** **SALE OF A PROCESS**A claimed process, which is a series of acts or steps, is not
+ sold in the same sense as is a claimed product, device, or apparatus, which is a
+ tangible item. "‘Know-how’ describing what the process consists of and how the
+ process should be carried out may be sold in the sense that the buyer acquires
+ knowledge of the process and obtains the freedom to carry it out pursuant to the
+ terms of the transaction. However, such a transaction is not a ‘sale’ of the
+ invention within the meaning of **[[pre-AIA] §102(b)](mpep-9015-appx-l.html#d0e302383)** because the
+ process has not been carried out or performed as a result of the transaction."
+ *In re Kollar,* 286 F.3d 1326, 1332, 62 USPQ2d 1425, 1429
+ (Fed. Cir. 2002). However, sale of a product made by the claimed process by the
+ patentee or a licensee would constitute a sale of the process within the meaning
+ of **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. See *id.* at 1333, 62 USPQ2d
+ at 1429; *D.L. Auld Co. v. Chroma Graphics Corp.,* 714 F.2d 1144,
+ 1147-48, 219 USPQ 13, 15-16 (Fed. Cir. 1983) (Even though the sale of a product
+ made by a claimed method before the critical date did not reveal anything about
+ the method to the public, the sale resulted in a "forfeiture" of any right to a
+ patent to that method); *W.L. Gore & Assocs., Inc. v. Garlock,
+ Inc.,* 721 F.2d 1540, 1550, 220 USPQ 303, 310 (Fed. Cir. 1983). The
+ application of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** would also be triggered by
+ actually performing the claimed process itself for consideration. See
+ *Scaltech, Inc. v. Retec/Tetra, L.L.C.,* 269 F.3d 1321, 1328,
+ 60 USPQ2d 1687, 1691(Fed. Cir. 2001) (Patent was held invalid under
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** based on patentee’s offer to perform the
+ claimed process for treating oil refinery waste more than one year before filing
+ the patent application). Moreover, the sale of a device embodying a claimed
+ process may trigger the on-sale bar. *Minton v. National Ass’n. of
+ Securities Dealers, Inc.,* 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1618
+ (Fed. Cir. 2003) (finding a fully operational computer program implementing and
+ thus embodying the claimed method to trigger the on-sale bar). However, the sale
+ of a prior art device different from that disclosed in a patent that is asserted
+ after the critical date to be capable of performing the claimed method is not an
+ on-sale bar of the process. *Poly-America LP v. GSE Lining Tech.
+ Inc.,* 383 F.3d 1303, 1308-09, 72 USPQ2d 1685, 1688-89 (Fed. Cir.
+ 2004) (stating that the transaction involving the sale of the prior art device did
+ not involve a transaction of the claimed method but instead only a device
+ different from that described in the patent for carrying out the claimed method,
+ where the device was not used to practice the claimed method until well after the
+ critical date, and where there was evidence that it was not even known whether the
+ device could perform the claimed process).
+ 
+
+
+, 
+# 2133.03(d) "In This Country" [R-10.2019]
+
+
+*[Editor Note: This MPEP section is **not applicable** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The language "in this country" in **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)** does not include other WTO or NAFTA member countries,
+ but includes any State of the United States, the District of Columbia, and any
+ commonwealth, territory, or possession of the United States. See also
+ **[35 U.S.C.
+ 105](mpep-9015-appx-l.html#d0e302614)**. For purposes of judging the applicability of the
+ **[pre-AIA
+ 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** bars, public use or on sale activity must take
+ place in the United States. The "on sale" bar does not generally apply where both
+ manufacture and delivery occur in a foreign country. *Gandy v. Main Belting
+ Co.,* 143 U.S. 587, 593 (1892). However, "on sale" status can be found if
+ substantial activity prefatory to a "sale" occurs in the United States.
+ *Robbins Co. v. Lawrence Mfg. Co.,* 482 F.2d 426, 433, 178 USPQ
+ 577, 583 (9th Cir. 1973). An offer for sale, made or originating in this country, may
+ be sufficient prefatory activity to bring the offer within the terms of the statute,
+ even though sale and delivery take place in a foreign country. The same rationale
+ applies to an offer by a foreign manufacturer which is communicated to a prospective
+ purchaser in the United States prior to the critical date. *CTS Corp. v.
+ Piher Int’l Corp.,* 593 F.2d 777, 201 USPQ 649 (7th Cir. 1979).
+ 
+
+
+, 
+# 2133.03(e) Permitted Activity; Experimental Use [R-10.2019]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See
+ **[MPEP § 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application
+ is subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject to
+ those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)** for
+ a detailed discussion of the public use and on sale provisions of
+ **[AIA
+ 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The question posed by the experimental use doctrine is "whether the
+ primary purpose of the inventor at the time of the sale, as determined from an
+ objective evaluation of the facts surrounding the transaction, was to conduct
+ experimentation." *Allen Eng’g Corp. v. Bartell Indus., Inc.,* 299
+ F.3d 1336, 1354, 63 USPQ2d 1769, 1780 (Fed. Cir. 2002) (quoting *EZ Dock v.
+ Schafer Sys., Inc.,* 276 F.3d 1347, 1356-57, 61 USPQ2d 1289, 1295-96
+ (Fed. Cir. 2002)) (Linn, J., concurring). Experimentation must be the primary purpose
+ and any commercial exploitation must be incidental in order for the sale to be a
+ permitted activity that does not create a bar under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)**. 
+ 
+
+
+If the use or sale was experimental, there is no bar under
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**. "A use or sale is experimental for purposes of
+ **[[pre-AIA]
+ section 102(b)](mpep-9015-appx-l.html#d0e302383)** if it represents a *bona fide*
+ effort to perfect the invention or to ascertain whether it will answer its intended
+ purpose.… If any commercial exploitation does occur, it must be merely incidental to
+ the primary purpose of the experimentation to perfect the invention."
+ *LaBounty Mfg. v. United States Int’l Trade Comm’n,* 958 F.2d
+ 1066, 1071, 22 USPQ2d 1025, 1028 (Fed. Cir. 1992) (quoting *Pennwalt Corp. v.
+ Akzona Inc.,* 740 F.2d 1573, 1581, 222 USPQ 833, 838 (Fed. Cir. 1984)).
+ "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).
+ 
+
+
+
+# 2133.03(e)(1) Commercial Exploitation [R-08.2017]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+One policy of the on sale and public use bars is the prevention
+ of inventors from exploiting their inventions commercially more than 1 year prior
+ to the filing of a patent application. Therefore, if applicant’s precritical date
+ activity is a sale or offer for sale that is an attempt at market penetration, a
+ patent is barred. Thus, even if there is *bona fide* experimental
+ activity, an inventor may not commercially exploit an invention more than 1 year
+ prior to the filing date of an application. *In re Theis,* 610
+ F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
+ 
+
+**I.** **THE COMMERCIAL ACTIVITY MUST LEGITIMATELY ADVANCE DEVELOPMENT OF THE
+ INVENTION TOWARDS COMPLETION**As the degree of commercial exploitation surrounding
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** activity increases, the burden on an
+ applicant to establish clear and convincing evidence of experimental activity
+ with respect to a public use becomes more difficult. Where the examiner has
+ found a *prima facie* case of a sale or an offer to sell, this
+ burden will rarely be met unless clear and convincing necessity for the
+ experimentation is established by the applicant. This does not mean, of course,
+ that there are no circumstances which would permit alleged experimental
+ activity in an atmosphere of commercial exploitation. In certain circumstances,
+ even a sale may be necessary to legitimately advance the experimental
+ development of an invention if the primary purpose of the sale is experimental.
+ *In re Theis,* 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA
+ 1979); *Robbins Co. v. Lawrence Mfg. Co.,* 482 F.2d 426, 433,
+ 178 USPQ 577, 582 (9th Cir. 1973). However, careful scrutiny by the examiner of
+ the objective factual circumstances surrounding such a sale is essential. See
+ *Ushakoff v. United States,* 327 F.2d 669, 140 USPQ 341
+ (Ct.Cl. 1964); *Cloud v. Standard Packaging Corp.,* 376 F.2d
+ 384, 153 USPQ 317 (7th Cir. 1967). 
+ 
+
+**II.** **SIGNIFICANT FACTORS INDICATIVE OF "COMMERCIAL EXPLOITATION"**As discussed in **[MPEP § 2133.03](s2133.html#d0e203781)**, a policy
+ consideration in questions of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ activity is premature "commercial exploitation" of a "completed" or "ready for
+ patenting" invention (see **[MPEP § 2133.03(c)](s2133.html#d0e204494)**). The extent
+ of commercial activity which constitutes **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ "on sale" status depends upon the circumstances of the activity, the basic
+ indicator being the subjective intent of the inventor as manifested through
+ objective evidence. The following activities should be used by the examiner as
+ indicia of this subjective intent:
+ 
+
+
+* (A) Preparation of various contemporaneous "commercial"
+ documents, e.g., orders, invoices, receipts, delivery schedules, etc.;
+* (B) Preparation of price lists *(Akron
+ Brass**Co.**v. Elkhart Brass Mfg. Co.,* 353 F.2d 704, 709, 147 USPQ
+ 301, 305 (7th Cir. 1965)) and distribution of price quotations
+ *(Amphenol Corp.**v. Gen'l Time Corp.,* 397 F.2d 431, 436, 158 USPQ 113,
+ 117 (7th Cir. 1968));
+* (C) Display of samples to prospective customers
+ *(Cataphote Corp. v. DeSoto Chemical Coatings,**Inc.,* 356 F.2d 24, 27, 148 USPQ 527, 529 (9th Cir.
+ 1966) *mod. on other grounds,* 358 F.2d 732, 149 USPQ
+ 159 (9th Cir.), *cert. denied,* 385 U.S. 832 (1966);
+ *Chicopee Mfg. Corp. v. Columbus Fiber Mills Co.,*
+ 165 F.Supp. 307, 323-325, 118 USPQ 53, 65-67 (M.D.Ga. 1958));
+* (D) Demonstration of models or prototypes *(General
+ Elec. Co. v. United States,* 206 USPQ 260, 266-67 (Ct. Cl.
+ 1979); *Red Cross Mfg. v. Toro Sales Co.,* 525 F.2d
+ 1135, 1140, 188 USPQ 241, 244-45 (7th Cir. 1975); *Philco
+ Corp.**v. Admiral Corp.,* 199 F. Supp. 797, 815-16, 131 USPQ
+ 413, 429-30 (D. Del. 1961)), especially at trade conventions
+ *(Interroyal Corp.**v. Simmons Co.,* 204 USPQ 562, 563-65 (S.D. N.Y.
+ 1979)), and even though no orders are actually obtained
+ *(Monogram Mfg. v. F. & H. Mfg.,* 144 F.2d 412,
+ 62 USPQ 409, 412 (9th Cir. 1944));
+* (E) Use of an invention where an admission fee is charged
+ *(In re Josserand,* 188 F.2d 486, 491, 89 USPQ 371,
+ 376 (CCPA 1951); *Greenewalt v. Stanley,* 54 F.2d 195,
+ 12 USPQ 122 (3d Cir. 1931)); and
+* (F) Advertising in publicity releases, brochures, and
+ various periodicals *(In re Theis,* 610 F.2d 786, 792
+ n.6, 204 USPQ 188, 193 n. 6 (CCPA 1979); *Interroyal Corp. v.
+ Simmons Co.,* 204 USPQ 562, 564-66 (S.D.N.Y.1979);
+ *Akron Brass, Co. v. Elkhart Brass Mfg.,**Inc.,* 353 F.2d 704, 709, 147 USPQ 301, 305 (7th
+ Cir.1965); *Tucker Aluminum Prods. v. Grossman,* 312
+ F.2d 393, 394, 136 USPQ 244, 245 (9th Cir. 1963)).
+
+
+See **[MPEP § 2133.03(e)(4)](s2133.html#d0e203781)** for
+ factors indicative of an experimental purpose.
+ 
+
+
+
+
+# 2133.03(e)(2) Intent [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+"When sales are made in an ordinary commercial environment and
+ the goods are placed outside the inventor’s control, an inventor’s secretly held
+ subjective intent to ‘experiment,’ even if true, is unavailing without objective
+ evidence to support the contention. Under such circumstances, the customer at a
+ minimum must be made aware of the experimentation." *LaBounty Mfg., Inc.
+ v. United States Int’l Trade Comm’n,* 958 F.2d 1066, 1072, 22 USPQ2d
+ 1025, 1029 (Fed. Cir. 1992) (quoting  *Harrington Mfg. Co. v. Powell Mfg.
+ Co.,* 815 F.2d 1478, 1480 n.3, 2 USPQ2d 1364, 1366 n.3 (Fed. Cir.
+ 1986); *Paragon Podiatry Laboratory, Inc. v. KLM Labs., Inc.,*
+ 984 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir. 1993) (Paragon sold the inventive units
+ to the trade as completed devices without any disclosure to either doctors or
+ patients of their involvement in alleged testing. Evidence of the inventor’s
+ secretly held belief that the units were not durable and may not be satisfactory
+ for consumers was not sufficient, alone, to avoid a statutory bar.). 
+ 
+
+
+
+
+# 2133.03(e)(3) "Completeness" of the Invention [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **EXPERIMENTAL USE ENDS WHEN THE INVENTION IS ACTUALLY REDUCED TO
+ PRACTICE**Experimental use "means perfecting or completing an invention
+ to the point of determining that it will work for its intended purpose."
+ Therefore, experimental use "ends with an actual reduction to practice."
+ *RCA Corp.**v.**Data Gen. Corp.,* 887 F.2d 1056, 1061, 12 USPQ2d 1449, 1453
+ (Fed. Cir. 1989). If the examiner concludes from the evidence of record that an
+ applicant was satisfied that an invention was in fact "complete," awaiting
+ approval by the applicant from an organization such as Underwriters’
+ Laboratories will not normally overcome this conclusion. *Interroyal
+ Corp. v. Simmons Co.,* 204 USPQ 562, 566 (S.D.N.Y. 1979);
+ *Skil Corp. v. Rockwell Manufacturing Co.,* 358 F. Supp.
+ 1257, 1261, 178 USPQ 562, 565 (N.D.Ill. 1973), *aff’d. in part, rev’d
+ in part sub nom.**Skil Corp. v. Lucerne Products Inc.,* 503 F.2d 745, 183 USPQ
+ 396, 399 (7th Cir. 1974), *cert. denied,* 420 U.S. 974, 185
+ USPQ 65 (1975). See **[MPEP § 2133.03(c)](s2133.html#d0e204494)** for more
+ information of what constitutes a "complete" invention.
+ 
+
+
+The fact that alleged experimental activity does not lead to
+ specific modifications or refinements of an invention is evidence, although not
+ conclusive evidence, that such activity is not within the realm permitted by
+ the statute. This is especially the case where the evidence of record clearly
+ demonstrates to the examiner that an invention was considered "complete" by an
+ inventor at the time of the activity. Nevertheless, any modifications or
+ refinements which did result from such experimental activity must at least be a
+ feature of the claimed invention to be of any probative value. *In re
+ Theis,* 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
+ 
+
+**II.** **DISPOSAL OF PROTOTYPES**Where a prototype of an invention has been disposed of by an
+ inventor before the critical date, inquiry by the examiner should focus upon
+ the intent of the inventor and the reasonableness of the disposal under all
+ circumstances. The fact that an otherwise reasonable disposal of a prototype
+ involves incidental income is not necessarily fatal. *In re
+ Dybel,* 524 F.2d 1393, 1399, n.5, 187 USPQ 593, 597 n.5 (CCPA
+ 1975). However, if a prototype is considered "complete" by an inventor and all
+ experimentation on the underlying invention has ceased, unrestricted disposal
+ of the prototype constitutes a bar under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.
+ *In re Blaisdell,* 242 F.2d 779, 113 USPQ 289 (CCPA 1957);
+ *contra,**Watson v.**Allen,* 254 F.2d 342, 117 USPQ 68 (D.C. Cir. 1958).
+ 
+
+
+
+
+# 2133.03(e)(4) Factors Indicative of an Experimental Purpose [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The courts have considered a number of factors in determining
+ whether a claimed invention was the subject of a commercial offer for sale
+ primarily for purposes of experimentation. "These factors include: (1) the
+ necessity for public testing, (2) the amount of control over the experiment
+ retained by the inventor, (3) the nature of the invention, (4) the length of the
+ test period, (5) whether payment was made, (6) whether there was a secrecy
+ obligation, (7) whether records of the experiment were kept, (8) who conducted the
+ experiment, ... (9) the degree of commercial exploitation during testing[,] ...
+ (10) whether the invention reasonably requires evaluation under actual conditions
+ of use, (11) whether testing was systematically performed, (12) whether the
+ inventor continually monitored the invention during testing, and (13) the nature
+ of contacts made with potential customers." *Allen Eng’g Corp. v. Bartell
+ Indus., Inc.,* 299 F.3d 1336, 1353, 63 USPQ2d 1769, 1780 (Fed. Cir.
+ 2002) (quoting *EZ Dock v. Schafer Sys., Inc.,* 276 F.3d 1347,
+ 1357, 61 USPQ2d 1289, 1296 (Fed. Cir. 2002)) (Linn, J., concurring). Another
+ critical attribute of experimentation is the "customer’s awareness of the
+ purported testing in the context of a sale." *Electromotive Div. of Gen.
+ Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co.,* 417 F.3d
+ 1203, 1241, 75 USPQ2d 1650, 1658 (Fed. Cir. 2005).
+ 
+
+
+Once alleged experimental activity is advanced by an applicant to
+ explain a *prima facie* case under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)**, the examiner must determine whether the scope and
+ length of the activity were reasonable in terms of the experimental purpose
+ intended by the applicant and the nature of the subject matter involved. No one
+ of, or particular combination of, factors is necessarily determinative of this
+ purpose.
+ 
+
+
+See **[MPEP § 2133.03(e)(1)](s2133.html#d0e203781)** for factors
+ indicative of commercial exploitation.
+ 
+
+
+
+
+# 2133.03(e)(5) Experimentation and Degree of Supervision and Control [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**THE INVENTOR MUST MAINTAIN SUFFICIENT CONTROL OVER THE INVENTION DURING
+ TESTING BY THIRD PARTIES**The significant determinative factors in questions of
+ experimental purpose are the extent of supervision and control maintained by an
+ inventor over an invention during an alleged period of experimentation , and
+ the customer’s awareness of the experimentation. *Electromotive Div. of
+ Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co.,*
+ 417 F.3d 1203, 1214,75 USPQ2d 1650, 1658 (Fed. Cir. 2005)("control and customer
+ awareness ordinarily must be proven if experimentation is to be found"). Once a
+ period of experimental activity has ended and supervision and control has been
+ relinquished by an inventor without any restraints on subsequent use of an
+ invention, an unrestricted subsequent use of the invention is a
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** bar. *In re Blaisdell,*
+ 242 F.2d 779, 784, 113 USPQ 289, 293 (CCPA 1957). 
+ 
+
+
+
+
+# 2133.03(e)(6) Permitted Experimental Activity and Testing [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **DEVELOPMENTAL TESTING IS PERMITTED**Testing of an invention in the normal context of its
+ technological development is generally within the realm of permitted
+ experimental activity. Likewise, experimentation to determine utility, as that
+ term is applied in **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**, may also
+ constitute permissible activity. See *General Motors Corp. v. Bendix
+ Aviation Corp.,* 123 F. Supp. 506, 521, 102 USPQ 58, 69 (N.D.Ind.
+ 1954). For example, where an invention relates to a chemical composition with
+ no known utility, i.e., a patent application for the composition could not be
+ filed (**[35
+ U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**; **[35 U.S.C. 112(a)](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)** or
+ **[pre-AIA 35
+ U.S.C. 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph), continued testing to find
+ utility would likely be permissible under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**,
+ absent a sale of the composition or other evidence of commercial exploitation.
+ 
+ 
+
+**II.** **MARKET TESTING IS NOT PERMITTED**Experimentation to determine product acceptance, i.e., market
+ testing, is typical of a trader’s and not an inventor’s experiment and is thus
+ not within the area of permitted experimental activity. *Smith &
+ Davis Mfg. Co. v. Mellon,* 58 F. 705, 707 (8th Cir. 1893) Likewise,
+ testing of an invention for the benefit of appeasing a customer, or to conduct
+ "minor ‘tune up’ procedures not requiring an inventor’s skills, but rather the
+ skills of a competent technician," are also not within the exception.
+ *In re Theis,* 610 F.2d 786, 793, 204 USPQ 188, 193-94
+ (CCPA 1979).
+ 
+
+**III.** **EXPERIMENTAL ACTIVITY IN THE CONTEXT OF DESIGN APPLICATIONS**The public use of an ornamental design which is directed
+ toward generating consumer interest in the aesthetics of the design is not an
+ experimental use. *In re Mann,* 861 F.2d 1581, 8 USPQ2d 2030
+ (Fed. Cir. 1988) (display of a wrought iron table at a trade show held to be
+ public use). However, "experimentation directed to functional features of a
+ product also containing an ornamental design may negate what otherwise would be
+ considered a public use within the meaning of **[section
+ 102(b)](mpep-9015-appx-l.html#d0e302395)**." *Tone Brothers, Inc.**v.**Sysco Corp.,* 28 F.3d 1192, 1196, 31 USPQ2d 1321, 1326 (Fed.
+ Cir. 1994) (A study wherein students evaluated the effect of the functional
+ features of a spice container design may be considered an experimental
+ use.).
+ 
+
+
+
+
+# 2133.03(e)(7) Activity of an Independent Third Party Inventor [R-08.2017]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** . See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**EXPERIMENTAL USE EXCEPTION IS PERSONAL TO AN APPLICANT**The statutory bars of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ are applicable even though public use or on sale activity is by a party other
+ than an applicant. Where an applicant presents evidence of experimental
+ activity by such other party, the evidence will not overcome the *prima
+ facie* case under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ based upon the activity of such party unless the activity was under the
+ supervision and control of the applicant. *In re Hamilton,*
+ 882 F.2d 1576, 1581, 111 USPQ2d 1890, 1894 (Fed. Cir. 1989) ("The experimental
+ use doctrine operates in the inventor's favor to allow *the
+ inventor* to refine his invention or to assess its value relative
+ to the time and expense of prosecuting a patent application. If it is not the
+ inventor or someone under his control or ‘surveillance’ who does these things,
+ there appears to us no reason why he should be entitled to rely upon them to
+ avoid the statute.") (citing *Magnetics, Inc. v. Arnold Engineering
+ Co.,* 438 F.2d 72, 74, 168 USPQ 392, 394 (7th Cir.1971)). In other
+ words, the experimental use activity exception is personal to an applicant.
+ 
+
+
+
+, 
+# 2133.03(e)(1) Commercial Exploitation [R-08.2017]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+One policy of the on sale and public use bars is the prevention
+ of inventors from exploiting their inventions commercially more than 1 year prior
+ to the filing of a patent application. Therefore, if applicant’s precritical date
+ activity is a sale or offer for sale that is an attempt at market penetration, a
+ patent is barred. Thus, even if there is *bona fide* experimental
+ activity, an inventor may not commercially exploit an invention more than 1 year
+ prior to the filing date of an application. *In re Theis,* 610
+ F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
+ 
+
+**I.** **THE COMMERCIAL ACTIVITY MUST LEGITIMATELY ADVANCE DEVELOPMENT OF THE
+ INVENTION TOWARDS COMPLETION**As the degree of commercial exploitation surrounding
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** activity increases, the burden on an
+ applicant to establish clear and convincing evidence of experimental activity
+ with respect to a public use becomes more difficult. Where the examiner has
+ found a *prima facie* case of a sale or an offer to sell, this
+ burden will rarely be met unless clear and convincing necessity for the
+ experimentation is established by the applicant. This does not mean, of course,
+ that there are no circumstances which would permit alleged experimental
+ activity in an atmosphere of commercial exploitation. In certain circumstances,
+ even a sale may be necessary to legitimately advance the experimental
+ development of an invention if the primary purpose of the sale is experimental.
+ *In re Theis,* 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA
+ 1979); *Robbins Co. v. Lawrence Mfg. Co.,* 482 F.2d 426, 433,
+ 178 USPQ 577, 582 (9th Cir. 1973). However, careful scrutiny by the examiner of
+ the objective factual circumstances surrounding such a sale is essential. See
+ *Ushakoff v. United States,* 327 F.2d 669, 140 USPQ 341
+ (Ct.Cl. 1964); *Cloud v. Standard Packaging Corp.,* 376 F.2d
+ 384, 153 USPQ 317 (7th Cir. 1967). 
+ 
+
+**II.** **SIGNIFICANT FACTORS INDICATIVE OF "COMMERCIAL EXPLOITATION"**As discussed in **[MPEP § 2133.03](s2133.html#d0e203781)**, a policy
+ consideration in questions of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ activity is premature "commercial exploitation" of a "completed" or "ready for
+ patenting" invention (see **[MPEP § 2133.03(c)](s2133.html#d0e204494)**). The extent
+ of commercial activity which constitutes **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ "on sale" status depends upon the circumstances of the activity, the basic
+ indicator being the subjective intent of the inventor as manifested through
+ objective evidence. The following activities should be used by the examiner as
+ indicia of this subjective intent:
+ 
+
+
+* (A) Preparation of various contemporaneous "commercial"
+ documents, e.g., orders, invoices, receipts, delivery schedules, etc.;
+* (B) Preparation of price lists *(Akron
+ Brass**Co.**v. Elkhart Brass Mfg. Co.,* 353 F.2d 704, 709, 147 USPQ
+ 301, 305 (7th Cir. 1965)) and distribution of price quotations
+ *(Amphenol Corp.**v. Gen'l Time Corp.,* 397 F.2d 431, 436, 158 USPQ 113,
+ 117 (7th Cir. 1968));
+* (C) Display of samples to prospective customers
+ *(Cataphote Corp. v. DeSoto Chemical Coatings,**Inc.,* 356 F.2d 24, 27, 148 USPQ 527, 529 (9th Cir.
+ 1966) *mod. on other grounds,* 358 F.2d 732, 149 USPQ
+ 159 (9th Cir.), *cert. denied,* 385 U.S. 832 (1966);
+ *Chicopee Mfg. Corp. v. Columbus Fiber Mills Co.,*
+ 165 F.Supp. 307, 323-325, 118 USPQ 53, 65-67 (M.D.Ga. 1958));
+* (D) Demonstration of models or prototypes *(General
+ Elec. Co. v. United States,* 206 USPQ 260, 266-67 (Ct. Cl.
+ 1979); *Red Cross Mfg. v. Toro Sales Co.,* 525 F.2d
+ 1135, 1140, 188 USPQ 241, 244-45 (7th Cir. 1975); *Philco
+ Corp.**v. Admiral Corp.,* 199 F. Supp. 797, 815-16, 131 USPQ
+ 413, 429-30 (D. Del. 1961)), especially at trade conventions
+ *(Interroyal Corp.**v. Simmons Co.,* 204 USPQ 562, 563-65 (S.D. N.Y.
+ 1979)), and even though no orders are actually obtained
+ *(Monogram Mfg. v. F. & H. Mfg.,* 144 F.2d 412,
+ 62 USPQ 409, 412 (9th Cir. 1944));
+* (E) Use of an invention where an admission fee is charged
+ *(In re Josserand,* 188 F.2d 486, 491, 89 USPQ 371,
+ 376 (CCPA 1951); *Greenewalt v. Stanley,* 54 F.2d 195,
+ 12 USPQ 122 (3d Cir. 1931)); and
+* (F) Advertising in publicity releases, brochures, and
+ various periodicals *(In re Theis,* 610 F.2d 786, 792
+ n.6, 204 USPQ 188, 193 n. 6 (CCPA 1979); *Interroyal Corp. v.
+ Simmons Co.,* 204 USPQ 562, 564-66 (S.D.N.Y.1979);
+ *Akron Brass, Co. v. Elkhart Brass Mfg.,**Inc.,* 353 F.2d 704, 709, 147 USPQ 301, 305 (7th
+ Cir.1965); *Tucker Aluminum Prods. v. Grossman,* 312
+ F.2d 393, 394, 136 USPQ 244, 245 (9th Cir. 1963)).
+
+
+See **[MPEP § 2133.03(e)(4)](s2133.html#d0e203781)** for
+ factors indicative of an experimental purpose.
+ 
+
+
+, 
+# 2133.03(e)(2) Intent [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+"When sales are made in an ordinary commercial environment and
+ the goods are placed outside the inventor’s control, an inventor’s secretly held
+ subjective intent to ‘experiment,’ even if true, is unavailing without objective
+ evidence to support the contention. Under such circumstances, the customer at a
+ minimum must be made aware of the experimentation." *LaBounty Mfg., Inc.
+ v. United States Int’l Trade Comm’n,* 958 F.2d 1066, 1072, 22 USPQ2d
+ 1025, 1029 (Fed. Cir. 1992) (quoting  *Harrington Mfg. Co. v. Powell Mfg.
+ Co.,* 815 F.2d 1478, 1480 n.3, 2 USPQ2d 1364, 1366 n.3 (Fed. Cir.
+ 1986); *Paragon Podiatry Laboratory, Inc. v. KLM Labs., Inc.,*
+ 984 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir. 1993) (Paragon sold the inventive units
+ to the trade as completed devices without any disclosure to either doctors or
+ patients of their involvement in alleged testing. Evidence of the inventor’s
+ secretly held belief that the units were not durable and may not be satisfactory
+ for consumers was not sufficient, alone, to avoid a statutory bar.). 
+ 
+
+
+, 
+# 2133.03(e)(3) "Completeness" of the Invention [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **EXPERIMENTAL USE ENDS WHEN THE INVENTION IS ACTUALLY REDUCED TO
+ PRACTICE**Experimental use "means perfecting or completing an invention
+ to the point of determining that it will work for its intended purpose."
+ Therefore, experimental use "ends with an actual reduction to practice."
+ *RCA Corp.**v.**Data Gen. Corp.,* 887 F.2d 1056, 1061, 12 USPQ2d 1449, 1453
+ (Fed. Cir. 1989). If the examiner concludes from the evidence of record that an
+ applicant was satisfied that an invention was in fact "complete," awaiting
+ approval by the applicant from an organization such as Underwriters’
+ Laboratories will not normally overcome this conclusion. *Interroyal
+ Corp. v. Simmons Co.,* 204 USPQ 562, 566 (S.D.N.Y. 1979);
+ *Skil Corp. v. Rockwell Manufacturing Co.,* 358 F. Supp.
+ 1257, 1261, 178 USPQ 562, 565 (N.D.Ill. 1973), *aff’d. in part, rev’d
+ in part sub nom.**Skil Corp. v. Lucerne Products Inc.,* 503 F.2d 745, 183 USPQ
+ 396, 399 (7th Cir. 1974), *cert. denied,* 420 U.S. 974, 185
+ USPQ 65 (1975). See **[MPEP § 2133.03(c)](s2133.html#d0e204494)** for more
+ information of what constitutes a "complete" invention.
+ 
+
+
+The fact that alleged experimental activity does not lead to
+ specific modifications or refinements of an invention is evidence, although not
+ conclusive evidence, that such activity is not within the realm permitted by
+ the statute. This is especially the case where the evidence of record clearly
+ demonstrates to the examiner that an invention was considered "complete" by an
+ inventor at the time of the activity. Nevertheless, any modifications or
+ refinements which did result from such experimental activity must at least be a
+ feature of the claimed invention to be of any probative value. *In re
+ Theis,* 610 F.2d 786, 793, 204 USPQ 188, 194 (CCPA 1979).
+ 
+
+**II.** **DISPOSAL OF PROTOTYPES**Where a prototype of an invention has been disposed of by an
+ inventor before the critical date, inquiry by the examiner should focus upon
+ the intent of the inventor and the reasonableness of the disposal under all
+ circumstances. The fact that an otherwise reasonable disposal of a prototype
+ involves incidental income is not necessarily fatal. *In re
+ Dybel,* 524 F.2d 1393, 1399, n.5, 187 USPQ 593, 597 n.5 (CCPA
+ 1975). However, if a prototype is considered "complete" by an inventor and all
+ experimentation on the underlying invention has ceased, unrestricted disposal
+ of the prototype constitutes a bar under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**.
+ *In re Blaisdell,* 242 F.2d 779, 113 USPQ 289 (CCPA 1957);
+ *contra,**Watson v.**Allen,* 254 F.2d 342, 117 USPQ 68 (D.C. Cir. 1958).
+ 
+
+
+, 
+# 2133.03(e)(4) Factors Indicative of an Experimental Purpose [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+
+The courts have considered a number of factors in determining
+ whether a claimed invention was the subject of a commercial offer for sale
+ primarily for purposes of experimentation. "These factors include: (1) the
+ necessity for public testing, (2) the amount of control over the experiment
+ retained by the inventor, (3) the nature of the invention, (4) the length of the
+ test period, (5) whether payment was made, (6) whether there was a secrecy
+ obligation, (7) whether records of the experiment were kept, (8) who conducted the
+ experiment, ... (9) the degree of commercial exploitation during testing[,] ...
+ (10) whether the invention reasonably requires evaluation under actual conditions
+ of use, (11) whether testing was systematically performed, (12) whether the
+ inventor continually monitored the invention during testing, and (13) the nature
+ of contacts made with potential customers." *Allen Eng’g Corp. v. Bartell
+ Indus., Inc.,* 299 F.3d 1336, 1353, 63 USPQ2d 1769, 1780 (Fed. Cir.
+ 2002) (quoting *EZ Dock v. Schafer Sys., Inc.,* 276 F.3d 1347,
+ 1357, 61 USPQ2d 1289, 1296 (Fed. Cir. 2002)) (Linn, J., concurring). Another
+ critical attribute of experimentation is the "customer’s awareness of the
+ purported testing in the context of a sale." *Electromotive Div. of Gen.
+ Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co.,* 417 F.3d
+ 1203, 1241, 75 USPQ2d 1650, 1658 (Fed. Cir. 2005).
+ 
+
+
+Once alleged experimental activity is advanced by an applicant to
+ explain a *prima facie* case under **[pre-AIA 35 U.S.C.
+ 102(b)](mpep-9015-appx-l.html#d0e302383)**, the examiner must determine whether the scope and
+ length of the activity were reasonable in terms of the experimental purpose
+ intended by the applicant and the nature of the subject matter involved. No one
+ of, or particular combination of, factors is necessarily determinative of this
+ purpose.
+ 
+
+
+See **[MPEP § 2133.03(e)(1)](s2133.html#d0e203781)** for factors
+ indicative of commercial exploitation.
+ 
+
+
+, 
+# 2133.03(e)(5) Experimentation and Degree of Supervision and Control [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**THE INVENTOR MUST MAINTAIN SUFFICIENT CONTROL OVER THE INVENTION DURING
+ TESTING BY THIRD PARTIES**The significant determinative factors in questions of
+ experimental purpose are the extent of supervision and control maintained by an
+ inventor over an invention during an alleged period of experimentation , and
+ the customer’s awareness of the experimentation. *Electromotive Div. of
+ Gen. Motors Corp. v. Transportation Sys. Div. of Gen. Elec. Co.,*
+ 417 F.3d 1203, 1214,75 USPQ2d 1650, 1658 (Fed. Cir. 2005)("control and customer
+ awareness ordinarily must be proven if experimentation is to be found"). Once a
+ period of experimental activity has ended and supervision and control has been
+ relinquished by an inventor without any restraints on subsequent use of an
+ invention, an unrestricted subsequent use of the invention is a
+ **[pre-AIA 35
+ U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)** bar. *In re Blaisdell,*
+ 242 F.2d 779, 784, 113 USPQ 289, 293 (CCPA 1957). 
+ 
+
+
+, 
+# 2133.03(e)(6) Permitted Experimental Activity and Testing [R-11.2013]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)**. See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**I.** **DEVELOPMENTAL TESTING IS PERMITTED**Testing of an invention in the normal context of its
+ technological development is generally within the realm of permitted
+ experimental activity. Likewise, experimentation to determine utility, as that
+ term is applied in **[35 U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**, may also
+ constitute permissible activity. See *General Motors Corp. v. Bendix
+ Aviation Corp.,* 123 F. Supp. 506, 521, 102 USPQ 58, 69 (N.D.Ind.
+ 1954). For example, where an invention relates to a chemical composition with
+ no known utility, i.e., a patent application for the composition could not be
+ filed (**[35
+ U.S.C. 101](mpep-9015-appx-l.html#d0e302376)**; **[35 U.S.C. 112(a)](mpep-9015-appx-l.html#al_d1d85b_2ae60_3d5)** or
+ **[pre-AIA 35
+ U.S.C. 112](mpep-9015-appx-l.html#d0e302824)**, first paragraph), continued testing to find
+ utility would likely be permissible under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**,
+ absent a sale of the composition or other evidence of commercial exploitation.
+ 
+ 
+
+**II.** **MARKET TESTING IS NOT PERMITTED**Experimentation to determine product acceptance, i.e., market
+ testing, is typical of a trader’s and not an inventor’s experiment and is thus
+ not within the area of permitted experimental activity. *Smith &
+ Davis Mfg. Co. v. Mellon,* 58 F. 705, 707 (8th Cir. 1893) Likewise,
+ testing of an invention for the benefit of appeasing a customer, or to conduct
+ "minor ‘tune up’ procedures not requiring an inventor’s skills, but rather the
+ skills of a competent technician," are also not within the exception.
+ *In re Theis,* 610 F.2d 786, 793, 204 USPQ 188, 193-94
+ (CCPA 1979).
+ 
+
+**III.** **EXPERIMENTAL ACTIVITY IN THE CONTEXT OF DESIGN APPLICATIONS**The public use of an ornamental design which is directed
+ toward generating consumer interest in the aesthetics of the design is not an
+ experimental use. *In re Mann,* 861 F.2d 1581, 8 USPQ2d 2030
+ (Fed. Cir. 1988) (display of a wrought iron table at a trade show held to be
+ public use). However, "experimentation directed to functional features of a
+ product also containing an ornamental design may negate what otherwise would be
+ considered a public use within the meaning of **[section
+ 102(b)](mpep-9015-appx-l.html#d0e302395)**." *Tone Brothers, Inc.**v.**Sysco Corp.,* 28 F.3d 1192, 1196, 31 USPQ2d 1321, 1326 (Fed.
+ Cir. 1994) (A study wherein students evaluated the effect of the functional
+ features of a spice container design may be considered an experimental
+ use.).
+ 
+
+
+, 
+# 2133.03(e)(7) Activity of an Independent Third Party Inventor [R-08.2017]
+
+
+*[Editor Note: This MPEP section has **limited applicability** to
+ applications subject to examination under the first inventor to file (FITF)
+ provisions of the AIA as set forth in **[35 U.S.C. 100
+ (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** . See **[MPEP §
+ 2159](s2159.html#ch2100_d20034_1dc34_1dd)** et seq. to determine whether an application is
+ subject to examination under the FITF provisions, and **[MPEP §
+ 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq. for examination of applications subject
+ to those provisions. See **[MPEP § 2152.02(c) through (e)](s2152.html#ch2100_d20033_1e416_252)**
+ for a detailed discussion of the public use and on sale provisions of
+ **[AIA 35 U.S.C. 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**.]*
+
+**EXPERIMENTAL USE EXCEPTION IS PERSONAL TO AN APPLICANT**The statutory bars of **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ are applicable even though public use or on sale activity is by a party other
+ than an applicant. Where an applicant presents evidence of experimental
+ activity by such other party, the evidence will not overcome the *prima
+ facie* case under **[pre-AIA 35 U.S.C. 102(b)](mpep-9015-appx-l.html#d0e302383)**
+ based upon the activity of such party unless the activity was under the
+ supervision and control of the applicant. *In re Hamilton,*
+ 882 F.2d 1576, 1581, 111 USPQ2d 1890, 1894 (Fed. Cir. 1989) ("The experimental
+ use doctrine operates in the inventor's favor to allow *the
+ inventor* to refine his invention or to assess its value relative
+ to the time and expense of prosecuting a patent application. If it is not the
+ inventor or someone under his control or ‘surveillance’ who does these things,
+ there appears to us no reason why he should be entitled to rely upon them to
+ avoid the statute.") (citing *Magnetics, Inc. v. Arnold Engineering
+ Co.,* 438 F.2d 72, 74, 168 USPQ 392, 394 (7th Cir.1971)). In other
+ words, the experimental use activity exception is personal to an applicant.
+ 
+
+
+]
\ No newline at end of file