Appeal No. 1997-2374
Application No. 08/064,352
Inc. v. Professional Positioners, Inc. et al., 724 F2d. 965,970, 220 USPQ 577, 581 (Fed.
Cir. 1984), quoting Curtis, Patents, sect. 381; Shaw v. Cooper, 7 Pet. 292.5 Here, even
if we assumed that monoclonal antibody 83A25 was used more than one year prior to
the filing date of the application, the wording of the agreements strongly suggests that
the use would not have been a public one but rather an experimental one.
UR1, VR1 and UR2 are Research Agreements signed by officials from the NIAID
and from the accepting organizations which state, identically, that the “National Institute
of Allergy and Infectious Diseases, NIH [NIAID] will furnish” to the accepting
organizations certain research materials under five specified terms:
· Term 1 states that "[y]ou and your organization must retain control over these
materials, use them only for noncommercial research purposes and not redistribute
them to others for any purpose." Furthermore, “[a]ny use of these materials which is
intended to or may result in the development of a marketable commercial product
may be carried out only pursuant” to an agreement with NIAID.
· Term 2 indicates whether a patent application has been filed and states that “[n]o
proprietary rights or licenses are granted by this agreement. NIH may make these
materials freely available to other scientists for noncommercial purposes.”
· Term 3 states that the “materials are provided without warranty of merchantability…”
5 "'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.' See In re Hamilton, 882 F.2d
1576, 1581, 11 USPQ2d 1890, 1894 (Fed. Cir. 1989) (discussing experimental use in the context of the
on-sale bar) (emphasis in original). Providing Cullis, the inventor, with the benefit of Suaudeau's testing is
thus contrary to this policy, as Suaudeau was not using or testing the invention for Cullis. Id. Accordingly,
we hold that public testing before the critical date by a third party for his own unique purposes of an
invention previously reduced to practice and obtained from someone other than the patentee, when such
testing is independent of and not controlled by the patentee, is an invalidating public use [our emphasis],
not an experimental use." Baxter International Inc. v. Cobe Laboratories Inc., 88 F.3d 1054, 1060,
39 USPQ2d 1437, 1442 (Fed. Cir. 1996).
7
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