Appeal No. 1999-1002
Application No. 08/672,493
order to bring the invention to perfection, has never been
regarded as such a [public] use.” City of Elizabeth v.
American Nicholson Pavement Co., 97 U.S. 126, 134 (1878); see
also, Smith, 714 F.2d at 1134, 218 USPQ at 983. The Federal
Circuit has taken the position that “[t]he experiment to
improve and perfect the invention must be the real purpose in
such public use and not merely incidental and subsidiary
[citations omitted].” Smith, Id.
There are a number of factors that the examiner must
consider in making a determination of whether the experimental
use exception applies to a particular public use. Section
2133.03(e)(4) of the Manual of Patent Examining Procedure
(MPEP) (7th Ed., Rev. 1, Feb. 2000) lists several factors that
can be persuasive of experimental activity. Among those
factors are:
(A) the nature of the invention was such that any
testing had to be to some extent public (City of
Elizabeth v. American Nicholson Pavement Co., 97
U.S. at 126);
(B) testing had to be for a substantial period of
time (Id.);
(C) testing was conducted under the supervision and
control of the inventor (Id.);
(D) the inventor regularly inspected the invention
during the period of experimentation (Id.);
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