Appeal No. 2002-1644 Page 6
Application No. 08/602,498
According to Gardner (id., paragraph 10), the product was sold to the dairyman
because,
[i]f a test product is provided to the dairyman at no cost, or at a
substantially reduced cost compared to the product the dairyman is
currently using, the dairyman will have a tendency to overstate the
effectiveness of the test product in an effort to obtain a lower cost
or free test product. If the test product is provided at a price or is
substantially near the projected retail price, an unbiased evaluation
of the product from the dairyman is usually obtained.
As set forth in EZ Dock Inc. v. Schafer Systems Inc., 276 F. 3d 1347,
1352, 61 USPQ2d 1289, 1292 (CAFC 2002), citations omitted,
an inventor who seeks to perfect his discovery may conduct
extensive testing without losing his right to obtain a patent for his
invention – even if such testing occurs in the public eye. The law
has long recognized the distinction between inventions put to
experimental use and products sold commercially. …
Experimentation evidence includes “tests needed to convince [the
inventor] that the invention is capable of performing its intended
purpose in its intended environment.”
Here as in EZ Dock, 276 F. 3d at 1352, 61 USPQ2d at 1292-93, the evidence
demonstrates that the full market price was not paid for the product during
testing. Gardner declares (Gardner Declaration, paragraph 12) that he “regularly
monitored the efficacy of DX-206 via personal visits and phone conversations to
… [his] clients over at least a period of several months” and reported any
problems to Babson. As set forth in EZ Dock, 276 F.3d at 1353, 61 USPQ2d at
1293 (citations omitted), “this court has often consulted evidence of monitoring to
discern the distinction between experimental and commercial sales.”
Based on the evidence on this record, it is our opinion, that the inventors
were working to detect and correct flaws in their invention during the field trials.
Cf. EZ Dock, 276 F.3d at 1353, 61 USPQ2d at 1293. Accordingly, in our opinion
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