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). See MPEP § 2159 et seq. to determine whether an application is subject to examination under the FITF provisions, and MPEP § 2150 et seq. for examination of applications subject to those provisions. See MPEP § 2152.02(c) through (e) for a detailed discussion of the public use and on sale provisions of AIA 35 U.S.C. 102.]
EXPERIMENTAL USE EXCEPTION IS PERSONAL TO AN APPLICANT
The statutory bars of pre-AIA 35 U.S.C. 102(b) 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) 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.