Q) Lip Gloss/Ship Bell (MPEP 2100, Experimental Use)

by patentbar on May 26, 2007 · 55 comments

in Exam Questions

These questions have to do with experimental use and 102(b) rejections. Experimental use doesn’t start the one year clock for 102(b), but using the invention in a non-experimental way (even in a stupid way) starts the one year clock for 102(b). It doesn’t matter if no one knew about the invention (e.g., corset) or could tell that the use was “public”.

Lip Gloss (Test takers report fact pattern variants for the lip gloss question.)

Kissing at Parties

The inventor publicly used a lip gloss she invented by kissing people at parties for over a year. There was a red herring about the inventor not telling people how the lip balm worked. (There may have also been some other fact about the nature of the parties to indicate how public they were.) Answer – 102(b) bar; public use doesn’t require that the claimed invention be enabled as opposed to a publication. There was nothing to indicate that the kissing was for experimental reasons (at least not for perfecting the invention).

Gag Gift – The inventor used her product for experimentation then as a gag item before filing. Experimental use of lip gloss is not a 102(b) statutory bar; however, giving it away to your friends as a gag gift is a 102(b) bar. It was experimental use until she ended her experiment and kept using the product

Ship Bell

Ship Bell (latest variant on lip gloss/floor tile) has to do with public use/experimentation. A boat owner invented a new sea bell for his boat & gave copies to all his friends (w/out instructions).

{ 55 comments… read them below or add one }

1 patentbarNo Gravatar December 13, 2007 at 1:22 am

Both the lip gloss and ship bell questions are variants of a question from a past exam involving floor tiles.

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2 patentbarNo Gravatar August 19, 2008 at 8:38 pm

Lip Gloss (102(b)) question, where she files application more than 1 year after experimental testing began, but used lip gloss as party gag after experimenting was over for about 2 months before filing application. Is it a 102(b) disqualification?

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3 jpmille1No Gravatar August 20, 2008 at 6:46 am

I believe that the 102(b) bar is from when the testing Ends, rather than from when it starts. So it could be if she was using it as a gag earlier than a year before her first app.

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4 JeremyNo Gravatar October 10, 2011 at 10:34 am

Confirmed. 102(b) bar is counted from date that experimental use ENDS.

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5 jpmille1No Gravatar August 20, 2008 at 6:49 am

Let me clarify that, when I say ‘Ends’, I mean when the testing stops being experimental, and when it starts just being public use.

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6 ColinNo Gravatar March 17, 2009 at 9:49 pm

Just got this question today in lip gloss format. It said she herself was the only one to use the lip gloss and for her own personal enjoyment which I decided did not amount to public use because of 2133.03(a)

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.”).

Thus Able’s claim was patentable and there was not 102(b) bar. The part of the question involving experimental use was irrelevant because the experiment’s involved an invention that was of different subject matter (vegetable lip gloss rather than fruit).

feel free to make your own calls on this one though.

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7 BulldozerNo Gravatar March 30, 2009 at 11:42 pm

I answered its a 102(b) bar. I was between the two choices.
Even though there is experimental use, more than a year has passed since she reduced the invention to practice and her friends stopped using her bad lipstick. That one year in-between is critical because she’s still wearing it around to parties and functions.

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8 aliNo Gravatar April 10, 2009 at 10:39 am

Maybe, because it was used at a party, its a 102(b) bar because there is no expectation of privacy at a party even though it was for inventors own enjoyment (see Colin’s 3/17/09 post above).

Lip stick is distinguishable from case law above becasue Public Use occured in dorm room and office whereas here, it occured at a party. Don’t take it from me, I’ve done too much partying anyhow!!

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9 CWJ9357No Gravatar August 3, 2009 at 6:14 pm

I reviewed this question on today. the correct answer is (a). it must be rejected under 102(b). Even though the invention was used for experimental use, it is public use under 102(b) if it was actually reduced to practice before more than 1 year from its filing date. Thus, Bulldozer’s comment is the most correct answer.

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10 scruffNo Gravatar August 10, 2009 at 4:46 pm

CWJ9357-

Are you sure the answer is correct? How do you know?

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11 Art WilliamsNo Gravatar August 27, 2009 at 10:57 am

Lip gloss, ship bells, tiles and titanium baseballs suggest that the PTO is quite interested in the operational definition of public use and/or display. The passage below from MPEP 2133.03(a)/II/3 suggests to me that the critical issue is control.

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.”).

I’m floating the view that controlled exposure is not public exposure.

Art Williams

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12 toomuch23No Gravatar November 1, 2010 at 9:23 pm

Perhaps it would matter if the party was at her house as opposed to someone else’s?

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13 GregNo Gravatar September 10, 2009 at 9:48 am

Just had this question on my 9/8/09 exam, the question I had not only described her experimental phase very specifically with dates and a nondisclosure with her small group of friends but then goes on to say she finishes her experimentation, then goes to partys and kisses people with it in January, February and March then files some time in February or March of the following year. It says she meticulously provides all this documentation to the examiner. The problem pretty clearly lies not with the experimental phase, since that has a nondisclosure and a limited group and results in her perfecting the fruitiness of her lip balm, but with her public use kissing people at parties more than one year before filing. There is no mention of the parties having a “reasonable expectation of privacy” or being restricted access in any way, so I chose my answer based on the 102(b) bar for public use.

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14 Fred DurstNo Gravatar September 10, 2009 at 3:35 pm

Just had this Q on the 9-9-09 exam (I passed) and I agree with Greg, the previous poster. The fact pattern indicates that the inventor had already perfected the lip gloss, then began using it at parties as a gag. The inventor files more than one year later, that is, more than more year after she began using it a parties as a gag. I picked she was barred under 102(b) as well.

Thanks to everyone who contributes to this website.

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15 Art WilliamsNo Gravatar September 10, 2009 at 4:13 pm

Greg and Fred,

The following segment of MPEP 2133.03(a)/II/3 seems unambiguous in requiring both privacy and personal enjoyment.

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.

I understand you to say that the fact pattern is explicit in saying that the use was for her own enjoyment (“gag”). I also understand both of you to agree that the “parties” are not “private”. Right?

Your analysis comes down to the difference in privacy between “close friends in a dorm room” and “parties”. Right?

Thanks, Art Williams

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16 Frank LNo Gravatar January 27, 2010 at 1:57 am

Art Williams: I agree with Gred and Fred on this one that the answer is 102(b) rejection.

Remember, a use can initially be experimental (no public use) for the inventor’s own personal enjoyment. HOWEVER, once the experimental use (i.e. the personal enjoyment) is over, which happens when reduction to practice occurs, and if the invention continues to be in the public use thereafter (such as at a party), then 102(b) clock begins to tick. Based on everyone’s comments, it seems that the inventor eventually reduced the invention to practice, THEN started kissing people at the party. At this point, experimental use is over and public use begins. The inventor should have filed within 1 yr of her kissing people at the party to avoid the 102(b) bar.

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17 IrishNo Gravatar June 9, 2010 at 5:01 pm

I had this on 6/7. The fact pattern made it clear that she finished her testing in a given month (I think January), but then continued to make a public use of it (gags at parties, etc) until something like the following March. They tried to hint at the fact that it was a concealed use since it was only on her lips. This is still a public use though, and was a bar to patent. Same idea as the floor wax question from 4.02.32a.

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18 StephenNo Gravatar August 14, 2010 at 5:18 pm

I agree that she would be barred under 102(b) because the item was being publicly used one year prior to the filing date of the patent app. Even if she only brought the lipstick to two parties over a span of two days I still think she would be barred.

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19 lanceNo Gravatar October 7, 2010 at 5:53 pm

Are there two forms of the question floating out there? one that says that experimentation is not over and one that says that it is over? Common ground is that if the question specifies it was for personal enjoyment/experimentation, then experimentation isn’t over and it’s not public use, but if question specifies that experimentation is over, then it is public use.

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20 KevinNo Gravatar October 12, 2010 at 2:01 pm

My variant, 8/11/10, included clear indication that experimentation had ended. Then she gave them out as gag gifts without restrictions and wore them at parties (or information).
102(b) bar – public use.
Focus on the experimental use part and expectation of privacy. Commercial vs personal enjoyment does not really come into this problem.

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21 DamienNo Gravatar November 21, 2010 at 8:03 pm

go the variant today (nov 21) as stated above in kevin’s post. Facts made it clear the experimental use was over and was thus barred under 102(b)

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22 ELSNo Gravatar March 7, 2011 at 11:03 am

Saw Kevin’s variant yesterday.

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23 cayceehNo Gravatar March 20, 2011 at 6:56 pm

ELS,
I am taking the exam in a week or two and was wondering if the majority of questions are repeats since they are discontinuing the old exams? Would you say you had a lot of repeat questions or questions that have been posted on the new question board?

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24 patenttipsNo Gravatar March 20, 2011 at 10:22 pm

There are probably a thousand questions out there, after going through them, they seem to all have been from the question bank.

25 patenttipsNo Gravatar March 16, 2011 at 12:15 pm

Basically the question goes like this (estimated dates)

jan 1, 2005: new invention
meanwhile, kisses friends as testing ok
feb 1, 2006: perfects invention, stops working on it
march 1, 2006: hands out as gag gifts

inventor can NOT get/file patent as of feb 1, 2007, as that is when the invention is considered complete, and the 1 year date starts on feb 1, 2006. regardless of handing out as gag gifts. experimental use between 2005 and 2006 is acceptable as the invention is still being worked on and not considered complete

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26 patenttipsNo Gravatar March 16, 2011 at 12:16 pm

feb 1, 2007 is the bar date, as it is 1 year from when the invention is considered complete. hope i didn’t confuse anyone.

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27 LMNo Gravatar March 21, 2011 at 3:10 am

patenttips,

Okay, so if filed on feb 1 2007, will be considered within 1 year and BAR DATE would actually start after midnight of Feb 1, 2007 provided Feb 1, 2007 is not falling on Saturday, Sunday or any Federal Holiday. Correct?

LM

28 InterenNo Gravatar March 30, 2011 at 4:53 pm

Not sure about this. 102b doesn’t require you to file the application within one year of the actual reduction to practice. I agree the experimental use make the situation unclear. But if there is a gap between completion of the experimental use and commence of the public use or sale, I think the critical date should be the latter date.

29 skhNo Gravatar March 31, 2011 at 1:07 am

i agree with Interen.

Feb. 1st cannot be the 102b date. 102b relates to either printed pub/patent or to ACTS that would starts the clock (i.e public use or sale). Thus, the the March 1st ACT of giving out gag gifts starts the clock for 102b.

You are correct in the sense that you can no longer claim experimental use after the invention has been RTP.

Hope this helps

30 misspatentNo Gravatar March 31, 2011 at 12:43 pm

I agree with interen and skh. March 1st starts the clock because that’s when public use begins.

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31 JohnNo Gravatar July 20, 2012 at 10:34 am

I agree with Interen, SKH and misspatent.
102(b) does not start on the date of experimetal use end. Instead it starts from the public use date.(march 1, 2006: hands out as gag gifts)

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32 BeckerNo Gravatar May 17, 2011 at 3:13 pm

I got this question 5/16/2011.

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33 SarahNo Gravatar May 18, 2011 at 3:45 pm

Lip gloss – Got this today 5/18/11

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34 FredsNo Gravatar June 4, 2011 at 3:03 am

when come to substantive law, these fact patterns tend to gloss over. For the record, the date of stopping experimentation doesn’t necessarily mean 102(b) clock starts ticking b/c the experimental exception has gone away.

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35 FredsNo Gravatar June 4, 2011 at 3:06 am

The key should be w/o the exemption under the experimental use, did the inventor exercise control over the invention and withhold it from the public.

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36 GregoryNo Gravatar June 8, 2011 at 1:30 pm

I got this questions 6/3/2011. I believe she uses the the lip gloss for about a year for experimental development and then question explicity says she was DONE with testing on this day. Then she takes it to parties in jan fed, and March, which begins public use? I forget the answer choice I picked.

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37 sgwNo Gravatar July 12, 2011 at 3:51 pm

I had a test review.
I got this on 6/2. The answer says 102(b) bar exisits.

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38 sgwNo Gravatar July 12, 2011 at 3:54 pm

My Question said, she got “correct result” one year ago and stopped the test. And she kept on using the invention as a joke.

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39 giaps2No Gravatar July 26, 2011 at 8:08 pm

Saw this question or a variant on 07/25/11.

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40 TJLNo Gravatar August 18, 2011 at 11:35 pm

Saw this 8/18. 102(b) rejection.

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41 RemandedNo Gravatar September 18, 2011 at 8:52 pm

Saw a variant of this one today, 18 September. 2011.

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42 fengyuwuzuNo Gravatar October 13, 2011 at 9:14 pm

saw this one (Gag at parties) today. The fact pattern is very clear in the real exam and very easy

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43 KerstinNo Gravatar October 23, 2011 at 4:01 pm

If it helps anyone, this question reminds me of the question in the old exams about the guy who invents a cool stereo in his car and drives his friends around for a long time. He is then barred from getting a patent because the using of the radio while driving around in his car was public use, even though noone knew that it was there-they didn’t know why his radio sounded so awesome, they didn’t know about his invention. What the heck kind of lip gloss makes you want to kiss random people at parties??

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44 JamecamNo Gravatar October 30, 2011 at 10:37 pm

I got the experimental lip gloss question on 10/29/2011.

The facts made it clear that the experimentation had concluded by a certain date. More than a year passed once experimentation had finished, during which time the inventor continued to use the lip gloss personally.

I chose the answer stating that the inventor was barred by 102(b).

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45 Mambo5No Gravatar January 14, 2012 at 2:52 pm

This issue is also tested in APR 00 AM Q 50.

Examiner issues a rejection based on a 102 (b) statutory bar, based on the inventor’s activities in testing his wireless telephone invention more than one year before filing his patent app. The inventor had done 2 different types of testing. The first was testing the invention itself. The second was testing the market by offering to sell the invention in Texas.

Question asks what practitioner can file to overcome the rejection.

Ans: Nothing. The statutory bar is valid. Testing the invention itself was fine. However, the inventor’s subsequent market testing was not intended to test the invention, but rather to gauge consumer demand for the invention. Therefore, the market testing does not meet the experimental use exception, and the statutory bar prohibits patentability. Ref: MPEP 2133.03 (e), cases cited @ very end.

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46 AlfredoNo Gravatar January 24, 2012 at 12:45 pm

Got the lip gloss kissing question 1/23/12

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47 AnnaNo Gravatar March 5, 2012 at 7:25 pm

Had this on 02/04/12

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48 DevoNo Gravatar May 10, 2012 at 1:57 pm

Late I know – I had this one on 01/12/2012. I said it was barred under 102(b)

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49 Miss_ANo Gravatar May 22, 2012 at 9:07 am

Got this on 5/22/12. Public use bar, so the girl won’t be able to get her patent.
Passed!

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50 LaurenNo Gravatar May 24, 2012 at 11:55 am

Got this 5/23, variant where she stops experimental use (trying to make it taste like fruit instead of vegetable) and public use bar.

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51 MT40No Gravatar July 28, 2012 at 10:00 am

This may offer some clarification:
2133.03(e)Permitted Activity; Experimental Use [R-3]

If the use or sale was experimental, there is no bar under 35 U.S.C. 102(b). “A use or sale is experimental for purposes of section 102(b) 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).

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52 DudeNo Gravatar August 20, 2012 at 5:32 pm

Had this question today (fruitiness variant).

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53 Michael JordanNo Gravatar September 17, 2012 at 1:00 pm

What is the overall consensus then? 102(b) bar? Anyone able to check this at the USPTO?

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54 RandomNo Gravatar October 15, 2012 at 8:31 pm

Got this one today.

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55 guyNo Gravatar September 28, 2014 at 12:50 am

Lip Gloss today

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