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

By: Stephen

Stephen — Sat, 14 Aug 2010 21:18:34 +0000

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.

By: Irish

Irish — Wed, 09 Jun 2010 21:01:53 +0000

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.

By: Frank L

Frank L — Wed, 27 Jan 2010 05:57:53 +0000

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.

By: Art Williams

Art Williams — Thu, 10 Sep 2009 20:13:30 +0000

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

By: Fred Durst

Fred Durst — Thu, 10 Sep 2009 19:35:36 +0000

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.

By: Greg

Greg — Thu, 10 Sep 2009 13:48:42 +0000

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.

By: Art Williams

Art Williams — Thu, 27 Aug 2009 14:57:22 +0000

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

By: scruff

scruff — Mon, 10 Aug 2009 20:46:45 +0000

CWJ9357-

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

By: CWJ9357

CWJ9357 — Mon, 03 Aug 2009 22:14:27 +0000

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.

By: ali

ali — Fri, 10 Apr 2009 14:39:24 +0000

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!!