Experimental Use Versus Commerical Use: In re Ceccarelli

In re Ceccarelli (Fed. Cir. 2010)

Read/download the decision here

Prepared by Kevin D. Williams

In a November 19, 2010 decision (In re Ceccarelli), the Federal Circuit reversed a decision by the Board of Patent Appeals and Interferences affirming an Examiner’s rejection of claims 1, 2, 5-14 and 17 in U.S. Application No. 10/843,833 as being unpatentable because of an on-sale bar.

The court found that the Board’s finding that the sale was not for experimental use lacked substantial evidence and therefore reversed the Board’s decision affirming the Examiner’s rejection.

According to declarations by Mr. Ceccarelli, he told Mr. Skogsberg that he needed a truck chassis to mount his side puller accessory frame invention for “experimental testing, development, and revision before his company could take commercial steps with the invention.” The declarations describe an agreement, evidenced by an invoice dated April 18, 2002, in which Mr. Skogsberg would allow Mr. Ceccarelli to use a truck owned by Mr. Skogsberg’s company to mount and test the invention.

The Board explained only that it considered the sale commercial because the “April 18, 2002 invoice does not contain any indication that the sale was for experimental use.”

Practitioners and applicants should be reminded, as the court stated here, that the question posed by the experimental use doctrine is “whether the transaction constituting the sale was not incidental to the primary purpose of experimentation, i.e., whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation” (Quoting Electromotive Div. Of Gen. Motors Corp. v. Transp. Sys. Div. of Gen. Motors Corp., 417 F.3d 1203, 1209-10 (Fed. Cir. 2005)).

The court found that the declarations by Mr. Ceccarelli provided ample evidence that the sale was experimental, not commercial, in nature, and therefore reversed the Board’s commercial use finding because it lacked substantial evidence.