How can we sell/market-test an invention before patenting it?

Hi,

It's complicated, but here are some general guidelines:

There are exceptions to the "offer for sale" bars. One is experimental use. Two leading cases that outlined some of the criteria for experimental use are: City of Elizabeth v. American Nicholson and Manville v. Paramount. In City of Elizabeth, there was a wooden paved road that had to be publicly tested (old case!), but the inventor didn't sell it and he retained control over it. In Manville, there was an inventor who sold his pole-light in order to have the company test it in a secluded rest stop area, but he kept control of it and informed them he intended to patent it. That said, courts have held that offers for sale, or market testing, is an on sale bar (Pfaff v. Wells & Phillips). In addition, Pre-AIA held that even secret offers for sale were bars, but after AIA it isn't clear. Some legislative intent suggests that AIA will not allow a secret offer for sale to bar, but there is no case law out to know for sure.

To summarize, public offers to sale or market testing are on sale bars under 35 USC 102/103. That means you have to file within a year of the offer in the US to be able to file a patent. Secret offers for sale after AIA, it isn't clear. Aspects of acceptable "testing" uses that do not bar, are primarily about making sure the prototype works as intended (refining), and are not about market testing.

To be safe, one should file before market testing or offering for sale. This isn't legal advice, but merely a sharing of general publicly available knowledge. For more specific advice to your own situation, you should seek legal counsel.

Hope this helps!
Mary