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Undue experimentation

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U.S. patent law Edit

An invention is not patentable if the written specification would not enable a person skilled in the art to practice the claimed invention without undue experimentation. In determining

undue experimentation, the court examines (1) the quantity of experimentation; (2) the amount of direction or guidance present; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and (8) the breadth of the claims.[1]

The fact that experimentation may be complex does not necessarily make it undue, if the art typically engages in such experimentation.[2]

From the perspective of competitive impact, time-consuming experimentation is more likely to be undue in settings where product life-cycles are measured in months than where they are measured by decades. However, the factors traditionally considered in evaluating “undue experimentation” omit this commercial perspective.

References Edit

  1. In re Wands, 858 F.2d 731, 737, 8 U.S.P.Q.2d (BNA) 1400 (Fed. Cir. 1988) (full-text). See also MPEP 2164.01, MPEP 818.03(c).
  2. In re Certain Limited-Charge Cell Culture Microcarriers, 221 U.S.P.Q. (BNA) 1165, 1174 (Int'l Trade Comm"n 1983), aff'd sub nom., Massachusetts Inst. of Technology v. A.B. Fortia, 774 F.2d 1104, 227 U.S.P.Q. (BNA) 428 (Fed. Cir. 1985) (full-text).

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