Is this correct, even though we are not doing this for purpose of selling it? Isn't a patent in public domain? How would such a law be enforceable? 11 Answers as of August 16, 2013

We have an opportunity to license a patent. We would like to test the invention first to be sure it works in our application. I'm told that is illegal, unless patent owner OK's it, and also we will have to pay patent owner just for right to test it, if they ask for such payment.

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DANIEL NESBITT | Hasse & Nesbitt
There is some basis for a patent owner to assert infringement on one who even tests the invention, but there are practical ways of dealing with this.
Answer Applies to: Ohio
Replied: 8/16/2013
Mark Torche | Mark Torche
Yes, it is true that the patent law is written in such a way that prevents anyone from making and using a patented device. If it can be shown that the infringement is deliberate, the patent holder can recover triple damages (these are not likely to be much without commercial concern) and lawyer's fee. Not worth the trouble. Find a way to test with permission (in writing).
Answer Applies to: Iowa
Replied: 8/16/2013
Sebby Law Office
Sebby Law Office | Jayne Sebby
A patent holder has the absolute right to determine who can use and/or product the item. If the patent holder wants to license the product, he/she/it should cooperate with the potential licensee, after the licensee provides certain protections such as a nondisclosure agreement. A patent is most definitely not in the public domain until the term of protection ends.
Answer Applies to: Nebraska
Replied: 8/16/2013
Webb IP Law Group
Webb IP Law Group | Jason P Webb
There is a common-law exception to patent infringement for de minimus experimental use. It is a narrow exception and you should have an attorney help yo to make sure that your planned experimental use qualifies, but there is an exception that can allow you to test the invention without having to pay the patent owner.
Answer Applies to: Utah
Replied: 8/16/2013
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
A patent gives to owner of the patent the right to sue someone if they Make OR use Or Sell something covered by the patent. It's not illegal, but the owner of the patent can sue for damages from your action. In general, if someone wants to license their product they will let you test the product to ensure it works in your application. If the owner of the patent is willing to "walk away" from a potential license and or royalty then it is not a good business decision. Just buy one piece and use it as you like. When you buy the item you paid for the license to use or sell the single item.
Answer Applies to: California
Replied: 8/16/2013
    Mohr Intellectual Property Law
    Mohr Intellectual Property Law | Joseph Mohr
    Technically, you would likely need to obtain a license from the patent owner to test the invention for your application. The owner of a patent has the exclusive right to make, use, sell, and import an invention protected by a patent. Testing the invention for your application would likely involve making or using the invention; thus, you would likely need a license from the patent owner. A patent does not become part of the public domain until it expires.
    Answer Applies to: Oregon
    Replied: 8/16/2013
    Michael M. Ahmadshahi
    Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
    Any use of a patented device, even experimental use, is patent infringement and you need to get the owner's permission.
    Answer Applies to: California
    Replied: 8/16/2013
    Tran & Associates | Bao Tran
    You should be able to see the device operating if the owner is reasonable. If not, you should skip. ON your own invention, you should get patent application as soon as you can to prevent others from copying you. This is important as we move into the First to File era. I would recommend the use of software from called ProvisionalBuilder. A feature summary is at THe software helps you organize information, and through your summary description, brings back sample patents in the same field for you to use as examples.
    Answer Applies to: California
    Replied: 8/16/2013
    David M. Driscoll | David M. Driscoll
    You should first make sure that the patent actually covers your particular application (product). If it does, then theoretically even a single making of the product infringes the patent, assuming the patent is still in force and not expired. You might want to consider contacting the patent owner to explain your situation under confidentiality, to see if the patent is available for license. If they indicate that it is and provide you with some license terms you may then be able to proceed.
    Answer Applies to: Massachusetts
    Replied: 8/16/2013
    Banner & Witcoff, Ltd. | Ernie Linek
    Patents are NOT in the public domain until they expire - typically now 20 years from the filing date - if all maintenance fees are paid. It is an act of infringement to make, use, sell, or offer for sale, a patented invention - unless you have permission (i.e., a license) from the owner. The fact that you may want to license a patent likely means that you are (or could be) in contact with the owner - so ask for a "test drive" if you want to be completely safe from any charge of infringement. You can ask that it be done "free of charge" - but that decision is the owner's to make.
    Answer Applies to: Massachusetts
    Replied: 8/16/2013
    The Law Firm of P. Jeffrey Martin, LLC | P. Jeff Martin
    First, a patent is not in the public domain unless it has expired. Second, you are correct. The right conferred by a patent grant is, in the language of the federal statute (35 U.S.C. ?101) and of the grant itself, ?the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States.
    Answer Applies to: South Carolina
    Replied: 8/16/2013
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