Case 18: Lough v. Brunswick Corp. (1996)

Lough filed for a patent for a seal to the stern drive assembly for boats. Brunswick, accused of infringement, moved for a judgment as a matter of law, stating that Lough could not prove that its use of the assembly prior to the patent application was purely experimental in nature. Brunswick charges that Lough did not control the use of his prototypes, did not keep good records of the process, and did not swear the third parties to any form of secrecy. Lough defends his methods, saying that the use of the prototypes was necessary to test the product, he did not receive compensation for the prototypes, and he did not place the seal on the public market until after he filed for the patent. He claims that mechanics of varying degrees of skill and in various conditions were necessary to thoroughly examine his product's behavior. The court disagrees.

"Public use" is defined as any use which is under no restriction, obligation, or limitation imposed by the inventor. An inventor may skirt this requirement by showing that the public use was purely experimental in nature. Now, Lough had admitted the use of his invention before the critical date. Thus, the question is whether such use was experimental in nature. Generally, experimentation may be proved by documentation which refers to the typical procedures and methods found in an experiment: duration, number of prototypes, progress reports, secrecy, etc. The expectations of rigorous experimental bookkeeping can be lowered reasonably in the case of individuals or small entities. However, care must always be taken to ensure that the product remains in an experimental state only. Lough did not take the necessary measures to avoid the dissemination of his invention, and consequently, his seal was placed on a boat which was sold. Although this was unknown to him, Lough still did not keep fastidious records demonstrating the experimental nature of his efforts; he had given the seal to some friends to try, and he did not ask them for their comments afterwards. Had he provided this documentation showing results and opinions, his patent may have been upheld. The court reversed the decision of the Appellate Court, and Brunswick's motion for JMOL was granted.

Four Policies:
(1) discouraging the removal, from the public domain, of inventions that the public reasonably has come to believe are freely available;
(2) favoring the prompt and widespread disclosure of inventions;
(3) allowing the inventor a reasonable amount of time following sales activity to determine the potential economic value of a patent;
(4) prohibiting the inventor from commercially exploiting the invention for a period greater than the statutorily prescribed time.