Distribution of Invention to Employees May Constitute Public Use
September 1, 1999
In this case, after several employees devised a perforating carbonless paper
method, 3M devised a program for the manufacture and distribution of
laser-perforated forms. Beginning in July 1989, and lasting for up to six weeks,
3M distributed the laser-perforated forms throughout 3M for use by thousands of
3M employees allegedly for the purpose of soliciting their feedback. However, 3M
did not keep any records of where the forms were distributed or what any
specific end user thought of the form.
On August 17, 1990, 3M filed a patent application for the laser-perforation
process. After two continuation patent applications, the patent issued on August
22, 1995. Appleton began selling its own brand of pre-perforated carbonless
paper in February 1993. The 3M infringement suit followed with Appleton raising
invalidity defenses.
The Federal Circuit eventually commented that "3M's proposed public use
exception for in-house distribution would grant a significant commercial
advantage to companies whose employees are able to stand in for an invention's
potential consumers." Thus, the court concluded that the 3M patent was in
public nonexperimental use more than a year before the patent application was
filed. Minnesota Mining & Manufacturing Co. (3M) v. Appleton Papers, Inc.,
50 U.S.P.Q.2d 1091 (Minn. D. Ct. 1999).
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