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The testing requirement depends on the particular facts of each case, with the court guided by a common-sense approach in weighing the sufficiency of the testing. Reduction to practice does not require that the invention, when tested, be in a commercially satisfactory stage of development. Testing need not show utility beyond a possibility of failure, but only utility beyond a probability of failure. When reviewing the sufficiency of evidence of reduction to practice, this court applies a reasonableness standard.
In a patent interference action, appellant attempted to show an actual reduction to practice before appellee's date of invention. The invention was a penile implant for men unable to obtain or maintain an erection. The Board of Patent Appeals and Interferences discerned insufficient evidence to show reduction to practice. Specifically, the Board determined that appellant had not shown utility, i.e., that the device would successfully operate under actual use conditions for a reasonable length of time. Thus, the Board required testing of an implantable medical device under actual use conditions or testing under conditions that closely simulate actual use conditions for an appropriate period of time. Because appellant had not tested his device in actual intercourse or in similar conditions to intercourse for a proper period of time, the Board determined that appellant had not reduced his invention to practice. The Board awarded priority in the interference to appellee. The present appeal followed.
In order to show a reduction to practice, was human testing in actual use circumstances necessary?
On appeal, the court found that the board erroneously suggested that a showing of reduction to practice required human testing in actual use circumstances for a period of time. The decision was reversed and remanded, because the board imposed an overly strict requirement for testing to show reduction to practice.