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59 Arizona Law Review 647 (2017)


One of the most widely-recognized artifacts in American patent law iconography is also among its most peculiar: Samuel Nicolson’s cane. The cane played a leading role in the Court’s analysis in American Nicholson v. City of Elizabeth, a nineteenth-century decision that has become a fixture in the patent law canon. The case is the leading enunciation of the doctrine of experimental use, which spares inventors from forfeiting patent rights when they can show that otherwise disqualifying sales or uses were undertaken as experiments to perfect their inventions. This paper argues that the modern experimental use doctrine needs to rediscover its roots. It first shows that the modern doctrine has become a victim of a shift towards formalist analysis. It then tells the story of the City of Elizabeth case, demonstrating that the experimental use doctrine at its outset was an essentially instrumental doctrine serving as a discretionary hedge against patent forfeiture. The paper concludes that restoring this character to the experimental use doctrine will best serve the objectives of the current patent system, and provides lessons for approaching patentability law as it will develop under the newly-implemented America Invents Act.