Examiner Rejects Compound Claim as Anticipated by Error in Prior Art
I recently worked on a case where the examiner rejected a claimed compound as anticipated by an incorrect structural formula. The case made for an interesting case of “anticipation” under 35 USC 102.
Conventionally, an examiner rejects a compound as anticipated upon finding that compound in a structural database. But, this time, the structure was clearly wrong. The author assigned the wrong structure to a molecule that he made. Based on common sense, rejecting the compound for lack of novelty seemed improper because the rejection was based solely on an error cataloging a compound by the wrong structure. The claimed compound was—in fact—new.
During prosecution, all parties knew the right result. The examiner wanted to allow the claim. But the examiner could not get around finding an exact structural match. The applicant, knowing he was the first to make the compound, was understandably frustrated by the Examiner’s insistence that his invention was “not new.”
Error in Prior Art’s Structural Formula
Here are a few relevant facts:
The claim at issue was to a chemical compound, defined by a generic structural formula (“the inventor’s claimed genus”).
The prior art disclosed a specific structural formula falling within the inventor’s claimed genus.
The prior art structural formula was wrong. The author of that art made a mistake when assigning a structural formula to a compound that he made.
Structural Match Found by Examiner
When searching for the claimed compound by structural formula, the examiner finds a structure that clearly falls within the claimed genus. The examiner issues a rejection for anticipation under 35 USC 102 (a). A disclosure of a chemical species anticipates a genus comprising it. “A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus.” The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).
Section 102 (a) provides that “A person shall be entitled to a patent unless the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” From the examiner’s perspective, the scientific literature showed a clearly anticipatory compound.
The claimed compound is new, despite the structural match.
Upon receiving the Office Action, the inventor looks at the prior art and immediately sees the mistake. The inventor is the world’s expert in the class of molecules at issue. He provides an affidavit explaining the mistake. He explains that it would be impossible for the prior art’s disclosure to provide his claimed compounds.
When arguing fails to remove the rejection, the inventor experimentally confirms the mistake by reproducing the prior art’s procedure for making the compound. This evidence also does not remove the rejection. The examiner reasons that an ordinary artisan would have recognized how to make the claimed compounds based on (a) the prior art’s disclosure and (b) ordinary skill. (Notably, this conversation is directed to whether the prior art was enabling).
Arguing Novelty over a Structural Error
Below, I describe how an applicant can work with the case law to remove the rejection. The theory relies on two firmly established principles in patent law. First, a “compound” is not limited to its structural formula but includes all aspects of the compound. Second, anticipation requires prior art disclosing exactly the same invention found in the claim at issue.
First, remember that the term compound is a legally significant term. It means the compound and all of it’s properties. “From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963).
Also, anticipation means that the prior art compound is exactly the same as the claimed compound. “[A]nticipation under § 102 can be found only when the reference discloses exactly what is claimed and that where there are differences between the reference disclosure and the claim, the rejection must be based on § 103 which takes differences into account.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Comparing Structural Formulas
Comparing any two compounds could lead to four results because a compound includes (1) structure and (2) properties:
Two compounds that are exactly the same (same structure and properties)
Two compounds differing in structure only
Two compounds differing in structure and properties
Two compounds differing in properties only
Anticipation requires option number #1. Each of the other three scenarios include some differences, which should move the analysis into the framework of obviousness under 35 USC 103.
A case where the prior art only discloses the structural formula (by mistake) fails to provide a compound having the same properties as the claimed compound. Accordingly, that case falls into scenario #4, above. Because the properties are different, the compounds are different. Any difference means no anticipation. All differences must be considered under 103.
I would welcome other thoughts on this sort of rejection. Please feel free to add your thoughts by using the comments section below.
Written by Andrew Chadeayne, October 08th, 2013 | 4 Comments »
Does U.S. Patent No. 6,630,507 Give the Government Ownership of Marijuana?
No. U.S. Patent No. 6,630,507 does not give the government ownership of the marijuana plant. The claims in the patent define methods of using certain non-psychoactive cannabinoid compounds for treating a list of diseases caused by oxidative stress.
U.S. Patent No. 6,630,507 is limited to methods of using a certain class of isolated cannabinoid compounds—it does NOT claim the plant (or any compounds in the plant) per se.
Marijuana Technology and Marijuana Patents
I recently worked on a project having to do with a new marijuana technology. During the project, I became interested in whether entrepreneurs had begun mining the marijuana patent landscape. I asked Google. When I searched for “marijuana patents,” the most popular result had to do with the U.S. Government (the “government”) owning marijuana by virtue of a U.S. Patent No. 6,630,507. This notion appears to have many activist groups upset. Those groups believe that the government is limiting their use of marijuana through patent enforcement. Is this possible?
No. The government does not “own marijuana” for several reasons.
The marijuana plant is not patentable because it has been in the public domain for centuries.
Products of Nature are Not Patentable
First, marijuana is a natural product. It has been around forever. But under US patent law, only new things can be patented. Since marijuana is not new, it cannot be patented. Naturally occurring substances like marijuana are in the public domain. I recently looked into a similar uprising about fennel, which is also in the public domain. Things in the public domain belong to the public without any patent-related royalties or exclusivity. From the standpoint of patent law, we all own marijuana communally.
U.S. Patent No. 6,630,507 Only Claims Methods of Use
Second, every claim in U.S. Patent No. 6,630,507 defines a method of use. Not a compound. Not a composition of matter. The government does not own the patent rights to marijuana per se. It owns the rights to methods of using certain cannabinoids for treating oxidative stress. The government could prevent another entity for methodically using certain cannabinoids for the purpose of treating a disease caused by oxidative stress.
Although marijuana (the plant) is not patentable, various marijuana technologies can be patented. In the case of U.S. Patent No. 6,630,507, the inventor patented a method of using certain (isolated) cannabinoids for a specific medical treatment.
The claimed methods are limited to treating certain diseases
According to U.S. Patent No. 6,630,507, the cannabinoids used in the claimed method are found to have particular application as neuroprotectants, for example in limiting neurological damage following ischemic insults, such as stroke and trauma, or in the treatment of neurodegenerative diseases, such as Alzheimer’s disease, Parkinson’s disease and HIV dementia.
Notably, about 1 hour ago, the Huffington Post ran a story about an “Ohio Mother Moving to Colorado to Treat Daughter’s Epilepsy With Cannabidiol Oil.” That particular use could arguably fall within the claims of the patent. The isolated oil seems to be within the scope of the nonpsychoactive compounds identified in the patent. Plus, treating epilepsy seems to be within the scope of the methods of treating ” neurological damage following ischemic insults, such as stroke and trauma, or in the treatment of neurodegenerative diseases.”
On the one hand, folks will probably get bent out of shape if the government changes the mother a royalty on using the isolated oil to treat her daugter’s epilepsy. On the other hand, the inventors of that patent made that treatment an option and arguably deserve a royalty for their contribution.
The U.S. Patent System does not offer a route to “own” marijuana because that plant is in the public domain
The Claimed Methods are Limited to Administering NonPsychoactive Cannabinoids.
The claimed methods use a class of cannabinoid compounds that avoid the “high” traditionally experienced by marijuana users. In particular, “Nonpsychoactive cannabinoids, such as cannabidiol, are particularly advantageous to use because they avoid toxicity that is encountered with psychoactive cannabinoids at high doses useful in the method of the present invention.”
The patent further distinguishes the cannabiniods used in its methods from other cannabinoids that produce “undesired psychotropic side effects.” The invention appears limited to methods of treating oxidative stress with a subset of such drugs are “substantially free of psychoactive or psychotoxic effects.” As a back of the envelope test, a marijuana user should could determine that she is not infringing on the 6,630,507 patent any time she experiences “psychoactive” properties.
Going back to the example of the Ohio mom from the Huffington Post article: from the standpoint of patent law the government would seem to have a better case for preventing the girl from using isolated nonpsychoactive cannabidiol than using naturally occurring marijuana for the same purpose. Part of the government’s invention seems to be separating the therapeutic (neuroprotective) properties from the unwanted psychoactive properties found in the natural product.
U.S. Patent No. 6,630,507 has 26 method claims.
Claim 1 is probably the broadest claim. It recites:
A method of treating diseases caused by oxidative stress, comprising administering a therapeutically effective amount of a cannabinoid that has substantially no binding to the NMDA receptor to a subject who has a disease caused by oxidative stress.
This is a method of use claim. The government does not own marijuana. Rather, the government owns the rights to a method of using a particular group of cannabinoid molecules to treat “oxidative stress.” Oxidative stress is defined in the specification. The group of cannabinoid molecules is limited to those having “substantially no binding to the NMDA receptor.”
Stop Blaming Patent Law for Marijuana Restrictions
The fact that the government does not “own” marijuana by virtue of s U.S. Patent No. 6,630,507 does not preclude the government from prohibiting people from using marijuana. The last time I checked, using marijuana is a federal crime under a variety of drug laws. Nevertheless, those federal statutes have nothing to do with the patent laws. Please, do not blame patent law for this one.
Hot Tot entrepreneur Meagan Gage invented a new line of children’s haircare products
Hot Tot Haircare Products
Hot Tot entrepreneur Megan Gage presented her new kids’ hair care products to the Sharks in episode 412 of Shark Tank. Megan created Hot Tot because she was concerned about potentially harmful chemicals and artificial fragrances in children’s haircare products. She set out to develop a children’s shampoo that was free of harsh chemicals.
Meagan Gage Pitches Hot Tot to Shark Tank
When Ms. Gage approached the Sharks, she had only been in business for 15 months. She only had $20,000 in sales. She was seeking $50,000 for a 15% share in the business. She made a deal with Mark Cuban, selling him $75,000 for 40% of the Hot Tot business. After making the deal with Mark Cuban, Ms. Gage used some of the money to perform clinical testing on her product and proved that it was hypoallergenic.
What about Hot Tot’s Patents?
Oddly the conversation about Hot Tot did not include a discussion of Ms. Gage’s patent portfolio. Any new (i.e., different) composition is potentially patentable. For haircare products, an inventor could pursue a patent for the composition of matter. Here is a video of Ms. Gage describing the Hot Tot invention.
According to Ms. Gage, Hot Tot filled an unmet needfor need for specialized styling options. Hot Tot is the onlyprofessional line formulated for the physical characteristics of children’s hair. The product is different from haircare products formulated for adults. Hot Tot uses a “unique combination” of highly effective natural ingredients. The product washes out of fine hair easily. Additionally, the Hot Tot line uses a unique “signature” fragrance inspired by the scent of cabbage patch doll. Lastly, the Hot Tot line provides products that are substantially free from a list of ingredients commonly found in other products.
According to the Hot Tot website, these are the shampoo’s ingredients:
These ingredients were all known in the art at the time Ms. Gage made her invention. However, her finished products (the Hot Tot line) are new because they include new combinations of these compounds. Additionally, Hot Tot’s “signature fragrance” appears to distinguish it from other haircare products, offering another opportunity to distinguish the invention base on the fragrance.
Written by Andrew Chadeayne, September 26th, 2013 | No Comments »
Claim a New Formulation as a Composition of Matter
A new formulation of an existing drug can be patented as a composition of matter. The new formulation must somehow differ from all existing formulations. Often, the new formulation will combine a known molecule with a combination of other ingredients to achieve more desirable properties. For example, a variety of drugs have been reformulated to provide “extra strength” and “extended release” versions.
One specific example of a reformulated drug is Adderall, which provides mixtures of different amphetamine salts. The new formulation provides amphetamine to the body at a more desirable rate. Although amphetamine is well over 100 years old, chemists continue to develop new ideas for providing this old drug in a new way. Making a new formulation is a cost-effective way to create a new drug product. Many pharmaceutical companies share the opinion that the best way to make a new drug is to start with an old drug.
Although the “compound” (i.e., single molecule) amphetamine has been known since 1887, many new “formulations” have been made since that time.
Distinguish New Formulation Chemically
An inventor should claim a new formulation as a composition of matter any time the invention differs from the prior art based on chemical composition. If the new formulation can be distinguished based on using new ingredients or different combinations of known ingredients, then it is likely that the invention could be defined as a composition of matter. Here, it is essential to understand the underlying chemical features of the invention. Making chemical distinctions requires developing a comprehensive understanding of the invention at the molecular level.
Written by Andrew Chadeayne, September 25th, 2013 | 1 Comment »
A compound claim is the strongest way to claim a chemical invention. It defines the inventor’s new molecule by structural formula. A claim to a compound covers the compound in any context— including all uses of the compound. Below is an example of a compound claim, claiming vitamin C by it’s structural formula. (Notably this claim is not patentable because vitamin C is not a newmolecule).
Example Claim to Specific Molecule — Vitamin C
A compound having the following structural formula:
When inventors create new molecules, they can claim those molecules per se. This extensive claim scope rewards the inventors’ exceptional contribution. By creating a new molecule, the inventor made possible all uses of the molecule. Only the person who creates the molecule can claim it as a compound. After that, the molecule itself is no longer new. And only new things can be patented.
Compound Claims Cover All Uses of the Molecule
Claiming a chemical compound by its structural formula covers all uses of that compound.
A compound claim covers all uses of the molecule. In the example above (vitamin C), the claim would cover making, using, or selling the molecule (vitamin C) in any way. For example, the claim would cover selling
any form of vitamin C, any mixture having vitamin C, any process for making vitamin C, and any method of using vitamin C.
Compound claims are valuable because they cover a molecule in any context. They are extremely broad claims. By contrast, method of use claims would only cover one use of the molecule; Composition claims would be limited to a particular mixture or formulation having the molecule.
Generalizing Compounds with Variable Groups
Notably, inventors can claim far more compounds than they actually make. An inventor can use variable groups to broaden the scope of the invention. For historical reasons, the patent community refers to variable groups as “Markush groups.”
In place of a specific atom, an inventor may use a variable group to explain that the atom could be chosen from a list of options. Using variable groups broadens the claim scope substantially. For example, instead of claiming only vitamin C (above), that claim could be drafted to include all variants having “R” groups on the alcohol positions (below).
Example Claim to Genus of Molecules Based on Vitamin C
A compound have the following structural formula:
wherein each R group is independently is chosen from an alkyl group, a substituted alkyl group, hydrogen, an ester, or a carboxylic acid.
By using variable groups, the scope of compounds claimed expands exponentially. Rather than limiting these positions to hydrogen atoms, each position may be selected from a list of possibilities. The terms “alkyl,” “ester,” etc. could also be defined broadly, covering a variety of different carbon groups. For example saturated and unsaturated alkyl chains, cyclic alkyls, aromatic groups, etc.
Written by Andrew Chadeayne, September 25th, 2013 | 7 Comments »
Chico Wash provides an all-natural way to wash food — without chlorine
E3 Organics Inc.’s Organic Chico Wash
E3 Organics Inc. markets an organic wash called “Chico wash.” According to their webpage, The wash relies on a proprietary citrus blend instead of less desirable sanitizers, like chlorine.
Inventor of E3 Organics Chico Wash – Dr. Postma
Dr. James Postma is Ph.D, Chemist from CSU, Chico. He is also a U.S. EPA Consultant and a Published Author. Here is a video of Dr. Postma describing the Chico wash technology:
Postma’s Description of the Problem to be Solved
According to the Organic Chico Wash webpage:
The food-processing industry, both conventional and organic, utilizes sodium hypochlorite (bleach) as the dominant disinfectant formulation. These solutions are utilized for equipment and facility cleansing and are applied directly to food products for disinfectant purposes. Sodium hypochlorite solutions are used because they are inexpensive and familiar, but they can impart a residual odor to food products. It is also known that hypochlorite compounds will chlorinate certain molecules under typical conditions, forming chloromethane and similar compounds, which are known toxins, carcinogens and teratogens. (Fortunately, these compounds are formed in very low concentration in these contexts.) The organic food industry allows the use of hypochlorite as a disinfectant, but in our judgment, this is mostly out of necessity. It has predictable properties, but does not really fit the concept of “organic” in this context.
The Chico Wash uses citrus compounds to sanitize food instead of chlorine
The Invention – preserving and killing bacteria in foods with green and organic agents
Dr. Postma developed a solution to the above described problem. Instead of using chlorine, Dr. Postma, sanitized foods with a two step process. Those two steps are: (1) treating the food with an antioxidant acid at a low pH; and then treating the food with a low concentration of ascorbic acid.
According to Dr. Postma and his team of researchers, the studies showed up to 4-log reductions and “better antimicrobial activities against both Salmonella Newport and background microflora (bacteria, yeast and molds) than 200 ppm chlorine and water washes.” See the Packer.
The Patent Application
On Aug 19, 2004, the inventors filed a patent application on “Food grade natural/organic method for treating food.” The application claimed “methods of preserving and killing bacteria in foods to maintain the natural color of the foods and prevent discoloration of the foods from bruising and scarring.” (It is unclear why the inventors did not pursue composition of matter claims instead of only method claims).
The application filed was U.S. Patent Application No. 10/922,065. But that application was allowed to go abandoned on October 9th, 2008 because the patent applicants did not respond to an Office Action sent by the United States Patent and Trademark Office. The applicants attempted to revive the patent application by filing a petition. But those attempts were not successful.
A patent provides the inventor with en EXCLUSIVE right to make, use, and sell the invention
The Road Ahead without a patent
E3 Organics Inc. sells the Chico Wash solution in 1-gallon, 55-gallon drums, 360-gallon totes. They also sell tanker loads. According to the company, they are ramping up distribution. And the data suggests that the wash works very well.
Here’s the unfortunately issue, although the product is”[d]erived from a proprietary citric acid blend,” the inventors failed to get a patent on that proprietary blend.
Patenting their proprietary citric acid blend would have allowed them to exclude all competitors from the market. They would have been the only company allowed to sell the solution that comes in those 1 gallon, 55-gallon drums, 360 gallon totes, and tanker loads. Likewise, the method claims would have given the patentees the exclusive right to practice the methods of preserving and killing bacteria in foods using those compositions. But, without that patent, any other company can make, use or sell this technology. It is not proprietary anymore.
Does E3 Need a Patent?
Many entrepreneurs and inventors ask if they need a patent. See Do I need a patent to go on Shark Tank. The short answer is no. The E3 organics company does not need a patent to sell the Chico wash. However, without that patent, no one else needs a patent to sell Chico wash either.
Having a patent would have given the patentees the exclusive rights to make, use, or sell the invention. They would have had a monopoly on the technology. Without that patent, they are still welcome to sell the product. But they are now selling into a market that is open to competitors.
Is there anything E3 can do to get patents now?
Unfortunately, the earlier filed application went abandoned after it published. The contents of that application fell into the public domain. Accordingly, E3 cannot pursue patent protection for anything disclosed in that application. The claims would not be new (or different) when compared to today’s technology. However, E3 may have made some improvements in the course of its business. E3 may have refined some of its formulas and methods. In that case, they could draft patent claims and file patent applications directed to that specific technology. This is not the ideal case. But it may provide a way to capture some patent coverage on their subsequent innovations.
Written by Andrew Chadeayne, September 20th, 2013 | 1 Comment »
The i-Grow Device sold by i-Green has been heralded by marijuana growers as an huge advance in marijuana technology
Zenion Industries Air Ionizing Apparatus
We recently posted about how the changing marijuana culture is creating new opportunities for patenting marijuana technology. One example of this phenomenon can be seen through Zenion Industries. Zenion Industries has invented and filed international patent applications on its devices for improving crop health and yield. The device has received a rapid and enthusiastic reception amidst marijuana growers—an industry where the resulting crop demands a relatively high price per gram. According to Zenion Industries, marijuana growers in Norther California have alerted them to a tremendous market opportunity for using the device to increase cannabis yields: “this may have not been your intended market but you really need to make this available to all legal cannabis growers.”
We found the development of the i-Grow particularly interesting because Zenion Industries intelligently decided to claim the invention in PCT Application (No. PCT/US2012/043325) by Jimmy L. Lee. According to Zenion, the company has filed for patent protection in 161 countries. Good thinking.
Zenion’s Licensee, i-Green LLC, Sells the i-Grow Device
Zenion is already benefiting from licensing it’s technology. Zenion licenses it’s air ionizing apparatus to i-Green LLC. Last May, 2013, iGreen exhibited the i-Grow device at the National Hardware Show in Las Vegas, NV. The show was attended by almost 100,000 suppliers and dealers from the US and abroad. According to Rohnert Park, i-Green LLC’s booth was “buzzing with interest from crowds of vendors.” People at the show were attracted to the idea that a solar-powered product could benefit ground plants. The i-Grow helps plants grow healthier and produce more. According to Zenion’s data, the increases in crop yield are dramatic:
The i-Grow system, leveraging Zenions technology and sold by i-Green LLC boosts crop yield.
Zenion Industries Invention
In Zenion’s patent application, they describe their technology as follows:
“An air ionizing apparatus for enhancing plant growth that includes a housing, solar cells mounted atop the housing, a voltage regulator/conditioner circuit coupled to the solar cells, an oscillator/modulator circuit coupled to the voltage regulator/conditioner circuit, a high voltage converter/multiplier circuit coupled to the oscillator/modulator circuit, and an ion emitter element coupled to the high/voltage converter/multiplier circuit and disposed at the bottom of the housing. Solar energy transferred to the solar cells and converted into current is converted to high voltage through the voltage/regulator, oscillator/modulator, and high voltage converter/multiplier circuits. The high voltage is then applied to the ion emitter element to produce ions from ambient air in close proximity to a plant being treated.” See PCT Application.
Zenion Industries Claims
Based on the above description of the invention, Zenion has claimed 19 inventions, all directed to the air ionizing technology. Claim 1 illustrates the broadest device (aka “machine” or “apparatus”) claim. Zenion has also claimed some new methods of using the device. Claim 12 illustrates the broadest method claim.
Zenion’s Claim 1
Zenion’s claim 1 recites as follows (bullet points added for reading ease):
1. An air ionizing apparatus for enhancing plant growth, comprising:
an electrical power source;
a voltage regulator/conditioner circuit electrically coupled to said electrical power source and disposed in said housing;
an oscillator/modulator circuit disposed in said housing and electrically coupled to said voltage regulator/conditioner circuit;
a high voltage converter/multiplier circuit disposed in said housing and electrically coupled to said oscillator/modulator circuit; and
an ion emitter element electrically coupled to said high/voltage converter/multiplier circuit, said ion emitter element having a tip exposed through a bottom of said housing; wherein solar energy upon the solar cells is converted to high voltage through said voltage/regulator, said oscillator/modulator, and said high voltage converter/multiplier circuits, the high voltage then being applied to said ion emitter element to produce ions from ambient air.
Zenion’s Claim 12
12. A method of enhancing and accelerating plant metabolism and growth, comprising the step of positioning and operating an air ionizing apparatus in close proximity to a plant so as to expose the plant to ions produced in the air proximate the plant.
Written by Andrew Chadeayne, September 20th, 2013 | No Comments »
Changes in law and policy are opening the door to tremendous growth in marijuana technology
Changes in marijuana culture are creating incredible opportunities for new marijuana technology. Marijuana and marijuana derived products are overwhelmingly popular in the worldwide market. This popularity is especially noteworthy because the drug is still illegal in the United States. But the war on marijuana appears to be coming to a close. (See video below). And the popularity of the drug appears to be on the rise, for both medical and recreational uses.
The above changes suggest tremendous opportunities in the marijuana technology industry. As inventors rush into that space, they should remain cognizant of the opportunities for patenting their inventions. For example, inventors could define their inventions as new compositions, devices, or methods.
Patent Opportunities Arising from Changing Marijuana Culture
Setting aside the political issues associated with marijuana, the changing climate is creating incredible business opportunities. According to CNBC, the legal marijuana business is already huge. And the Huffington Post opines that those sales will quadruple by 2018. Most of this business comes from growing and selling the plant itself. But other industries are beginning to blossom. For example, the marijuana food and beverage industry and marijuana device industry have experienced wild growth.
With these new industries come new products and new technology. Inventing something new (i.e., different) gives rise to patentable subject matter. In the case of marijuana, there are a variety of opportunities for inventing new technology.
New chemical compositions derived from marijuana.
Although the cannabis plant has been known for thousands of years, making new compositions from that plant would give rise to patentable inventions.
Naturally occurring substances cannot be patented. As compounds, they are not “new” because they occur in nature without human ingenuity. However, new purified forms of the chemical components of marijuana are potentially patentable. Similarly, new combinations of known molecules can be patented. Regardless of political attention, the patent office will treat marijuana inventions as chemical inventions.
Given the variety of different molecules found in the cannabis plant, the potential for new combinations of those molecules is virtually infinite. Finding new combinations of molecules having desirable properties would give rise to new compositions of matter. These new marijuana compositions can be patented.
Marijuana Edible Product Market
New Marijuana Edibles are Patentable
According to CNBC, the legalization of medical marijuana in several states has paved the way for a budding edible medical marijuana industry. Small businesses in states such as Colorado and California are making marijuana derived treats such as candy, cookies or soda.
As we have discussed in some earlier articles, new foods (e.g., candy, cookies or soda) can be patented as compositions of matter. New flavors of those foods could give rise to additional patents. Given that this class of marijuana containing readymade foods is relatively young, the body of prior art is relatively small. Less prior art makes it more likely that the foods could be defined as new compositions, increasing the likelihood that they could be patented.
Along with opportunities for patenting marijuana compositions per se comes the opportunity for patenting methods of making those new marijuana compositions. A new food is probably made via a new method. That new method could be claimed and patented.
New devices and methods for administering marijuana or marijuana compositions
New devices for using or administering marijuana are patentable
Smoking marijuana has one indisputable downside—the user is smoking the plant. Generally speaking, breathing in burning materials is bad for the user. (Humans should not breath in things that are on fire).
Responding to this downside of smoking, the marijuana device market has grown significantly over the years. Wikipedia describes several varieties of herbal vaporizer technologies. And some websites, e.g., GotVape, specialize in selling commercial embodiments of the vaporizing technology. Many devices, such as the iolite product line have been patented. But the space still remains wide open. Inventors of new devices should follow iolite’s lead by claiming their inventions.
Patenting methods of administering marijuana
U.S. patent law recognizes “methods” as a separate category patentable subject matter. In addition to patenting new “devices” for administering marijuana, the inventor could pursue patent claims directed to the methods of administering marijuana by using those devices.
Changing Culture Suggests Increasing Opportunities for Patenting Marijuana
In recent years, the public opinion surrounding marijuana has changed considerably. And it appears that the nation (and the world) will probably continue to move toward decriminalization and legalization of this plant. One good illustration of this shift can be seen through CNN medical correspondent, Dr. Sanjay Gupta. This past August, he publicly changed his position on marijuana use — discussing some unparalleled medical benefits of the drug along with an overwhelming lack of side-effects. Here is the video:
Assuming that this trend continues, it will spawn new industries filling the void created by illegality. Some examples are new foods, compositions, drug products, services, etc, discussed above. The early stage of these industries makes them particularly exciting from a technology standpoint. The technology is in its early developmental stages, so it is bound to encounter big leaps forward— pioneering inventions. Accordingly, the marijuana technology field offers especially exciting opportunities for inventing and patenting new technology.
Written by Andrew Chadeayne, September 19th, 2013 | 1 Comment »
Sum of Us is accusing Nestlé of patenting the fennel flower
“Sum of Us” Accuses Nestlé of Patenting the Fennel Flower
According to Sum of Us ( an organization “fighting for people over profits”), the Nestlé company is attempting to patent the fennel flower, which has been growing in nature for thousands of years. Sum of Us contents that Nestlé is patenting the naturally-occurring fennel flower itself, which has been used as a cure-all remedy for over a thousand years.
According to Sum of Us, the fennel flower treats everything from vomiting to fevers to skin diseases. Sum of Us also asserts that the flower has been widely available in impoverished communities across the Middle East and Asia.
Sum of Us is upset with Nestlé over Nestlé’s Patent
Sum of Us states as follows:
(1) “Nestlé is claiming to own [the fennel flower], and filing patent claims around the world to try and take control over the natural cure of the fennel flower and turn it into a costly private drug”; and
(2) “Nestlé is attempting to create a nigella sativa monopoly and gain the ability to sue anyone using it without Nestlé’s permission. Nestlé has filed patent applications — which are currently pending — around the world.
Sum of Us is asking people to sign a petition, asking Nestlé to stop trying to patent a natural cure. Their goal is to ” get [Nestlé ] to drop its patent plans before they harm anyone.”
Nestlé says Sum of Us is confused about the patent
Rather than claiming the flower (as it appears in nature), Nestlé is claiming a compound that can be extracted from the fennel flower or from other plants, to help treat or prevent food allergies. (The application at issue appears to be PCT/EP2010/056783).
They state that the claims will not prevent the use of the fennel flower plant for any other purposes, including in traditional and natural remedies.
Should Nestle Get a Patent
How the Patent System should Handle this Dispute
The dispute between Sum of Us and Nestlé should work itself out: If Nestlé is correct, it’s claims will validly protect it’s advances in the art; If Sum of Us is correct, Nestlé’s claims would be invalid because they would not be new. Only new inventions can be patented—Sum of Us is arguing that the claims cover old compositions and methods. If this is true, the claims will not be allowed because the invention would not be different from the prior art. If they were allowed, they would be found invalid if Nestle tried to enforce them.
In either event, the patent system works to reward true invention without incentivizing people to claim what is already known in the art.
This above situation also suggests that Nestlé would have an opportunity for filing composition of mater patents, claiming particular concentrations, ratios, or formulations comprising the individual components of the essential oils.
According to wikipedia, “Nigella sativa oil contains an abundance of conjugated linoleic (18:2) acid, thymoquinone, nigellone(dithymoquinone),melanthin, nigilline, damascenine, and tannins. Nestlé’s claims recite methods. If those methods use compositions having particular ratios of these molecules, Nestlé could theorheticaly pursue patent coverage for the composition of matter.
Written by Andrew Chadeayne, September 18th, 2013 | 25 Comments »
Compositions of matter are one of the four principle categories of patentable subject matter
Patenting a Composition of Matter
Composition of matter claims are considered to be among the most powerful patent claims possible because they are broadly applicable. They cover any use of the claimed composition of matter. (By contrast method claims would only cover one method but not necessarily other uses).
What is a composition of matter?
Under United States patent law, a composition of matter is one of the four principal categories of inventions that may be patented. The law provides that “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of [title 35 of the United States Code]” See 35 U.S.C. 101.
Hopefully, the terms “process,” “machine,” and “manufacture” are pretty straightforward based on their conventional meanings. A composition of matter refers to the stuff that an invention is made out of. In particular, defining a composition of matter requires identifying its molecular composition.
The United States Supreme Court has defined “composition of matter” to mean “all compositions of two or more substances . . . .” This definition is somewhat problematic because it fails to account for inventions made of only one substance. In practice, those one-substance inventions (aka “new chemical entities” or “new molecules”) are called compounds, which is confusing because “compound” is not listed in the categories of patentable subject matter. The easiest way to make sense of this discrepancy is to consider a “compound” to be a special class of “composition of matter,” having only one molecular formula.
A composition of matter is a mixture of two or more compounds, i.e., a mixture of two or more chemically distinct molecules
Claiming a composition of matter
An inventor should draft claims to a composition of matter any time the invention differs from the prior art on account of its chemical profile. If the invention can be distinguished base on using new ingredients or different combinations of known ingredients, then it is likely that the invention could be defined as a composition of matter. Here, it is essential to understand the underlying chemical features of the invention.
Some examples of new compositions of matter would include the following:
New materials, such as plastics, metal alloys, etc.
Notably, the above list of “new” inventions does not require that the ingredients are new. So long as the resulting combination provides something different than anything made before, that end product could be described as a new composition of matter. In the case of food and beverages, the resulting flavor is a relatively good indicator that the end product is new. Flavors and fragrances come from molecules. A different flavor or fragrance would indicate that the underlying molecular composition is different.
Written by Andrew Chadeayne, September 17th, 2013 | 1 Comment »