Recently the Huffington Post published an article on an ingenious new food that gets kids to eat their broccoli. When I see achievements like this, I always wonder whether the inventor filed a patent application on the new technology.
Foods are patentable, just like any other composition. The patent laws do not distinguish a food simply because we eat it. Rather, the law would classify food as a composition of matter. At the United States Patent and Trademark Office, food recipes would probably fall under Patent Class 426: “Food or Edible Material.”
A new food can be patented as a composition of matter.
Food is Patentable as a Composition
Under U.S. Patent law, an inventor can patent a process, machine, manufacture, or composition of matter. The food must be new, useful, not obvious, and meet the other disclosure requirements for patentability. However, the critical point remains the same: Food can be patented. The patent laws do not discriminate food from any other composition of matter.
The Food Must be “New”
Only new inventions can be patented. This is ofte atent application35 U.S.C § 102. Often, a “new” food is difficult to distinguish from a prior art food. For example, an inventor may struggle to differentiate a truly innovative soup from all prior art soups that came before it. For a truly new soup, drafting a successful patent application depends on the inventor’s approach to drafting claims.
A clever way to distinguish one food from another is to describe it at the molecular level. In the soup example above, understanding how one soup differs in molecular composition would provide a powerful means for defining the differences. Instead of arguing why certain ingredients are subjectively better, the inventor could objectively quantify the improvement. Instead of qualitatively explaining why certain recipes are better, the inventor could point to concrete molecular differences. Defining a food invention in terms of it’s molecular composition provides a significant advantage when arguing for patentability during patent prosecution.
The greatest challenge is explaining why a new food was truly innovative. Here, Chef Peter Wong worked with some unique combinations of ingredients at the 2012 DC Chili Cook-off in Washington, DC.
The Food Must be “Non-Obvious”
For most inventions, obviousness is the critical hurdle to getting a patent. The non-obviousness requirement for patentability is set forth in 35 U.S.C. § 103. In short, the inventor must show that the food would not have been a trivial or routine advance beyond other previously disclosed foods. This area of patent law is very complicated for a variety of reasons. The undisputed standard for evaluating whether an invention is obvious can be found in the Supreme Court’s 1966 Graham v. John Deere decision.
The Inventor Must Adequately Disclose the Food.
In order to receive a patent, the inventor must provide a comprehensive disclosure of the invention. The inventor must also teach the public the best way to make and use it. In the case of a new food, the inventor must teach the public how to make it without “undue experimentation.” The recipe must be something that can be reproduced by someone having ordinary skill in the industry. This disclosure rbargain an inventor accepts when applying for a patent. The inventor must give up the secret recipe in exchange for a limited period of patent protection.
The Sport of Swimming Continues to Develop New Technology
Yes, technology for swimming can be patented just like any other invention. The inventor of new swimming gear can draft patent claims and file a patent application directed to that new technology. To be patentable, the swimming gear must be “new,” that is different from all swimmer gear existing before it.
In addition to being “new,” the invention must not be an obvious variation of swim gear that existed when the new swimming gear was invented. The legal test for obviousness is often very complicated. The test of “obviousness” is called the Graham Test, which we wrote about it in an early post.
As a rough guide, an inventor should be able to receive patent protection on any significant improvement over the state of the art. (For example, a better kickboard, a new haircare composition, or a new design for a hand paddle). In the case of swim gear: the greater the difference from existing gear, the more likely it is that the invention can be patented. Also, if the invention provides an unexpected benefit beyond similar swimming gear, then it is probably patentable.
Swimming seeing constant changes in pool chemicals and chemical testing kits
Subject to the above requirements (new and not obvious), most categories of swimming gear should give rise to patentable subject matter. For example, innovations in clothing, training aids, diagnostic tools, pool equipment, chemicals, sports drinks, and personal care items could all be patented.
Innovative swimmers have been developing new products for decades. For example, in 1988, Eney Jones patented the Eney Bouy, which us patented in U.S. Patent No. 4,929,205. Recently, Playcore invented a new Colorado Timing Systems Titanium deck plate for Colorado Timing Systems. See US Patent Number 8,602.815 (“Swimming pool deckplate for horizontal surfaces with integrated slopes around electrical contacts”).
Chadeayne LLC’s President, Dr. Andrew Chadeayne has personal experience patenting products for swimmers. Several years back, he developed the first chlorine removal product that actually eliminates chlorine from hair and skin. Because of his expertise in chemical patent law, he filed a handful of patent applications directed to SwimSpray. Those patent applications have been instrumental in developing SwimSpray’s business.
How to patent swimming technology?
As stated above, patenting swimming technology should follow roughly the same course as patenting other technology. In the swimming arts, the inventive process could follow a path like this:
The inventor has an idea for a swimming product;
the inventor refines the idea;
the inventor designs a prototype;
the inventor builds the prototype and tests it;
the inventor refines the prototype and builds a commercial embodiment.
When should the inventor of a new swimming technology file a patent application?
The inventor should file a provisional patent application before disclosing the invention to others. Ideally the inventor should file a patent application as soon as they can clearly define and describe the invention. The inventor does not need to build the invention or even make a prototype. The inventor only needs to provide clear instructions for how someone in the industry could make and use the invention.
Filing a provisional patent application allows the inventor to discuss the idea with potential business partners while minimizing the risk of having the idea stolen. Filing a provisional patent application also gives the inventor one year to refine the invention and file a regular patent application.
Pet owners will spend an about $58.5 Billion on their pets in 2014. Here’s the estimated breakdown for pet products in 2014:
Food $22.62 billion Supplies/OTC Medicine $13.72 billion Vet Care $15.25 billion Live animal purchases $2.19 billion Pet Services: grooming & boarding $4.73 billion
This is my dog Carl. He is pictured here chewing a Kong toy.
New Pet Products are Patentable
New pet technologies are patentable. From the standpoint of patent law, the patentability analysis is the same as for all other technologies.
New pet food or food products could potentially be patented as compositions of mater. Other patentable pet products include devices and machines, such as toys, crates, cages, scratching posts, etc. These could be patented as machines. Vet care would include drugs (compounds and compositions of matter), medical devices, methods of treatment, etc.. The regular rules of patentability apply. The technology must be new when compared to all existing technology; and it must not be an obvious improvement over existing technology.
Owning a monopoly on a popular new pet product provides a significant market advantage–they ability to exclude all competition from making, using, and selling that invention. This monopoly allows the owner of the patent to set the price. Accordingly, innovators in the pet space should claim their new technology.
Below are a few interesting examples of patented pet products.
Interesting Pet Product Patents
IP watchdog wrote about United States Patent No. 6,360,693, which claims an animal toy. This patent is the famous case of patenting a stick. The Kong Company, LLC makes a variety of highly recommended dog toys. They have a portfolio of patents and patent applications. Kong’s dental toys are built with patented Denta-Ridges, which are special grooves designed to clean teeth and sooth gums as dogs chew.
United States Patent No. 5,443,036 defines a method of exercising a cat. This patent claims methods including a “beam of invisible light produced by a hand-held laser apparatus onto the floor or wall or other opaque surface in the vicinity of the cat, then moving the laser so as to cause the bright pattern of light to move in an irregular way fascinating to cats, and to any other animal with a chase instinct.”
Patent Pending Beer Pong Technology? Strong Arm Cups
Patents on beer pong? Maybe soon.
According to PRWEB, Strong Arm Cups has introduced a better way to enjoy beer pong. Strong Arm Cups has invented a beer pong kit, which contains 20 playing cups, 20 damper inserts that go inside the playing cups, and four drinking cups. The combination of the items in the kit promises to “eliminate the dirty and wasteful use of traditional, disposable plastic cups.”
The Strong Arm beer pong patent kit includes several items that improve the beer pong experience
Strong Arm Cups is designed to maintain the core aspects of beer pong while addressing some of the more disgusting elements of the current game, such as having to drink dirty beer due to crud getting on ping pong balls, multiple people drinking from the same cups, and beer being spilled during game play. Strong Arm Cups presents a simple solution to these problems by introducing designated playing cups with dampers for consistent game play and individual drinking cups with clear demarcations to show players how much to drink for each sunk cup.
The Strong Arm Cups beer pong kit will retail for $26 however an early bird special of $20 will be offered through the Kickstarter campaign.
Jeremy Armstrong, Inventor of Patent Pending Strong Arm Cups
The Strong Arm Cups kit was invented by Jeremy Armstrong. (The name makes more sense now, doesn’t it?)
“I’ve always loved beer pong, but was disgusted by how gross the playing cups and balls became,” said Jeremy Armstrong, creator of Strong Arm Cups. “I wanted to maintain the essential integrity of the game, while making a few minor improvements to make the game better for everyone.”
Strong Arm Cups was created by Jeremy Armstrong, a family-man who has always had a passion for beer pong. After a year of design and engineering work this patent pending beer pong kit is ready to be brought to the party thirsty masses. Armstrong is looking forward to growing his business in the future and improve more drinking games.
Where’s the patentable subject matter?
What can be patented about this invention? In the past we have discussed how new beers recipes, methods of making beer, and beer apparatus can be patented. Why not beer games?
The same rules of patentability apply to beer games as any other type of invention. The invention must be both new and not obvious. Here, I suspect that this combination of elements is new. That is, Mr. Armstrong is using these pre-existing pieces in a new way to achieve a new result. Provided that the “kit” is found to be new, then the patentability of the Strong Arm technology would depend on whether or not it “would have been obvious” to a “person of ordinary skill in the art.” That question will turn on the differences between the Strong Arm technology and the prior art in this field of endeavor.
The cannabis plant is not patentable because it has been in the public domain for centuries.
Changes in cannabis culture are creating incredible opportunities for new cannabis technology. Cannabis and cannabis derived products are overwhelmingly popular in the worldwide market. This popularity is especially noteworthy because the plant and its derivatives are still illegal in the United States. But the war on cannabis 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 cannabis technology industry. Events like the Cannabis Business Summit hope to capture some of these opportunities. 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.
Setting aside the political issues associated with cannabis, the changing climate is creating incredible business opportunities. According to CNBC, the legal cannabis 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 cannabis food and beverage industry and cannabis 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 cannabis, there are a variety of opportunities for inventing new technology.
New Chemical Compositions Derived from Cannabis.
Although the cannabis plant has been known for thousands of years, making new compositions from that plant would give rise to patentable inventions.
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 cannabis are potentially patentable. Similarly, new combinations of known molecules can be patented. Regardless of political attention, the patent office will treat cannabis 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 cannabis compositions can be patented.
New Cannabis Edibles are Patentable.
According to CNBC, the legalization of medical cannabis in several states has paved the way for a budding edible medical cannabis industry. Small businesses in states such as Colorado and California are making cannabis derived treats such as candy, cookies or soda.
New Edibles Derived from Cannabis are Patentable
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 cannabis 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 cannabis compositions per se comes the opportunity for patenting methods of making those new 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 cannabis or cannabis compositions are patentable
The Pax by Ploom illustrates one example of technology growing up around cannabis development
New devices for using or administering cannabis are patentable. Smoking cannabis 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 cannabis 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 Pax by Ploom or 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 cannabis
U.S. patent law recognizes “methods” as a separate category patentable subject matter. In addition to patenting new “devices” for administering cannabis, the inventor could pursue patent claims directed to the methods of administering cannabis by using those devices.
Changing Culture Suggests Increasing Opportunities for Patenting Cannabis
In recent years, the public opinion surrounding cannabis 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 cannabis 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 cannabis technology field offers especially exciting opportunities for inventing and patenting new technology.
Some firms accept “sweat equity” in exchange for patent services
Should patent professionals accept equity (i.e., ownership, shares, or stock) in exchange for patent services? Should startup companies offer patent professionals equity in lieu of cash payment for those services? These sorts of “sweat equity” deals are somewhat common in many parts of the business world. But, the legal community has been luke warm to the idea.
Sweat equity is a party’s contribution to a project in the form of effort — as opposed to financial equity, which is a contribution in the form of capital. More recently sweat equity has been used to describe a party’s contribution to a project in the form of effort — as opposed to financial equity, which is a contribution in the form of capital.
In my opinion, patent professionals often walk into unique opportunities for getting in on the ground floor of newly developing technology companies. However, investing in startup companies is often incredibly risky, so anyone entering such an agreement should be comfortable with the risk.
Patent professionals often find themselves in a unique situation when forming relationships with startup companies. On the one hand, a startup company should file patent applications describing and claiming their technology before speaking to investors. On the other hand, patent work is often very expensive, especially before the startup company gets funding. It’s a catch 22: you need the money to do the patent work; but you can’t go chasing the money without first completing the patent work.
Waiting until after funding to file patent applications puts the entire enterprise at risk. For a startup company, the patents are often the companies most valuable asset. Speaking with investors before protecting that asset is very risky. For example, the “investor” could steal or leak the technology to competitors with better resources.
One way to solve the above problem is to exchange owner’s equity for the needed patent services. A few people have explored this area. I’ve tried to summarize my findings below.
Equity for Legal Services
This idea of paying for legal services with equity is not new. In particular, Christina Farr wrote about startups exchanging equity for legal services. In her article, she points to Equity LLP, which exchanges legal services for equity. In their words, “Cost. It’s free. All the legal work to launch your company in 3 months, plus a year of maintenance and advice. We are even working on securing a modest investment for every participant. We ask for a modest equity stake, typically 2% of founder equity.”
Gil Silberman, Founding Partner of Equity LLP commented that exchanging equity for patent services happens “[n]ot too often in my observation of Silicon Valley work, but it’s not unheard of either. It might make some sense for a blue chip seed funded startup where there is a real possibility of the equity being worth something in a few years whether or not the patent itself ever issues or is strong. It’s much less frequent with independent solo inventors, where the majority of inventions have no commercial value, the majority of patents are not economically viable, and there are several more steps to take before their idea could be commercialized.”
Patent Services on a Contingency Basis
Here is another discussion about why attorneys should think twice before agreeing to accept a share in the project in lieu of traditional cash fees. This article takes the perspective of the patent professional and outlines many of the risks involved. In short, taking equity in a startup company is a high-risk venture. The patent professional should consider it akin to spending cash to acquire shares of a high-risk company.
Exchanging Equity for Services is Common in the Tech Accelerator Space.
Recently there have been an increasing number of technology accelerators. For example, Y Combinator and TechStars are considered to be among the best accelerators. Most accelerators provide a stipend or small seed investment, mentoring, and workspace and professional services in exchange for an equity stake in the company. Typically the equity investment is around $25,000 and the equity stake is roughly 6 percent, according to Hochberg’s research.
Quirky offers a similar deal–exchanging a wide array of acceleration services for all of the patent rights. If things work out, the inventor can hope to receive some royalties in return.
Written by Andrew Chadeayne, April 03rd, 2014 | 1 Comment »
I had the pleasure of attending last week’s American Chemical Society Meeting in Dallas Texas. At the meeting, I had an expo booth, where people could visit with me and ask anything they wanted about patents. First off, I was impressed with how patent savvy the community has become over the past decade. When I was a PhD student from 2001-06, very few of us thought about patents. Now, it seems like patents are becoming integrated into all levels of chemical research.
Below, I’ve summarized some of the most popular topics that I discussed during my time at the meeting. For several of these questions, I have provided links to places with relevant information. In some cases, I have already posted about these topics. In two cases, I will need to prepare answers (“coming soon”).
This was Chadeayne LLC’s expo booth at the American Chemical Society Meeting in Dallas. We had about 850 visitors.
American Chemical Society’s Patent Questions for Chadeayne LLC
These were the most popular patent topics discussed at Chadeayne LLC’s booth at the American Chemical Society meeting in Dallas:
Working with University Technology Transfer (coming soon)
Protecting Against Idea Theft (coming soon)
These later two topics have a few especially interesting sub-topics, which I will follow up on soon.
For University Tech Transfer, I think the following topic is especially interesting: Ownership of the invention reverting back to the inventor after the University passes on the opportunity for patenting it. In one sense, this give the inventor an opportunity to invest in 100% of the idea. On the other hand, it seems to create an incentive to downplay the importance of the invention when disclosing it to the University.
For Idea Theft, I am intrigued by what would happen when someone steals an idea protected by a provisional patent application. In theory, that thief would be developing the true inventor’s technology for free. (After the true inventor asserts their patent rights, the thief would be left in a situation where any work performed on the invention benefits the true owner). That would be poetic justice!
I will look forward to seeing everyone at the upcoming American Chemical Society Meeting in San Francisco. In the meantime, please don’t hesitate to contact me if you have questions about patenting your chemical inventions.
Costs for preparing a patent application vary depending on the complexity of the invention. Here is one source of cost data: patent cost statistics. Below, I discuss some highlights from the patent cost statistics and also add some other available figures.
Cost of Patent Applications – Recent Numbers
A Seattle company that I work with made of point of asking the cost question of every inventor and every patent attorney willing to comment. The 2013-2014 numbers fall within the range of $5,000 – $6,000 for a provisional and $12,000 – $15,000 for a non-provisional. Since the United States moved over to the First Inventor to File system, most attorneys agree that the quality (and cost) of a provisional applications is approaching that for a non-provisional application.
Personally, I encourage my clients to invest in a good provisional patent application at the onset. That provides the strongest priority claim and also cuts down on the fees for filing a non-provisional application. (If the provisional application is of non-provisional quality, then it takes little work to use it as a non-provisional one year later).
One major Seattle technology firm reported paying a flat per-application fee based on 3 levels of patent complexity: A = $7500, B = $10,000, C = $12,500. Nearly all sophisticated software patents are of B or C complexity. Chemical inventions are mostly C complexity.
Some Ballpark Cost Figures for Filing a Patent
$10,000, on the low end, to file a patent. “But [Ronald J. Riley, president of the Professional Inventors Alliance USA] and other small inventors also knock the present system: High legal bills — inventors can expect to spend $10,000, on the low end, to file a patent; most of that is attorney’s fees.” How much does it cost to file a patent? What is the cost of a patent? (Akweli Parker, “Inventor’s reality,” Philadelphia Inquirer, Philadelphia, Pennsylvania, March 23, 2006)
$10,000 – $15,000 as a range. Attorney fees charged for preparing a patent application. “[M]ost companies spend between $10,000 and $15,000 in attorney fees to prepare the application.” Patent attorney fees. (Dean Turman, patent attorney at MacCord Mason, Greensboro, North Carolina quoted in Michelle Cater Rash, “Restructuring raises patent fees, could hinder startups,”Business Journal Serving the GreaterTriad Area, April 11, 2005)
Complex Inventions Cost More
Complex inventions cost more to prepare than simple applications. More work and more expertise are required to file patent applications on complication technology. For example, one should expect patents covering chemical compounds or processes to involve more work and expertise than inventions to simple machines.
Many large firms break inventions down into tiers of complexity. Extremely simple inventions would fall into the least costly tier, hovering around $6,000. (Extremely simple inventions could include coat hangers, paper clips, earmuffs, etc). Highly complex inventions would fall into the most costly tier, ranging from $15,000 and upwards. Highly complex inventions would include pharmaceutical, medical imagine devices, complicated software, and the like.
One back-of-the-envelope way to determine the cost is to ask the level of education required to work with the technology. Would a machinist or technician understand the invention? Or would understanding the invention require a PhD?
According to Julia Feldmeier of the Washington Post, filing a patent application “can easily run more than $20,000, depending on the complexity of the patent…” See “Any Bright Ideas?; How Local Inventors Try to Capitalize on That ‘Aha!’ Moment,” The Washington Post, March 4, 2007).
Harold Wegner circulated a list of these schools, broken down to the Top Ten within that List that have an evening program. Mr. Wegner’s motivation for the selection was that “more and more successful patent students are welcoming the chance to attend 1L classes “full time”, but then get a full time patent job in their 2L and 3L years while taking law school classes at night.”
These are the best IP Law School that offer an evening program.
My Experience Learning Patent Law at GW’s Evening Program While Working for Finnegan During the Daytime
I attended the George Washington University Law School while working for Finnegan. I think that this was the best way to learn patent law. Working through law school gave me practical experience from 9-5 each day and then academic context from 6-8pm each night. In my opinion, either of these taken alone does not provide the synergy of having them together. By learning this way, I often tried to apply what I was learning in law school to the work that I was doing for clients during the day. I also approached my lecture sessions from the standpoint of trying to extract useful bits that I could apply to my work at the firm.
Another plus to working through law school is that many firms will help pay for school. When I was at Finnegan, my “Student Associate” position came with tuition reimbursement. That’s a big win. However, it becomes taxable income, so law school still is not free once you take that into consideration.
There were a few notable downsides to working while going to law school. First, it was time consuming. Everyone complains about how hard it is to balance law school with work. In my experience, it wasn’t a big deal. I listened to lectures each night instead of watching TV. And, having a “real job” during the day helped keep the law school experience in perspective.
Second, going to evening classes takes four years to get a JD. That’s an extra year of law school. This can be condensed to 3.5 years by attending summer classes. But, either way, you drag out the process. For this reason alone, I knew many students who transferred over to full time. If I could have had it my way, I would have done the full time (3 year) route but also worked full time.