Patents for Startups

Patenting “Academic” Science

Why Academic Scientists Should Use the Patent System

Academic scientists often regard the patent system as beyond their reach.  I recently communicated with a few hundred members of the American Chemical Society, encouraging them to make better use of the patent system.  An overwhelming majority considered the patent system to be something reserved for finished, commercialized technology.  Not true.

Academic scientists should embrace the patent system for a variety of reasons.  The post below outlines a few of them, including benefits to reputation and funding sources.

Patenting Academic Research – Background

After a decade of economic stagnation US Congress passed the Bayh-Dole Act in 1980 as an attempt to tie university-based innovations to the private sector. Among other things, the legislation provides ownership rights for inventions developed with government support may be granted to directly to the inventor or university. The Bayh-Dole act incentivizes academic scientists using federal research grants to bring their products to market.  Response to the act has been impressive; In 1980, 390 patents were awarded to university-based entities, by 2009 the number increased to 3088.

Historically, the vast majority of university-based patent applications were associated with the country’s elite research institutions, but university-based patent activity is becoming increasingly widespread. Bibliometrics ­– the analytics of patent and publications records – provides clear evidence that academic scientists are reaping the rewards of engaging the patent system, and the rewards are numerous.

For Academic Scientists, Patent activity and publication productivity are positively correlated

‘Publish or perish’ is the mantra of the scientific community for a reason: journal submissions are the metric by which academic scientists are measured. Bibliometric studies at both the national and international level indicate that inventor-scientists (academic scientists with one or more patent applications) publish significantly more than their non-patenting colleagues who work in similar fields and who have similar career characteristics.

In addition to increased publication rates, there is a direct relationship between patent-activity and publication-impact factors; inventor-scientists are more frequently cited by their peers, and their work is more frequently accepted in top-tier journals.

Even after controlling for individual heterogeneity, the event of a patent is likely to alter the natural flow of publications produced year-by-year. In this particular point, all available studies agree that the relationship between patent and paper scores is a positive one.”

For Academic Scientists, Patenting Benefits Funding, Networking, Collaboration

Data collected from the curriculum vitae of more than 1200 US academic scientists provide further insight into the benefits of engaging the patent system. Relative to their non-patenting colleagues, inventor-scientists receive more private-sector funding. The contributions are significant; in 2009 industry contributed more than $3.2 billion to academic research and development in the United States.

Ties to industry are also associated with enhanced career mobility. Inventor-scientists spend more of their between academia and industry, typically in consultant or directorship roles. These activities are associated with the development of broad career networks and increased potential for interdisciplinary collaboration.

For Academic Scientists, Patenting Provides One Indicator of Better Science

Of course, many scientists are driven less by external factors like funding and promotion, and more by the intrinsic rewards of problem solving and discovery. At this level, publication and patenting activities present similar intellectual challenges. Great patents and publications arise from the same foundations: creativity, originality and novelty. Many inventors feel they improve the quality and the state-of-the-art character of their fundamental research questions as a result of the insights they obtain from engaging with the patent system.

Given the increasing number of university-based patent applications, it is likely that the number of inventor-scientists will continue to rise.  Arguably, the scientific community will be stronger for it.

Patenting Provides a Potential Revenue Stream for Academic Scientists and Institutions

Another potential upside arising from patents is that the academic community could incur a significant monetary benefit.  By using the patent system, these pioneering, academic scientists could claim their advances.  By claiming their contributions, they can create intellectual property in those contributions.  If commercially applied, that property would create a revenue stream–directly benefiting the inventor-scientists and their academic institutions.

**This post was co-authored with Houston Brown, PhD

References:

1. The Bayh-Dole Act: Selected Issues in Patent Policy and the Commercialization of Technology, CRS Report for  Congress, RL32072, December 2012, Wendy H. Schacht. Available at: www.crs.gov

2. Fabrizio, K. R.; Di Minin, A. Journal of Research Policy, 2008, 37, 914­–931

3. Calderini, M.; Fanzoni, C.; Vezzulli, A. Journal of Reseach Policy, 2007, 36, 303–309

4. Meyer, M. Journal of Research Policy, 2006, 35, 1646­–1662

5. National Science Foundation 2012 Statistics. .pdf available at: http://www.nsf.gov/statistics/seind12/c5/c5h.htm

6. Dietz, J. S.; Bozeman, B. Journal of Research Policy, 2005, 34, 349­–367

7. Carayol, N. Journal of Research Policy, 2003, 32, 887–908

Inventor’s Disclosure Affects Patent Costs and Patent Quality

Importance of Inventor’s Disclosure

The inventors’ disclosure dramatically affects both the quality and cost of the patent application.  Drafting a patent application involves translating technical information into a legal definition.  Translating new technology into a patentable invention relies on the inventor’s disclosure.  The inventor’s disclosure serves to convey information about the new technology to the patent professional.  The patent professional uses the inventor’s disclosure to draft patent claims.

Many systems exist for preparing a disclosure.  For example, many organizations (like universities) have invention disclosure forms.  These forms aim to collect relevant information from the inventor.  These forms can be structured as an “inventor questionnaire” having questions teasing out relevant information about the invention.

Benefits of Preparing a Good Invention Disclosure

Efficiently providing comprehensive, organized, useful information to the patent professional has two key benefits.  First, it dramatically improves the quality of the resulting patent application.  Second, it lowers patent application drafting costs by reducing the amount of attorney time spent collecting and organizing information about the invention.

Regardless of how the disclosure form is structured, the goal remains the same.  The inventor’s disclosure should present relevant information to the patent professional in a useful way.  With this goal in mind, I have listed some information that inventors could organize before contacting a patent professional.  Having this information prepared would make attorney time more productive.

Invention Disclosure: What is the Invention?

What is the invention?  This is the critical question.  Here are some other questions that cut towards defining the invention:

  • What words should an inventor use to describe the invention?
  • How would someone best perform a keyword search for the invention?
  • What alternative searches would also describe the invention?
  • How would you list the components of the invention?
  • How would you describe it in 5 words? 10 words? a paragraph?

Inventors often view the invention as their commercial embodiment.  The patent professional should work with the inventor to find words that accurately describe that commercial embodiment.  The patent professional should also work with the inventor to find words capturing the inventor’s broader contribution to the state of the art.  What are the far-reaching implications of the invention?  By considering the invention’s broader contribution, the patent professional should work to grow the invention.

Invention Disclosure: What is the State of the Art?

When defining an invention, it is useful to understand the prior art.  Understanding the prior art should help the patent professional define the invention more broadly.  Here are some prompts that attempt to unpack the state of the art when the invention was made:

  • What technology area does the invention fit into?  Many inventions fit into a variety of different technology areas.   List them all.  The United States Patent and Trademark Office (“USPTO“) organizes technology into Art Units, Classes, and Subclasses.  These are good examples of technology areas.
  • What was the state of that art when the invention was made?  (“When the invention was made” means when the inventor first conceived of the invention).
  • Without the benefit of your invention, what would someone in your field use as an alternative?  How many alternatives exist?  How would the results differ by using an alternative instead of using the invention?
  • What sort of person would ordinarily invent technology of this kind?  (Describe the skill of someone in this technology area).  What is the level of skill in this art?  Education?
  • What problem existed before the invention?
  • What need existed that made the invention beneficial?

Invention Disclosure: What are the Differences?

Understanding the differences between the invention and the prior art is critical to drafting the patent claims and arguing for patentability.  Here are some prompts for uncovering the differences:

  • What makes the invention different from the state of the art?
  • When the invention was made, how was it different from anything before it?  Here, I find it useful to create a Table of Differences.  That Table should list the most relevant technology existing at the time of invention.  For each reference, the inventor should describe how the invention differs.  These differences are ultimately important to the patentability of the invention when the claim is evaluated for obviousness.  Understanding all of the differences when drafting the claims allows the inventor to submit claims that define the invention by emphasizing its patentable features.

Invention Disclosure: Evidence of Patentability?

During patent prosecution, the patent examiner will most likely question the patentability of the claims.  (This will come in the form of a “rejection.”  The patent professional can often find good arguments to overcome the rejection by considering evidence of patentability.  Below, I have listed seven types of evidence that could help the inventor’s arguments for patentability.  This evidence of patentability should be provided in the inventor’s disclosure:

  1. Skepticism by Experts – When the invention was made, did experts in the field question whether it was workable?
  2. Teaching Away – Before making the invention, did members of the relevant art discourage pursuing the invention?
  3. Longfelt Unmet Need – Prior to making the invention was there a long felt need for it?
  4. Failure by others – Did other people in the art fail to make the invention prior to the inventor’s success?
  5. Copying – Since making the invention, has it been copied by others?
  6. Commercial Success – Was the invention a commercial success?
  7. Licensing – Have others contacted the inventor to license the invention?

Better Technology is Probably Patentable

Better Things are Patentable

In a previous article, we fielded the perpetual question of what can I patent?  Although there are a variety of technical legal tests for patentability, a simple test simply asks whether the inventor made something better.  A better mousetrap is probably patentable.

Patent law allows an inventor to patent “anything under the sun made by man.”  But, the invention must be new and not obvious.  Understanding what makes an invention “new” is relatively straightforward:  An invention is “new” when it differs (in any way) from the existing technology.  However, the inventor only gets one year to file a patent application after disclosing the invention.

The most important hurdle to getting a patent is showing that it was not obvious at the time it was invented.  This area of patent law is probably the most confusing.  The legal test for nonobviousness comes from a 1966 Supreme Court case.  See Graham.  In short that test requires using all available evidence to step inside the inventor’s mind at the moment of invention.  Practically speaking, accurately elucidating a person’s thoughts years after the invention is difficult.

Courts, patent professionals, and legal scholars have always struggled with the obviousness doctrine.  Supreme Court Justice Scalia has called the doctrine “gobbledygook.”  Countless others have expressed difficulty with consistently applying the “test” for obviousness.

Something Better was probably Not Obvious.

Asking whether an invention was better provides a useful back-of-the-envelope test for patentability.  Was the technology better when it was invented?  If it was better, it is probably patentable.  Here’s why:

  • A better technology implies that it is somehow different from the existing technology.  (Only different things can be better.  Otherwise they would be the same).
  • A truly better technology is unlikely to be “obvious.”  If it were obvious, why didn’t someone already do it?  In today’s world of rapid communication and innovation, better technology rarely lies dormant.  If someone invents a better mousetrap or a better website, that improved technology is quickly exploited.

Although the Better Test does not hold any legal significance, it does provide a simple framework for understanding patentability. (For the legal test see Graham).

For an inventor new to the patent system, the Better Test test should avoid contacting a patent attorney prematurely.  Generally speaking, it’s not worthwhile to pursue patenting something not better than the prior art.  Additionally, focussing on the points that makes an invention better will facilitate communication between the inventor and the patent professional.  (I often ask clients to list the most similar technology with a brief explanation of what their invention is different and better).  See Table of Differences.  Focusing on these points of innovation helps to draft strong claims that are allowed by the patent office.

 

Unmet Need Illustrated by Fast Company’s Article on Pikarski

Unmet Need Indicates Patentability

Showing that an invention satisfies an unmet need bolsters an inventor’s case that the invention is patentable.  To be patentable, an invention must be both new and not obvious.  To be “new,” the invention must differ from anything done before.  This test for “new” is fairly simple—any difference makes the invention new.  The test for non-obviousness is less straightforward.  To be “not obvious,” the invention must provide a nontrivial advance beyond the prior art.

Evidence that an invention satisfies an unmet need support the position that the invention is patentable.  Solving an unmet need indicates that an invention provides a significant contribution to a technology space.  Accordingly, showing that the invention fulfilled an unmet indicates that it was not obvious.  Think about it: Existing needs do not linger long in an age where people seek to develop profitable solutions to those problems.  If the solution were obvious, someone would sell it.

Chaim Pikarski Satisfies Unmet Needs

Recently Fast Company Magazine published article about Chaim Pikarski.  In short, Mr. Pikarski and his team scour Amazon.com for evidence of any unmet need.  According to Fast Company, Mr. Pikarski “has an entire team of people who read reviews on Amazon, looking for moments when people say ‘I wish this speaker were rechargeable.'”  This entire team searches for “features people wish a product had” then they design and make the desired version.

Mr. Pikarski’s genius lies in his recognition that commercial sites like Amazon are “actually giant laboratories.”  Within the virtual walls of these laboratories, Mr. Pikarski “figures out what features consumers want, and then produces them.”  His spirt for making new, better products rings true in his exclamation: “Hey, wait a minute, we’re producing all these products—let’s innovate! Let’s design!”

Unfortunately, Mr. Pikarski’s genius does not yet appear to extend to appreciating the patentability of his innovations.

Satisfying and Unmet Need = Inventing Patentable New Stuff

According to Fast Company Magazine, “Pikarski often talks of his products as if they’re hilariously obvious.”  Mr. Pikarski’s genus is exceeded only by his modesty: “There’s nothing innovative about it,” he says.

Nothing innovative about it?  To the contrary, satisfying unmet needs is about as close to the definition of “innovative” as a person can get.  In the months that follow, I hope that I can find Mr. Pikarski and help him make some more money by using the patent system to protect his inventions.  He should claim these inventions so that he can own the products that he creates.

 

Cost of Patenting – Fees for Filing a Patent Application

Cost of filing a patent application?

How much does it cost to file a patent application?  The total cost for filing a patent application depends on (1) the administrative fees and (2) the fees for professional services.  Administrative fees are those fees charged by the patent office.  Fees professional services are those charged for the attorney’s time and expenses in preparing the application.  Most of an applicant’s monetary cost comes from the fees for professional services. See #2, below.

1. Patent Cost – Filing Fees Charged by the United States Patent Office

Filing a provisional patent application costs $150 for a small entity.  Filing a utility patent application can cost as little as $730 for a small entity.

The above fees refer only to the patent office’s administrative fees.  Those administrative fees include the patent office’s filing fee, search fee, and examination fee.  The patent office changes these fees from time to time.  See the patent office’s current fee schedule.

2. Patent Cost – Fees for Professional Services

Most of the costs associated with filing a patent application come from the attorney’s fees for professional services.  Here, most attorneys charge by the number of hours required to perform the work.  Otherwise stated: How many hours of attorney time will it take to produce all of the paperwork required to file a (quality) patent application?  Take into consideration that a standard patent application consists of about 20-30 pages of highly technical and legal language—for example, definitions, scientific formulas, experimental details, etc.  Unless the inventor provides all of this content, it must be created by the attorney.  Drafting 20-30 pages of highly technical content can take lots of time.

I admit, this is a long winded way of saying “it depends.”  The cost for filing a patent application depends on the amount of work required by the attorney in translating the inventor’s disclosure into a legal document.  That amount of work will depend on the quality of the inventor’s disclosure.

The Applicant can Negotiate a Fixed Fee Arrangement

The time and energy associated with preparing a good patent application can vary considerably.  An inventor should always insist on having a candid conversation with the attorney about the fees before beginning work.  Conventionally, attorneys bill by the hour.  But, the applicant can insist on a “fee cap,” “fixed fee,” or “flat fee” arrangement.

As an inventor and quality-oriented patent drafter, I prefer the flat fee system because it encourages attorneys and inventors to engage one another during the drafting process.  I think that facilitating communication between the inventor and the attorney leads to better patent applications.  Preparing a good patent application is a team effort, aimed at converting a new technology into a legal definition.  Making each moment of conversation “billable” would seem to discourage dialog between the inventor and the attorney.

Chadeayne LLC’s Fees

We are willing to work under either fee structure.  Chadeayne LLC’s fees are summarized in our price list.  It should be clear from the above that a client’s specific situation could justify moving one way or another.

Hot Tot on Shark Tank

Hot Tot entrepreneur Meagan Gage invented a new line of children's haircare products

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 need for need for specialized styling options.  Hot Tot is the only professional 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:

Water, Disodium Lauryl Sulfosuccinate, Sodium Lauroamphohydroxypropylsulfonate, Cocamidopropyl Hydroxysultaine, Cocamide MIPA, Cocamidopropyl Betaine, Decyl Glucoside, Aloe Barbadensis (Aloe Vera Gel), Panthenol (Vitamin B-5), Glycerin, Camellia Sinensis (Green Tea) Leaf Extract, Methyl Gluceth-20, Oleth-10, Lactoperoxidase, Glucose Oxidase, Potassium Sorbate, Fragrance.

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.

Getting a Patent – Overview

Getting a patent can be divided into two fundamental parts: the inventor's work BEFORE filing the application; and the inventor's interaction with the patent office during patent prosecution

Getting a patent can be divided into two fundamental parts: the inventor’s work BEFORE filing the application; and the inventor’s interaction with the patent office during patent prosecution

Getting a Patent

A simplified version of getting a patent looks like this:

  1. The inventor creates something new; 
  2. The inventor works with a patent professional to draft claims defining the invention;
  3. Those claims are filed in a patent application;
  4. Years later, an Examiner at the patent office examines those claims;
  5. The inventor’s representative argues that the claims should be allowed to issue into a patent;
  6. The Examiner takes a more skeptical approach, usually rejecting the claims;
  7. (Optional) Sometimes the applicant amends the claims to appease the Examiner;
  8. Eventually the claims are allowed to issue into a patent (or the inventor gives up).

The Two Phases of Getting a Patent: Pre- and Post-filing

Getting a patent can be dived into two phases: Pre-filing; and post-filing.  The pre-filing stage involves preparing the patent application.  The post-filing stage (patent prosecution) is very different.  Rather than defining the invention in a patent application, the inventor receives a patent examiner’s criticisms.  Comparing the patent process to getting a PhD: The patent drafting stage is akin to writing a dissertation; the patent examination phase is akin to defending that dissertation.

The second phase of the getting a patent consists of an Examiner at the patent office examining the patent application.

The second phase of getting a patent consists of an Examiner at the patent office examining the patent application.

Getting a Patent – Patent Prosecution

The inventor’s interaction with the patent office is called “patent prosecution.”  Patent prosecution involves correspondence between the Examiner and the inventor’s representative.  (See Patent Process steps 4-8, above). Patent prosecution can include written, verbal, and in-person exchanges between the Examiner and the inventor.  All of this correspondence focusses on whether the claims are patentable.

Getting a Patent Involves  Creating an Official Record

Notably, all of the correspondence between the inventor and the examiner becomes part of the official record in the application.  This record is often referred to as the “prosecution history” or the “file wrapper.”  That record becomes extremely important during patent enforcement and patent litigation because it memorializes the inventor’s representations about the invention.

Changing the World – Steve Jobs the Inventor

Steve jobs firmly believed in the importance of changing the world, which serves as a good model for inventorship

Steve jobs firmly believed in the importance of changing the world, which serves as a good model for inventorship.

Inventing means Changing the World

In order to patent something, it must be new.  An invention is “new” when it is different from the prior art.  To be patentable, an invention must be different from everything else before it.  In this sense, inventing means changing the world by adding something never seen before to human existence.  The patent system rewards this notion of invention. It rewards changing the world by creating something different and adding it to the world.

Steve Jobs Describes Changing the World

Steve Jobs, the founder of Apple computer excelled in many areas.  One thing that set Mr. Jobs apart was his inventive spirit.  Below is a video of Steve Jobs describing some insights that he found important to his success.  These insights illustrate attributes of inventors.  In particular the video shows how Mr. Jobs approached the world by changing it, rather than simply watching it go by. He sought to make the world different and better.  In his words,

“Life can be much broader, once you discover one simple fact, and that is that everything around you that you call life was made up by people that were no smarter than you. . . . you can influence it, you can build your own things that other people can use….”

The video below was captured in 1995 by the Santa Clara Valley Historical Association.  At the time, Mr. Jobs was working on his second company, NeXT computer.  (He had been “fired” from Apple and not yet asked to return).  Mr. Jobs emphasis on change, which was later echoed in Apple’s “think different” campaign serves as a good model for inventorship.  True invention means changing the world by making something different.

In the video, Mr. Jobs contrasts the inventor (focused on changing and improving the world) with someone not subscribing to the inventor’s vision.  This is Jobs’s notion of an ordinary person’s view of the world:

“When you grow up you, tend to get told that the world is the way it is and your life is just to live your life inside the world, try not to bash into the walls too much, try to have a nice family, have fun, save a little money. That’s a very limited life.

By contrast, Mr. Jobs describes the inventor’s approach as follows:

That’s maybe the most important thing. It’s to shake off this erroneous notion that life is there and you’re just gonna live in it, versus embrace it, change it, improve it, make your mark upon it… Once you learn it, you’ll want to change life and make it better…you’ll never be the same again.”

Changing the State of the Art – Making Technology Different – Inventing

Recently we noted that many inventors ask this question: What can I patent?  To answer that question, we posted an article explaining that an inventor can patent something that is truly new (i.e., different) from the existing technology.  The above video of Steve Jobs should serve to illustrate this mentality of changing the state of the art for the better by developing new, different things.

What can I patent? Different & Better Things

An inventor can patent virtually any "new" idea they conceive.

An inventor can patent virtually any “new” idea they conceive.

 

What can I patent?

What can I patent? Many inventors ask this question.  The short answer is that an inventor can patent almost anything that is both new (i.e., different) and not obvious.  Often nonobviousness can be viewed as showing that the invention’s differences make it better.

In answering “what can I patent,” focus on the differences.

Many of the questions of patentability focus on the type of invention.  Entrepreneurs want to know whether certain classes of things are generally patentable.  Can I patent clothing? Can I patent a plant?  Can I patent an iPhone ap? Can I patent beer? Can I patent a computer program?  Can I patent a food?  In all of these cases the answer is maybe.  Rather than focusing on the type of invention, the inventor would be better served to focus on how it is different.  Whatever the invention is, the inventor should ask these two questions: (1) Is the invention new?  (2) Is the invention better than what already exists?  Here, making a table of differences can help to organize the inventive aspects.  (Also, that table of difference provides a useful springboard for conversations with your patent professional).

Focusing on what makes the invention truly innovative helps bring the patentable aspects to the forefront.  An inventor who can clearly describe what makes the invention different (and the benefits of those differences) probably has something worth defining in a set of patent claims.

An inventor can patent new, better things.

Asking whether a class of invention is patentable is the wrong question to ask.  Rather, ask whether the invention is truly something new.  Something better than all existing technology?

Asking whether a class of invention is patentable is the wrong question to ask. Rather, ask whether the invention is truly something new. Something better than all existing technology?

Taking the examples above, it becomes clear that the class of thing to be patented does not matter nearly as much as whether that thing is new and better.

In the case of beer – an inventor can patent a beer that is somehow different from all beers that existed before it.  Maybe it includes an ingredient (caffeine, salt, taco juice, etc.) that has never been added to beer before.  Such a new addition would make the resulting beer different and patentable.  In a previous article on patenting beer, we noted that craft brewers are constantly experimenting with novel beer ingredients, which makes them a potential source of patentable beer technology.  Who knows, maybe tiger hair will be the secret ingredient to a phenomenal India Pale Ale.  In that case, the first inventor to patent beer with tiger hair would corner the market on those products.

In the case of a computer program – an inventor can patent a computer program that is different from programs that came before it.  Here, it would be helpful to think about how the program works—what it does—in order to determine whether it is different in an non-obvious way.  Does the computer program perform some wildly new type of function the produces a never-before-seen result?  If so, probably patentable.  By contrast, if the program is virtually identical to something that’s been available, chances are it is not the sort of invention that the patent system was designed to incentivize.

Answering “can I patent a food” would be much like the beer example above.  The inventor would need to distinguish the food from all other foods before it.  It would need to be a truly “new” invention.  If that invention satisfies that criteria, then the food could be patented.  Here, it would probably help the inventor’s case to define the food as a composition of matter.

Bottom Line: True Inventions are Generally Patentable

The patent system rewards legitimate steps forward — surpassing the existing technology.  Given this requirement, just about “anything under the sun made by man” can be patented.  Determining how to claim it and how to craft a patent application is the patent professional’s job.  When approaching a patent agent to draft a patent application, begin by pointing out the advances beyond the prior art.  (E.g., “My new sports drink includes an ingredient never used before, which hydrates people faster?”). Asking whether a particular class of things can be patented could likely result in discussing generalities—patent law philosophy.  Most inventors do not hire a patent attorney to discuss patent law philosophy.  Your case for getting a patent would best be served by discussing the specific aspects of why your invention is different and better.

E3 Organics Inc.’s Organic Chico Wash

Chico Wash provides an all-natural way to wash food -- without chlorine

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 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.

Patented

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.