Patents for Startups

Patenting Beer – Claiming Compositions, Apparatus, and Methods of Brewing

Can I patent beer?

Yes, a brewer can patent beer.  Similarly, the inventor could pursue patents for new methods of making beer or new devices for making beer.  Those patents give the inventor the right to exclude others from making or using the invention without permission.  The idea is that the inventor should have the right to own the idea for a limited time in exchange for bringing it into the world.

The rapidly evolving Extreme Brewing community embodies innovation.  Brewers are constantly seeking out new— different — beers.  Accordingly, the industry is constantly inventing new technology.  

Beer can be patented as a composition of matter, giving the brewer ownership of that recipe

Beer can be patented as a composition of matter, giving the brewer ownership of that recipe

Like any other food technology, a new beer can be patented as a “composition of matter.”  The brewer would need to claim it in a patent application, explaining  how it differs from all other beers.  Here, defining the beer as a chemical invention provides numerous opportunities for distinguishing it from the prior art.

How to patent beer – claim it chemically

To receive a patent on beer, the inventor (i.e., the brewer) would benefit from claiming it as a new composition of matter.  The brewer should draft patent claims, defining the beer and showing its inventive features.  The claims should emphasize how the new beer differs chemically from all others that came before it.

For example, the beer could differ on account of using different ingredients.  Or, it could differ on account of selecting particular varieties of amounts of traditional ingredients.  For example, particular types and amounts of hops, herbs, spices, yeasts, or barley give rise to unique chemical properties.  Alternatively, a brewer may add new ingredients, such as cannabis to create new combinations of molecules. Those sorts of innovations would justify a patent on the new composition of matter.  For a brewer who creates something truly innovative, claiming the invention chemically could provide the best way for capturing the value of that contribution.

A chemical invention from start to finish

Each of the components used to brew can be defined chemically.  Then, during the brewing process, these ingredients undergo a variety of chemical transformations. For example, during fermentation, yeast converts carbohydrates into ethanol and carbon dioxide.  Ultimately, the brewer enjoys a finished product, having its own chemical composition.

Often, new foods and beverages are readily distinguished based on their molecular components.  Each of these distinctions provides an opportunity for patenting the invention.  The brewer creates inventive subject matter every time he deviates from traditional recipes or methods.  Recently the TV Show Brew Dogs discussed adding kelp to beer.  Dogfish Head Brewing recently introduced a beer with garlic.  And Ballast Point is currently serving a beer called “Red Velvet,” which is made with beets and chocolate.

Ballast Point is serving a "Red Velvet" Beer made with beets and chocolate

Ballast Point is serving a “Red Velvet” Beer made with beets and chocolate

An inventor of new (different) beer ideas can apply for a patent on those ideas.

Why bother patenting beer?

Many brewers scoff at the idea of filing a patent.  Or they find the idea immoral or untrue to the community.  Practically speaking, filing a patent application (on any technology) only makes sense if the invention is truly new and better.  (Something known or obvious cannot be patented).  If the invention meets those criteria, then filing a patent application would give the inventor the option for preventing competitors from practicing the invention.  The inventor/patent holder would get to decide who gets to use the invention.  For example, a small brewer with a patent could prevent (or demand royalties) if a large commercial entity began copying the invention.

What’s the process for patenting beer?

After drafting claims, the inventor would file them as part of a patent application at the United States Patent and Trademark Office (“USPTO”).  During patent prosecution at the USPTO, the application would be examined by an examiner.  The inventor would have the opportunity to explain why the beer is both new and innovative (i.e., nonobvious).  After convincing the examiner of the newness and nonobviousness of the beer, the examiner would allow the claims.  The inventor would then receive a patent on the new beer composition.

 

Fike’s “Brick” Kickboard is “First Ever” Coreboard

Fike’s “Brick” Coreboard Invention

I recently saw an article on SwimSwam about Fike Swim Product’s new kickboard. The article jogged my ongoing interest about new kickboard technology and how to patent kickboards.

An article on SwimSwam describes the “Brick” kickboard as the world’s first-ever coreboard.  The Brick is a 6 lb weighted kickboard, which allows the user to “turn any kick set into a total body workout that actually changes a swimmer’s body position in the water.”  These benefits are said to be lasting—”even after the kicking is done.”

The Brick was developed by Fike Swim Products.  Unlike other kickboards, the Brick is said to “float just enough to support its own weight, so it sinks when a swimmer places his/her arms on top, forcing the swimmer’s core, upper body, and legs to work to maintain body position on top of the water while kicking.”

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Photo of Brick coreboard that was published on SwimSwam.com

Based on the description above, this sounds like an exciting and patentable new technology.

I say “exciting” because I like the idea of getting a total body workout during kick sets–I usually kick without a board so that I get a better all-around workout.  This board could be a step beyond that!

I say it’s probably patentable because the Brick is described as the “first ever” of it’s kind and those differences appear to provide some benefits beyond anything that’s come before it.  Now they just need to convince an examiner at the patent office that the Brick is “new” and “not obvious.”

Food Patents – Can I patent a food or recipe?

Patenting Foods and Recipes

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.”

Can I patent food?

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 ofteatent 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.

Thinking Small

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.

Food is patentable

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.

Beer Pong Patents by Jeremy Armstrong of Strong Arm Cups

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

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.

Patenting Cannabis Technology

Patenting Cannabis Technology

The cannabis plant is not patentable because it has been in the public domain for centuries.

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.  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.

Changing Cannabis Culture Creates Patent Opportunities

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

New Edibles Derived from Cannabis are Patentable

As we have discussed in some earlier articles, new foods (e.g., candy, cookies, etc.) 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.

Like foods, cannabis beverages (e.g., cannabis beer or cannabis soda) could be patented as compositions of matter.

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

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.  Dr. Gupta publicly changed his position on cannabis use — discussing some unparalleled medical benefits  of the drug along with an overwhelming lack of side-effects.

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.

 

 

 

 

Sweat Equity in Exchange for Patent Services

Exchanging Equity for Patent Services

Some firms accept "sweat equity" in exchange for patent services

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.

Cost of Patent Application Preparation

Cost of Preparing a Patent Application

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).

 

Overview of Patent Process for Inventors

Overview of the Patenting Process

The overview of the patent process will likely depend on who you ask.

The overview of the patent process will likely depend on who you ask.

Can you give me an overview of the patent process?  Inventors and founders often ask me for an overview of what to expect when getting a patent.  That’s a fair question.  And there are a variety of approaches to answering it.  The answer really depends on the person’s perspective. A patent secretary will view the process differently from a patent agent, who will view it differently from a government official, etc..

For example, the United States Patent and Trademark Office (“USPTO”) provides an overview of the “Process for Obtaining a Utility Patent.”  Understandably, the USPTO focusses largely on the procedural aspects of getting a patent.  After all, the USPTO is concerned with how each applicant navigates their system.

I come at the patent process from the inventor’s perspective.  I am most concerned with maximizing value from the patent process.  So my “overview” is a little bit different.  I focus on comparing the invention to the state of the art and using that comparison to draft the most valuable patent claims possible. Below, I have outlined this process.  Notably, it looks quite different from other “overviews” of the patent system.

Inventor Focussed Overview of Getting a Patent

My overview of getting a patent can be distilled into 9 steps, which I’ve outlined below.  Notably, a patent professional would add “client development” and “engagement” before step #1.  (For many patent professionals, getting the client consumes about 30% of all time).  Likewise, a patent litigator or transactional attorney would care only about step #9.  A patent secretary would focus primarily on the paperwork involved in steps 6-8.

  1. Extracting the Invention – Organizing all available information about the invention by interviewing the inventors, usually multiple times.
  2. Studying the Invention – Studying all available information provided by interviewing the inventors and reviewing documents provided by the inventor.
  3. Comparing the Invention to the Prior Art – Independently evaluating the invention from the standpoint of someone skilled in the relevant art; Determining similarities and differences.
  4. Drafting Patent Claims – Defining the invention in a manner that emphasizes its patentable aspects.  This involves applying the analysis in step #3 to synthesize definitions with the greatest likelihood for covering valuable property within the following twenty years.
  5. Drafting Patent Application(s) – Drafting supporting descriptive material.  This material often provides definitions for key terms in the application, along with examples, and background information.
  6. Filing Patent Application(s) – Formatting the application from step #5 to conform with the USPTO’s standards for patent applications.  Then, filing the patent application with the USPTO and paying the required fees.
  7. Arguing for Patentability – After filing a patent application, the application sits “pending” at the patent office for years.  See Stats.  After waiting, a patent examiner examines the claims and (almost always) rejects them as a “first action.”  At that point, the applicant must address the examiner’s reasons for rejecting the claims–usually through some combination of arguing or amending the claims.
  8. Grant of Patent – After agreeing on a set of patentable claims, the Applicant pays the issue fee and the USPTO grants a patent.  The Applicant is then responsible for paying maintenance fees 3.5, 7.5, and 11.5 years following the grant.
  9. Enforce or License Patent – A patent provides the right to exclude others from making, using, or selling the invention that is defined in the claims.  This right to exclude is the source of all value – a monopoly – the ability to prevent competitors from entering the market.  That right may be sold (licensing the patent) or enforced against competitors via a patent infringement lawsuit.  This later route is also called patent litigation.

 

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

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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?