Archive for August 2013

Patenting Beer Apparatus

Patenting Beer Apparatus

Randall the Enamel Animal by Dogfish Head illustrates one example of beer apparatus. Improvements on the original Randall created additional new beer apparatus.

We recently posted articles about opportunities for patenting new beer varieties and new methods of making beer.  A brewer could also patent a new beer apparatus.  In the rapidly evolving art of craft brewing, artisans are constantly seeking out new ways to make and use beer.  Sometimes, these pursuits lead to inventing new devices, i.e., beer apparatus.
For example, the real time hopping technique (see patenting methods of making beer) gave rise to a new beer apparatus, the Organoleptic Hops Transducer, more affectionately called “Randall the Enamel Animal.”  This new device is considered to be the world’s first commercial hops bong.  It is a cylinder stuffed with fresh hop leaves.  Using the device infuses hops into the beer as the beer is being poured.  According to Sam Calagione (owner of the Dogfish Brewery), “Randall is basically a glorified pool filter.”  Nevertheless, at the time it was invented, Randall was a revolutionary new piece of beer apparatus.  New machines, like Randall, are patentable.  Likewise, improvement to the original concept may give rise to patentable subject matter.

Randall the Enamel Animal Illustrates an Innovative Beer Apparatus

The Randall device is a sophisticated filter system that allows the user to run draft beer through a chamber filled with solid matter, for example hops, herbs, or fruit.  The beer acts as a solvent for some of the natural flavor molecules, extracting the flavor from whatever solid matter the user adds to the chamber.

Dogfish Head’s Randall Device Illustrates a Patentable Device for Making Beer

Dogfish Head developed the first Randall in 2002 as a secret weapon for competing in The Lupulin Slam beer festival.  Randall’s debut was a huge success.  Immediately after disclosing the invention, fellow beer geeks and brewers asked the Dogfish brewers to build Randalls for them – so they did.  They began selling their beer apparatus invention.
One persistent problem with the original Randall device was it’s tendency to create foam as the beer was poured.  To solve this problem, subsequent versions improved on the design.  According to Mr. Calagione, “we spent many, many hours of time and effort to come up with newer and improved versions of Randall.”

As a result of their diligence, Dogfish arrived at a Randall 3.0 design.  Randal 3.0 makes several improvements to existing designs.  In particular, it addresses the excessive foaming problems encountered by earlier devices.  Randall 3.0 was also designed to be more user-friendly.  According to their webpage, here’s how it works:

  • Beer enters the infusing chamber from the bottom, maximizing beer-hop contact and forcing foamy beer to exit at the top.
  • Automatic chamber vents eliminate vapor-locking and maximize beer-hops contact.
  • “Defoaming” chamber provides both space and time for foamy beer to settle.
  • Adjustable faucet balances between different beer types or short-draw/long-draw draft systems.
  • Ice chamber keeps beer cold between pours.
  • Draft dispensing components eliminate those unexpected beer showers.

Opportunities for Patenting Beer Apparatus

The above description of Randall shows how Dogfish Head’s ingenuity pushed the craft brewing industry forward.  Version 1 of the Randall device pioneered a new technique for adding natural flavors to beer during the serving process.  Subsequent versions of the device made improvements on that concept, solving problems with earlier versions.
Each time the inventors made a new and better device, they could have claimed their invention in a patent application.  Based on the information provided by the United States Patent and Trademark Office, the inventors did not pursue patent protection.  By not filing a patent application within one year of disclosing the invention, the inventors appear to have dedicated their Randall line of beer apparatus to the public.  Nevertheless, the conception and evolution of Randall the Enamel Animal illustrates how craft brewers are an incredibly innovative crowd.

Methods of Making Beer – Brewing Techniques

Patenting Methods of Making Beer

Continuous Hopping Illustrates Methods of Making Beer

Continuous Hopping Illustrates Methods of Making Beer

New methods of making beer are patentable.  We recently posted an article about opportunities for patenting new beer varieties as compositions of matter. In addition to claiming the new beer as a composition of matter, the brewer could also patent methods of making beer.  Given the number of variables in beer making (selecting ingredients, selecting quantities, temperature, mixing, timing, yeasts, etc.), the brewing art is open to a wide variety of improvements in techniques.  As discussed below, inventing new brewing methods may also give rise to new devices for making beer.
As a rough guide, a new brewing method could be patentable if it deviates from the accepted methods in the craft.  A new method should subert and influence the tradition of brewing.  A patentable method of brewing beer should involve doing something different during the brewing process that no one else has ever done before.  As Sam Calagione (owner of the Dogfish Brewery) describes it, the technique should “push the envelope” or “stretch the boundaries of the definition of good beer.”
Below, are two examples of inventive methods of making beer: Continuous Hopping and Real Time Hopping.  Both were pioneered by Mr. Calagione, who aims to make “off-centered ales for off-centered people.” His dedication to “not brew beers that maintain the status quo” has led to much innovation in beers, brewing techniques, and brewing apparatus.

Continuous Hopping Invention

Continuous hopping illustrates one recent advance in brewing techniques.  In 2001, Dogfish Head introduced the world it’s “continuously hopping” technique with the release of it’s “90 Minute” IPA.
At the time, continuously hopping a beer was a dramatic deviation from the traditional brewing methods.  Brewers added their hops at the beginning and end of the boil phase of brewing.  Contrary to conventional wisdom, Mr. Calagione invented a brewing process, which continuously added hops to the beer, adding hops continuously throughout the boil.

 Real Time Hopping Invention

Randall the Enamel Animal is a Device invented by Dogfish Head Brewery for “Real Time Hopping,” one of many methods of making beer pioneered by Dogfish Head. Real time hopping provides the benefit of infusing hop character as it is being poured from the tap.

“Real time hopping” represents another recent advance in brewing methods.  According to Sam Calagione, real time hopping is a “method in which you add hop character to the beer at the point that you are actually serving it.”  Real time hopping only works when the beer is being served through a tap.  It requires a special device, called an organoleptic hop transducer.

According to their webpage, “Randall, a true Dogfish Head invention, is an organoleptic hop transducer module. What’s that you say? A double-chamber filter that you connect to a tap of your favorite beer and fill with flavor-enhancing ingredients.”

New Brewing Methods Gives Rise to New Devices

Notably, in each of the above new methods for making beer, the brewer also invented a new piece of brewing apparatus.  That new devices would be considered a separate invention.  For example, the inventor could have pursued patent coverage for both (1) Randall, the Enamel Animal and also (2) methods of infusing hop character into beer.  The inventor would have needed to claim the invention within one year of disclosing it to the public.  According to the USPTO database, Mr. Calagione did not pursue either route.  (He is not listed as an inventor on any US patents or applications).  Accordingly, it appears that Mr. Calagione has generously dedicated his innovations to the good of all brewers.

Do I Need a Patent to Go on Shark Tank?

Do I Need a Patent to Go on Shark Tank?

No.  A contestant on Shark tank does not need a patent.  But, it would be foolish to go on Shark Tank without at least filing a provisional application for your invention.
As we have discussed generally, the investors on ABC’s Shark Tank (“the Sharks”) place a strong emphasis on an inventor’s use of the patent system.  See Shark Tank and Patents.

An inventor should file a provisional patent application before going on Shark Tank

An inventor should file a provisional patent application before going on Shark Tank

An entrepreneur does not need a patent to go on Shark Tank.

ABC’s Shark Tank application process does not explicitly require that an applicant apply for a patent.  The owner of a startup company can apply for a chance to pitch to the Sharks without a patent.  But, an inventor hoping to do well on Shark Tank should give serious thought to using the patent system before going on the show.

An entrepreneur may need a patent to succeed on Shark Tank.

In almost every episode of Shark Tank, the entrepreneur faces the following question from the Sharks: Why do we need you?  Unless the entrepreneur can provide some evidence of a proprietary technology, the unfortunately answer is: the Sharks do not need you.
By contrast, when an inventor or a startup can offer a proprietary technology, the Shark Tank investors pay close attention.  Here are some articles discussing how the Sharks respond to inventors with patented (or patent pending) technology as opposed to inventors who did not file patent applications.  Clearly, we support the position that an inventor should protect the invention so that others cannot steal it.  But, some others, including Entrepreneur Magazine have come out on the other side.

Patenting Chemical Inventions

Most Inventions are Chemical Inventions

With the exception of software, most inventions have a chemical component.  This is true because most inventions are made of some material, or they manipulate some material, change it, or prevent it from changing.  Any time an invention has to do with “stuff,” it probably has a chemical component.  For example, for any new thing, ask what is it made of?

Types of Chemical Patent Claims

Our patent laws lists four categories of patentable inventions: “whoever invents or

"Composition of matter" is one of the four listed categories of patentable subject matter.   The inventor of a new material or chemical would likely pursue claims to the new composition of matter.

“Composition of matter” is one of the four listed categories of patentable subject matter. The inventor of a new material or chemical would likely pursue claims to the new composition of matter.

discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of [title 35 of the United States Code]”  See 35 U.S.C. 101.
The term “composition of matter” provides for chemical inventions.  The inventor of a new chemical or material may claim it as a “composition of matter.”  Any new recipe, including new combinations of known ingredients, could be defined as a new composition of matter.
In a patent application, the word “compound” describes a special class of “composition of matter.”  A compound is a single chemical, defined by structural formula.  An inventor of new atoms or molecules may claim the new chemical entity as a compound.
In addition to claiming compounds and compositions of matter, the inventor of a chemical invention could pursue process claims, defining the methods of making and using the new composition.
New compositions of matter can also be defined as a “product by process.”  In a product by process claim, the invention is defined by how it is made.  The claim covers the resulting composition, no matter how it is made.

Drafting Chemical Patent Claims

Patenting Chemical InventionsCheif Judge Rader of the Federal Circuit is the highest patent judge in the most influential patent court in the world—the Court of Appeals for the Federal Circuit.  In his book, Cases and Materials on Patent Law, Judge Rader writes this about the claims:

The essence of the patent right is the right to exclude others from making, using, selling, or offering to sell the claimed invention.  The claims define the bounds of that right to exclude.  Accordingly, the claims are the most significant part of the entire patent application.

Focussing on the claims is particularly important with chemical inventions.  Chemical patent claims are difficult to draft because they require a comprehensive understanding of both chemistry and patent law.  However, when drafted correctly, chemical patent claims offer a variety of opportunities describing the invention broadly.
One common pitfall would be failing to generalize the chemical component of the invention.  For example, limiting the definition to only the specific composition used in one embodiment of the invention.  To avoid this pitfall, chemical inventors should carefully consider the broader reach of their specific experimental results.  What other molecules (or groups of molecules) would work similarly?

Patent Chemical

Plenty of chemical components in this invention.

When drafting patent claims, the draftsperson should include dependent claims, defining the chemical components at various levels of generality.  This can be easily accomplished by using several chemical formulas, having variable groups.  See Compounds
Defining the chemical component of the invention broadly, increases the reach of the claims.  The claims literally define 1,000,000,000,000,000 times more property.  Practically this coverage protects against design-around products—inventions differing only in subtle chemical differences.

Quirky Patent Deals Transfer Inventor's Ownership of Ideas

Quirky Patent Policy

Quirky LogoWe recently learned about a company called Quirky.  In short, Quirky encourages inventors to disclose their ideas in exchange for a share of the profits arising from the commercial product.
According to Quirky’s mission, “we make invention accessible. We believe the best ideas in the world aren’t actually in the world… they’re locked inside people’s heads. We exist to solve that problem.”
For a startup or individual inventor, Quirky seems attractive for two reasons:

  1. First, an inventor doesn’t need to diligently pursue developing the idea. According to Quirky’s website, “[i]t doesn’t matter if it’s a little doodle, a crazy chemical formula, or a “wouldn’t it be cool if…”, sharing your idea is the first step toward bringing your idea to life.”
  2. Second, the entire experience is designed to be very nurturing—sort of like crowdsourcing product development.  The community helps develop the world’s next great idea.  Everyone who contributes to an idea is rewarded.  But no one really needs to do anything that they don’t want to do.

How it works: Share your idea with Quirky

Quirky actively encourages inventors to join it’s community and share ideas.  An inventor submits an idea to Quirky.  Then, the community decides which ideas should move forward through various stages of development.  For successfully developed commercial products, the royalties are shared with the community.  The end result?  According to Quirky, “the world prospers.”

Quirky paints a picture of communal idea development.

Quirky’s communal vision for crowdsourcing innovation: Raise your hand; Help; Influence; Make it real.

Does Quirky seem to good to be true?

At first glance, Quirky seems like a nurturing environment for inventors—an organization that selflessly fosters innovation. But, there is a catch.  A big catch.  The inventor gives away all rights to the intellectual property.  According to Forbes Magazine: “If you’re a serious inventor you’d have to be desperate to go for a deal like this.
Here is Quirky’s response to this seemingly one-sided deal: “99% of the people in the world don’t have the ability to develop and market a product idea…and those are really the people Quirky is for.  If you are part of the 1% with the ability to manufacture or license a product idea, then Quirky may not be the best option for you.”

You give your idea away to Quirky

Intellectual property is exactly as it sounds.  It is property, just like land, houses, cars, etc.  Accordingly, transferring ownership of intellectual property is akin to transferring title to tangible property.  Ownership changes hands.
In the United States the inventor starts off by owning 100% of his or her invention.  This natural right rewards creating the idea.  Accordingly, the inventor owns 100% of the patent—100% of the property.
Working with Quirky requires transferring 100% of this ownership to Quirky Inc.  In exchange, the inventor receives access to the community, which provides help developing the idea.  The inventor also receives a small percentage of future product revenue.  Returning to the land analogy (above), cutting a deal with Quirky is akin to giving your home away in exchange for help renovating it and a percentage of the future rental income.

Unlike this image, Quirky does not share ownership with the inventor - Quirky owns all of the invention

Unlike this image, Quirky does not share ownership with the inventor – they take all of the invention

Quirky owns your idea

According to Quirky’s intellectual property policy, “by submitting your idea to Quirky, you grant a license in all IP in the submission to Quirky…. you assign ownership in all IP in the submission to Quirky.”  Just to be clear, “In all cases the listed inventors assign ownership of all patent rights to Quirky.
Some critics have asked, “Why does Quirky need to own all IP in idea submissions accepted for further development? Is this negotiable?”  Quirky responds by repeating that it will take all of the intellectual property: “In order to successfully develop and commercialize a product, Quirky must devote significant resources and accept exposure to a multitude of legal risks. Quirky cannot sustain this level of investment and risk taking without having the ability to control the exploitation of IP embodied in its products.”
Not true.  There are virtually limitless ways to exercise control over assets without transferring ownership of the property.  For example, a contract.  For illustration, the managing partner of a multi-member company controls the company but probably does not own all of it.

Quirky reward the inventor with a piece of a piece of the pie

By giving all ownership of the invention away, what does the inventor stand to gain?

Quirky allocates the royalties that an inventor receives based on it's "influence engine."

Quirky allocates the royalties that an inventor receives based on it’s “influence engine.”

This question is also answered on Quirky’s webpage: “In return for ownership of IP in a commercialized product, Quirky pays the contributing user a perpetual royalty commensurate with the degree of contribution.” “We calculate royalties using our influence engine.”  This “influence engine” determines which users receive a portion of the royalties when Quirky shares net sales income with the community.  That income is shared at two rates:
• 30% of income from sales directly to consumers through the shop.
• 10% of income from wholesales to retailers.
Accordingly, an inventor gives Quirky 100% ownership of the invention.  Then, Quirky pays the inventor some share of 10-30% of the income, depending on the inventor’s “degree of contribution” as determined by the “influence engine.”

An Alternative to Giving Away Your Invention

Instead of giving all of an invention to Quirky, and Inventor could sell part of it

Instead of giving all of an invention to Quirky, and Inventor could sell part of it

In the United States, inventors are entitled to own 100% of their inventions.  The US government comes up with 100% ownership without an “influence engine” by recognizing that the invention would not exist but for the genius of the inventor.  An inventor can protect this 100% ownership of the invention by drafting a patent application and filing it with the United States Patent and Trademark Office.
After filing a patent application, the inventor can search for investors to help cover the costs of developing the invention.  Depending on the size of the investment, the inventor may have to sell some of the company.  These negotiations provide all of the material for ABC’s hit television show Shark Tank.  (Notably, investors will not entertain conversations with inventors who give away all of the rights to their invention).

Formulation Patents—New Formulation of Known Compound

Making a new formulation of a known compound creates patentable subject; Although one ingredient in the formulation was known, the formulation would be considered new.New Formulation of Existing Compound Patentable

Often, new chemical compositions are made from known chemical compounds.   For example, a known compound may be reformulated with other substances to create a new composition of matter.  Provided that the resulting composition is both new and not obvious, it can be patented.
Making a new formulation by reformulating a old drug product occurs frequently in the pharmaceutical industry.  For example, the drug amphetamine has been known since 1887.  However, since that time, that single compound has been marketed and sold as part of many different drug formations, including the following: Benzedrine; Psychedrine; Adderall; Dexedrine; Dextroamphet; Dextrostat; and ProCentra.  Many of these products received patent protection.  In each case, amphetamine (a known drug) was mixed with other substances to create a new amphetamine formulation.

A New Formulation is a New Composition of Matter

Reformulating an old drug into a new formulation creates a new composition of matter, provided that the new formulation is different from any previously disclosed mixture of substances.  A new composition of matter can be patented.  That patent would cover the new formulation but neither (a) previously existing formulations nor (b) the original drug.
The idea of patenting a new formulation of an existing compound can be illustrated through the evolution of amphetamine formulations.

The "compound" amphetamine was first synthesized in 1887.  Since then it has been reformulated into a number of different chemical "compositions"

The “compound” amphetamine was first synthesized in 1887. Since then it has been reformulated into a number of different chemical “compositions”

  • In 1887 the Romanian chemist Lazăr Edeleanu first synthesized the molecule amphetamine.  At that time this molecule was new.  Mr. Edeleanu could have patented the compound amphetamine.  He would have been entitled to exclude others from making, using, or selling any formulations of amphetamine.  This should make sense because he was the first to create the molecule.
  • After Mr. Edeleanu first made amphetamine, subsequent inventors made amphetamine pills.   Those pills included amphetamine, mixed with other substances.  The compound (amphetamine) was the same; but the formulation (the mixture) was different.  From the standpoint of patent law, each different mixture would be considered a new composition.
    Although the "compound" (i.e., single molecule) amphetamine has been known since 1887, many new "formulations" have been made since that time.

    Although the “compound” (i.e., single molecule) amphetamine has been known since 1887, many new “formulations” have been made since that time.

  • Nearly 100 years later, amphetamine became extremely popular as a treatment for Attention Deficit Hyperactivity Disorder.  Drug companies rushed to mix amphetamine into new formulations having new properties.  For example, the drug Adderall provides a mixture of different amphetamine salts, which give the formulation different properties.
  • Several new formulations (same compound, amphetamine) have since been patented.

Mixing the same old active ingredient into a new mixture creates a patentable new formulation.


Patenting a Kickboard

Did Speedo Patent it’s New Kick Board?

New kickboard with superior buoyancy?

New kickboard with superior buoyancy?

We recently published an article on patenting swimming gear.  Swimming gear can range from pool equipment (like lane lines, starting blocks, etc.) to training devices (like kickboards, hand paddles, and goggles).  Just like other technology, swimming gear can be patented.  The only restriction is that it must be new and not simply an “obvious” variation on existing swimming gear.  Today, we saw a post from Speedo on Facebook, advertising a “new” kickboard – the Speedo Elite Kickboard.
Here is a video on YouTube, featuring Dan Bullock, discussing the Speedo Elite Kickboard:

As noted in the video, the Speedo Elite Kickboard was “engineered” to isolate the upper body.  It was also “designed” to aid development of upper body technique.
Given that Speedo seems to have invested significant research dollars in designing and engineering a new kickboard, we were curious as to what advances Speedo made in kickboard technology.
Speedo's new elite kickboard goes "a step beyond" the prior art kickboards

Speedo’s new elite kickboard goes “a step beyond” the prior art kickboards

According to Amazon’s review “this particular kickboard had been engineered for optimum buoyancy.”  Noting that “[t]he aim of all kickboards is to improve leg strength and technique,” Amazon distinguished the Speedo Elite kickboard on account of its “ergonomic design,” which ensures the perfect position in the water.  The shape and design also apparently improve comfort by supporting the users arms during use.
Given the above described advantages, it seems curious that Speedo did not patent this kickboard.  Given that the “Elite Kickboard provides superb buoyancy in the water, allowing every swimmer to focus more easily on improving their technique,” one would imagine that the product could be distinguished based on it’s density and potentially the material used to manufacture it.

New, Different Things Can be Patented

Given how Speedo describes the Elite as a “new” design, having superb properties, it seems that the technology would have been patentable at the time it was invented.  In order for Speedo to have protected its invention, the company would have needed to draft a patent application having claims that emphasized the unique features of the invention.  Here, the shape and buoyancy appear to be points of distinction.  Good claim drafting would emphasize those features as a means for distinguishing the new technology from the prior art.

One Year Time Limit for Patenting

Unfortunately, our further research show that Speedo’s “new” kickboard really isn’t that new.  Speedo published an article in their newsroom with a picture of the Elite in February of 2011. In the United States, an inventor has one year to file a patent application after disclosing it to others.  Here, that one year window has closed.  Hopefully Speedo filed a patent application within one year after disclosing the invention.  However, the packaging does not provide any clues as to the patent status or application number(s).
In contrast to Speedo, the Kiefer Company have demonstrated how to effectively protect its kickboard inventions by filing a patent application.  Here is an article discussing Kiefer’s Core Kickboard.

Patenting Flavors and Taste Profiles

Are Flavors and Tastes Patentable?

Thousands of patents have been issued to protect various aspects of food and food products.  Patents also protect methods of manufacturing food.  Several weeks ago, our firm posted a short article about patenting food.  We noted that foods could be patented as “compositions of matter.”  Since publishing that article, we have received some questions about whether products like Coca-Cola are protected with patents.  We’ve also been asked about whether it is possible to patent flavors and tastes.  Below, we provide some brief remarks.

Coca-Cola Uses Trade Secrets to Protect its Formula

Coke keeps it's recipe a trade secret

Coke keeps it’s recipe a trade secret

Coca-Cola protects its Classic beverage formula by keeping it a trade secret.  As such, Coca-Cola illustrates an alternative to patent protection—trade secret.  Coca-Cola purposefully avoids disclosing its formula, relying on the assumption that no one can copy it without being given the secret recipe.  Visitors to the Coca-Cola factory in Atlanta, Georgia are shown a massive security vault that supposedly holds the secret recipe for Coca-Cola.
Keeping their recipe a trade secret only protects the recipe to the extent that other companies cannot figure it out.  The weakness to this approach is that trade secrets are only as good as competitor’s analytical techniques are bad.  And, analytical techniques are improving every day.

Patenting Flavors

Patents provide a different sort of protection.  Rather than relying on secrecy, patents reward inventors for disclosing the invention.  In exchange for disclosing the invention in a patent application, the government rewards the inventor with the exclusive right to make, use, or sell the invention for a period of time.  Two key differences are as follows:

  • a patent gives the inventor the right to exclude others from using the idea where as the trade secret provides no such right; and
  • a patent only lasts for a limited time, whereas a trade secret can exist indefinitely.

Accordingly, a person inventing a new flavor or taste profile must choose between patenting the invention versus keeping it as a trade secret.  That decision would probably turn on how difficult the flavor is to figure out without knowing the secret.  As pointed out above, analytical techniques have improved dramatically since the days Coca-Cola was invented.  With the benefit of today’s technology, it would be possible to identify minuscule amounts of a secret ingredient by using combinations of chromatography and mass spectrometry.  Although a copyist may not hit on the exact same recipe, they could get close enough to bring the battle to the marketplace.  Patents provide a way to keep your competitors far far away.

shutterstock_64553935Patenting Flavors Provides Advantages

For an inventor who has invented a new flavor, the patent system may provide significant advantages.  For example, the inventor should be able to describe how the new flavor differs from others that have come before it.  Here, it is particularly advantageous to look at the differences in molecular composition because those differences offer incredible opportunities for drawing quantifiable distinctions from the prior art.  With those differences in mind, the inventor could draft patent claims, which define the inventor’s broader contribution.  (Not just the exact commercial product but also knock off products).
Drafting claims that leverage underlying differences in molecular composition could prevent copyists from making products that are similar, thereby offering a broader ranger of protection.  This illustrates the greatest advantages of patents versus trade secrets: Patenting the new flavor invention provides the inventor with the right to exclude competitors; whereas keeping the invention a secret relies on the inventor’s hoping that no one figures out the secret sauce.