Archive for September 2013

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.

Patenting a New Formulation

Claim a New Formulation as a Composition of Matter

A new formulation of an existing drug can be patented as a composition of  matter.  The new formulation must somehow differ from all existing formulations.  Often, the new formulation will combine a known molecule with a combination of other ingredients to achieve more desirable properties.  For example, a variety of drugs have been reformulated to provide “extra strength” and “extended release” versions.
One specific example of a reformulated drug is Adderall, which provides mixtures of different amphetamine salts.  The new formulation provides amphetamine to the body at a more desirable rate.  Although amphetamine is well over 100 years old, chemists continue to develop new ideas for providing this old drug in a new way.  Making a new formulation is a cost-effective way to create a new drug product.  Many pharmaceutical companies share the opinion that the best way to make a new drug is to start with an old drug.

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

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

Distinguish New Formulation Chemically

An inventor should claim a new formulation as a composition of matter any time the invention differs from the prior art based on chemical composition.  If the new formulation can be distinguished based on using new ingredients or different combinations of known ingredients, then it is likely that the invention could be defined as a composition of matter.  Here, it is essential to understand the underlying chemical features of the invention.  Making chemical distinctions requires developing a comprehensive understanding of the invention at the molecular level.

Patenting Chemical Inventions with Compound Claims

Compound Claims for New Molecules

A compound claim is the strongest way to claim a chemical invention.  It defines the inventor’s new molecule by structural formula.  A claim to a compound covers the compound in any context— including all uses of the compound.  Below is an example of a compound claim, claiming vitamin C by it’s structural formula.  (Notably this claim is not patentable because vitamin C is not a new molecule).

Example Claim to Specific Molecule — Vitamin C

A compound having the following structural formula:
patenting vitamin c.
When inventors create new molecules, they can claim those molecules per se.  This extensive claim scope rewards the inventors’ exceptional contribution.  By creating a new molecule, the inventor made possible all uses of the molecule.  Only the person who creates the molecule can claim it as a compound.  After that, the molecule itself is no longer new.  And only new things can be patented.

Compound Claims Cover All Uses of the Molecule

Claiming a chemical compound by its structural formula covers all uses of that compound

Claiming a chemical compound by its structural formula covers all uses of that compound.

A compound claim covers all uses of the molecule.  In the example above (vitamin C), the claim would cover making, using, or selling the molecule (vitamin C) in any way.  For example, the claim would cover selling
any form of vitamin C, any mixture having vitamin C, any process for making vitamin C, and any method of using vitamin C.
Compound claims are valuable because they cover a molecule in any context.  They are extremely broad claims.  By contrast, method of use claims would only cover one use of the molecule; Composition claims would be limited to a particular mixture or formulation having the molecule.

Generalizing Compounds  with Variable Groups

Notably, inventors can claim far more compounds than they actually make.  An inventor can use variable groups to broaden the scope of the invention.  For historical reasons, the patent community refers to variable groups as “Markush groups.”
In place of a specific atom, an inventor may use a variable group to explain that the atom could be chosen from a list of options.  Using variable groups broadens the claim scope substantially.  For example, instead of claiming only vitamin C (above), that claim could be drafted to include all variants having “R” groups on the alcohol positions (below).

Example Claim to Genus of Molecules Based on Vitamin C

A compound have the following structural formula:
patenting vitamin c sub.
wherein each R group is independently is chosen from an alkyl group, a substituted alkyl group, hydrogen, an ester, or a carboxylic acid.
By using variable groups, the scope of compounds claimed expands exponentially.  Rather than limiting these positions to hydrogen atoms, each position may be selected from a list of possibilities.   The terms “alkyl,” “ester,” etc. could also be defined broadly, covering a variety of different carbon groups.  For example saturated and unsaturated alkyl chains, cyclic alkyls, aromatic groups, etc.

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.


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.

Zenion Industries Patenting Device for Growing Marijuana

The i-Grow Device sold by i-Green has been heralded by marijuana growers as an huge advance in marijuana technology

The i-Grow Device sold by i-Green has been heralded by marijuana growers as an huge advance in marijuana technology

Zenion Industries Air Ionizing Apparatus

We recently posted about how the changing marijuana culture is creating new opportunities for patenting marijuana technology.  One example of this phenomenon can be seen through Zenion Industries.  Zenion Industries has invented and filed international patent applications on its devices for improving crop health and yield.  The device has received a rapid and enthusiastic reception amidst marijuana growers—an industry where the resulting crop demands a relatively high price per gram.  According to Zenion Industries, marijuana growers in Norther California have alerted them to a tremendous market opportunity for using the device to increase cannabis yields: “this may have not been your intended market but you really need to make this available to all legal cannabis growers.”
We found the development of the i-Grow particularly interesting because Zenion Industries intelligently decided to claim the invention in PCT Application (No. PCT/US2012/043325) by Jimmy L. Lee.  According to Zenion, the company has filed for patent protection in 161 countries.  Good thinking.

Zenion’s Licensee, i-Green LLC, Sells the i-Grow Device

Zenion is already benefiting from licensing it’s technology.  Zenion licenses it’s air ionizing apparatus to i-Green LLC.  Last May, 2013, iGreen exhibited the i-Grow device at the National Hardware Show in Las Vegas, NV.  The show was attended by almost 100,000 suppliers and dealers from the US and abroad.  According to Rohnert Park, i-Green LLC’s booth was “buzzing with interest from crowds of vendors.”  People at the show were attracted to the idea that a solar-powered product  could benefit ground plants.  The i-Grow helps plants grow healthier and produce more.  According to Zenion’s data, the increases in crop yield are dramatic:

The i-Grow system, leveraging Zenions technology and sold by i-Green LLC boosts crop yield.

The i-Grow system, leveraging Zenions technology and sold by i-Green LLC boosts crop yield.

Zenion Industries Invention

In Zenion’s patent application, they describe their technology as follows:
“An air ionizing apparatus for enhancing plant growth that includes a housing, solar cells mounted atop the housing, a voltage regulator/conditioner circuit coupled to the solar cells, an oscillator/modulator circuit coupled to the voltage regulator/conditioner circuit, a high voltage converter/multiplier circuit coupled to the oscillator/modulator circuit, and an ion emitter element coupled to the high/voltage converter/multiplier circuit and disposed at the bottom of the housing. Solar energy transferred to the solar cells and converted into current is converted to high voltage through the voltage/regulator, oscillator/modulator, and high voltage converter/multiplier circuits. The high voltage is then applied to the ion emitter element to produce ions from ambient air in close proximity to a plant being treated.”  See PCT Application.

Zenion Industries Claims

Based on the above description of the invention, Zenion has claimed 19 inventions, all directed to the air ionizing technology.  Claim 1 illustrates the broadest device (aka “machine” or “apparatus”) claim.  Zenion has also claimed some new methods of using the device.  Claim 12 illustrates the broadest method claim.

Zenion’s Claim 1

Zenion’s claim 1 recites as follows (bullet points added for reading ease):
1. An air ionizing apparatus for enhancing plant growth, comprising:
a housing;

  • an electrical power source;
  • a voltage regulator/conditioner circuit electrically coupled to said electrical power source and disposed in said housing;
  • an oscillator/modulator circuit disposed in said housing and electrically coupled to said voltage regulator/conditioner circuit;
  • a high voltage converter/multiplier circuit disposed in said housing and electrically coupled to said oscillator/modulator circuit; and
  • an ion emitter element electrically coupled to said high/voltage converter/multiplier circuit, said ion emitter element having a tip exposed through a bottom of said housing; wherein solar energy upon the solar cells is converted to high voltage through said voltage/regulator, said oscillator/modulator, and said high voltage converter/multiplier circuits, the high voltage then being applied to said ion emitter element to produce ions from ambient air.

Zenion’s Claim 12

12. A method of enhancing and accelerating plant metabolism and growth, comprising the step of positioning and operating an air ionizing apparatus in close proximity to a plant so as to expose the plant to ions produced in the air proximate the plant.

Patenting Marijuana Technology

Patenting Marijuana Technology

Changes in law and policy are opening the door to tremendous growth in marijuana technology

Changes in law and policy are opening the door to tremendous growth in marijuana technology

Changes in marijuana culture are creating incredible opportunities for new marijuana technology.  Marijuana and marijuana derived products are overwhelmingly popular in the worldwide market.  This popularity is especially noteworthy because the drug is still illegal in the United States.  But the war on marijuana appears to be coming to a close.  (See video below).  And the popularity of the drug appears to be on the rise, for both medical and recreational uses.
The above changes suggest tremendous opportunities in the marijuana technology industry.  As inventors rush into that space, they should remain cognizant of the opportunities for patenting their inventions.  For example, inventors could define their inventions as new compositions, devices, or methods.

Patent Opportunities Arising from Changing Marijuana Culture

Setting aside the political issues associated with marijuana, the changing climate is creating incredible business opportunities.  According to CNBC, the legal marijuana business is already huge.  And the Huffington Post opines that those sales will quadruple by 2018.  Most of this business comes from growing and selling the plant itself.  But other industries are beginning to blossom.  For example, the marijuana food and beverage industry and marijuana device industry have experienced wild growth.
With these new industries come new products and new technology.  Inventing something new (i.e., different) gives rise to patentable subject matter.  In the case of marijuana, there are a variety of opportunities for inventing new technology.

New chemical compositions derived from marijuana.

Although the cannabis plant has been known for thousands of years, making new compositions from that plant would give rise to patentable inventions.

Although the cannabis plant has been known for thousands of years, making new compositions from that plant would give rise to patentable inventions.

Naturally occurring substances cannot be patented.  As compounds, they are not “new” because they occur in nature without human ingenuity.  However, new purified forms of the chemical components of marijuana are potentially patentable.  Similarly, new combinations of known molecules can be patented.  Regardless of political attention, the patent office will treat marijuana inventions as chemical inventions.
Given the variety of different molecules found in the cannabis plant, the potential for new combinations of those molecules is virtually infinite.  Finding new combinations of molecules having desirable properties would give rise to new compositions of matter.  These new marijuana compositions can be patented.

Marijuana Edible Product Market

New Marijuana Edibles are Patentable

New Marijuana Edibles are Patentable

According to CNBC, the legalization of medical marijuana in several states has paved the way for a budding edible medical marijuana industry. Small businesses in states such as Colorado and California are making marijuana derived treats such as candy, cookies or soda.
As we have discussed in some earlier articles, new foods (e.g., candy, cookies, cannabis beer, or soda) can be patented as compositions of matter.  New flavors of those foods could give rise to additional patents.  Given that this class of marijuana containing readymade foods is relatively young, the body of prior art is relatively small.  Less prior art makes it more likely that the foods could be defined as new compositions, increasing the likelihood that they could be patented.
Along with opportunities for patenting marijuana compositions per se comes the opportunity for patenting methods of making those new marijuana compositions.  A new food is probably made via a new method.  That new method could be claimed and patented.

New devices and methods for administering marijuana or marijuana compositions

New devices for using or administering marijuana are patentable

New devices for using or administering marijuana are patentable

Smoking marijuana has one indisputable downside—the user is smoking the plant.  Generally speaking, breathing in burning materials is bad for the user.  (Humans should not breath in things that are on fire).
Responding to this downside of smoking, the marijuana device market has grown significantly over the years.  Wikipedia describes several varieties of herbal vaporizer technologies.  And some websites, e.g., GotVape, specialize in selling commercial embodiments of the vaporizing technology.  Many devices, such as the iolite product line have been patented.  But the space still remains wide open.  Inventors of new devices should follow iolite’s lead by claiming their inventions.

Patenting methods of administering marijuana

U.S. patent law recognizes “methods” as a separate category patentable subject matter.  In addition to patenting new “devices” for administering marijuana, the inventor could pursue patent claims directed to the methods of administering marijuana by using those devices.

Changing Culture Suggests Increasing Opportunities for Patenting Marijuana

In recent years, the public opinion surrounding marijuana has changed considerably.  And it appears that the nation (and the world) will probably continue to move toward decriminalization and legalization of this plant.  One good illustration of this shift can be seen through CNN medical correspondent, Dr. Sanjay Gupta.  This past August, he publicly changed his position on marijuana use — discussing some unparalleled medical benefits  of the drug along with an overwhelming lack of side-effects.  Here is the video:

Assuming that this trend continues, it will spawn new industries filling the void created by illegality.  Some examples are new foods, compositions, drug products, services, etc, discussed above.  The early stage of these industries makes them particularly exciting from a technology standpoint.  The technology is in its early developmental stages, so it is bound to encounter big leaps forward— pioneering inventions.  Accordingly, the marijuana technology field offers especially exciting opportunities for inventing and patenting new technology.


Patents on Shark Tank Season 5 Premiere

shark-tank-patentsShark Tank Season 5 Premiere – Friday

The Shark Tank Season 5 premiere will be at 9 p.m. EDT Friday, Sept. 20, 2013.  According to various blogs,  the Shark Tank Season 5 premiere will provide unusual drama as Barbara Corcoran and Lori Greiner go head to head for the first time ever.  Season 5 of Shark Tank will also give rise to an entire new season of Shark Tank patent issues.  Entrepreneur Magazine recently discussed whether patents are overplayed on the show.  We have also posted some comments addressing the common question of “Do I need a patent to go on Shark Tank?”

What patent issues might we see in the Shark Tank Season 5 Premiere?

Drama aside, the business ideas discussed on the Shark Tank Season 5 premiere will include the following:

  • Two entrepreneurs from Dallas, TX hope to bring a little sweetness to the masses with their savory cake balls.  As we have discussed in some previous posts, an entrepreneur can pursue patent coverage for a truly unique food.  Depending on how the food can be distinguished from those that come before it, the inventor could pursue flavor patents, method patents or claims directed to the composition of matter.  To date, both the Sharks and entrepreneurs have overlooked these opportunities for gaining market exclusivity, so it is unlikely that patents will be discussed during this pitch.
  • Two entrepreneur doctors from Tucson, AZ, claim they have a social media cure for the traditional means for communication between patients and medical professionals.  Here, the inventors appear to have created a new software invention and potentially a business method.  The potential for patenting social media software should not be new to anyone.  The movie The Social Network placed a heavy emphasis on claiming the patentable aspects of social networking inventions.
  • Two entrepreneurs from Firecrest, WA pitch their business for gourmet pickles.  Just like the cake balls, this class of invention would probably fall into the composition of matter category.   Notably, the entrepreneurs in this pitch assert that the pickles are made from a 100-year-old family recipe.  Since only new (i.e., different) inventions can be patented,  (an inventor must file a patent application within one year of first disclosing the invention), it is unlikely that these entrepreneurs will have many opportunities for patenting the pickles.  See 35 USC 102.
  • An entrepreneur from Los Angeles, CA has invented a  mobile postcard application that provides a new way to send a traditional postcard.  A mobile application would likely fall in to the category of software patents, which are among the most frequently patented inventions in today’s world.

It will be interesting to see how Shark Tank Season 5 premiere unfolds.  How many times will the Sharks ask what the propriety technology is?  Or will Kevin O’Leary  ask whether they can cut the entrepreneur out of the business—”Why do I need you?”