Four years ago, we wrote about the opportunities for patenting cannabis inventions. At the time, patenting cannabis technology was a novel idea.
Since that time, the cannabis industry has grown exponentially. And, several companies have developed cannabis technology. Most notably, Colorado-based ebbu has opened up a whole new area of formulated cannabis products, which use specific combinations of cannabinoids and terpenes to optimize the users’ experience.
Similarly, we predicted that a cannabis beer industry would emerge, creating a landscape for cannabis beer patents. Here’s the simple logic:
Recently, several players have entered the cannabis beer space. Below are updates that have been in the recent mainstream news.
Cannabis beer update: Hi Fi Hops
On August 8, 2018, Business Insider wrote an article about a new beer (Hi Fi Hops by Lagunitas/Heineken) that is brewed with marijuana. See also The Wall Street Journal. The Lagunitas brew is currently available in two varieties. The beer is available in two varieties, neither of which contain alcohol. One is purely THC, with 10mg per can (roughly the same as you’d find in an edible like a gummy); the other is a hybrid variety with 5mg of THC and 5mg of CBD.
CERIA – Cannabis Beer by Blue Moon’s Inventor Keith Villa
Heineken is not the first beer company to develop cannabis beer. In January of this year, Forbes Magazine reported that Keith Villa, inventor of Blue Moon left Molson Coors in order to develop a new cannabis beer company called Ceria. According to Ceria’s website, Mr. Villa’s new creation will leverage the proprietary cannabinoid science of ebbu (see above).
The partnership between ebbu and Ceria is interesting. Combining the idea of (A) cannabis beer with (B) purposefully designed cannabis formulation will allow Ceria to create next generation cannabis beer products that do not suffer from the inherent chemical variability of cannabis plants.
Province Brands – Brewing with Waste Material
Other companies appear to be pursuing a more conventional approach of using cannabis plant material in the brewing process. One notable spin on a conventional brewing approach comes from Michael Wendschuh and Province Brands.
Province Brands uses cannabis waste material as an ingredient within the brewing process. They are literally brewing beer with garbage. According to an article in the Guardian, Province Brand’s beer “offers an alternate use for what is essentially a waste product for the industry.” According to Michael Wendschuh, “we take [the waste] off the grower’s hands, saving them the cost of hiring a licensed disposal company to dispose of them.”
A while back, we wrote an article about patenting psilocybin inventions. This topic has become more interesting because of the interests on both sides of psilocybin innovation. A growing body of scientific research suggests that psilocybin may provide substantial benefits for many people suffering from psychological disorders, such as depression an anxiety. See Journal of Psilocybin Science (Treatments) at PsilocybinTechnology.com.
A recent article by Herb.co highlights the debate over how money will affect innovation and access to psilocybin technology. (“Will psychedelics go corporate like cannabis?”) The article points to some potential conflicts over control and intellectual property.
Setting aside the issue of how corporations will affect the psilocybin space, we have kept up with our intellectual curiosity about psilocybin intellectual property. (New forms of natural products may be patentable). Recently, we noticed a few noteworthy events in the psilocybin IP space.
Psilocybin Patent Application by Paul Stamets
A patent application by Paul Stamets for “Compositions and methods for enhancing neuroregeneration and cognition by combining mushroom extracts containing active ingredients psilocin or psilocybin with erinacines or hericenones enhanced with niacin” recently published.
Paul Stamets is one of the world’s leading mycologists and an expert in psilocybin containing mushrooms. He is the author of several books on the topic, including one entitled Psilocybin Mushrooms of the World.
According the the published application, Stamets’s invention relates to using psilocybin and niacin for neuroregeneration. In particular, it focuses on “neuroregenerative compositions based upon constituents isolated from or contained within mushroom fruitbodies or mycelia, or the corresponding synthetic molecules, combined with niacin.”
Psilocybin Patent Application by Compass Pathways
Compass Pathways appears to have a patent application in Great Britain for “Preparation of Psilocybin, different polymorphic forms, intermediates, formulations and their use”:
Screenshot from the Intellectual Property Office of the UK, showing Compass Pathways patent application and status.
According to Google Patents GB201716505A appears to be a pending application (aka GB Patent application number GB1716505.1) with a priority date of October 9, 2017.
The Compass Pathways IP has already attracted criticism from some members of the psychedelic community. For example, the non-profit organization Chacruna, is concerned that corporate interest in psilocybin could hurt process towards psychedelic therapies. Robert Jesse of John’s Hopkins University fears that corporate influence could create a landscape “clogged by proprietary methods, restrictive licensing, exclusive contracts, patents, and the like.”
Evidence of Patentability – Objective Indicia of Non-Obviousness
More often than not, the patentability of a particular invention turns on whether it would have been “obvious” when it was invented. See Graham Test for Obviousness. Hindsight is a major problem when determining whether an invention would have been obvious when it was invented. (Often, the answer to a problem seems obvious after you see it.)
In order to prevent patent examiners from mistakenly judging inventions with impermissible hindsight, the test for obviousness allows a patent applicant to submit evidence. Accordingly, a patent applicant can respond to an examiner’s rejection by submitting evidence showing that the invention would not have been obvious when it was invented. Such evidence is often called “Objective Indicia of Patentability” or “Secondary Considerations.”
Evidence Submitted by the Applicant Must be Considered by the Patent Examiner.
According to the U.S. Patent and Trademark Office, “Affidavits or declarations, when timely presented, containing evidence of criticality or unexpected results, commercial success, long-felt but unsolved needs, failure of others, skepticism of experts, etc., must be considered by the examiner in determining the issue of obviousness of claims for patentability under 35 U.S.C. 103. The Court of Appeals for the Federal Circuit stated in Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, 218 USPQ 871, 879 (Fed. Cir. 1983) that “evidence rising out of the so-called ‘secondary considerations’ must always (when present) be considered en route to a determination of obviousness.”
Categories of Evidence Relevant to Obviousness
Although any evidence submitted by the applicant must be submitted, the list below summarizes the most frequently used categories in order of their relative persuasiveness.
Skepticism by Experts
Long Felt but Unresolved Needs
Failure by Others
Licensing or Praise by Others
These types of evidence (and their relative persuasive value) make sense intuitively. For example, not following the advise of experts in your field strongly supports the conclusion that your invention was not obvious. (Following the advice of experts is generally regarded as obvious).
Evidence of Patentability – Selected Notes and Quotes
Below, I have listed some useful quotes pertaining to submitting evidence of nonobviousness. Most of the language is quoted directly from the United States Patent and Trademark Office’s Manual for Patent Examining Procedure. Numbers included in the text refer to sections from that reference, e.g., “716.05 Skepticism of Experts.”
OBJECTIVE EVIDENCE MUST BE CONSIDERED WHEN TIMELY PRESENT
Examiners must consider comparative data in the specification which is intended to illustrate the claimed invention in reaching a conclusion with regard to the obviousness of the claims. In re Margolis, 785 F.2d 1029, 228 USPQ 940 (Fed. Cir. 1986). The lack of objective evidence of nonobviousness does not weigh in favor of obviousness. Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870, 878, 27 USPQ2d 1123, 1129 (Fed. Cir. 1993)
716.01(d) Facts established by rebuttal evidence must be evaluated along with the facts on which the conclusion of a prima facie case was reached, not against the conclusion itself. In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). In other words, each piece of rebuttal evidence should not be evaluated for its ability to knockdown the prima facie case. All of the competent rebuttal evidence taken as a whole should be weighed against the evidence supporting the prima facie case. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Evidence that a compound is unexpectedly superior in one of a spectrum of common properties . . . can be enough to rebut a prima facie case of obviousness.”
Presence of a property not possessed by the prior art is evidence of nonobviousness.
Absence of property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of unobviousness. Ex parte Mead Johnson & Co., 227 USPQ 78 (Bd. Pat. App. & Inter. 1985) (Based on prior art disclosures, claimed compounds would have been expected to possess beta-andrenergic blocking activity; the fact that claimed compounds did not possess such activity was an unexpected result sufficient to establish unobviousness within the meaning of 35 U.S.C. 103.).
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP § 716.02(d) – § 716.02(e).
716.02(d) Unexpected Results Commensurate in Scope With Claimed Invention [R-08.2012] Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) (Claims were directed to a process for removing corrosion at “elevated temperatures” using a certain ion exchange resin (with the exception of claim 8 which recited a temperature in excess of 100C). Appellant demonstrated unexpected results via comparative tests with the prior art ion exchange resin at 110C and 130C. The court affirmed the rejection of claims 1-7 and 9-10 because the term “elevated temperatures” encompassed temperatures as low as 60C where the prior art ion exchange resin was known to perform well. The rejection of claim 8, directed to a temperature in excess of 100C, was reversed.). See also In re Peterson, 315 F.3d 1325, 1329-31, 65 USPQ2d 1379, 1382-85 (Fed. Cir. 2003) (data showing improved alloy strength with the addition of 2% rhenium did not evidence unexpected results for the entire claimed range of about 1-3% rhenium); In re Grasselli, 713 F.2d 731, 741, 218 USPQ 769, 777 (Fed. Cir. 1983) (Claims were directed to certain catalysts containing an alkali metal. Evidence presented to rebut an obviousness rejection compared catalysts containing sodium with the prior art. The court held this evidence insufficient to rebut the prima facie case because experiments limited to sodium were not commensurate in scope with the claims.).
DEMONSTRATING CRITICALITY OF A CLAIMED RANGE
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
716.02(e) Comparison With Closest Prior Art An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). “A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference.”
THE CLAIMED INVENTION MAY BE COMPARED WITH PRIOR ART THAT IS CLOSER THAN THAT APPLIED BY THE EXAMINER
Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner. In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978)
THE CLAIMED INVENTION MAY BE COMPARED WITH THE CLOSEST SUBJECT MATTER THAT EXISTS IN THE PRIOR ART
Although evidence of unexpected results must compare the claimed invention with the closest prior art, applicant is not required to compare the claimed invention with subject matter that does not exist in the prior art.
716.02(f) Advantages Disclosed or Inherent Evidence and arguments directed to advantages not disclosed in the specification cannot be disregarded. In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995)
If a particular range is claimed, applicant does not need to show commercial success at every point in the range. “Where, as here, the claims are directed to a combination of ranges and procedures not shown by the prior art, and where substantial commercial success is achieved at an apparently typical point within those ranges, and the affidavits definitely indicate that operation throughout the claimed ranges approximates that at the particular points involved in the commercial operation, we think the evidence as to commercial success is persuasive.” In re Hollingsworth, 253 F.2d 238, 240, 117 USPQ 182, 184 (CCPA 1958).
THE CLAIMED INVENTION MUST SATISFY A LONG-FELT NEED WHICH WAS RECOGNIZED, PERSISTENT, AND NOT SOLVED BY OTHERS
Establishing long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution. First, the need must have been a persistent one that was recognized by those of ordinary skill in the art. In re Gershon, 372 F.2d 535, 539, 152 USPQ 602, 605 (CCPA 1967) Second, the long-felt need must not have been satisfied by another before the invention by applicant. Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768, 9 USPQ2d 1417, 1426 (Fed. Cir. 1988). Third, the invention must in fact satisfy the long-felt need. In re Cavanagh, 436 F.2d 491, 168 USPQ 466 (CCPA 1971).
LONG-FELT NEED IS MEASURED FROM THE DATE A PROBLEM IS IDENTIFIED AND EFFORTS ARE MADE TO SOLVE IT
Long-felt need is analyzed as of the date the problem is identified and articulated, and there is evidence of efforts to solve that problem, not as of the date of the most pertinent prior art references. Texas Instruments Inc. v. Int’l Trade Comm’n, 988 F.2d 1165, 1179, 26 USPQ2d 1018, 1029 (Fed. Cir. 1993).
716.05 Skepticism of Experts “Expressions of disbelief by experts constitute strong evidence of nonobviousness.” Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 698, 218 USPQ 865, 869 (Fed. Cir. 1983)
716.06 Copying – Evidence of copying was persuasive of nonobviousness when an alleged infringer tried for a substantial length of time to design a product or process similar to the claimed invention, but failed and then copied the claimed invention instead. Dow Chem. Co. v. American Cyanamid Co., 816 F.2d 617, 2 USPQ2d 1350 (Fed. Cir. 1987).
The Wall Street Journal just reported that a Corona brewer has agreed to invest nearly $200 million in a Canadian marijuana grower, with plans to develop cannabis-infused drinks, e.g., cannabis beer.
Constellation Brands Inc. has agreed to take a 9.9% stake in Canopy Growth Corp., a Canadian marijuana company. Constellation Brands plans to work with Canopy growth to make and sell cannabis-infused beverages.
This collaboration caught our attention because of the opportunities for creating new patentable subject matter.
In another article, we wrote about patenting beer and brewing inventions. In that article, we explained that a new beer can be patented as a “composition of matter.” Defining the beer as a chemical invention provides numerous opportunities for distinguishing it from the prior art. The critical requirement is explaining how it differs from all other beers.
The cannabis plant comprises about 500 different molecules. Many of those molecules have never been formulated into beers.
Cannabis Beer Inventions
Given that cannabis beer is a relatively new field, the “prior art” is relatively sparse. There are very few cannabis beers in existence. Accordingly, there are very few compositions combining the molecules in beer with the molecules in cannabis. As a result, many varieties of cannabis beer could be defined as new (i.e., different from anything previously made) compositions of matter.
The chemical profiles of cannabis beers could be used to distinguish that class of beers from all previously made beers. An inventor making that class of beers for the first time could claim the exclusive right to those inventions.
What is the process for patenting a cannabis beer?
First, distinguish the cannabis beer from any previously existing chemical composition. (Ask – what makes this different?) Then, use those points of distinction to define the invention. Then, claim that invention.
After drafting claims, file those as part of a patent application at the United States Patent and Trademark Office (“USPTO”).
During patent prosecution at the USPTO, the application will be evaluated by an examiner. During that process, the inventor has the opportunity to explain why the claimed cannabis beer is both new and innovative (i.e., nonobvious). After convincing the examiner of the newness and nonobviousness of the claimed beer, the examiner allows the claims. Then, the inventor receives a patent on the new beer composition. That patent provides the inventor with the exclusive right to make, use, or sell the claimed composition.
Psilocybin Technology – Magic Molecules from Magic Mushrooms
Recently psilocybin (the active ingredient in “magic mushrooms”) has received considerable attention. Professor David Nutt and his team at the Imperial College of London recently published an article in Scientific Reports about “Psilocybin for treatment-resistant depression: fMRI-measured brain mechanisms.” The study demonstrated that administering the psilocybin resulted in “pushing [the brains of depressed people] out of their depressive states.” This effect is analogous to electroshock therapy — where a person’s brain is effectively rebooted.
Although psilocybin is currently a schedule I drug, the laws may be changing. Recently, the Huffington Post and many others reported that California may legalize (or decriminalize) psilocybin. In addition to Dr. Nutt’s work in treating depression, the Financial Times reported that Compass Pathways will soon test it for therapeutic value as an antidepressant. Scientists at John’s Hopkins University are also studying the use of psilocybin for treating anxiety and depression.
Is New Psilocybin Technology Patentable?
Psilocybe Cyanescens is one of about 200 species of naturally occurring “magic mushrooms” that contain the molecule psilocybin
About a year ago, we posted an article about Patenting Mushroom Inventions. Our thesis was simple. Many types of mushroom (or fungi) inventions could give rise to patentable subject matter. Such patentable subject matter can be divided into the following categories: Compositions of matter; Methods or Processes; Plants or Living organisms; and Machines or Devices. Of these categories, we explained that composition of matter inventions were almost certainly the most valuable kind of mushroom inventions.
The above articles signify the beginning of a new field — psilocybin technology. Developing a new field often involves rapid innovation and pioneering inventions. In other words, new industries often develop first-in-kind technologies as opposed to optimizing or refining existing technology. We recently saw this sort of innovation in the cannabis space. Below, I have compared the development of the cannabis industry with the impending emergence of the psilocybin industry.
Comparing the Patentability of Psilocybin Inventions with Cannabis Inventions.
The present psilocybin situation shares many similarities with the recent explosion of the cannabis industry. Here’s why:
Not long ago, cannabis (a naturally occurring plant) was demonized as an extremely dangerous drug with no medicinal or therapeutic value. It was criminalized in about 1970 under the controlled substances act as classified as a Schedule I Controlled Substance.
Then, people realized that this characterization of cannabis may have been somewhat mistaken.
Then, the regulations on cannabis became less strict. First, medical cannabis. Then, recreational cannabis.
Now, we have an enormous recreational and medicinal cannabis industry.
This young industry is rapidly developing better, safer, and more effective cannabis technologies. For example, the cannabis technology leader ebbu, LLC has created a whole new category of formulated cannabis products with effects unexpectedly different from the plant itself. New, man-made cannabis inventions like those are patentable.
Opportunities for Breakthrough Technologies
The Psilocybin and cannabis fields both share three critical features. First, both are products of nature. Second, those natural products were criminalized by 1970’s laws, based on 1970’s reasoning. Third, that criminal status chilled innovation. As a result of these three facts, many naturally occurring substances (in both “magic mushrooms” and cannabis) were understudied and underdeveloped. Accordingly, the these industries remained stuck in about 1970. Until recently, the state of the art for cannabis was smoking plant matter. The state of the art for psilocybin is almost exclusively eating mushrooms.
The situation for psilocybin technology is slightly different from cannabis. We have the benefit of history. We have been watching the cannabis industry develop. Accordingly, we have a pretty good analogy for how things will play out.
Most likely, the state of the art will evolve beyond eating mushrooms and exclusively focusing on only one molecule. Soon, scientists will recognize that those magic mushrooms have dozens of pharmacologically active magic molecules that can be purposely formulated into safer, more effective, and more reliable products. These advances will arise from human innovation, making them patentable.
Onnit’s New Mood – A New Nutraceutical Composition Comprising Natural Ingredients
I just came across New MOOD. New Mood is a supplement made by Onnit. Onnit claims that New Mood improves your mood and reduces your mental stress. Sounds awesome, right? I think so, especially because I am interested in the patentability of nutraceuticals and nootropics.
After a quick look at the New Mood technology, my two big questions are as follows:
1. Could Onnit patent this?
2. Does New Mood really work?
1. Patenting a combination of known, naturally occurring ingredients
From what I can tell, New Mood is a combination of known, naturally occurring ingredients. Normally, so-called “products of nature” are not patentable. (A product of nature is not new. A product of nature is not “man made.”)
However, in the case of New Mood, the naturally occurring ingredients are combined into a specific formula that is NOT found in nature. Accordingly, it is “man made” and (potentially) new.
2. Does New Mood Provide Unexpected Results?
It’s possible that the answer to question #2 determines the answer to the question of patentability. Here’s what I mean: If New Mood really is a “gamechanger,” like Onnit claims, then that “game changing” achievement could help them earn a patent on the composition.
Provided that the New Mood composition is “new,” then the question of patentability would probably turn on “obviousness.” Here, I think the question of patentability would depend on whether this particular combination provides some sort of unexpected results when compared to the known properties of the ingredients.
I’m eager to learn more about this invention. Is it a”game changing” technological advance or a clever marketing campaign? The former is probably patentable. The latter is probably not.
Nootropics are also called “smart drugs” or cognitive enhancers. The term “nootropic’ covers drugs, supplements, or other substances that improve cognitive function. In particular, these substances improve so-called “executive functions” such as memory, creativity, or motivation.
Examples of known nootropics include caffeine, modafinil, the racetams (e.g, piracetam, aniracetam, phenylpiracetam), nicotine, amphetamines, various, psychedelics, and many plant derived extracts and supplements.
Recently, ebbu, the leader in engineered cannabis products has figured out how to make formulations that enhance creativity and focus without the undesired side effects often associated with cannabis.
The Neurohacker Collective offers a product called Qualia, which they define as “a supplement stack with 42 ingredients that will optimize every major system of your brain so you can be more productive and create more impact in the world.”
In an article from Cognitune Smarter Health, they say, “Smart pills and nootropics for brain function support exist in various forms. Most of them are effective in boosting specific areas of mental cognition.”
Research and development in nootropics appears to be growing rapidly. And rightfully so. Who wouldn’t want a simple way to enhance cognitive function? Now, the question on my mind: Can we patent these nootropics?
Patenting Nootropic Innovations
Nootropic research interests me for two reasons — one personal and one professional.
Personally, I like the idea of supercharging my brain. Taken to the extreme, is there a supplement that would help me learn things faster? Could I learn Brazilian Jiu Jitsu techniques in a few minutes instead of a few months? Ideally, I would like to learn things as rapidly as my 8 month old.
Professionally, I like the field of nootropics because of the opportunities for creating patentable subject matter.
Nootropics can be claimed as compositions of matter. Compositions of matter patents are my favorite because they define the invention chemically. (I love chemistry and chemical patent law). Also, I think composition claims are among the strongest claims available to an inventor because they cover all uses of the claimed composition.
Patenting New Formulations of Naturally Occurring Compounds
I’m also interested in nootropics because many of them appear to be found in nature — in plants and fungi. That creates some interesting questions of patentability. Here’s why: A natural product cannot be patented. It’s not new. It has been around forever in nature. And under US patent law, only new things can be patented.
However, while the naturally occurring form of the nootropic cannot be patented, newforms or formulations of the nootropic can be patented. Accordingly, if researchers discover a cognitive enhancer in some naturally occurring mushroom, they could not patent the mushroom itself. (It’s not new). But, they could probably patent purified forms of the nootropic and/or new formulations using that nootropic. They could also pursue new methods of purifying the nootropic and/or formulating it. In each case, the critical question is whether the “invention” is the product of human engineering. (For a related discussion, see the uproar over Nestle and its patents related to the Fennel flower).
Likewise, a company like Neurohacker could seek patent protection for their Qualia product– assuming that their combination of 42 ingredients is a new combination. Provided that the combination is new, the major hurdle to patentability would probably come down to whether that combination would have been “obvious” when the Neurohacker researchers made it.
At a high level, I cannot think of too many 42-member combinations that are “obvious” to formulate without some sort of guidance. Nevertheless, the invention would be evaluated at the U.S. Patent and Trademark Office by the legal standard of obviousness. Under that standard, I suspect that the inventors could demonstrate that their combination is not obvious by providing evidence about how that combination optimizes every major system of the users brain and/or makes the user more productive and/or allows the user to create more impact in the world.
Yes, Brazilian Jiu Jitsu inventions are patentable.
One example of a Brazilian Jiu Jitsu patent is the Elite Intensity Band. According to their website, Elite Brazilian Jiu-Jitsu has developed and patented a system to provide a clear visible indication of the level of intensity at which each member wishes to train. “By having a standardized method of measurement for intensity our members can help each other calibrate, our Professors and Coaches can help make better match ups, and new members feel more comfortable participating in the sport knowing there is awareness and process to reduce injury and ensure the best experience for all members.”
Elite Intensity Band
How Do I Patent My BJJ Invention?
The inventor of new BJJ gear can draft patent claims and file a patent application directed to that new technology. To be patentable, the BJJ technology must be “new.” In other words, it must be different from all BJJ technology existing before it.
In addition to being “new,” the invention must not be an obvious variation of BJJ technology that existed when the new BJJ technology was invented. The legal test for obviousness is often very complicated. The test of “obviousness” is called the Graham Test, which we wrote about it in an early post.
As a rough guide, an inventor should be able to receive patent protection on any significant improvement over the state of the art. (For example, a better mouth guard, a new fabric, or a new design for a training tool). In the case of BJJ gear: the greater the difference from existing gear, the more likely it is that the invention can be patented. Also, if the invention provides an unexpected benefit beyond similar BJJ gear, then it is probably patentable.
Subject to the above requirements (new and not obvious ), most categories of BJJ gear could give rise to patentable subject matter. For example, innovations in clothing (such as the gi, rash guards), training aids (such as grappling dummies), diagnostic tools (such as video analytics software), equipment (such as mats, clocks, tape, safety gear), chemicals (such as nutrition, sports drinks, sanitizers), and personal care items (such as cleaning wipes or rash cream) could all be patented. Below, I’ve discuss another category of patentable subject matter that creates some interesting questions: Could someone patent methods (aka “processes”) for jiu jitsu? What about methods of teaching or training jiu jitsu?
What about Patenting BJJ Techniques?
In my mind, one interesting question involves patenting BJJ techniques. New BJJ techniques are appearing every day. For example, last night I watched a video of Eddie Bravo teaching rubber guard to Rickson Gracie. (Granted the video was from 2014 but it illustrates innovation in BJJ techniques).
In theory, a truly new BJJ technique could be patented. It would be a NEW method of self defense. Provided that it wasn’t obvious, that method would fulfill the requirements for patentability (New and not obvious). In theory, the patent holder could exclude others from using the technique. Crazy right? Here’s how it would work:
Presumably, at some point, Eddie Bravo’s rubber guard was new. At that time, Mr. Bravo could have filed a patent application on that rubber guard technique. Once granted, Mr. Bravo would have owned the right to exclude all others from practicing/using the rubber guard.
In the case of Mr. Bravo’s rubber guard, patentability is now a moot point. It’s not “new” anymore because more than one year has elapsed since the invention was publicly disclosed on Youtube. Nevertheless, the academic questions about patenting a BJJ technique remain: Could one of the many innovative BJJ practitioners exclude others from using a new technique they develop? Or, could they charge a royalty for using that technique?
Thankfully, I suspect that patenting BJJ techniques will remain a purely academic question. For the patent geeks out there, I’ve included the video below so that you can think about how Mr. Bravo’s disclosure probably satisfies all of the written description, enablement, and best mode requirements within a publicly available time-stamped disclosure. You might also notice how Mr. Gracie’s reaction seems to support the notion that the technique was NOT obvious at the time. (Think “skepticism by experts”).
Mushroom or fungus inventions fall into one or more of the following four categories:
Compositions of matter;
Methods or Processes;
Plants or Living organisms; and
Machines or Devices.
All four of these categories of invention are potentially patentable. The critical questions for patentability is whether the invention is both (1) new and (2) non-obvious. Of these, composition of matter claims are particularly valuable because they cover all uses of the composition. Below, I briefly explain each of the four categories of patentable subject matter.
Patenting Mushroom Compositions
New mushroom compositions are potentially patentable. To be patentable, the composition must be manmade–in other words, not naturally occurring.
Isolating a specific compound from a mushroom would create a new patentable composition because the purified form of that compound would be new. Similarly, creating an unnatural combination of mushroom compounds would give rise to a new, patentable composition. Even though the individual components were known, that particular combination did not exist before the inventor prepared it.
Examples of patentable compounds would include a purified form of an individual molecule found within a mushroom. Such a molecule could have a variety of uses, such as a drug candidate. (See, e.g., Patenting Psilocybin Technology).
New combinations of fungal materials could also be patentable, such as within supplements. For example, Fungi Perfecti makes a wide range of products comprising freeze-dried mushroom mycelium/fruitbodies. Provided that Fungi Perfecti chooses particular non-naturally occurring mixtures of the fungi, those products would be patentable as new compositions. Again, even though the individual components were known, that particular combination did not exist before the inventor prepared it.
Additionally, new compositions useful for cultivating mushrooms would be patentable provided that those compositions were not previously disclosed prior to the invention. Here, new formulas for enhancing mycelial running or fruitbody formation would be patentable.
Patenting Mushroom Devices
Devices invented for mushroom cultivation are patentable. Patentable devices could include tools or machines used in cultivating or harvesting mushrooms. For example, devices for sterilizing equipment, purifying air, facilitating spawning, and/or initiating fruitbody formation.
Some examples of inventions that would fall under the category of “device” include improvements on spawn bags, filter patches, humidifiers, flow hoods, lights, hydrometers, etc..
Patenting Fungus Processes or Methods
Inventive processes for cultivating and harvesting mushrooms are patentable. For example, in 2005, Stewart C. Miller patented a process for growing morels. The process involves inoculating tree seedlings with morel mycelium, then allowing the mycelium to grow, and lastly killing the seedlings to induce the morels to fruit. See US Patent 6,907,691 and
US Patent 6,951,074.
Methods of using fungi are also patentable. For example, Paul Stamets has patented a method of attracting (and killing) harmful insects by using the non-sporulating mycelial stage of insect-specific parasitic fungi. See US Patent 6660290, entitled “Mycopesticides.”
Patenting Genetically Modified Fungi
New, man-made organisms can be patented. Accordingly, the inventor of a genetically modified fungus could apply for a patent on that organism. Here, the inventor would probably also seek a patent on the method for making the new GMO fungus. This technology has recently become important within the context of genetically modified foods. Specifically, the CRISPR/Cas9 edited mushroom was engineered to that resist browning when exposed to air.
Food and food technology are both patentable. Patenting a new invention is one way for a firm to stay ahead of competitors. Many inventors never consider patenting food technology. Many wonder whether food is patentable at all. To be clear, anything new and not obvious is potentially patentable. Including food and all of the technology relating to food. For example, methods of preparing food, equipment, software, and novel compositions. Below are five current examples of exciting technologies and innovations within the food industry.
1. Patenting Sous Vide Technology
Sous vide is a French technique where cooking is done through the use of an immersion circulator. Food is placed into a plastic bag, air is removed, and placed into a water bath at a precise temperature. The immersion circulator keeps the water at a precise temperature gently cooking the food all the way through.
The technology is expensive and was relegated mostly to restaurants. However, a number of retail products have become available (e.g., Joule, Anova, and Sansaire) that are relatively affordable and growing in popularity.
New food preparation devices are patentable
While the general technology is not new, improvements made to the technology are new. These new advances are potentially patentable, as long as the advances are new and not obvious.
2. Patenting Smaller Versions of Large Scale Equipment
Larger scale, industrial equipment is often very expensive. Using this technology for producing foods on a smaller scale for the average cook is often cost prohibitive. Improving equipment for cost effectiveness is patentable.
For example, a conche (Indi Chocolate) is a machine that distributes cocoa butter within chocolate to develop flavor and texture. The process is so important, that many chocolate manufactures keep their conching process secret. See https://indichocolate.com/collections/chocolate-making-machines/products/wonder-grinder-model-2
Products like these may seem niche, but there is a growing trend amidst home cooks and chefs wanting to have control over the quality of their ingredients. Improvements to existing technology may focus on either home or restaurant use. Many home cooks may not want to make their own chocolate, but smaller restaurant, cafes, or bakeries are potential users.
3. Patenting Phone Apps and Devices for Food Preparation
Within the context of food technology, smartphones are used for setting a timer, for grocery shopping, and organizing recipes. But smartphones are rarely for preparing food.
For example, a thermometer that plugs into your phone. A growing trend is integrating smartphone technology into appliances. Samsung has a new oven connecting to a smartphone allowing controlling temperature, measuring food weight, and calculating calories.
4. Patenting Gluten Free Products and Compositions
Gluten free diets are a growing trend. Most grocery stores have specific gluten free sections. Maintaining gluten free diet is difficult because gluten is found in most foods. For example, wheat is used as part of the fermentation process for soy sauce. Many foods contain flour as a thickening agent and for maintaining food’s structure. Cross contamination becomes a risk for naturally gluten free foods exposed to gluten comprising foods.
Gluten free food technology could especially be valuable in the area of baking because gluten provides pastries, breads, and pizzas their structure. Gluten free technology is patentable by patenting the chemical composition. The chemical makeup of these products must be unique, i.e., never disclosed before.
5. Patenting Novel Food Compositions, Such as Aquafaba
Vegan diets are not just for ethical reasons but also for food sustainability reasons. Maintaining a vegan diet is difficult because animal based products are used in many foods. Eggs have many chemical properties that are hard to find in other ingredients. Some attempts for replicating these chemical properties are using various starches or other hard to find substitutes. But a recent discovery could change everything. Aquafaba – the liquid from cooking legumes, like chickpeas – has similar properties as egg whites. Experts believe that the protein and starches in Aquafaba mimic the proteins in egg whites. For example, whipping Aquafaba to make meringue. Developing Aquafaba technology could benefit millions of vegans by producing protein compositions. Advances in this area is patentable. New forms of Aquafaba could give rise to patentable compositions of matter.
Conclusion – Food and Food Technology is Patentable
Food technology is an enormous and growing industry. Even more remarkable–this industry is just beginning to tap into the opportunities available for protecting and monetizing technology by using the patent system Patents provide a powerful tool for those creating new and not obvious inventions.
This post was written by Alex Kong, JD. Mr. Kong is an attorney with a background in chemistry and specialty in food technologies.