The overview of the patent process will likely depend on who you ask.
Can you give me an overview of the patent process? Inventors and founders often ask me for an overview of what to expect when getting a patent. That’s a fair question. And there are a variety of approaches to answering it. The answer really depends on the person’s perspective. A patent secretary will view the process differently from a patent agent, who will view it differently from a government official, etc..
For example, according to a patent lawyer, the United States Patent and Trademark Office (“USPTO”) provides an overview of the “Process for Obtaining a Utility Patent.” Understandably, the USPTO focuses largely on the procedural aspects of getting a patent. After all, the USPTO is concerned with how each applicant navigates their system.
I come at the patent process from the inventor’s perspective. I am most concerned with maximizing value from the patent process. So my “overview” is a little bit different. I focus on comparing the invention to the state of the art and using that comparison to draft the most valuable patent claims possible. Below, I have outlined this process. Notably, it looks quite different from other “overviews” of the patent system.
Inventor Focussed Overview of Getting a Patent
My overview of getting a patent can be distilled into 9 steps, which I’ve outlined below. Notably, a patent professional would add “client development” and “engagement” before step #1. (For many patent professionals, getting the client consumes about 30% of all time). Likewise, a patent litigator or transactional attorney would care only about step #9. A patent secretary would focus primarily on the paperwork involved in steps 6-8.
Extracting the Invention – Organizing all available information about the invention by interviewing the inventors, usually multiple times.
Studying the Invention – Studying all available information provided by interviewing the inventors and reviewing documents provided by the inventor.
Comparing the Invention to the Prior Art – Independently evaluating the invention from the standpoint of someone skilled in the relevant art; Determining similarities and differences.
Drafting Patent Claims – Defining the invention in a manner that emphasizes its patentable aspects. This involves applying the analysis in step #3 to synthesize definitions with the greatest likelihood for covering valuable property within the following twenty years.
Drafting Patent Application(s) – Drafting supporting descriptive material. This material often provides definitions for key terms in the application, along with examples, and background information.
Filing Patent Application(s) – Formatting the application from step #5 to conform with the USPTO’s standards for patent applications. Then, filing the patent application with the USPTO and paying the required fees.
Arguing for Patentability – After filing a patent application, the application sits “pending” at the patent office for years. See Stats. After waiting, a patent examiner examines the claims and (almost always) rejects them as a “first action.” At that point, the applicant must address the examiner’s reasons for rejecting the claims–usually through some combination of arguing or amending the claims.
Grant of Patent – After agreeing on a set of patentable claims, the Applicant pays the issue fee and the USPTO grants a patent. The Applicant is then responsible for paying maintenance fees 3.5, 7.5, and 11.5 years following the grant.
Enforce or License Patent – A patent provides the right to exclude others from making, using, or selling the invention that is defined in the claims. This right to exclude is the source of all value – a monopoly – the ability to prevent competitors from entering the market. That right may be sold (licensing the patent) or enforced against competitors via a patent infringement lawsuit. This later route is also called patent litigation.
Brewcraft’s Rogue Brutal Kit comes with all ingredients EXCEPT yeast, along with instructions for brewing the beer
Improving Brewing with Chemical Principles
From the standpoint of patent law, brewing could be divided into three categories of invention. These categories are as follows: compositions, processes, and devices.
Notably, each category of invention includes some sort of chemical component. Each Ingredient, intermediate, and finished product could be viewed as chemical composition. Processes describe making or using those compositions (for example the steps in a recipe). Equipment is used to manipulate or measure those compositions (for example, the carboy, funnel, airlock, etc.).
In an earlier article, we discussed patenting beer technology. We noted that craft brewing is filled with innovative people, bound to rapidly improve this technology. In this article, we discuss a chemist’s view of using two “kits” for home brewing. The first kit is Rogue’s Brutal IPA using the Beercraft kit. The second is Brewer’s Best Double IPA. Both were brewed using the Brewer’s Best equipment kit. The kits and equipment were purchased from Sound Homebrew in Seattle, Washington.
Brewing Process Steps from a Chemical Standpoint
Chemically speaking, the brewing process can be broken down into these fundamental steps:
EXTRACTING — Grain is steeped in warm-hot water, extracting certain components of those grains into the water, creating a “tea”.
DISSOLVING — Sugar (provided as malt extracts) is dissolved in the boiling tea, creating a “wort.”
EXTRACTING — Hops are boiled in the wort for varying lengths of time, extractingcertain components of those hops into the wort.
PHYSICALLY MANIPULATING —The wort is transferred to a fermenter and cooled. At this stage, some of the undissolved solids may be physically separated (e.g., filtering or decanting) from the wort.
ADDING BIOLOGICAL REAGENTS — Yeastis added to provide a fermentation catalyst
CONTROLLING REACTION CONDITIONS — The system is equipped with an airlock, isolating it from the surrounding atmosphere, thereby controlling the reaction conditions.
Each of the above steps requires the brewer to follow people-sized instructions with the hopes of producing favorable microscopic results. The brewer adds tangible amounts of water, grains, sugars, and hops to a pot. The brewer monitors the clock on the wall and the thermometer in the brew pot. The brewer’s ultimate goal is producing an aqueous solution of molecules (beer) that is pleasing to drink.
Practically speaking, brewer can follow people-sized recipes and produce good beer with reasonable reproducibility. Nevertheless, thinking about the underlying chemistry may provide some sources for future innovation. The rapidly growing craft brewing community seems to be constantly looking for new and different beers. Our hope is that focussing on the chemical underpinnings of brewing will create opportunities for making inventive beers.
Brewing Chemistry – Molecules, Time, Temperature, and Concentration
Brewing beer is chemistry. Generally speaking, the progress of a chemical reaction depends on (1) the chemical regents, (2) the reaction time, (3) the reaction temperature, and (4) the reagent concentration. The term “chemical regents” refers to the molecules in the reaction. Different molecules behave differently. Accordingly, the most important part of chemistry is understanding what molecules are in the reaction. Chemical reactions proceed more rapidly at higher temperatures and higher concentrations.
Making beer is chemistry. And craft brewers appreciate that hops are made of underlying molecules.
Chemical Reagents in Beer Compositions
The craft brewing community recognizes the importance of chemical reagents. In particular, extreme brewers recognize the benefits of trying new combinations of ingredients in order to create different flavors. Note, an “ingredient” to a brewer is a “chemical reagent” to a chemist.
One opportunity for further innovation in the craft brewing space could come from viewing the ingredients at the molecular level. By understanding which molecules correspond to certain flavor properties, a brewer could control the reaction conditions to select for desired flavor properties. The brewing community appreciates the molecular composition of certain ingredients during the hopping process. Different varieties of hops are described in terms of their molecular compositions (alpha and beta acids). Those hops are added to the boils at certain times in order to control how they convert into certain flavors.
Craft brewers should not limit themselves to thinking about hop chemistry. Each other ingredient added to the beer also has a molecular composition. Many of those molecules change and react during the brewing process. For example, many ingredients react with the oxygen while being heated (in the boil) in the presence of oxygen (in the air).
Oxidation Chemistry in Brewing
Another potential opportunity for creating new beers could come from a better understanding of oxidation. Oxygen is present throughout the brewing process. Oxygen from the air reacts with many of the ingredients, chemically changing those ingredients to provide different flavors. Additionally, oxygen is an important part of the initial fermentation process.
Thinking about how certain chemical ingredients react with oxygen could provide new ways to make different beers. For example, the concentration of oxygen could be controlled rather than relying on the amount naturally present in the air. One idea would be performing certain brewing steps under and inert atmosphere, by using nitrogen or argon. By limiting the amount of oxygen present, the brewer could control how much certain flavor molecules oxidize. Adjusting the amount of oxidation during brewing could lead to new flavor opportunities. Limiting oxygen could also create opportunities for using higher temperatures and longer times without the negative oxidative reactions. These sorts of techniques could give rise to new beer technology.
Oxygen is an important part of the fermentation process. In Extreme Brewing, Sam Calagione advises that a homebrewer introduces oxygen into the wort by “rocking the baby” before sealing the fermenter. Notably oxygen is also present in the headspace of the fermentation vessel. By varying the amount of oxygen present at various stages of fermentation, the brewer could improve the progress of the reaction.
The Llamas’ Brewing Company in Washington state appears to be the first company doing work in the air-free brewing space.
The Hercules Double IPA by Great Divide Brewing Co. provides information about ABV to three significant figures: 10.0% alcohol by volume
Chemical Concentration in Brewing
Lastly, a better understanding of concentration could provide some advantages to the home brewer. Molecular concentration is extremely important in a finished beer. For example, alcohol by volume (ABV), international bittering units (IU), a variety of aromatic compounds, and residual sugars play an important role in the beer’s flavor profile. These important metrics are reported to 2 or 3 significant figures. For example, the ABV in Great Divide Brewing Co.’s Hercules Double IPA is reported at 10.0% (three significant figures). Not 10% (one significant figure). Despite the importance of concentration, many beer recipes treat concentration as relatively unimportant.
Concentration refers to the amount of a given molecule within a given volume. (The standard is “moles per liter,” which is called the Molar concentration). In the laboratory, all mass quantities are converted into moles in order to understand the number of molecules. Then, for solutions, the concentrations are described as molar concentrations, to indicate the number of moles per liter of volume. In the home brew beer recipes, the volumes used to make the beer are “approximate” and also imprecise.
Many beer recipes treat volume with relatively litter precision. For example the Brewer’s Best Double IPA recipe instructed the brewer to bring the volume in the fermenter to “approximately 5 gallons” before pitching the yeast. Additionally, the glass carboys available at the Sound Home brew store did not provide any volume indicators. Some very simple improvements to home brewing equipment could be made by providing better volume indicators on the apparatus and paying closer attention to volume.
Please let us know what you think….
Our firm specializes in chemistry and chemical patents. But, we are relatively new to home brewing. Please feel free to use the comments section (below) to offer your thoughts on applying chemistry to the brewing arts.
Cover of Wired Magazine’s October 2013 issue, featuring the Science of Cooking.
Cooking with Science
Wired Magazine’s October 2013 Issue featured the topic “Cooking with Science.” This issue jumped out at me because of our recent articles on patenting food, flavors, and beer. In those articles, we noted that relatively few foods or beverages are patented.
The lack of food patents seems somewhat surprising in view of two things: (1) the food & beverage industry is immensely important; and (2) food & beverage products fall squarely within the “composition of matter” category of patentable subject matter. Furthermore, new methods for making food and culinary equipment would give rise to patentable inventions.
Chef David Chang Discusses the Science of Cooking
In the October 2013 print issue of Wired, the authors discuss cooking with science on pages 136-150. The most comprehensive piece is written by David Chang, Chef and Founder of the Momofuku Restaurant Group. Here’s what Mr. Chang had to say about cooking with science:
I’ve also noticed a growing disconnect between the role of food science and today’s food culture. Cooking is a scientific process, after all, but calling food “processed” has become a slur. It’s almost as if we are expected to hide the science that goes into our food. This wasn’t always true: If you look at advertisements from the 1940s and ’50s, they celebrated that the latest chewing gum used artificial sweeteners and flavoring agents, because that was the hot thing. Today, though, everything is supposed to be “natural,” simple, old-fashioned. We’ve been brainwashed to believe that science is scary.
I think Mr. Chang has a point. Somehow society has developed a mental block about viewing food as chemistry. People are horrified about having “chemicals” in their food. But, technically speaking, the food we eat is made 100% of “chemicals.” Pick any food. That food can be analyzed as a chemical composition. The term “chemical” simply means very small. Chemistry refers to the way things look at the molecular level. It refers to the atoms and molecules that bond together to make up the macroscopic world that we see and touch.
The Food—Technology Disconnect in Patent Law
Much like the consumer’s boundary between cooking and chemistry, the food industry imposes a similar boundary when it comes to patenting the technology. Very few food innovations are patented whereas other chemical disciplines frequently utilize the patent system. (For example, the materials and pharmaceutical industries make a habit of filing patent applications).
I expect that new advances in food will soon be viewed appropriately as “technology.” Notably, Wired Magazine has already displayed some forward thinking by placing “cooking” in the same sentence as “science.” That intellectual leap will lead to tremendous opportunities as people in the industry make the transition from just cooking to inventing.
Patenting a new food technology would give the inventor the exclusive right to make, use, or sell the innovative food. Patenting a food would allow the inventor to demand royalties from copyists who wish to utilize the invention.
Examiner Rejects Compound Claim as Anticipated by Error in Prior Art
I recently worked on a case where the examiner rejected a claimed compound as anticipated by an incorrect structural formula. The case made for an interesting case of “anticipation” under 35 USC 102.
Conventionally, an examiner rejects a compound as anticipated upon finding that compound in a structural database. But, this time, the structure was clearly wrong. The author assigned the wrong structure to a molecule that he made. Based on common sense, rejecting the compound for lack of novelty seemed improper because the rejection was based solely on an error cataloging a compound by the wrong structure. The claimed compound was—in fact—new.
During prosecution, all parties knew the right result. The examiner wanted to allow the claim. But the examiner could not get around finding an exact structural match. The applicant, knowing he was the first to make the compound, was understandably frustrated by the Examiner’s insistence that his invention was “not new.”
Error in Prior Art’s Structural Formula
Here are a few relevant facts:
The claim at issue was to a chemical compound, defined by a generic structural formula (“the inventor’s claimed genus”).
The prior art disclosed a specific structural formula falling within the inventor’s claimed genus.
The prior art structural formula was wrong. The author of that art made a mistake when assigning a structural formula to a compound that he made.
Structural Match Found by Examiner
When searching for the claimed compound by structural formula, the examiner finds a structure that clearly falls within the claimed genus. The examiner issues a rejection for anticipation under 35 USC 102 (a). A disclosure of a chemical species anticipates a genus comprising it. “A generic claim cannot be allowed to an applicant if the prior art discloses a species falling within the claimed genus.” The species in that case will anticipate the genus. In re Slayter, 276 F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960); In re Gosteli, 872 F.2d 1008, 10 USPQ2d 1614 (Fed. Cir. 1989).
Section 102 (a) provides that “A person shall be entitled to a patent unless the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” From the examiner’s perspective, the scientific literature showed a clearly anticipatory compound.
The claimed compound is new, despite the structural match.
Upon receiving the Office Action, the inventor looks at the prior art and immediately sees the mistake. The inventor is the world’s expert in the class of molecules at issue. He provides an affidavit explaining the mistake. He explains that it would be impossible for the prior art’s disclosure to provide his claimed compounds.
When arguing fails to remove the rejection, the inventor experimentally confirms the mistake by reproducing the prior art’s procedure for making the compound. This evidence also does not remove the rejection. The examiner reasons that an ordinary artisan would have recognized how to make the claimed compounds based on (a) the prior art’s disclosure and (b) ordinary skill. (Notably, this conversation is directed to whether the prior art was enabling).
Arguing Novelty over a Structural Error
Below, I describe how an applicant can work with the case law to remove the rejection. The theory relies on two firmly established principles in patent law. First, a “compound” is not limited to its structural formula but includes all aspects of the compound. Second, anticipation requires prior art disclosing exactly the same invention found in the claim at issue.
First, remember that the term compound is a legally significant term. It means the compound and all of it’s properties. “From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963).
Also, anticipation means that the prior art compound is exactly the same as the claimed compound. “[A]nticipation under § 102 can be found only when the reference discloses exactly what is claimed and that where there are differences between the reference disclosure and the claim, the rejection must be based on § 103 which takes differences into account.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Comparing Structural Formulas
Comparing any two compounds could lead to four results because a compound includes (1) structure and (2) properties:
Two compounds that are exactly the same (same structure and properties)
Two compounds differing in structure only
Two compounds differing in structure and properties
Two compounds differing in properties only
Anticipation requires option number #1. Each of the other three scenarios include some differences, which should move the analysis into the framework of obviousness under 35 USC 103.
A case where the prior art only discloses the structural formula (by mistake) fails to provide a compound having the same properties as the claimed compound. Accordingly, that case falls into scenario #4, above. Because the properties are different, the compounds are different. Any difference means no anticipation. All differences must be considered under 103.
I would welcome other thoughts on this sort of rejection. Please feel free to add your thoughts by using the comments section below.
Does U.S. Patent No. 6,630,507 Give the Government Ownership of Marijuana?
No. U.S. Patent No. 6,630,507 does not give the government ownership of the marijuana plant. The claims in the patent define methods of using certain non-psychoactive cannabinoid compounds for treating a list of diseases caused by oxidative stress.
U.S. Patent No. 6,630,507 is limited to methods of using a certain class of isolated cannabinoid compounds—it does NOT claim the plant (or any compounds in the plant) per se.
Marijuana Technology and Marijuana Patents
I recently worked on a project having to do with a new marijuana technology. During the project, I became interested in whether entrepreneurs had begun mining the marijuana patent landscape. I asked Google. When I searched for “marijuana patents,” the most popular result had to do with the U.S. Government (the “government”) owning marijuana by virtue of a U.S. Patent No. 6,630,507. This notion appears to have many activist groups upset. Those groups believe that the government is limiting their use of marijuana through patent enforcement. Is this possible? No. The government does not “own marijuana” for several reasons.
The marijuana plant is not patentable because it has been in the public domain for centuries.
Products of Nature are Not Patentable
First, marijuana is a natural product. It has been around forever. But under US patent law, only new things can be patented. Since marijuana is not new, it cannot be patented. Naturally occurring substances like marijuana are in the public domain. I recently looked into a similar uprising about fennel, which is also in the public domain. Things in the public domain belong to the public without any patent-related royalties or exclusivity. From the standpoint of patent law, we all own marijuana communally.
U.S. Patent No. 6,630,507 Only Claims Methods of Use
Second, every claim in U.S. Patent No. 6,630,507 defines a method of use. Not a compound. Not a composition of matter. The government does not own the patent rights to marijuana per se. It owns the rights to methods of using certain cannabinoids for treating oxidative stress. The government could prevent another entity for methodically using certain cannabinoids for the purpose of treating a disease caused by oxidative stress.
Although marijuana (the plant) is not patentable, various marijuana technologies can be patented. In the case of U.S. Patent No. 6,630,507, the inventor patented a method of using certain (isolated) cannabinoids for a specific medical treatment.
The claimed methods are limited to treating certain diseases
According to U.S. Patent No. 6,630,507, the cannabinoids used in the claimed method are found to have particular application as neuroprotectants, for example in limiting neurological damage following ischemic insults, such as stroke and trauma, or in the treatment of neurodegenerative diseases, such as Alzheimer’s disease, Parkinson’s disease and HIV dementia.
Notably, about 1 hour ago, the Huffington Post ran a story about an “Ohio Mother Moving to Colorado to Treat Daughter’s Epilepsy With Cannabidiol Oil.” That particular use could arguably fall within the claims of the patent. The isolated oil seems to be within the scope of the nonpsychoactive compounds identified in the patent. Plus, treating epilepsy seems to be within the scope of the methods of treating ” neurological damage following ischemic insults, such as stroke and trauma, or in the treatment of neurodegenerative diseases.”
On the one hand, folks will probably get bent out of shape if the government changes the mother a royalty on using the isolated oil to treat her daugter’s epilepsy. On the other hand, the inventors of that patent made that treatment an option and arguably deserve a royalty for their contribution.
The U.S. Patent System does not offer a route to “own” marijuana because that plant is in the public domain
The Claimed Methods are Limited to Administering NonPsychoactive Cannabinoids.
The claimed methods use a class of cannabinoid compounds that avoid the “high” traditionally experienced by marijuana users. In particular, “Nonpsychoactive cannabinoids, such as cannabidiol, are particularly advantageous to use because they avoid toxicity that is encountered with psychoactive cannabinoids at high doses useful in the method of the present invention.”
The patent further distinguishes the cannabiniods used in its methods from other cannabinoids that produce “undesired psychotropic side effects.” The invention appears limited to methods of treating oxidative stress with a subset of such drugs are “substantially free of psychoactive or psychotoxic effects.” As a back of the envelope test, a marijuana user should could determine that she is not infringing on the 6,630,507 patent any time she experiences “psychoactive” properties.
Going back to the example of the Ohio mom from the Huffington Post article: from the standpoint of patent law the government would seem to have a better case for preventing the girl from using isolated nonpsychoactive cannabidiol than using naturally occurring marijuana for the same purpose. Part of the government’s invention seems to be separating the therapeutic (neuroprotective) properties from the unwanted psychoactive properties found in the natural product.
U.S. Patent No. 6,630,507 has 26 method claims.
Claim 1 is probably the broadest claim. It recites: A method of treating diseases caused by oxidative stress, comprising administering a therapeutically effective amount of a cannabinoid that has substantially no binding to the NMDA receptor to a subject who has a disease caused by oxidative stress.
This is a method of use claim. The government does not own marijuana. Rather, the government owns the rights to a method of using a particular group of cannabinoid molecules to treat “oxidative stress.” Oxidative stress is defined in the specification. The group of cannabinoid molecules is limited to those having “substantially no binding to the NMDA receptor.”
Stop Blaming Patent Law for Marijuana Restrictions
The fact that the government does not “own” marijuana by virtue of s U.S. Patent No. 6,630,507 does not preclude the government from prohibiting people from using marijuana. The last time I checked, using marijuana is a federal crime under a variety of drug laws. Nevertheless, those federal statutes have nothing to do with the patent laws. Please, do not blame patent law for this one.
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 needfor need for specialized styling options. Hot Tot is the onlyprofessional 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.
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.
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.
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 newmolecule).
Example Claim to Specific Molecule — Vitamin C
A compound having the following structural formula:
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.
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:
. 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.
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 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.
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.
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:
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.