In a previous article, we fielded the perpetual question of what can I patent? Although there are a variety of technical legal tests for patentability, a simple test simply asks whether the inventor made somethingbetter. A better mousetrap is probably patentable.
Patent law allows an inventor to patent “anything under the sun made by man.” But, the invention must be new and not obvious. Understanding what makes an invention “new” is relatively straightforward: An invention is “new” when it differs (in any way) from the existing technology. However, the inventor only gets one year to file a patent application after disclosing the invention. If you ever need new technology for your business, then consider using this business sms service to really improve workflow.
The most important hurdle to getting a patent is showing that it was not obvious at the time it was invented. This area of patent law is probably the most confusing. The legal test for nonobviousness comes from a 1966 Supreme Court case. See Graham. In short that test requires using all available evidence to step inside the inventor’s mind at the moment of invention. Practically speaking, accurately elucidating a person’s thoughts years after the inventionis difficult.
Courts, patent professionals, and legal scholars have always struggled with the obviousness doctrine. Supreme Court Justice Scalia has called the doctrine “gobbledygook.” Countless others have expressed difficulty with consistently applying the “test” for obviousness.
Something Better was probably Not Obvious.
Asking whether an invention was better provides a useful back-of-the-envelope test for patentability. Was the technology better when it was invented? If it was better, it is probably patentable. Here’s why:
A better technology implies that it is somehow different from the existing technology. (Only different things can be better. Otherwise they would be the same).
A truly better technology is unlikely to be “obvious.” If it were obvious, why didn’t someone already do it? In today’s world of rapid communication and innovation, better technology rarely lies dormant. If someone invents a better mousetrap or a better website, that improved technology is quickly exploited.
Although the Better Test does not hold any legal significance, it does provide a simple framework for understanding patentability. (For the legal test see Graham).
For an inventor new to the patent system, the Better Test test should avoid contacting a patent attorney prematurely. Generally speaking, it’s not worthwhile to pursue patenting something not better than the prior art. Additionally, focussing on the points that makes an invention better will facilitate communication between the inventor and the patent professional. (I often ask clients to list the most similar technology with a brief explanation of what their invention is different and better). See Table of Differences. Focusing on these points of innovation helps to draft strong claims that are allowed by the patent office.
Showing that an invention satisfies an unmet need bolsters an inventor’s case that the invention is patentable. To be patentable, an invention must be both new and not obvious. To be “new,” the invention must differ from anything done before. This test for “new” is fairly simple—any difference makes the invention new. The test for non-obviousness is less straightforward. To be “not obvious,” the invention must provide a nontrivial advance beyond the prior art.
Evidence that an invention satisfies an unmet need support the position that the invention is patentable. Solving an unmet need indicates that an invention provides a significant contribution to a technology space. Accordingly, showing that the invention fulfilled an unmet indicates that it was not obvious. Think about it: Existing needs do not linger long in an age where people seek to develop profitable solutions to those problems. If the solution were obvious, someone would sell it.
Chaim Pikarski Satisfies Unmet Needs
Recently Fast Company Magazine published article about Chaim Pikarski. In short, Mr. Pikarski and his team scour Amazon.com for evidence of any unmet need. According to Fast Company, Mr. Pikarski “has an entire team of people who read reviews on Amazon, looking for moments when people say ‘I wish this speaker were rechargeable.'” This entire team searches for “features people wish a product had” then they design and make the desired version.
Mr. Pikarski’s genius lies in his recognition that commercial sites like Amazon are “actually giant laboratories.” Within the virtual walls of these laboratories, Mr. Pikarski “figures out what features consumers want, and then produces them.” His spirt for making new, better products rings true in his exclamation: “Hey, wait a minute, we’re producing all these products—let’s innovate! Let’s design!”
Unfortunately, Mr. Pikarski’s genius does not yet appear to extend to appreciating the patentability of his innovations.
Satisfying and Unmet Need = Inventing Patentable New Stuff
According to Fast Company Magazine, “Pikarski often talks of his products as if they’re hilariously obvious.” Mr. Pikarski’s genus is exceeded only by his modesty: “There’s nothing innovative about it,” he says.
Nothing innovative about it? To the contrary, satisfying unmet needs is about as close to the definition of “innovative” as a person can get. In the months that follow, I hope that I can find Mr. Pikarski and help him make some more money by using the patent system to protect his inventions. He should claim these inventions so that he can own the products that he creates.
How much does it cost to file a patent application? The total cost for filing a patent application depends on (1) the administrative fees and (2) the fees for professional services. Administrative fees are those fees charged by the patent office. Fees professional services are those charged for the attorney’s time and expenses in preparing the application. Most of an applicant’s monetary cost comes from the fees for professional services. See #2, below.
1. Patent Cost – Filing Fees Charged by the United States Patent Office
Filing a provisional patent application costs $150 for a small entity. Filing a utility patent application can cost as little as $730 for a small entity.
The above fees refer only to the patent office’s administrative fees. Those administrative fees include the patent office’s filing fee, search fee, and examination fee. The patent office changes these fees from time to time. See the patent office’s current fee schedule.
2. Patent Cost – Fees for Professional Services
Most of the costs associated with filing a patent application come from the attorney’s fees for professional services. Here, most attorneys charge by the number of hours required to perform the work. Otherwise stated: How many hours of attorney time will it take to produce all of the paperwork required to file a (quality) patent application? Take into consideration that a standard patent application consists of about 20-30 pages of highly technical and legal language—for example, definitions, scientific formulas, experimental details, etc. Unless the inventor provides all of this content, it must be created by the attorney. Drafting 20-30 pages of highly technical content can take lots of time.
I admit, this is a long winded way of saying “it depends.” The cost for filing a patent application depends on the amount of work required by the attorney in translating the inventor’s disclosure into a legal document. That amount of work will depend on the quality of the inventor’s disclosure.
The Applicant can Negotiate a Fixed Fee Arrangement
The time and energy associated with preparing a good patent application can vary considerably. An inventor should always insist on having a candid conversation with the attorney about the fees before beginning work. Conventionally, attorneys bill by the hour. But, the applicant can insist on a “fee cap,” “fixed fee,” or “flat fee” arrangement.
As an inventor and quality-oriented patent drafter, I prefer the flat fee system because it encourages attorneys and inventors to engage one another during the drafting process. I think that facilitating communication between the inventor and the attorney leads to better patent applications. Preparing a good patent application is a team effort, aimed at converting a new technology into a legal definition. Making each moment of conversation “billable” would seem to discourage dialog between the inventor and the attorney.
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.
Years later, an Examiner at the patent office examines those claims;
The inventor’s representative argues that the claims should be allowed to issue into a patent;
The Examiner takes a more skeptical approach, usually rejecting the claims;
(Optional) Sometimes the applicant amends the claims to appease the Examiner;
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 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.
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 lifeand 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.
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?
Taking the examples above, it becomes clear that the class ofthing 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.
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.
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.
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
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
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.
Compositions of matter are one of the four principle categories of patentable subject matter
Patenting a Composition of Matter
Composition of matter claims are considered to be among the most powerful patent claims possible because they are broadly applicable. They cover any use of the claimed composition of matter. (By contrast method claims would only cover one method but not necessarily other uses).
What is a composition of matter?
Under United States patent law, a composition of matter is one of the four principal categories of inventions that may be patented. The law provides that “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of [title 35 of the United States Code]” See 35 U.S.C. 101.
Hopefully, the terms “process,” “machine,” and “manufacture” are pretty straightforward based on their conventional meanings. A composition of matter refers to the stuff that an invention is made out of. In particular, defining a composition of matter requires identifying its molecular composition.
The United States Supreme Court has defined “composition of matter” to mean “all compositions of two or more substances . . . .” This definition is somewhat problematic because it fails to account for inventions made of only one substance. In practice, those one-substance inventions (aka “new chemical entities” or “new molecules”) are called compounds, which is confusing because “compound” is not listed in the categories of patentable subject matter. The easiest way to make sense of this discrepancy is to consider a “compound” to be a special class of “composition of matter,” having only one molecular formula.
A composition of matter is a mixture of two or more compounds, i.e., a mixture of two or more chemically distinct molecules
Claiming a composition of matter
An inventor should draft claims to a composition of matter any time the invention differs from the prior art on account of its chemical profile. If the invention can be distinguished base 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.
Some examples of new compositions of matter would include the following:
New materials, such as plastics, metal alloys, etc.
Notably, the above list of “new” inventions does not require that the ingredients are new. So long as the resulting combination provides something different than anything made before, that end product could be described as a new composition of matter. In the case of food and beverages, the resulting flavor is a relatively good indicator that the end product is new. Flavors and fragrances come from molecules. A different flavor or fragrance would indicate that the underlying molecular composition is different.