Costs for preparing a patent application vary depending on the complexity of the invention. Here is one source of cost data: patent cost statistics. Below, I discuss some highlights from the patent cost statistics and also add some other available figures.
Cost of Patent Applications – Recent Numbers
A Seattle company that I work with made of point of asking the cost question of every inventor and every patent attorney willing to comment. The 2013-2014 numbers fall within the range of $5,000 – $6,000 for a provisional and $12,000 – $15,000 for a non-provisional. Since the United States moved over to the First Inventor to File system, most attorneys agree that the quality (and cost) of a provisional applications is approaching that for a non-provisional application.
Personally, I encourage my clients to invest in a good provisional patent application at the onset. That provides the strongest priority claim and also cuts down on the fees for filing a non-provisional application. (If the provisional application is of non-provisional quality, then it takes little work to use it as a non-provisional one year later).
One major Seattle technology firm reported paying a flat per-application fee based on 3 levels of patent complexity: A = $7500, B = $10,000, C = $12,500. Nearly all sophisticated software patents are of B or C complexity. Chemical inventions are mostly C complexity.
Some Ballpark Cost Figures for Filing a Patent
$10,000, on the low end, to file a patent. “But [Ronald J. Riley, president of the Professional Inventors Alliance USA] and other small inventors also knock the present system: High legal bills — inventors can expect to spend $10,000, on the low end, to file a patent; most of that is attorney’s fees.” How much does it cost to file a patent? What is the cost of a patent? (Akweli Parker, “Inventor’s reality,” Philadelphia Inquirer, Philadelphia, Pennsylvania, March 23, 2006) $10,000 – $15,000 as a range. Attorney fees charged for preparing a patent application. “[M]ost companies spend between $10,000 and $15,000 in attorney fees to prepare the application.” Patent attorney fees. (Dean Turman, patent attorney at MacCord Mason, Greensboro, North Carolina quoted in Michelle Cater Rash, “Restructuring raises patent fees, could hinder startups,”Business Journal Serving the GreaterTriad Area, April 11, 2005)
Complex Inventions Cost More
Complex inventions cost more to prepare than simple applications. More work and more expertise are required to file patent applications on complication technology. For example, one should expect patents covering chemical compounds or processes to involve more work and expertise than inventions to simple machines.
Many large firms break inventions down into tiers of complexity. Extremely simple inventions would fall into the least costly tier, hovering around $6,000. (Extremely simple inventions could include coat hangers, paper clips, earmuffs, etc). Highly complex inventions would fall into the most costly tier, ranging from $15,000 and upwards. Highly complex inventions would include pharmaceutical, medical imagine devices, complicated software, and the like.
One back-of-the-envelope way to determine the cost is to ask the level of education required to work with the technology. Would a machinist or technician understand the invention? Or would understanding the invention require a PhD?
According to Julia Feldmeier of the Washington Post, filing a patent application “can easily run more than $20,000, depending on the complexity of the patent…” See “Any Bright Ideas?; How Local Inventors Try to Capitalize on That ‘Aha!’ Moment,” The Washington Post, March 4, 2007).
Harold Wegner circulated a list of these schools, broken down to the Top Ten within that List that have an evening program. Mr. Wegner’s motivation for the selection was that “more and more successful patent students are welcoming the chance to attend 1L classes “full time”, but then get a full time patent job in their 2L and 3L years while taking law school classes at night.”
These are the best IP Law School that offer an evening program.
My Experience Learning Patent Law at GW’s Evening Program While Working for Finnegan During the Daytime
I attended the George Washington University Law School while working for Finnegan. I think that this was the best way to learn patent law. Working through law school gave me practical experience from 9-5 each day and then academic context from 6-8pm each night. In my opinion, either of these taken alone does not provide the synergy of having them together. By learning this way, I often tried to apply what I was learning in law school to the work that I was doing for clients during the day. I also approached my lecture sessions from the standpoint of trying to extract useful bits that I could apply to my work at the firm.
Another plus to working through law school is that many firms will help pay for school. When I was at Finnegan, my “Student Associate” position came with tuition reimbursement. That’s a big win. However, it becomes taxable income, so law school still is not free once you take that into consideration.
There were a few notable downsides to working while going to law school. First, it was time consuming. Everyone complains about how hard it is to balance law school with work. In my experience, it wasn’t a big deal. I listened to lectures each night instead of watching TV. And, having a “real job” during the day helped keep the law school experience in perspective.
Second, going to evening classes takes four years to get a JD. That’s an extra year of law school. This can be condensed to 3.5 years by attending summer classes. But, either way, you drag out the process. For this reason alone, I knew many students who transferred over to full time. If I could have had it my way, I would have done the full time (3 year) route but also worked full time.
Big Opportunities for Patenting Clean Energy Technology
Thanks to Houston Brown for this great guest post on clean energy innovation. The post is particularly timely in view of the American Chemical Society’s upcoming conference on Chemistry & Materials for Energy. The conference will be held from March 16-20, 2014 in Dallas, Texas.
IP professionals often analyze patent-related activities in aggregate by defining the ‘patent landscape’ for a technology or field of study. The landscape analogy provokes images ranging from barren deserts to dense forests, and variances in patenting activity can be just as wide. The current landscape for clean-energy technology is best related to a freshly ploughed farmer’s field – much care has been taken to ensure the conditions for growth are ideal, and the time to plant is now.
The U.S. Department of Energy Recognizes the Importance of Clean Energy Technology
There is no mistaking how important clean energy technologies are to the US Department of Energy. The primary goal of their latest strategic plan is to “Catalyze the timely, material, and efficient transformation of the nation’s energy system and secure U.S. leadership in clean energy technologies”.1 To this end the DOE has contributed more than $6.8 billion towards renewable energy development between 2003 and 2012,2 of which about $950 million has been directed towards university-based R&D. While academic scientists across all six renewable energy platforms (solar, wind, tidal, geothermal, hydro, biomass) have benefited from the funding, the budget allocations have been far from equal. In 2004 more than 75% of clean energy R&D dollars were directed towards projects related to solar, bio energy, and hydrogen/fuel cells.3
So, what do cadmium telluride photovoltaics, nano-structured biomass pyrolysis catalysts, and solid oxide fuel cells, have in common? They are all the result of innovations at the interface between chemistry and materials science. Chemistry and materials science are driving the transformation of the nation’s energy system. The DOE appears to appreciate this contribution.
Opportunities for Chemical Contributions to Clean Energy Technology
While substantial funding has been in place for decades, the development of clean energy technologies from chemistry and materials has been slow. Major advances towards understanding fundamental processes have been prerequisites for the development of commercializable technologies. Fortunately, the state-of-the-art for many applications has advanced to the point that ideas that once seemed impossibilities are being reduced to practice. The inventive steps that underlie the progress in these areas are not only highly desirable; they are often patentable.
Clean Energy Startups Recognize the Importance of Patenting Clean Energy Technology
Clean energy startups around the country have begun leveraging strong chemistry-based patent portfolios to gain access to an abundance of government-incentivized financial support. The trend is reflected in patent activity at the USPTO, where applications for solar, bioenergy, and hydrogen fuel cell technologies have grown steadily since the early 2000’s.4 While the increase in activity is significant the landscapes remain largely under developed.4 This finding manifests frequently in prior art citation patterns from the USPTO database, where patent applications in these fields consistently turn to peer-reviewed journal articles to describe the prior art, presumably due to a dearth of related patents.
Academic scientists that are inventing in these key areas should not delay in capitalizing on this opportunity. Working with an expert IP professional during the process of reducing an invention to practice enables scientists to draft patent claims covering the most desirable parts of the patent landscape. The clean energy patent landscape is primed for growth, now is the time for chemists and materials scientists to stake their claim. References:
US Department of Energy Strategic Plan, May 2011, DOE/CF-0067. Available at: http://energy.gov/downloads/2011-strategic-plan
Renewable Energy R&D Funding History: A Comparison with Funding for Nuclear Energy, Fossil Energy, and Energy Efficiency R&D, CRS Report for Congress, March 7-5700, RS22858. Available at: www.crs.gov
Patents and Clean Energy: Bridging the Gap Between Evidence and Policy – Final Report, United Nations Environment Programme. Available at: http://www.unep.ch/etb/events
Patent-based Technology Analysis Report: Alternative Energy Technology, World Intellectual Property Organization. Available at: http://www.wipo.int/reference/en/
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.
Why Academic Scientists Should Use the Patent System
Academic scientists often regard the patent system as beyond their reach. I recently communicated with a few hundred members of the American Chemical Society, encouraging them to make better use of the patent system. An overwhelming majority considered the patent system to be something reserved for finished, commercialized technology. Not true.
Academic scientists should embrace the patent system for a variety of reasons. The post below outlines a few of them, including benefits to reputation and funding sources.
Patenting Academic Research – Background
After a decade of economic stagnation US Congress passed the Bayh-Dole Act in 1980 as an attempt to tie university-based innovations to the private sector. Among other things, the legislation provides ownership rights for inventions developed with government support may be granted to directly to the inventor or university. The Bayh-Dole act incentivizes academic scientists using federal research grants to bring their products to market. Response to the act has been impressive; In 1980, 390 patents were awarded to university-based entities, by 2009 the number increased to 3088.
Historically, the vast majority of university-based patent applications were associated with the country’s elite research institutions, but university-based patent activity is becoming increasingly widespread. Bibliometrics – the analytics of patent and publications records – provides clear evidence that academic scientists are reaping the rewards of engaging the patent system, and the rewards are numerous.
For Academic Scientists, Patent activity and publication productivity are positively correlated
‘Publish or perish’ is the mantra of the scientific community for a reason: journal submissions are the metric by which academic scientists are measured. Bibliometric studies at both the national and international level indicate that inventor-scientists (academic scientists with one or more patent applications) publish significantly more than their non-patenting colleagues who work in similar fields and who have similar career characteristics.
In addition to increased publication rates, there is a direct relationship between patent-activity and publication-impact factors; inventor-scientists are more frequently cited by their peers, and their work is more frequently accepted in top-tier journals.
“Even after controlling for individual heterogeneity, the event of a patent is likely to alter the natural flow of publications produced year-by-year. In this particular point, all available studies agree that the relationship between patent and paper scores is a positive one.”
For Academic Scientists, Patenting Benefits Funding, Networking, Collaboration
Data collected from the curriculum vitae of more than 1200 US academic scientists provide further insight into the benefits of engaging the patent system. Relative to their non-patenting colleagues, inventor-scientists receive more private-sector funding. The contributions are significant; in 2009 industry contributed more than $3.2 billion to academic research and development in the United States.
Ties to industry are also associated with enhanced career mobility. Inventor-scientists spend more of their between academia and industry, typically in consultant or directorship roles. These activities are associated with the development of broad career networks and increased potential for interdisciplinary collaboration.
For Academic Scientists, Patenting Provides One Indicator of Better Science
Of course, many scientists are driven less by external factors like funding and promotion, and more by the intrinsic rewards of problem solving and discovery. At this level, publication and patenting activities present similar intellectual challenges. Great patents and publications arise from the same foundations: creativity, originality and novelty. Many inventors feel they improve the quality and the state-of-the-art character of their fundamental research questions as a result of the insights they obtain from engaging with the patent system.
Given the increasing number of university-based patent applications, it is likely that the number of inventor-scientists will continue to rise. Arguably, the scientific community will be stronger for it.
Patenting Provides a Potential Revenue Stream for Academic Scientists and Institutions
Another potential upside arising from patents is that the academic community could incur a significant monetary benefit. By using the patent system, these pioneering, academic scientists could claim their advances. By claiming their contributions, they can create intellectual property in those contributions. If commercially applied, that property would create a revenue stream–directly benefiting the inventor-scientists and their academic institutions. **This post was co-authored with Houston Brown, PhD References:
1. The Bayh-Dole Act: Selected Issues in Patent Policy and the Commercialization of Technology, CRS Report for Congress, RL32072, December 2012, Wendy H. Schacht. Available at: www.crs.gov
2. Fabrizio, K. R.; Di Minin, A. Journal of Research Policy, 2008, 37, 914–931
3. Calderini, M.; Fanzoni, C.; Vezzulli, A. Journal of Reseach Policy, 2007, 36, 303–309
4. Meyer, M. Journal of Research Policy, 2006, 35, 1646–1662
5. National Science Foundation 2012 Statistics. .pdf available at: http://www.nsf.gov/statistics/seind12/c5/c5h.htm
6. Dietz, J. S.; Bozeman, B. Journal of Research Policy, 2005, 34, 349–367
7. Carayol, N. Journal of Research Policy, 2003, 32, 887–908
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.
The inventors’ disclosure dramatically affects both the quality and cost of the patent application. Drafting a patent application involves translating technical information into a legal definition. Translating new technology into a patentable invention relies on the inventor’s disclosure. The inventor’s disclosure serves to convey information about the new technology to the patent professional. The patent professional uses the inventor’s disclosure to draft patent claims.
Many systems exist for preparing a disclosure. For example, many organizations (like universities) have invention disclosure forms. These forms aim to collect relevant information from the inventor. These forms can be structured as an “inventor questionnaire” having questions teasing out relevant information about the invention.
Benefits of Preparing a Good Invention Disclosure
Efficiently providing comprehensive, organized, useful information to the patent professional has two key benefits. First, it dramatically improves the quality of the resulting patent application. Second, it lowers patent application drafting costs by reducing the amount of attorney time spent collecting and organizing information about the invention.
Regardless of how the disclosure form is structured, the goal remains the same. The inventor’s disclosure should present relevant information to the patent professional in a useful way. With this goal in mind, I have listed some information that inventors could organize before contacting a patent professional. Having this information prepared would make attorney time more productive.
Invention Disclosure: What is the Invention?
What is the invention? This is the critical question. Here are some other questions that cut towards defining the invention:
What words should an inventor use to describe the invention?
How would someone best perform a keyword search for the invention?
What alternative searches would also describe the invention?
How would you list the components of the invention?
How would you describe it in 5 words? 10 words? a paragraph?
Inventors often view the invention as their commercial embodiment. The patent professional should work with the inventor to find words that accurately describe that commercial embodiment. The patent professional should also work with the inventor to find words capturing the inventor’s broader contribution to the state of the art. What are the far-reaching implications of the invention? By considering the invention’s broader contribution, the patent professional should work to grow the invention.
Invention Disclosure: What is the State of the Art?
When defining an invention, it is useful to understand the prior art. Understanding the prior art should help the patent professional define the invention more broadly. Here are some prompts that attempt to unpack the state of the art when the invention was made:
What technology area does the invention fit into? Many inventions fit into a variety of different technology areas. List them all. The United States Patent and Trademark Office (“USPTO“) organizes technology into Art Units, Classes, and Subclasses. These are good examples of technology areas.
What was the state of that art when the invention was made? (“When the invention was made” means when the inventor first conceived of the invention).
Without the benefit of your invention, what would someone in your field use as an alternative? How many alternatives exist? How would the results differ by using an alternative instead of using the invention?
What sort of person would ordinarily invent technology of this kind? (Describe the skill of someone in this technology area). What is the level of skill in this art? Education?
What problem existed before the invention?
What need existed that made the invention beneficial?
Invention Disclosure: What are the Differences?
Understanding the differences between the invention and the prior art is critical to drafting the patent claims and arguing for patentability. Here are some prompts for uncovering the differences:
What makes the invention different from the state of the art?
When the invention was made, how was it different from anything before it? Here, I find it useful to create a Table of Differences. That Table should list the most relevant technology existing at the time of invention. For each reference, the inventor should describe how the invention differs. These differences are ultimately important to the patentability of the invention when the claim is evaluated for obviousness. Understanding all of the differences when drafting the claims allows the inventor to submit claims that define the invention by emphasizing its patentable features.
Invention Disclosure: Evidence of Patentability?
During patent prosecution, the patent examiner will most likely question the patentability of the claims. (This will come in the form of a “rejection.” The patent professional can often find good arguments to overcome the rejection by considering evidence of patentability. Below, I have listed seven types of evidence that could help the inventor’s arguments for patentability. This evidence of patentabilityshould be provided in the inventor’s disclosure:
Skepticism by Experts – When the invention was made, did experts in the field question whether it was workable?
Teaching Away – Before making the invention, did members of the relevant art discourage pursuing the invention?
Longfelt Unmet Need – Prior to making the invention was there a long felt need for it?
Failure by others – Did other people in the art fail to make the invention prior to the inventor’s success?
Copying – Since making the invention, has it been copied by others?
Commercial Success – Was the invention a commercial success?
Licensing – Have others contacted the inventor to license the invention?
US Patent Publication Number 2013/0317984 as recently received some attention because of it’s similarity to the Bitcoin concept.
CNN recently published a video post about Bitcoin. The video featured Ron Paul, who suggested that alternative currencies become more attractive during times when the dollar is under attack. Bitcoin has gained some recent popularity as one such alternative currency. Some have suggested that Bitcoin could present a“new paradigm for effectuating electronic payments,” ultimately rivaling present-day services like Western Union, etc.
Recent media attention for Bitcoin suggests that JPMorgan Chase has patented rival technology seeking to compete with Bitcoin. This is not true for a few reasons.
First, JPMorgan does NOT have a patent. JPMorgan has a pending patent application with claims that are potentially relevant to Bitcoin.
Second, the patent application of interest is old news. The application dates back over a decade, which precedes the advent of Bitcoin. This strongly undermines the notion that JPMorgan Chase is chasing Bitcoin’s technology.
Nevertheless, the current scenario raises the interesting question as to whether JPMorgan’s application could potentially cover Bitcoin’s technologywhen that application issues into a patent.
No Patent for JPMorgan— Only a Patent Application.
The news media appears to confusion a patentwith a patent application.
The accompanying CNN article noted that JPMorgan Chase “has patented a digital payment system that could rival Bitcoin.” CNN’s article continues to explain that the digital payment system “includes digital wallets, the ability to transfer money to anyone and anonymity too.”
The Telegraph also reported on the story. The Telegraph ran the following headline: “JPMorgan files patent for ‘bitcoin killer’ currency.” The Telegraph further explained: “The largest bank in the US, JPMorgan, has filed a patent for an electronic currency with many similarities to bitcoin.”
JPMorgan Chase does not have a patent. They only have a patent application. This is an important distinction. Anyone can file a patent application for a new technology. That application matures into a patent only after it is examined by a patent examiner during a multi-year process called patent prosecution. During patent prosecution, the applicant and the examiner argue about the claims and eventually agree on a set of claims that defines a patentable invention.
JP Morgan’s Patent Application is only at the very beginning stages of patent prosecution. It is waiting to be examined at the United States Patent and Trademark Office. The application of interest is US Patent Application Number 13/958,881. This is not an issued patent. CNN, the Telegraph, and other news organizations are probably reporting on the patent application because it published on Nov 28, 2013. Apparently that makes it a current event in the eyes of the media.
JPMorgan’s ‘Bitcoin Killer’ Patent Application is Old News.
Notably, the application is old news–more than a decade old. The “Bitcoin killer” application is actually a continuation of an early patent application that was filed on Feb. 3, 2000. The application claims priority back to provisional patent applications filed as early as May 3, 1999. Accordingly, it is highly unlikely that JP Morgan filed this application with any sort of motivation to rival then-non-existant Bitcoin. However, this chronology gives rise to some interesting questions:
Could Bitcoin’s technology infringe on JPMorgan’s patent claims (when they issue)?
As discussed above, JPMorgan’s claims have not issued. (They need to be examined before they issue). However, what if the issued claims cover Bitcoin’s technology? That scenario could be a Bitcoin Killer.
JPMorgan’s Pending Claims
JPMorgan’s current patent application has three independent claims. One example is reproduced below in blue. The other claims (along with the description) can be accessed by following the link to JP Morgan’s Patent Application. Example Claim: 155. A computer-implemented method of providing an anonymous payment from a mobile device to a payee device to enable an electronic payment between a payer and a payee without provision of an account number or name from the payer, the method comprising: storing, in a computer memory at a host server, payer information and instructions; and accessing the computer memory using a computer processor to retrieve the payer information and instructions and executing the instructions to perform steps including: receiving at the host server, a bill payment message from the payee, the bill payment message including a transaction ID; transmitting the transaction ID to the payer, the transaction ID permitting the payer to initiate transmission of a payment amount; generating a payment authorization message from the payer, the payment authorization message including a payment amount to be tendered to the payee and the transaction ID, the transaction ID allowing identification of the payment, thereby enabling redemption of the payment amount after the payee receives the transaction ID; and transferring the payment amount from an account associated with the payer to an account associated with the payee.
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.
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.