The following is a further posting in a series of articles by David French, a patent attorney with 35 years experience, which will review patents of interest touching on the field of Cold Fusion.

On the eternal issue of concern for Cold Fusion fans: Why the US Patent Office is reluctant to issue patents in this area, I have been referred a link to the following article: Cold Fusion & Patent Office. This article by Hal Fox, President, Fusion Information Center is dated August 8, 1999 and reports on an investigation being carried out by Special Agent Kimberlee Taylor of the Office of the Inspector General, Commerce Department. Apparently this lady was assigned to investigate complaints that the Patent Office was rejecting patent applications for Cold Fusion, or low-energy nuclear reactions, as a matter of general policy.

The article identifies believed sources of resistance to this new technology and ends with a plea for readers to: “WRITE THE MEMBER OF CONGRESS FROM YOUR DISTRICT AND BOTH SENATORS FROM YOUR STATE” and copy Ms Taylor.

It is apparent from a short reading that this reference is from somebody who is greatly in favor of, and believes in, Cold Fusion technology. No matter how sincere that belief was in 1989, we are now 23 years later and still have not seen a solidly recognized commercial demonstration of a working Cold Fusion apparatus. This is actually a consideration in addressing the policies and behavior of the United States Patent Office.

Before leaving this document it is apparent that it was written by someone who has a prejudice in favor of the granting of patents. The following statement made in the document is a telling indication:

“The big issue is the denial to U.S. inventors of their constitutional rights to the protection of their inventions!”

There is no “constitutional right” for inventors to obtain protection for their inventions. The U.S. Constitution grants powers to the Federal Government to create exclusive rights under the terms and conditions that the Federal Government chooses to impose. Article 1, Section 8(8) of the U.S. Constitution states:

“The Congress shall have power…To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries;”

The Constitution does not create a right to obtain a patent. The Constitution creates a power in the Federal Government to grant patents on such terms as the Federal Government sees fit.

Quite rationally, the Federal Government does not want to be issuing patents for things that do not work. The problem is that persons can file for patents and if the patent is granted, members of the public may assume that this is an endorsement that the invention works. This is far from the truth.

In the case of most patents, the Examiner does not question whether the invention will work. The Examiner does not question whether the claims made in the application as to the usefulness of the invention under various conditions are all true. An applicant may file for a glue that it alleges will hold a car attached to a cable 10 feet above the ground. Perhaps the statement is true if the car is some micro-vehicle. But it might not be true if the car is standard weight. The Examiner never gets into arguing with the applicant whether these kinds of statements are true.

In all cases, the Examiner is concerned whether the exclusive rights that the applicant is requesting will interfere with anything that was previously available to the public. This is the Golden Rule of patent law. A patent may not issue for anything that was previously “available to the public”. This phrase includes not only everything that was disclosed or done before, but also includes obvious variants on all such things. Obvious variants are in the class of things previously “available to the public”. Collectively, this summarizes the famous novelty standard of patent law.

While Examiner’s focus on this novelty issue in reviewing every patent application, only in a few cases do Examiner’s undertake to question whether the statements of usefulness made in a patent application are true. In the case of perpetual motion machines, applicants are asked to file proof that their invention works. Filing a working model would be totally acceptable. This class of invention is so clearly impossible that it would be an embarrassment to the Patent Office to issue a patent for such technology.

Patents addressing Cold Fusion issues are a little different, but are treated in the same way as patents applications that purport to deliver a perpetual motion benefit. The Examiner does not refuse the application. He says to the applicant: “Prove it”; and then gives the applicant an opportunity to file papers by way of proof.

The above referenced article mentions 35 pounds of paper filed by Dr Mitchell Swartz in order to support his application to obtain a patent in the Cold Fusion field. Both the Examiner handing the Swartz filing and the Board of Appeals in the US Patent Office did not think that these 35 pounds of paper proved that the arrangement presented by Mitchell Swartz worked in accordance with his representations. Therefore they refused to grant him a patent. Perhaps they were wrong, but it would take a major effort to sort it out.

Mitchell filed an appeal to the Court of Appeal for the Federal Circuit. It is not the job of this Court to review 35 pounds of paper and they said as much in dismissing this appeal. They only look to see whether the Board of Appeals at the US Patent Office made a mistake in principle or were outrageously irresponsible. They ruled that Mitchell Swartz had not shown them that his situation fell into any of these two categories. Therefore they rejected his appeal to the Court.

This scenario has occurred repeatedly before the US Patent Office. Applicants can say almost anything they want in a patent application, but they have to accept the consequences. The claims have to pass the novelty test. And in respect of certain classes of invention, the Patent Office insists that evidence be filed demonstrating that the application passes the utility test and the sufficiency of disclosure test. The latter test requires that the patent application tell others how to achieve the benefits of the invention.

Try and see this situation from the viewpoint of the US Patent Office. Up until 1836, patents were granted without any review whatsoever, whether they were new or not. They could be canceled before a Court if they were not new. But people would actually go to the Patent Office, copy an existing invention, file for a patent on that same invention and obtain a certificate signed by the President of the United States stating that they had obtained a patent. They would then go out and pressure manufacturers who apparently infringed the claims of these patents, demanding licenses on the threat of forcing such companies into litigation. This was very oppressive. This is the reason why in 1836 the United States Patent Office was established with a mandate to carry-out an examination procedure.

Here is the danger. Today, if a company were to obtain a patent purporting to cover a Cold Fusion technology, i.e. a patent representing that its special procedures could produce unlimited amounts of energy, electricity, etc., through a low-temperature fusion effect, then many investors would buy shares in the belief that the issuance of a patent was evidence that the technology was true. In a sense, the US Patent Office might be in a situation where they are facilitating a fraud. In the case of Cold Fusion technology, as well as perpetual motion machines, the USPTO has drawn a line. If you wish to address these types of technologies, then they say that you have to prove that your invention works.

Is that so unreasonable?

David French is a retired patent attorney and the principal and CEO of Second Counsel Services. Second Counsel provides guidance for companies that wish to improve their management of Intellectual Property. For more information visit: www.SecondCounsel.com.

David French is prepared to address questions included as commentaries to any of his postings or bydirect email. In particular, he would like to learn what people need to know in order to better understand patents.