More on USPTO reluctance to patent Cold Fusion

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.

18 thoughts on “More on USPTO reluctance to patent Cold Fusion”

  1. I am sincerely comforted that David French, a patient attorney, has faith in the integrity of the US Patient Office proceedures. Hope I am fairly summing up Mr French’s position that the US Patient Office would approve a patient for a working LENR device if compelling evidence was filed demonstrating that the application passes the utility test and sufficient disclosure of that test (the test requires that the patent application tell others how to achieve the benefits of the invention).

    I, a layman, am skeptical because there are several companies now that have compelling third-party testing results, and that have patient applications pending. Is the US Patient Office rejecting patients for working LENR devices? I sincerely hope not, and Mr French appears to say he doesn’t think they are. Perhaps nobody yet has presented compelling evidence to the US Patient Office of a working LENR device? I simply can’t rule that possibility out (yet).

    1. I have faith that a competent patent attorney, who prepares an enabling disclosure for a cold fusion technology that delivers on what is promised will, perhaps after some considerable effort and expense, be able to force the USPTO to acknowledge the truth and grant the patent that is merited.

  2. Could someone confirm the following legal assumption? One does not have to have a granted patent to protect one’s intellectual knowledge before going to “production” or “commericialization”. If one has properly applied for a patent, then goes into production, they would still be covered once the patent is granted.

    So the scenario of which comes first, “the chicken or the egg”. If I applied for a patent on a LENR device but this was not immediately granted due to the reasons in the above article., I could still go commercial and by doing so, help “prove” that the device works and is accepted by the public as working. This would be very strong evidence for granting the patent by the USPO.
    I would still be covered and could possibly obtain my patent faster this way.

    If I wait until the patent is granted, I may never go commericial since the USPO might not grant one until it is publicly accepted. By this I do not mean accepted by some scientific community, but the public in general, as realized by thier purchasing volumes of the unit.

    The problem with “proving” LENR to the USPO, one runs up against the same problem as recently indicated by Dr. Duncan at the University of Missouri. He was “scolded” by others for evening stating that the LENR matter be looked at, and this after 20 years of many different parties conducting experiments showing something IS happening. I do not believe it is very easy to show “PROOF” when such a hostile climate is observed. I show recordings of excess heat, the response will be “your measurements are wrong”. How do you prove or disprove that?

    So to recap, the question is: “Not having a patent granted should NOT stop me from going commericial or public as long as I have properly applied for the patent. In fact, going commerical is probably the best way to help facilitate getting the patent granted”

    Any experts or possibly Mr. French?

    1. It is not necessary to have a patent In order to go into business. Having a patent will not make your product succeed. A product with a patented feature has to succeed on its own merits. If you have a success and there is not already an existing similar alternative on the market, then your patent can enhance your profits.

      Having a patent is all about charging what the market will bear. If a competitor can offer something similar then competition will force prices down to a minimum profit level. That is the pain of a free-market system. Economists love it. Patents create a temporary exception that limits competition, but only in respect of features that are new, and only in respect of patents supported by a well-drafted patent application.

      It is critically important to understand these principles.

      1. @ David J. French

        I understand your answer, but I don’t think it clearly answers Bob’s question…..

        Which was, If Rossi has actually sold a working product, Will this accelerate the granting of Rossi’s patent, as a working product would be proof that it works.

        Assuming Rossi shows/demonstrates this proof…

        1. If Rossi has actually sold units and the units work, then if he is asked to prove that his invention as described in his patent application works, then he will both have to prove that the units sold work and that the units sold incorporate the invention specified in his patent application. In addition, he will also have to demonstrate that his description in his patent application is sufficient to enable others to build units that work. And finally, he will have to show that there is a feature in what he has described in his patent application that is new and unobvious.

  3. David French, Question: Mr. Rossi has stated he has sold 14 1mW E-Cats, one of them currently being operated by the owner. Assuming this is accurate, how important will this “fact” be in obtaining a patent and how important will it be assuming the LENR patent wars in the future. Thanks for your response.

    1. If Andrea Rossi has made an unqualified sale of a working unit, then the only valid patent for a feature contained in that unit that can issue in Europe, Asia and most countries is one based on an application filed somewhere before the sale occurred. For Canada, the US, Australia, New Zealand, and perhaps one or two other countries, that sale may set a one-year deadline to file. This assumes that the unit sold contains a feature that has never been disclosed anywhere before.

      A valid patent application can only be filed for features that have never been disclosed before the filing deadlines that I have referenced above. Patents for Europe can only be filed for features that are secret at the time of filing. Patents for the US presently can only be filed for features first disclosed by publication, use or sale less than one year before the US filing date.

      We know Andrea Rossi has previously filed a patent application that is pending at the US Patent Office. But that application can only support the grant of a patent in respect of features which were novel at the time that the first filing for that application was made. Also, for a patent to issue, the description in the application has to be complete. It must describe something that works and it must describe how to build at least one of example of something that works. The “story” in a patent filing cannot be changed once a final application has been initiated. A US patent examiner should comment in the next few months on the adequacy of this Andrea Rossi patent application.

      It is possible that Mr Rossi has filed another patent application somewhere that is pending in secrecy. Patent applications are kept secret for their first 18 months. So we do not know if he has another application already underway.

  4. Thanks,

    During the past 12 months patent offices may have seen a lot of activity in cold fusion filing. You must be looking forward to future disclosure. Your presentation helps a whole bunch.

    A bit more complex than a better can opener, commercialization of a cold fusion device for the home requires approval by agencies other than patent. Electrical and pressure vessel safety requirements in an operating device are put to extreme examination.

    During this development phase is it standard to file a patent before the certification process begins and additional patents as device design changes to certify?

    The edge against competition that a patent provides may not be as relevant in the cold fusion marketplace. Do you agree?

    The device that delivers the most at the best price will capture market shares. New and improved models along with improved methods will be a deciding factor. People will replace old models or brands with better ones. Dennis Busnell of NASA states there are many varied environments and excitation methods for these devices, “This is far from a “Narrow Band” set of physical phenomena…” Dennis Bushnell also believes that ones with better performance will replace devices he has seen, “we are still far from the theoretical limits of the weak interaction physics for LENR performance”. No one has hit the best design yet.

    I imagine a company adept at concurrent research, certification, and patent application will have an edge in a robust cold fusion marketplace. I also imagine the cold fusion marketplace may become such a large field that many different manufacturers will succeed.

    1. The edge against competition that a patent provides may not be as relevant in the cold fusion marketplace; compared to the better can opener marketplace. Do you agree?

      1. Here is how patents work, in a nutshell.

        If you are selling the only can opener in the world, (or on a desert island), and people have lots of cans to open, (because there has been a shipwreck that has spilt a cargo of cans on the beach), then you are going to be able to charge quite a bit to let people use your can opener. They will probably pay you by giving you lots of cans.

        But if someone else comes up with their version of a can opener, perhaps a regular knife with a special handle, then people can go to this alternative source. You will have to charge less cans for the use of your can opener if you want to receive any cans at all.

        If there were a patent in place that could prevent someone from selling a competing can opener, then you could shut them down and return to being the only one that people can turn to in order to open cans. Then you will be back in the big-profit/can-reception business!

        But does your patent cover every kind of can opener? That is an issue of patent “quality”. A patent is only really meaningful if it is broad enough to block competitors who are a threat. A patent attorney will help you get a patent that is “valid”, but they will be uncomfortable if you ask them whether your patent will be meaningful and effective. They may not be able to give you an answer. They may not be able to guess what other kinds of can openers people will invent. And besides, that may be the job for the inventor

        Properly done, an inventor should work with his patent attorney to figure out every reasonable way for opening a can and try to get a patent that has a broad scope of coverage. Unfortunately, the Prior Art Wall is a major barrier to getting meaningful patent protection. You cannot fence-in the entire countryside. You cannot patent anything that was previously available to the public. It is rare for an inventor to come up with the only way of doing something important. It is rare that a patent is truly meaningful and effective, but it does happen.

        A meaningful patent will only issue in the field of Cold Fusion if someone comes up with an arrangement that has a novel feature that makes the arrangement different from the prior art, and this difference is really so important that it makes a difference, a big difference, for consumers and customers. To be valuable, any patent covering this feature should also extend to additional close alternatives that competitors would otherwise try to adopt. It is not an easy thing to obtain a meaningful patent of this caliber. Good luck!

  5. a very simple answer to this discussion: DON’T DO IT IN THE U.S.A.

    if you want to begin the process of mass production of LENR devices, look outside the U.S. The U.S. is the global aggressor in the war on people to support the acquisition and sales of fossil fuels. you don’t need logic or conspiracy to help you with this decision, just go with your gut feeling and look for the right opportunity abroad.

    It can be easily argued that LENR represents the single most effective means by which human beings can assert local sovereignty against national and global hegemonic entities or central governance and economic hegemony.

    I love our planet and the people, the flora and fauna on it in our eon/age. There is nothing in this life that causes greater sorrow than the macro-economic and ecological effects of our global growth related to capital markets, government corruption, fossil fuels, and the continuing trend away from local political and economic control, away from the ideals and incarnation of democracy, toward a foul national and global oligarchy that will deplete our means of sustaining any shred of a healthy life.

    While Romney seeks election, every ounce of perception would suggest that he and his group of people are the force for ‘drill baby, drill,’ giving a free ride to natural gas companies and loans, tax breaks, plus the propaganda and legislation to waste the rest of what remains of America on a natural gas bubble and infrastructure spending.

    The race is on to save ourselves some clean water to sustain our DNA. Anyone who doesn’t understand this or refuses to accept it doesn’t deserve to see their DNA survive into the 22nd century.

  6. Hi Mr. French,
    I have a question that I would like your professional opinion for consideration.
    The question concerns abandoned claims. Here is an example of what I am talking about, and it concerns prior known printings or publications relating to a new patent application.

    One of Andrea Rossi’s original 15 claims, stated that you could substitute copper powder in the device instead of nickel. Now in his most recent submittal he has reduced the number of claims to 9, omitting the claim referencing copper.

    If a person was to sometime in the future actually develop a device that could use copper powder as the original transmuting metal, would they be able to patent it?

    Or would Rossi’s abandoned claim prevent that?

    I hope I have expressed my question clearly.

    Thank you for all of your interesting articles.

    Gary Wright

    1. This is a good question and it can be answered specifically relating to US patent law.

      Under US laws of patent interpretation, if you narrow your claims in the course prosecution, it is assumed that you are acknowledging that you are not entitled to the coverage, the broader coverage, that your earlier claims would have achieved. However, this is a rule of claim interpretation that is particularly applicable when the claim has a gray area. It limits the scope of the Doctrine of Equivalents in respect of the claims of any patent issuing on that application, if a patent issues at all.

      However, under US practice, an applicant can try for a second bite out of the apple. While still in the process of obtaining the first patent, an applicant can file the identical application, designating it as a “Continuation” of the earlier application, and try for broader claim coverage. The retreat on claim coverage in the first application would not be held against the applicant in respect of the second application.

      Accordingly, broader coverage that includes copper in this case might still be obtainable on a second, Continuation, application, assuming that there is sufficient support for the claim in terms of description and that there is no novelty bar.

    2. My first answer above dealt with the question of whether Mr Rossi could still gain a patent on the use of copper even if he were to have withdrawn a claim directed to covering copper. This comment will cover whether someone else could obtaining a patent on generating a cold fusion effect using copper.

      It does not matter what someone else may have claimed or have attempted to claim. What matters is whether or not something has already been disclosed in a way that would enable people to exploit the idea effectively. Whether Rossi gets a patent or not, no one can get a patent on the method of using copper to achieve cold fusion as described in his published application. But a different method that is not obvious from what has been described, if it has never been described anywhere else before, could still be patented.

      The published Rossi application is only a spoiler for what it discloses. If that disclosure is inadequate, it might still be possible to patent something similar as long as there is an added element that is not simply obvious. But this new idea must be new not only in respect of Rossi’s published patent application disclosure, but must also be new in view of everything else that has been disclosed or used publicly. If a public use has occurred, as for example by Rossi, it will not be limited by shortcomings in the patent application disclosure. It will be a bar in itself.

      But it is always possible to patent something that is new, unobvious, adequately disclosed and useful.

  7. What is even more interesting than the legal minutia discussed here is the fact the US Patent Office boss, Secretary of Commerce John Bryson – has suddenly resigned from office, following two disturbing traffic accidents. The accidents are said to be the result of minor strokes. “Police had been investigating possible felony hit-and-run charges after Bryson drove his car into the rear of a stopped vehicle at a railroad crossing and five minutes later struck another car two miles away.” Bryson is the former CEO and President of Edison International owner of Southern California Edison and has been tightly allied with major US electric utilities.

    Lew Larsen (Widom Larsen) has been issued a patent (gamma ray shield) that appears to be wildly overbroad including elements that claim to derive from LENR-type excess energy effects. To date, is anyone aware of a working version of this invention?? Maybe Lew has demoed this device. Thanks David for your cogent remarks. And Brad – gotta love your insistance on the US Patient Office!

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