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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 April 23, 2012 I posted about a patent application publication number 20110122984 originating from Robert Godes and now owned by Brillouin Energy Corp. The Brillouin Energy website made reference to this pending patent application and so we reviewed Claim 1 of that application, observing on the unnecessary restriction to establishing: “current pulses through said core”. That shortcoming may never get corrected. We now have some more news about this patent filing.
On May 14, 2012 the US examiner responsible for this application issued a “Godes US patent office final rejection SN 12911586 14 May 12“. These are the letters sent from the Patent Office to the applicant advising whether the application is in good order to be allowed to advance to grant of a patent. Here is a copy of that Office Action.
This is a classic: “Prove it works” examiner’s rejection. The fact that it is labeled “Final” is not as serious as appears. For a further filing fee, examination can be re-opened and better evidence provided. However, this application has already gone through one cycle on this basis and the additional evidence that the examiner warned would have to be filed was not provided, at least that is the assessment of the examiner. A further attempt is nevertheless still possible.
The rejection is based on the premise:
“3. The declaration under 37 CFR 1.132 filed is insufficient to overcome the rejection of claims 1-3, 5, 6, I, 10, 19 and 21-29 based upon 35 USC 101 and 112 as set forth in the last Office action because: Declaration by applicant himself does not provide the requisite counter-evidence of utility and enablement: extraordinary claims require extraordinary evidence and substantiation. The Declaration does not provide such evidence as is necessary to render credible low energy nuclear reactions, particularly fusion reactions, given the overwhelming body of experimental data and theoretical arguments against fusion under circumstances well below the coulomb penetration barrier.”
And
“Simply stating that the concepts the inventor espouses are correct is not sufficient substantiating evidence. Sufficient substantiating evidence may be based on widely accepted scientific concepts (e.g. quantum nuclear physics, credible experiment), a working model, or supporting opinion in a widely respected and peer-reviewed publication (existing credible publications do not support optimistic applicants assumptions).”
This is the essential basis for the rejection. It is standard with respect to cold fusion applications at the US Patent Office. Section 101 of the US Patent Act stipulates that an invention must be useful. All patent laws around the world include this requirement. Section 112 of the US law further stipulates that a patent application must contain instructions on how to achieve the useful results as promised. Again, this is a standard patent requirement.
Apart from complying with the law, the US PTO probably wants to maintain respect for its patents as representing meaningful and useful information. They do not want to become a publishing house for bogus disclosures, although many patents do include bogus disclosures. There are one half million applications a year filed at the US PTO and only if you are challenged on the basis of the utility requirement are you required to file proof of utility. Apparently, management at the US PTO has singled-out cold fusion patent applications as well as perpetual motion machines for imposing an affirmative requirement that evidence of utility must be filed.
The rejection is also based on failure to describe how to build a working system (section 112). This is really the same objection: it does not work; therefore the description of how to make it work is not complete. At least that is the position of the examiner.
An applicant in this situation has the option of directly filing an appeal to the Board of Appeals and Interferences within the Patent Office. An appeal will probably take several years to resolve within the Patent Office and then another year or two if a further appeal is made to the Courts.
Note, however, that appeals are based on the record before the examiner. The purpose of issuing a “Final” office action is to establish that no further evidence in support of the application can be placed on file at the Patent Office while the “final” status is still in effect. You can buy your way out of this no-further-documentation limitation by paying a further filing fee to enter further material as of right. Without doing so, the appeal is based on the record of the file as before the examiner when the Final rejection issued.
The standard on the appeal is whether or not the applicant can established before the Board of Appeals that the examiner was wrong. Unfortunately, if there are reasons to expect that an invention lacks utility, then the burden is on the applicant to provide proof that the invention works and to thereby satisfy the examiner, or Board of Appeals on appeal, that the description of the invention is sufficient.
These are the standards that apply in respect of an appeal to the Board of Appeals. In respect of an appeal to the Courts, the only issue is whether the Board of Appeals acted outrageously inappropriately or misapplied a principle of law. These are hard standards to meet.
In this case Godes is represented by a well-established law firm, Kilpatrick Townsend & Stockton LLP of San Francisco. The attorney responsible, however, is not likely to be one of the partners. The actual professional handling this file should be able to estimate in advance whether or not the documents available for filing at the US Patent Office would be sufficient to meet the utility and enablement requirement that the examiner already warned he was going to impose on this application. In fact, any patent firm representing an inventor seeking to obtain a patent directed to “cold fusion” should issue a warning from the very beginning that the applicant will be expected to provide rock-solid evidence that the statements made in the application about what can be delivered in terms of benefits are true.
Additionally, the specification has to include all of the steps, just like the recipe in a cookbook, needed to achieve this useful result. If the latter standards are not met in the original filing document, then the application is doomed to collide with the policy manifested so clearly in this rejection.
The attorneys representing Robert Godes and Brillouin Energy have a penalty-free three months from May 14, 2012 to pay the required fee and file additional submissions, or appeal. Further extensions to reply of one, two or three more months may be purchased. If no reply or appeal is filed within six months from May 14, 2012, the application will become abandoned.
However, under US law, it is permissible to start the patenting application process over again by filing a “Continuation” application which will benefit from all of the filing dates of earlier applications so long as the filings overlap in time. This will buy considerably further time before the relevance of this application has been established authoritatively through the patent office system in the United States. If this route is pursued, Brillouin Energy will be able to continue to claim that they have a “patent pending” in respect of their technology. Robert Godes has already used this procedure previously when Profusion Energy, Inc. was the owner of the rights in this invention.
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 by direct email. In particular, he would like to learn what people need to know in order to better understand patents.
Seems like getting a patient to protect intellectual rights in America is more difficult than inventing a LENR reactor design. The question on everyone’s mind isn’t being addressed in this article: if any amount of evidence will be good enough to be granted a US patient in this area.
As this author has said: it is the wild, wild, west out there when it comes to intellectual protection for LENR. My suggestion is for LENR companies to also branch out into LENT, which will provide an additional revenue stream without the need to go through the US Patient Office in order to produce a valuable product without the fear of theft.
You are wrong can expect to be revmeod from the file. Rather than risk this the greater part of attorneys see their role as simply reformatting for the Patent Office the story told to them by their inventor client. Most patent attorneys do not see themselves as an invention coach or critic.However, a well informed attorney who is aware of the US PTO policy respecting cold fusion inventions should warn the client of the difficulties that the client can expect to face. He/she (the attorney) should guide the inventor in designing and carrying-out the types of demonstration experiments that will meet Patent Office standards. Even if this advice is strongly given, and this might represent a minority of patent attorneys, inventors may prefer to proceed without taking this advice to heart. The consequences will follow three years later during Patent Office examination after the patent application has been published as of 18 months from filing. By that date it will be too late to file a replacement application with a more complete and accurate story . The inventor will be stuck with the original story with all its shortcomings that the inventor insisted be included in the application.Solution: understand the issues; engage a good attorney; argue with your attorney without firing him/her, and do your patent application properly in the first place.
This just shows how smart Rossi’s approach is. He doesn’t waste his time playing the game of trying to placate the people who are trying their best to ignore the growing baby elephants in the room. He just makes his E-Cats.
Any proof of e-cat result and there are no known cold fusion devices, there is no way to know that it is safer than current nuclear energy.
There is no radioactive material used in cold fusion. That right there should tell you it’s already better.
Hi Ruby. Here’s Chris Busby talking about Fukushima. http://www.youtube.com/watch?v=wDzO-y9zeh8
How can we get those guys to take a look at cold fusion? That would be an even more powerful message: No nukes; cold fusion!
Chris Busby and Martin Fleischmann are friends. Busby mentioned that in one his videos but I can’t remember which one. He has lot of them.
OK, that ‘s great! I guess he has his hands full with the multiple nuclear disasters. That’s a long video with alot of downers. Cold Fusion NOW.
In other words, the officer wanetd a proof of concept evidence and didn’t get it from Godes.So, real evidence being the status quo for getting a US patent, questions are raised on why Godes didn’t prepare himself for this request with proof of concept evidence?If he is not willing to reveal it yet why did he applied for US patent??????!!!???Looks like NOBODY is willing to move forward with this. Everybody claims a lot but they don’t walk the walk.
It appears that the styesm of patents favors oil companies that might want to rip off colf fusion devices or prevent their protection at all. It seems to need a thorough overhaul and Executive Orders by the President to remove some of the impediments that have been set in place to prevent cold fusion from reaching the marketpkace.
Whoever is first out the gate with widespread production, distribution capabilities, and working well priced units, will win the lions share of profits and scientific notoriety (Nobel Prize, etc), patents or no patents.
No one else except e-cat uses nickel powder in their device.
Glemm, Francesco Piantelli, along with Sergio Focardi, began using Nickel and plain ole hydrogen in the early 90s. The Italians have a long history of it, and a few labs in the US have used these systems as well.
It is much easier to patent parts of the Human Genome.
The identification of the specific character of portions of the human genome is a well-established technical procedure. There is no basis to doubt the accuracy of the results being obtained. For this reason there is no policy requiring proof that the alleged identifications of gene segments are valid. The representations of the patent applicants in this field are taken as being correct, subject to being tested before the courts in patent litigation.
There is a dispute over whether portions of the human genome can be patented. Some commentators have objected that the patenting of gene sequences erroneously “slipped through” and became the norm without adequate legislative debate on the issue. That is a policy issue.
Most recently, the Supreme Court of the United States delayed ruling on whether attempts to patent gene sequences violate the novelty requirements of patent law:
http://www.reuters.com/article/2012/03/26/us-myriadgenetics-patent-idUSBRE82P0YJ20120326
How can a gene sequence be new if it already exists as part of the human genome? But two out of three of the judges of the United States Court of Appeals for the Federal Circuit have ruled that an “isolated segment” of the genome can qualify as being new if such a segment has never been isolated before.
The patent community awaits further developments before the courts.
In other words, the officer wanted a proof of concept evidence and didn’t get it from Godes.
So, real evidence being the “status quo” for getting a US patent, questions are raised on why Godes didn’t prepare himself for this request with proof of concept evidence?
If he is not willing to reveal it yet why did he applied for US patent??????!!!???
Looks like NOBODY is willing to move forward with this. Everybody claims a lot… but they don’t walk the walk.
I will comment on this comment as it addresses the precise issue of my posting.
The key observation is: “questions are raised on why Godes didn’t prepare himself for this request with proof of concept evidence? If he is not willing to reveal it yet why did he applied for US patent?” This is absolutely on point. Anyone filing for patent rights that purport to rely on the generation of unexplained excess heat through the process of “cold fusion” should be prepared to address this issue from the very beginning of the patenting exercise. This can be done by including in the patent disclosure careful and elaborately prepared descriptions of experiments which demonstrate the useful result. This is not a field where predictive representations will be acceptable.
Actual proof of utility does not have to be included in the patent disclosure. That is optional. Such proof can permissibly be filed later during examination. But the patent disclosure document should include all of the necessary directions to permit others to achieve the promised useful result.
Key message: do not make promises in patent disclosures that cannot be supported. Do not tell how wonderful the invention is in terms of what it will accomplish. Just say that something useful can be obtained. Otherwise you may have to prove that you have described everything needed to achieve such expansive and elaborate promises of wonderful benefits.
Next, what is the role of the attorney in these situations? Attorneys are expected by their clients to believe the inventor’s story. An attorney who says: “You are wrong” can expect to be removed from the file. Rather than risk this the greater part of attorneys see their role as simply reformatting for the Patent Office the story told to them by their inventor client. Most patent attorneys do not see themselves as an “invention coach” or critic.
However, a well informed attorney who is aware of the US PTO policy respecting cold fusion inventions should warn the client of the difficulties that the client can expect to face. He/she (the attorney) should guide the inventor in designing and carrying-out the types of demonstration experiments that will meet Patent Office standards.
Even if this advice is strongly given, and this might represent a minority of patent attorneys, inventors may prefer to proceed without taking this advice to heart. The consequences will follow three years later during Patent Office examination after the patent application has been published as of 18 months from filing. By that date it will be too late to file a replacement application with a more complete and accurate “story”. The inventor will be stuck with the original story with all its shortcomings that the inventor insisted be included in the application.
Solution: understand the issues; engage a good attorney; argue with your attorney without firing him/her, and do your patent application properly in the first place.
I am astonished that Godes Peternt Attorney did not see this coming. After all what are they supposedly paid for. Self claims have never been sufficient. Third party authenticfication or a working model have always been required.
His Patent Attorney is ripping him off.
It appears that the system of patents favors oil companies that might want to rip off colf fusion devices or prevent their protection at all. It seems to need a thorough overhaul and Executive Orders by the President to remove some of the impediments that have been set in place to prevent cold fusion from reaching the marketpkace.
I wonder why anyone would choose a U.S. patent office over going through the procedure in Europe. Other inventions might get an easier approval in the U.S., but I don’t estimate the U.S. to be the choice for those seeking patents on LENR.