The following is the first 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.
August 18, 2011 –This first review will address two patent applications filed based on inventions by Francesco PIANTELLI of Italy. Ivy Matt on August 16, 2011 in two posting on Cold Fusion addressed the recent initiatives of Piantelli, making extensive reference to Piantelli’s most recent published patent application filed in 2008, as well as further unpublished applications of April 26 and July 14, 2011 (link here – transfer to homepage may be needed to make links work). This present posting will go to the beginning, comparing Piantelli’s earlier work with his more recent patent initiatives.
Piantelli was one of the earlier researchers who, in 1995, pioneered combining hydrogen with nickel to produce anomalous excess energy. The two published patent references identifying him as an inventor are as follows:
1) Title: ENERGY GENERATION AND GENERATOR BY MEANS OF ANHARMONIC STIMULATED FUSION filed initially 27.01.1994 in Italy (link here)
World applicant (except US): UNIVERSITA’ DEGLI STUDI DI SIENA, Italy
2) Title: METHOD FOR PRODUCING ENERGY AND APPARATUS THEREFOR, filed initially 24.11.2008 in Italy
World Applicants (except US): Silvia and Francesco PIANTELLI, Luigi BERGOMI, and Tiziano GHIDINI, all of Italy (link here)
Both of these applications are PCT filings. That is they are world filings made under the Patent Cooperation Treaty and do not represent patents. Rather, they are applications that have been filed through a central patent application processing mechanism, the PCT.
These applications started with an initial filing in each case in Italy. Within 12 months corresponding upgraded applications were filed within the PCT system. Both applications were published as of 18 months from their Italian filing dates. As of 30 months from the original filing date, it’s required to exit the PCT and make national entry filings in individual countries. Today some 130+ countries can be accessed in this manner. Once a patent application has been prepared (which can cost $5000-$25,000 plus) an application can be filed in the PCT for around $10,000. One benefit of a PCT application is that it will delay the deadline for making national filings until the 30th month from the earliest world filing date.
The first Piantelli filing
The first of the above applications eventually did produce national filings in Canada, Czechoslovakia, the European Patent Office, Finland, Mexico, New Zealand, Romania and Sweden. Patents were actually granted in New Zealand and by the European Patent Office but the corresponding application was refused in Czechoslovakia. In other countries the applications may have been granted, refused or may have been abandoned during their pendency. The disclosures in all of these filings were identical to the PCT published disclosure.
This list of countries is certainly different from what you would normally expect. Significantly absent is a filing in the United States. The Canadian filing was abandoned in 2003.
Significance of filing and/or grant of a patent
Not a lot of credit should be given to the fact that a patent application is filed or that a patent has been granted in terms of the legitimacy of the disclosure. Patent offices evaluate patent applications on whether they claim something which is new. Normally, they do not evaluate whether the inventions are good or even whether they work. The only exception is when the inventor proposes to patent something that a national patent office suspects will not function at all, e.g. a perpetual motion machine. Presently, the US Patent Office requires proof that Cold Fusion has actually been obtained if a patent application states that it has achieved Cold Fusion. If the requisite evidence is filed, then this objection to patenting can be overcome.
The first Piantelli filing, continued
The first application was filed in the name of an Italian university. Presumably, the sole inventor, Francisco Piantelli was a faculty member at the University at the time. Accordingly, he had probably agreed to transfer his rights to the University. The decision to file is likely to have been made by the University. Similarly, the decision to abandon filings or applications was also likely made by the University.
This first filing is not relevant today for what it claimed as being a new invention in 1994. But it is relevant for what it discloses. Anything disclosed in an application once it has been published can no longer be patented by anybody, anywhere in the world. That is a fundamental requirement for the granting of patents everywhere: that they be focused on a feature which is new in the sense that the claimed feature has never previously been made “available to the public”.
This standard bars patenting for anything to which the public has already had access, whether it was available in writing, posted in an electronic database, or accessible through public use or sales. This is called the “prior art”. A patent applicant is also barred from claiming any obvious variants on the prior art.
To limit the length of this posting, we will review the second Piantelli filing in the next posting. Meanwhile, readers will find it interesting to examine both patent documents by clicking on the links provided above. Explore the screens that these links will take you to. The PCT authority provides links to the description of the patent document and to the status of the application as it proceeds through the system. Of particular interest are the “claims” which the applicant wishes to eventually have approved for inclusion as part of a final patent. Claims define the scope of the exclusive rights granted under the patent.
The claims as sought on filing rarely correspond to the claims as finally granted. An examiner in each national patent office will do a search and criticize the application, requiring corrections and changes. No changes can be made to the “story”. But the claims can be re-worded so that they are in proper form. To be in proper form, a claim must not describe anything that was previously available to the public.
Patents often appear overwhelmingly complex to someone who is examining a patent for the first time. But once you get used to the experience, there is a vast world of valuable information available for those who are not intimidated.
To help people understand the “story” in these Piantelli patents, reference can also be made to the second August 16, 2011 Cold Fusion Now posting of Ivy Matt concerning Roy Virgilio (link here).
The next posting will address the second patent application and the further unpublished filings made by Piantelli in April and July of this year.
“Presently, the US Patent Office requires proof that Cold Fusion has actually been obtained if a patent application states that it has achieved Cold Fusion. If the requisite evidence is filed, then this objection to patenting can be overcome.”
Do you have any documentation of this policy? I’ve seen variations of it brought up before without attribution, but the only place I’ve seen it documented seems to be here:
http://www.washingtonpost.com/wp-dyn/articles/A54964-2004Nov16_2.html
“Research money has dried up. The U.S. Patent and Trademark Office has refused to grant a patent on any invention claiming cold fusion. According to Esther Kepplinger, the deputy commissioner of patents, this is for the same reason it wouldn’t give one for a perpetual motion machine: It doesn’t work.”
This could easily be interpreted to mean that the USPTO has a policy of not granting cold fusion patents. On the other hand, it is not inconsistent with the idea that no individual patent examiner has seen fit to grant a cold fusion patent on grounds of lack of utility (in the operability sense). Either way, I can’t imagine the USPTO failing to grant a cold fusion patent after a successful demonstration of the invention…I’m just not sure what criteria the USPTO has to determine proof. I don’t suppose it’s a common occurrence these days for inventors to bring their inventions to the USPTO for a demonstration.
David French replies:
I’m pleased to address this comment and this is my first opportunity to do so.
From the article in the Washington Post I note the following: “The U.S. Patent and Trademark Office has refused to grant a patent on any invention claiming cold fusion. According to Esther Kepplinger, the deputy commissioner of patents, this is for the same reason it wouldn’t give one for a perpetual motion machine: It doesn’t work. ”
The policy of the US Patent Office is set out at this link:
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2107_01.htm
The reference cited relating to Cold Fusion is to a decision of the Patent Office Board of Appeals as reviewed by the Court of Appeals for the Federal Circuit. The decision of the appeal court may be viewed here:
http://law.justia.com/cases/federal/appellate-courts/F3/232/862/514871/
This was a case way back in 1991 where Dr. Mitchell Schwartz filed his own application and carried it through a rejection before the Patent Office Examiner, an appeal before the Board of Appeals and a hearing before the Court of Appeals. He did so “pro se”, meaning that he did it without using a lawyer. Because of the doubt existing around the subject of Cold Fusion he was required by the Examiner to produce evidence that the description in his patent document as filed with sufficient to guide competent people in the field to obtain the benefits of Cold Fusion. I haven’t read his patent specification but the benefits of Cold Fusion probably were recited as producing excess heat resulting from a nuclear reaction.
According to the reasons provided by the Court of Appeals in rejecting the appeal, and therefore the pending application, the sufficiency of the 250 pages evidence filed before the Patent Office Board of Appeals by Dr Swartz was an issue that the Court of Appeals would normally leave to the Patent Office to interpret. Only in cases of egregious errors will the Court of Appeals interfere with findings of fact made by the Patent Office Board of Appeals. In this case, the Court of Appeals did not see a basis for reversing the ruling by the Board of Appeals and therefore the Board’s conclusion that insufficient evidence had been filed to demonstrate the promised benefits recited in the patent application was not disturbed.
To prevent this comment from being unduly long, I will take an opportunity subsequently to review the proceedings before the Board of Appeals in greater depth. Meanwhile, the link to the section of the Patent Office Manual of Practice on the utility requirement for patent applications, and the disclosure requirement by which an “enabling” disclosure must be provided, definitively describe the policy of the Patent Office in cases where utility is in doubt. If you provide evidence that establishes that something works, then you can overcome an objection raised by an Examiner that the described benefit alleged in a patent application can actually be achieved.
The bureaucrats are doing what bureaucrats do. Nothing.
They are never rewarded for success, only punished for error. Therefore the safe bet (for bureaucrats) is to sit on ones hands.
However Homo Sapiens (self styled “wise man”) does not have the luxury of sitting on anything at all.
H.S. destroys his chance chance of survival by clinging to science by consensus like some security blanket.
Did Faraday peer nervously over his shoulder at his peers for their approval before demonstrating publicly his findings on the relationship between magnetism and electricity? No. He got on with the business of science.
Asking bureaucrats for their imprimatur is unfair and futile.
Publish your method and results on the public domain just like Faraday did and reap your rewards in honour and in history.
Being a philosopher, I love the logic that seems implicit in the process of patents, as you describe it. It is frustrating that the process seems to, so far, exclude cold fusion, but in the long run, I am sure that cold fusion will eventually meet the criteria. From what you say above, it sounds like Dr. Schwartz might have benefitted from having better representation than his own efforts. Or maybe the technical details did not measure up and so no matter who presented it, it would not have been successful. Mr. French, can you comment on that?
It sounds like Dr. Schwartz was not just turned down, but the door was slammed shut quite hard, creating a skepticism on future submissions as well. Now please understand that I do not attribute any malice to those who are in charge of patents, other than the petty maliciousness that goes along with any aspect of human endeavor. I just wonder if the game could have been played better, or if cold fusion advocates would have had problems, no matter what the other circumstances were.
David French writes:
In response to Ivy Matt here is the section of the USPTO Manual of Practice and Examination Proceedure dealing with the requirement for utility in a patent application:
http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2107_01.htm