Patenting Cold Fusion Inventions before the US Patent & Trademark Office – Part 2

The following is Part 2 of a paper prepared By David J French in support of a Poster Presentation at ICCF-18, the 18th International Conference on Cold Fusion held in Columbia, Missouri over July 21 – 27, 2013. Part 1 is available at ColdFusionNow here. Part 2 now follows.

Patenting Cold Fusion Inventions before the US Patent and Trademark Office

. Part 2

Treatment of Cold Fusion Inventions before the USPTO

With the USPTO receiving over one half million applications a year, Examiners do not customarily require applicants to file proof that their alleged invention will work as represented. However, the USPTO has classified Cold Fusion and LENR technology in the same category as “perpetual motion”, anti-gravity, time travel, universal Cancer cures and guaranteed cures for baldness. These are considered to be cases where there is doubt that the alleged invention will work. In these fields Examiners are expected to require applicants to demonstrate that the alleged invention actually works. To impose this requirement the Examiner must establish a basis for a legitimate doubt in a communication to the applicant before requiring the applicant to provide proof of operability. Unfortunately, Examiners faced with Cold Fusion applications have in many instances used excessively negative and inflammatory language regarding the history of Cold Fusion science in attempting to place such a doubt on record.

Persons filing patent applications in this field have to be prepared to face a prove-it-works requirement. They do not have to prove that Cold Fusion works per se; they only have to prove that what they represent in their application is true. The disclosure accompanying their patent application must be sufficient to enable ordinary but knowledgeable workers in the field to reproduce what is promised in the patent application. This is not an area where a patent can be obtained on the basis of a prediction or prophetic insight.

Responding to a Prove-it Challenge

The best procedure to follow in answering such a requirement from a US Examiner is to place the original patent disclosure in the hands of an independent agency that will follow the instructions in that document and report-back, hopefully, that they obtained the results as predicted in the patent filing. Such evidence may not rely on after-developed understandings or procedures but must be based on the original document as filed, together with publicly available knowledge existing as of that date.

Relevant message: Make sure your Disclosure is complete when you make your formal patent filing. Be sure the invention works. Don’t promise too much. You may have to prove it!

Example that failed

James H Cook, a retired 80 year old engineer residing in Simi-Valley, California filed an application on August 19, 2009 before the US Patent Office for an invention entitled: “Energy Generation by Nuclear Acoustic Resonance”
This application became abandoned on March 9, 2013 for failure to respond to the US Patent Office Examiner’s first office action of September 9, 2012. Before addressing the reasons for the abandonment the nature of the invention and the filing will be explored. Here is an extract from the Abstract:

“(This invention) solves the problems of reliably initiating a low energy fusion reaction by loading deuterium into palladium metal via the process of electrolysis and by initiating the fusion reaction via the application of nuclear acoustic resonance. Affixed on each side of an electrolysis cell are piezoelectric transducers driven by corresponding frequency synthesizers. Surrounding the cell is a magnetic field produced by a magnetic field generator. The application of nuclear acoustic resonance, i.e. the combined application of an alternating magnetic field and of high frequency acoustic waves causes the deuterium atoms resident in the closely packed palladium metallic lattice to fuse into helium atoms with the consequent release of energy that is inherent to the fusion process.”

This is an example of a Prophetic invention: it is based on a prediction that something will happen rather than on actual tests. No data was given reporting test results. Instead the disclosure stated that this idea arose when the inventor heard about a reported melt-down in a Fleischman and Pons’s original pre-1989 experiment. He surmised that this was due to:

• “a low-level alternating magnetic field in the vicinity of the experiment caused by a transformer (presumably 60 Hz.) on the opposite side of the wall against which the fume hood containing the experiment was mounted”
• “An unrelated experiment in another part of the room was generating ultrasonic acoustic waves in the Megahertz range. It is believed that two frequencies, differing only slightly from each other, are necessary. (See the article, The Truth About DNA, subheading “A past experiment that was incomplete,” published on the Internet at www.kryon.com/k chanelDNA04.html.)”
• “This application of high frequency acoustic waves causes the hydrogen atoms packed within the crystal lattice of the palladium cathode to undergo spin transitions. Upon reaching the Larmor frequency of the hydrogen atoms and achieving resonance, transitions between spin energy levels are generated. This produces a resonance scan. (See Inventor’s Theory of Operation, infra.) It is believed that for reliable initiation of the low energy fusion reaction, the first and second acoustic wave generators (17, 21) must operate at different frequencies. The specific frequencies required remain to be determined by experimentation.”
Note the frank statement that the “specific frequencies required remain to be determined by experimentation”. This was fatal.

The Examiner’s objections

Here is what the Examiner said about this application:

• “…..this “ColdFusion concept is still no more than just an unproven concept or theory.”
• “The general consensus by those skilled in the art and working at these various laboratories is that the fusion conclusion made by Fleischman and Pons was based on experimental error”
• “The general consensus by those skilled in the art is that there is no reputable evidence to support the claims of excess heat production, or the production of fusion by-products such as neutrons, gamma rays, tritium, or helium.”
• (this is) “a field that the general scientific community considers fraudulent.”
• “Since Fleischman and Pons’ 1989 announcement, there has been a continuing stream of publications demonstrating that virtually none of the ’Cold Fusion’ claims are valid.”

The Examiner summed up by reciting that he had provided a reasonable and sufficient basis for challenging the adequacy of the disclosure, concluding that the specification failed to meet the requirements of the Patent Act in terms of enabling workmen to implement the invention as promised.

The Applicant`s dilemma

The requirements for sufficient disclosure allow that it is OK to impose some modest degree of experimentation on future workmen if such experimentation will inevitably produce the right answer without undue effort on the part of an ordinary workman. However in this case, the existence of the specific frequencies that make the invention work is critical: the admission that such parameters remain to be established placed this invention in the category of an “unfinished work”. As well as imposing a prove-it requirement the Examiner rejected this filing for having an insufficient disclosure.

The applicant was given an opportunity to reply. He then decided to abandon his application. Ironically he might have been right. But his application did not meet the required standards and it could not be amended
An inventor can make an invention based upon a prediction, but

• the prediction has to be true
• the prediction has to be supported by instructions on how the benefits of the invention can be delivered reliably by others, once the patent comes to an end.
• Patents do not, however, issue for proposals which are, essentially, a suggestion that others pursue a specific line of research.

Relevance of Examiner`s condemnation of Fleischmann & Pons

The Examiner`s comments regarding Fleischmann & Pons are not relevant in the sense of requiring a response. The Examiner’s criticisms were only presented to justify his requirement that the applicant prove that the invention as described works and that the description of how to make it work was sufficient.
Filing evidence that the invention really works and that the disclosure is enabling would have resulted in an Allowance (so long as the Claims were worded to avoid the Prior Art). Unfortunately the disclosure was irreparably inadequate: it failed to teach the special acoustic frequencies that would initiate the Cold Fusion effect.

Conclusion

It’s very easy to obtain a US patent for Cold Fusion. Just file an application:

For a useful idea that works,

that includes a description on how to make it happen, and which

specifies a feature that is new (done in one or more “claims”).

Easily said, but challenging to fully understand.

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.

Patenting Cold Fusion Inventions before the US Patent & Trademark Office – Part 1

The following is a paper prepared by David J French in support of a Poster Presentation at ICCF-18, the 18th International Conference on Cold Fusion held in Columbia, Missouri over July 21 – 27, 2013. The paper as reproduced on ColdFusionNow is divided into two parts. Part 2 is available here. Part 1 now follows.

Patenting Cold Fusion Inventions before the US Patent and Trademark Office – USPTO

Part 1

This paper is about the challenge of obtaining a patent before the United States Patent and Trademark Office – USPTO. The USPTO has developed a reputation for refusing applications directed to “Cold Fusion” technology. There is a general belief amongst the Cold Fusion community that some staff members at the USPTO have been hostile to granting patents in this field. In fact, the experience of almost every applicant in this field is that Examiners have a strong prejudice against granting patents for Cold Fusion inventions.

However I had some personal exchanges with the USPTO in the fall of 2012 that ended with a declaration that the USPTO will issue properly drafted patents which are directed to new technology in the field of Cold Fusion/generation-of-unexplained-excess-energy if accompanied by a proper disclosure and a demonstration that the asserted procedures will work as represented. The communication from the USPTO stated:

“As you noted in the email, Cold Fusion or Low Energy Nuclear Reactions (LENR) is the subject of intense study and interest of many. Clearly, further investigation into this area could be useful and will hopefully one day will provide a major source of energy.

“You note that the USPTO can require patent applicants to provide evidence that the invention works and that the disclosure is sufficient to enable others to make and or use the invention. The United States Code requires as much, and defines the requirements for patentability in 35 U.S.C sections 101, 102, 103 and 112. Particularly, the enablement requirement, which refers to the requirement of 35 U.S.C. 112, first paragraph that states the specification, must describe how to make and how to use the invention. The invention that is defined by the claim(s) of the particular application is the invention that one skilled in the art must be enabled to make and or use. (See MPEP 2164) This is the requirement of law in order to obtain a valid patent. These requirements are applied to all inventions whether they are ground breaking technology or incremental improvements.

“We also thank you for your suggestion to have a message that “The USPTO is open for business in the field of Cold Fusion for properly prepared patent filings” before the Cold Fusion revolution arrives. This is already the case. Any non-provisional application, including those in the area of Cold Fusion, is eligible for patenting also long as it meets the requirements of 35 U.S.C. Sections 101, 102, 103 and 112.” [end quote]

The basic requirements for the granting of a patent as referenced are that an application must address:

1. Proper subject matter for patenting,
2. A technology that works in the sense of being useful for humanity in some way,
3. A disclosure that will enable knowledgeable but uninventive workers to reproduce the invention, and
4. A stipulation (in the form of one or more Claims) as to what will be controlled by the exclusive rights to be granted, rights that must apply only to things that are new.

Many patent attorneys add a further requirement namely that the patent must be directed to something which is inventive, or in the terms of the statute, a feature that is “not obvious”. Non-obviousness is judged in view of what has been known previously. I like to include that requirement as really being a sub-characteristic of being “new”.

New US Law from March 16, 2013

As from March 16, 2013 the requirement for being “new” under US patent law is that the thing being patented must not have been “previously available to the public”. This means previously available anywhere in the World, at any time, in any manner whatsoever. The United States has finally joined Europe and the rest of the world in defining patent entitlement in this manner. If you think about these words, you will probably agree that this means that your invention must be “pristine on the planet Earth”! Never having been made available to the public anywhere not only requires that your applied technology be new, but it also must not be obvious in view of what was previously known. That is how inventive character or non-obviousness can be included under this new definition and requirement for patent novelty.

Patent novelty item 4 above, is a big issue. It cannot be addressed in this paper. But the remaining numbered items are relevant to “cold fusion” inventions and will now be addressed.

Subject matter for patenting – Science vs Technology

Patents are about technology rather than scientific discovery. In Europe under the European Patent Convention (EPC Article 52) and under the international Patent Cooperation Treaty – PCT inventions must be “susceptible of industrial application” in order to be patentable. This expression is further defined in EPC Article 57 which provides: “An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture.” This emphasizes that patents are not about theories. Patents are about technology. The difference between science and technology is that science delivers understanding – from the Latin scienter, “to know”, and technology delivers something that is useful for human beings. Often, technology is the application of science.

In the past, it has been thought in the United States that there must be something tangible or mechanical about an invention. However, the US definition for something which is patentable, called “patentable subject matter” is: “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement”(35USC101). In the last 20 years we have seen an explosion of patents in the world of business activities and relating to human behavior in general. These patents have issued on the premise that inventions in these fields can be characterized as “processes”, now often called “methods”. The argument is still ongoing as to whether this opening-up of patenting to non-tangible arrangements that focus on human behavior, eg “business methods”, fits within the patentability requirements of the US statute. But for purposes of the Cold Fusion community, patenting has to focus on a technical, that is a mechanical or chemical, arrangement or procedure that is useful and reproducible.

The next two issues address why Cold Fusion patents have been encountering serious difficulties at the USPTO.

Utility and Disclosure Requirements

For an invention to be useful, it must “work”. This means that it has to deliver a useful result.

Not only does the invention have to work but the application has to describe how others can build something useful that works. The written document accompanying a patent filing must include a description that will “enable” competent workmen, after the patent expires, to carry out the instructions and obtain the promised useful result. The disclosure must “enable” others to obtain the benefits of the invention. The disclosure must provide a “recipe” that is complete.

If the instructions are inadequate, then a patent application will be refused. If the patent slips through it can still be canceled before a Court on the grounds that it should not have been issued in the first place.

You must write the Specification so that your invention may be practiced by a Person Having Ordinary Skill in the Art (POSITA) without undue experimentation. This individual is assumed to be knowledgeable, but he/she is not inventive. If the invention either intrinsically does not work, or the instructions to create it are inadequate, then a patent application will be refused.

What are the lessons to be learned from these points? One lesson is that it is a false triumph to slip something past the Patent Office. Any oversights of an Examiner can be addressed by a Court. The test of litigation is a very hot furnace. Only the sturdiest steel can take the heat. So you want to obtain your patent on a legitimate basis and do it right at the very beginning. Consequently, if you assert that you have a method for delivering unexplained excess heat based on what you believe to be a “Cold Fusion effect”, you must be absolutely certain that you are achieving this result. Furthermore, you have to provide a description that will reliably allow others to achieve the same result.

Warning: there is a deadline to get the “story” right in the Disclosure. Once a final patent application has been filed, the “story” contained in the disclosure cannot be changed. You can change your claims as long as they are restricted to things already described in the original filing. But you cannot make changes to the text in order to upgrade your description, your “recipe”, for making the invention work.

Reproducibility

The history of ColdFusion is shot through with examples of intermittent replication right from the very beginning, starting with Fleischmann & Pons. I am not focusing on the failure of various illustrious institutions to duplicate the Fleischmann and Pons test results. Martin Fleischmann and Stanley Pons had trouble duplicating their experimental demonstrations themselves. James Patterson in the 1990’s until his death in 2008 represented that he produced remarkable results from plastic, glass or ceramic micro-spheres coated with various layers of hydrogen-saturated metal, including both nickel and palladium. That was with his first batch of spheres. But when he subsequently prepared further batches he did not get the results he got before. Patterson obtained patents anyway, several in the US including No US 5,607,563 entitled “System for Electrolysis” issued on March 4, 1997, now expired. Other Patterson patents can be located through the hyperlinks in this reference. But these were never tested in Court. Shaky results have arisen in laboratory results around the world over the last 23 years. They are still happening today. This is part of the part of the mystery of this science. How does this affect patenting?

It is pretty clear that the USPTO should not be issuing patents for things that do not work. A little thought is required as to whether they should issue patents for things that work only some of the time. There are many technologies that might fall into this latter category. When you strike a flint on a bar of iron to create a spark and start a fire, it does not work with every blow. But the invention is profoundly useful. Similarly, in the field of pharmaceuticals medicines may exist that only work some of the time, but are well worth administering when there are no other alternatives and there is a real prospect that they may work in an individual case. Vaccines fall into this category.

On the other hand, I would not consider a heart valve to be useful if it has any substantial incidence of failure once installed in a patient. I am referring to failure due to a design fault such as accumulating scar tissue. Still, patents have issued for mechanical hearts that have kept Patients alive for only a limited period of time. In truth, the utility of an invention covered by a patent is highly dependent upon the representations made in the patent disclosure document as to what the invention will achieve.

This is leads to a big message. The utility requirement under patent law does not require that an invention be better or superior. It does not require that it deliver high-value. Anything that is “useful” to some degree will pass the utility requirement. But if an inventor extols the benefits of their invention, they are creating potentially serious problems for the validity of their patent. If you represent that your invention delivers a certain result claiming exclusive rights in such an outcome, and it does not indeed deliver that result, then such claims might possibly be invalidated for failing to meet the utility standard. At a minimum such defaults will be emphasized before a jury. You set the standard yourself in claiming rights over something that you say you can deliver. The conclusion is: Do not try to claim rights in more than your invention will deliver! In fact, as a general policy it is preferable to avoid making any more representations than the minimum needed to obtain a patent grant.

The utility requirement for an invention is met if you simply state an instance where it can be used to produce a useful result of even modest value. Do that, but go no further.

Example of Success

It is time for an example. Assume you have an experimental setup that produces unexplained excess heat. Rather than representing the technology as a solution to mankind’s energy requirements, it is sufficient to describe your invention as an assembly of hardware which demonstrates how excess heat can be produced from an artful combination of Palladium and deuterium. Just because you have described your invention as a demonstration apparatus does not mean that your patent claims cannot cover the use of the same apparatus to supply heat for your house indefinitely in the winter or heat for your air-conditioning system indefinitely in the summer, so long as the same principles are being used in the scaled-up system. But do not promise house heating and air-conditioning unless you also disclose how to build what is needed to do the job.

Here is an example of a successful patent granted on an invention for which Melvin Miles was a co-inventor:

United States Patent 7,381,368 issued June 3, 2008

Title: Palladium-boron alloys and methods for making and using such alloys

Inventors: Miles; Melvin H. (Ridgecrest, CA), Imam; M. Ashraf (Great Falls, VA)

Assignee: The United States of America as represented by the Secretary of the Navy (Washington, DC)

And here are the key claims:

Claims:

1. An alloy comprising palladium and boron;

wherein at room temperature the alloy has a two-phase structure, comprising crystallites of a first phase and crystallites of a second phase;

wherein both the first phase and the second phase are solid solutions of palladium and boron;

wherein the crystallites of the first phase and the crystallites of the second phase are free of hydrogen;

wherein the first phase and the second phase have the same crystal structure;

wherein the first phase and the second phase have different lattice parameters;

wherein the alloy is free of palladium-boron intermetallic compounds; and

wherein the alloy is free of hydride compounds.

11. The alloy of claim 1, wherein said alloy is in the form of a membrane.

12. A method of hydrogen purification comprising the steps of: providing the membrane of claim 11, providing a gaseous sample comprising hydrogen on one side of the membrane, providing a vacuum on the other side of the membrane, and allowing the hydrogen to pass through the membrane.

13. The alloy of claim 1, wherein said alloy is in the form of an electrode.

14. A method of generating energy comprising the steps of: providing the electrode of claim 13, connecting the electrode to a cathode, immersing the electrode and the cathode in water containing deuterium, and applying a current to the electrode and the cathode.

Based on the above claims, anybody who has possession of the alloy described by claim 1 and uses it for any industrial purpose will violate the claim. There are multiple uses for this alloy. Claim 12 addresses using the alloy as a hydrogen-pass filter to permit hydrogen to enter a vacuum. Claim 14 addresses a clear example of generating energy by carrying out a Fleischmann & Pons type of procedure.

Note that there is no theory of operation included in the claims. If fact there is no theory of operation included in the patent. Why would you want to include theory that might not be right? And including the theory in the claims creates a terrible problem: to enforce the claim you would have to prove that the process being carried-out by an infringer complies with the theory. These are good crisp claims, directed to what they should be: a description of assembled hardware or processes for manipulating tangible substances. If you have described something that works, you do not have to explain why.

How did this application get through?

In the course of the prosecution of this application the Examiner never challenged the application on the basis that it is addresses a Cold Fusion invention. This may be for several reasons. One reason may be that the Examiner was working in an art where he was not accustomed to receiving Cold Fusion inventions. A further possibility is that the application focused on other uses for the alloy, mentioning the generation of energy as a collateral utility. In the case of a new compound, if it has an acceptable utility, the fact that the inventor believes it might also be the useful for other purposes, e.g. cold fusion, is not a bar to patentability. Once you patent an article or compound for one purpose, an article or compound that is new, then you are entitled to control its circulation in commerce no matter how it is used. A further possible reason for the easy treatment of this application is that it was filed on behalf of the Department of the Navy. And the last possible reason is that the application was generally well drafted, without making any extravagant claims or assertions of extraordinary benefits. This last possibility is to be contrasted with how many other applications directed to Cold Fusion innovations are drafted by attorneys, with the cooperation of or under pressure from the inventors.

This ends Part 1 of a paper prepared in support of a Poster Presentation at ICCF-18, the 18th International Conference on Cold Fusion held in Columbia, Missouri over July 21 – 27, 2013. Part 2 follow as a subsequent posting on ColdFusionNow.org here.

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.

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