The following year Chakrabarty filed a patent application in the United States Patent and Trademark Office (PTO), assigned to General Electric Co.

In the PTO the patent examiner rejected Chakrabarty’s claims for the genetically engineered bacteria on the grounds that

1. that micro-organisms are “products of nature” and
2. that as living things they are not patentable subject matter under 35 U.S.C. 101.

When Chakrabarty appealed the rejection to the PTO Board of Appeals, the Board affirmed the examiner on the second ground contending that 35 U.S.C. 101 was not intended to cover living things.

Chakrabarty then appealed to an outside court: The Court of customs and Patent Appeals (CCPA). The CCPA reversed the PTO Board’s decision and found, in favor of Chakrabarty’s position, that living organisms are patentable subject matter. Sidney A. Diamond, Commissioner of Patents, then appealed to the Supreme Court.

The case of Diamond vs Chakrabarty was considered by the U.S. Supreme Court in 1980. The Court concisely stated the issue as follows:

“The question before us in this case is a narrow one of statutory interpretation requiring us to construe 35 U.S.C. 101, which provides:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Specifically, we must determine whether respondent’s micro-organism constitutes a “manufacture” or “composition of matter” within the meaning of the statute.”

In a five to four decision (PDF) the court upheld Chakrabarty’s position that living man-made micro-organisms are patentable subject matter. In the decision Chief Justice Warren Burger noted that “The Committee Reports accompanying the 1952 Act inform us that Congress intended statutory subject matter to ‘include anything under the sun that is made by man’” He further wrote that

“the patentee has produced a new bacterium with markedly different characteristics from any found in nature and having the potential for significant utility. His discovery is not nature’s handiwork, but his own; accordingly it is patentable subject matter under 101.” (as a composition of matter or as a manufacture).

In the years since the 1980 Supreme Court decision the biotechnology industry has virtually exploded and the number of patents in the field has increased dramatically. In 1988 the so-called “Harvard Mouse” was patented (US Patent No. 4,736,866 PDF). It was the first patent issued for a transgenic animal.

Since then patents have issued for chickens, cows, mice, pigs, rabbits sheep, dogs, rats, and monkeys. Patents on the Harvard Mouse have been granted in Europe and Japan. However patent laws vary from country to country. In 2002 the Supreme Court of Canada ruled that the Harvard Mouse is not patentable subject matter in accordance with the Canadian Patent Act.

Following passage of the Leahy-Smith America Invents Act in September 2011, the United States Patent and Trademark Office (USPTO) began accepting requests for prioritized examination of patent applications through the Track I Prioritized Patent Examination Program.

Simply put, Track I allows inventors and businesses, for a fee, to have their patents processed to completion in 12 months. No examination support documents or other admissions are required. But be aware that this has a hefty $4800 fee.

The United States Patent and Trademark Office (USPTO) announced  final rule change permitting applicants to request prioritized examination for applications after the filing of a request for continued examination. The changes in this final rule are applicable to any patent application in which a proper request for continued examination has been filed before, on, or after Dec. 19, 2011.

“Our goal is to continually provide patent applicants with a variety of processing options that are more responsive to their real-world needs,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos.

Under the procedure set forth in this final rule, once the application is accorded special status after the filing of a request for continued examination it will be placed on the examiner’s special docket throughout its entire course of continued prosecution before the examiner until a final disposition is reached in the application.

The statement above is the final sentence of the federal statute dealing with conditions for patentability (35 USC 103). Aside from the use of a confusing and uncommon verb: “negatived”, the sentence paves the way for a particular type of invention –Serendipitous Inventions. They are sometimes called accidental inventions because they were the result of some unanticipated, chance event. The patent files are filled with important inventions that were discovered as a result of some chance event.

Louis Pasteur expressed it well:

“Chance favors the prepared mind”

Microwave oven: One of the best examples of such a chance event triggering an important invention is the invention of the microwave oven. In 1945, the inventor, Percy Spencer, was studying the function of a magnetron, a key element in the recent invention of radar. One day, while walking through the magnetron laboratory, he felt an odd sensation and realized that a chocolate bar in his pocket was melting. He realized that microwaves from the magnetron might be the source of heat. He tested the idea using popcorn, and other foodstuffs. The final result can be seen today in most of todays kitchens: the microwave oven.

Teflon®: a heat-resistant, stick-resistant plastic, used for anti-stick coatings on various surfaces; best known for its role in the manufacture of anti-stick frying pans. In April 1938, Roy Plunkett, a DuPont researcher, was working on the synthesis of an improved gas refrigerant. When he opened the canister containing the reaction product, he found, not a gas, but a solid – a white flaky powder. His experiment Had not worked. Instead of throwing it out and starting over again, he spent several days analyzing and testing the material. It was a new polymer with valuable and most unusual properties. Chemists call it polytetrafluoroethylene. DuPont marketed it under the trademark Teflon®.

Vulcanization: In the early 1800s crude rubber was being imported from the tropical regions to New England in North America and to Europe and used in the manufacture of a variety of products. Unfortunately, the crude rubber melted in the heat of summer and became stiff and frozen in the cold winter weather. As a material of manufacture it was practically useless.

Charles Goodyear intrigued by the problem began a series of experiments to find a solution. In 1839, after five years of unsuccessful efforts, he found the answer – by accident. He was experimenting with an admixture of sulfur and crude rubber when he accidently dropped a lump of the mixture on a hot stove. When he removed it from the stove he found it strengthened and still pliable. He had found the solution. He named his improved product “vulcanized rubber”. He spent the next few months optimizing his process and patented it in 1844. US Patent No. 3633.

The Popsicle: Frank Epperson was just eleven years old when he accidentally invented the Popsicle. One winter night at his home in San Francisco, he was making a glass of soda pop and was stirring the drink when he was interrupted. He left it on the porch and forgot about it. During the night the temperature hit a record low. When he found the drink the next morning, it was frozen with the stirring stick still in it, extending out like a handle. When he pulled the stick out, the frozen soda pop came with it. The Popsicle had been born!

The above examples are just a small sample of the many important serendipitous inventions that have been made. In each of the inventions described a chance event was important to the outcome. However, serendipitous inventions require not only a chance event, but also an inventor who recognizes the significance of the chance event and acts on it.

If you have been surfing through the United States patent webpage recently you will notice that they are asking for feedback in the form of a survey, and I guess as a result of those surveys they have decided that the webpage is difficult to navigate as it is.

As result, the USPTO continues to deploy improvements to IT systems, and the Agency’s online presence is part of these enhancements. The new home page is just the first of several new changes to the  USPTO website in the coming months that will make the webpage easier to navigate for online visitors.

The USPTO announced:

This new home page will better present the activities and services of the USPTO to the public, and will be more accessible to our user community. After examining feedback from website visitors and employees, looking at other websites within and outside the federal government, and studying best practices in the field, a team at USPTO developed this new design as the entryway to USPTO.gov.

The USPTO has created an email box at newhomepage@uspto.gov to receive comments, positive or negative, that may help the Agency guide future design enhancements.

The PatentHome 3-step process is:

1. Document and Search your idea
2. Analyze the Search results
3. Draft and File a Patent Application

Contact Us today to schedule a free consultation!

This free exhibit is named “The Patents and Trademarks of Steve Jobs: Art and Technology that Changed the World” and is located at the USPTO’s campus in Alexandria, Virginia.

Like Thomas Edison who had his name on all the patents that came out of his laboratory, Steve Jobs has his name on over 300 patents which are assigned to Apple, many of which are displayed in the atrium of the United States patent and trademark office.

If you wish to quickly view all the drawings of all the inventions of Steve Jobs, the New York Times published an article online which posted all 323 patent drawings of Steve Jobs.

The Jobs exhibit, which runs through January 15, 2012, is free and open to the public, at the National Inventors Hall of Fame and Museum. Also displayed are many of the iconic and recognizable trademarks that give Apple some of the best brand recognition in the world.

“This exhibit commemorates the far-reaching impact of Steve Jobs’ entrepreneurship and innovation on our daily lives,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “His patents and trademarks provide a striking example of the importance intellectual property plays in the global marketplace.”

It is said that the Jobs fingerprint is on each of the products and designs exhibited in the display. The exhibit was created and designed by Invent Now, Inc., the non-profit organization dedicated to fostering invention and creativity through its many programs and which runs the National Inventors Hall of Fame and Museum.

Einstein, of course, is well known for his Theory of Relativity and the famous equation E= mc² .

Szilard, among his many accomplishments, was co-inventor and patentee of the first nuclear reactor.  (More about that in a future blog.)  Their joint activities in the early 1940’s strongly influenced the development of nuclear energy and creation of the atomic bomb.

These two world-renowned scientists seem to be an unlikely combination to become co-inventors of a common household appliance.  But in the late 1920’s, newly developed electric refrigerators began to replace traditional iceboxes in households in the developed nations.

With the new technology came unexpected hazards.  The refrigerators occasionally leaked toxic gases that could be hazardous or even fatal.   Einstein and Szilard read a newspaper story about a family that died when a broken seal in their refrigerator leaked toxic fumes into their house.  It is believed that knowledge of the tragedy inspired the two scientists to invent a safer refrigerator.

The device they invented was simple, energy efficient, and safer.  It had no moving parts and thus was less likely to develop leaks.  And it did not require electricity.  The inventors filed a patent application on their refrigerator on December 16, 1927 and were granted U.S. Patent No. 1,781,541(PDF) on Nov. 11, 1930.

Despite the advantages of their patented refrigerator it did not become a major success in the consumer market for various reasons, not the least of which was the depression of the 1930’s.  However, the licensing of some of their patented technology provided them with income for their further important research in the realm of physics.

This could be the end of the story: but it isn’t.  New technology often brings with it unanticipated results that may not be recognized for years.  Such results are often negative, but not in this case.

The patent on the Einstein-Szilard refrigerator was published more than 80 years ago, and for most of the time since then, was little known to the general public and even to many physicists.  However, in recent years, it has become the subject of renewed interest to researchers in England and in the United States.

The interest has been spurred by the recognition that modifications of the refrigerator can result in models that are more energy efficient, and do not require electricity.  They can even be powered by solar energy and thus could be used in underdeveloped areas where electricity is not always available.  Moreover, this refrigerator can eliminate the need for using chlorofluorocarbons (CFCs) as the refrigerant. (More about the invention and hazards of CFCs in a future patent blog.)

Maybe after 80 years the world is ready for the Einstein-Szilard refrigerator!

Here are some of the steps you can take to put yourself in the best position possible to bring your idea from a thought to a product on a shelf:

• Keep the Idea Secret

  Aside from the obvious notion that you don’t want anyone else to steal your idea, you must also be mindful that any public use, disclosure, or offer for sale of your idea starts a 1-year clock for patentability. If this time-period expires, you lose any and all patent rights in the invention.

• Document Your Idea

  You must have enough information documented that proves you actually are the inventor of your idea. A great way to document your idea is to keep an inventor’s notebook.

• Speak to a Registered Patent Attorney

  Many patent attorneys, including the ones here at PatentHome, offer free consultations to inventors. A patent attorney should be able to answer all your questions, and will be able to help you decide which services would be most beneficial to you. Contact us right now with any questions!

• Market Your Invention

  Once you have spoken with a patent attorney and have protected yourself, the next step is to market your invention. This can involve doing everything yourself, from manufacturing to distribution, or you can contact companies in an effort to license your invention to them in exchange for royalty payments. Either way, having your idea properly protected will put you in a position of strength when it comes to profiting from your inventions.



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