The biofuel space is becoming increasingly crowded, making it more and more difficult to carve out a niche for patenting. In addition, case law developments have made patenting more challenging, not just for biofuels, but more generally in all technology areas. This can put a strain on small to medium enterprises without financial resources to engage in long, drawn out exchanges with the Patent Office to secure allowance of their patent applications.
To show how crowded this space has become in recent years, I ran some searches of various patent classes on the database at the United States Patent and Trademark Office. Here are some of the results for published applications:
Table 1: Biofuel search results 2001-present
|anaerobic digestion||477||CPC C02F 11/04|
|algae biofuel||824||CPC C12M 21/02|
|cellulosic biofuel||778||USPC 435/160|
Compare these results to some randomly selected non-emerging fields:
Table 2: Non-emerging fields 2001-present
|Subject matter category||Hits||Class/subclass|
|preparations for dentistry||41||CPC A61K6/00|
|fastening cuffs to shirts||6||CPC A41B7/04|
|tea infusers||11||CPC A47G19/16|
The difference in hits between biofuel and non-emerging arts is quite pronounced. Collectively, this information reveals that this space is crowded compared to other arts.
As noted, there have also been negative developments in case law. A United States Supreme Court decision on obviousness rejected an approach being applied by the Federal Circuit (a lower court in the U.S.) in which obviousness could only be shown if the prior art provided some teaching, suggestion or motivation to arrive at the claimed subject matter. A more flexible approach has been adopted by the courts, which has had the effect of raising the threshold for patentability and this has been reflected in examination practice at the U.S. Patent Office. While in Canada case law in the U.S. is considered only persuasive in terms of the precedent it sets (i.e., non-binding), in practice, the effects of this decision have been felt indirectly in Canada. This is because Canadian examiners often follow examination developments in the United States and use similar arguments when raising objections against Canadian counterpart patent applications. In addition to obviousness, patents have been invalidated at the U.S. Supreme court for subject matter ineligibility. Without going into too much detail, computer-implemented methods involving organizing human activities, and products derived from nature that nevertheless have a well-defined utility to society (e.g., isolated genes that have undergone extensive characterization) are difficult or impossible to now patent.
So what does this mean to a start-up trying to carve out a niche to patent against this challenging backdrop? Firstly, strategic considerations become more important when drafting patent applications. The best time spent during the drafting process is to identify the closest prior art from the outset and explore a number of ways to circumvent that art. After these are identified, you should consider drafting independent claims covering each alternative. This provides more opportunity to circumvent the prior art and increases the chances of securing allowance for at least one claim that is commercially valuable to the organization. In a best case scenario, such a strategy could result in the allowance of a variety of different independent claims that protect unique aspects of the technology. Needless to say, giving some thought to potential rejections beforehand and drafting claims accordingly can prevent a lot of grief down the road.
During examination, a strategic approach to formulating arguments in support of patentability can greatly increase your changes of securing allowance. When responding to an obviousness rejection, time spent carefully reviewing the technical merit of an examiner’s argument and pointing out shortcomings can help advance a case to allowance. Fact-checking is important since examiners are often strapped for time and may not have sufficiently researched whether an argument is technically feasible. Input from scientists can greatly help in this regard. In addition, reviewing the cited prior art carefully to find statements that teach away from the claimed subject matter can help advance a case. Such statements would lead one away from doing what it is you did to arrive at your invention. Moreover, as mentioned in a previous blog, identifying an unappreciated problem helps bolster patentability. If you identified a completely new problem or identified the source of an existing one, this can be pointed out to the examiner with a view to help secure allowance, potentially even if the solution might be considered obvious. Other tools in a patent applicant’s tool-box for arguing non-obviousness can include arguing the criticality of certain conditions to achieve a better result than expected. For example, if a particular temperature range yielded better results than anticipated, then such argumentation could be used to rebut an examiner’s argument that you simply adjusted a variable in a predictable way to achieve a predictable result.
As should be evident from the discussion, developing a patent portfolio in this space is challenging, but success can be achieved by focusing efforts on those activities that yield results. Understanding the prior art landscape and developing strategies to circumvent it is imperative at the outset. During examination, in my view, pointing out any shortcomings in an examiner’s technical argument is an exercise that should not be overlooked. Of course, the insight of an experienced agent or attorney can help facilitate the process as well.
 That is not to say classification searches do not have their limitations. For instance, the class/subclass assigned to a particular patent application is examiner-dependent and, being a subjective exercise, there is often little consistency between examiners with respect to how they make their selection.
 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
 Alice Corp. v. CLS Bank International, 573 U.S. 208, 134 S. Ct. 2347 (2014).
 Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013).