Investigating Patentability: MST3K Invention Exchange

If you're of a certain age and  specific interest--meaning over 35 (mostly) and into nerd stuff--you've likely seen at least one episode of Mystery Science Theater 3000. While primarily about riffing on exceptionally bad movies, there are interludes with the show's characters. Sometimes, they feature regularly occurring bits, like the invention exchange. This bit was most common in the earlier seasons with Joel Hodgson.

Of course, none of the inventions are remotely serious, but they do offer a fun way to investigate the aspects of patentability. 

Patentability is, at its most basic, whether or not an invention is eligible for a patent. And, again at a basic level, patentability is determined by three qualities: new, useful, and non-obvious. There are other rules, like nothing that would be better categorized as another kind of IP, nothing illegal or "offensive to public morality", no natural phenomena, or laws of nature. But we can typically stick to the three qualifications here.

New: it can't be something previously disclosed. So if you invent a new machine, and then publish an article about its details, share them on social media, or make them available at a conference, it's not new. Keep you inventions secret! Also, if you spill the secrets or someone comes up with the same/similar concept and files for a patent first, it's not patentable, because patents are granted to the first to file.

Useful: is must have a purpose. The purpose does not need to further humankind of advance technology, it can include fun or novelty. So perpetual motion machines are out, but a scuba diving kit modified for a dog isn't.

Non-obvious: it can't be obvious. That means that a "person with ordinary skill in the art" (the technical term for a person familiar with the field of the invention, or who works in that field) could not have immediately or easily conceived of the idea. Basic improvements or simple changes to previous inventions are therefore not patentable, but an alteration that makes a significant difference in its function would be. 

With those defined, let's look at an invention exchange and comment on their patentability!

Ok, we have an air freshener mobile and a baby teether/Alien face hugger. I'd say that both may once have been patentable. Why? The air freshener mobile has, to the best of my knowledge, not been created before this; unfortunately if neither character applied for a patent it's too old now. It's also very useful! Babies make lots of stinky smells and mobiles are a common baby product. And it definitely isn't obvious, because it's just a little too weird to be obvious. As for the teether/face hugger, that meets the same new (at the time) requirement. It is also very useful because it's good for baby and very entertaining for adults, meeting at least the novelty standard. Finally, it's obvious, in my opinion, but again probably because it's just so weird. 

Let's do another!

The "Chinderwear" is maybe patentable, but wouldn't be a strong patent. Ignoring the fact that none of these count as new anymore (which I will from here on out), it may not be considered useful. Why? Because the chin butt isn't something people typically want to cover. As for non-obvious, if we really considered cleft chins as butts, it would be too obvious. So the usefulness of the invention negates its non-obviousness. The Rat Pack chess set falls prey to a rule that isn't covered by the three basics above. Using name, image, or likeness of a person requires direct authorization if they're living; for a deceased person, if it is already being used in other intellectual property (I will assume that's the case for such well-known people) then it's already owned and would also require some kind of permission. Furthermore, it's a little obvious. This isn't a strong case of being too obvious, but the change to the chess set is so simple that it may be marketable but not patentable.

One more?

This clip inspired this post, so I had to include it. The super schnozz isn't patentable because, as was pointed out by Joel and the robots, it's not useful. At all! I don't think it could even count for novelty. Perhaps it could claim a design patent, but not utility. It's also kind of obvious, because it's just a big nose, and that's an obvious thing to make. The same problems plague the big head: not useful, pretty obvious. I'm sure someone has before decided to make a big head, maybe for one of those giant foam hats, so it probably isn't new, either. Stick to the baby items, gentlemen.

Yes, I was feeling a bit silly when I came up with this topic. And as it's almost winter recess, it's a good time to be silly.

Common IP Misconceptions

There are a few major misconceptions and fallacies regarding various types of intellectual property I encounter somewhat regularly. In this post, I'll address the most common and explain why they're problematic. Hopefully, this post will help others avoid similar pitfalls.

If I've missed anything, let me know in a comment!

Patents can be issued not only for new inventions, but also for improvements to those that already exist. However, improvements must still meet the three most basic requirements for patentability: new, useful, and non-obvious (for more, see the LibGuide Patent Basics tab on Patentability). That leads to the first myth/misconception: 

Make Two (2) Changes 

"If you make two (2) changes to something that exists, then it's a patentable improvement." Don't fall prey to this thought. In fact, never think it again, because it is misleading in many ways. The three most basic requirements above are what you need to use. Two changes to an extant invention could be two very obvious changes; for example, if I make something purple and twice as large, that's hardly novel. Furthermore, a single change can be sufficient improvement to qualify for patentability. What counts as non-obvious or new can be little murky, and it's impossible to specifically define and still apply to all inventions. Using any kind of concrete quantification like the above will only cause problems.

The process of applying and filing for IP protection can be both arduous and expensive. While assistance is available via multiple sources (not explored here), it sometimes does not seem worth it to purse official government registration. People go to extraordinary lengths to try to beat the system, while avoiding high costs and lengthy procedures. Many people might attempt this: 

Mail it to Yourself (Patents)

I've met more than one person who has referred to this "Poor Man's Patent". Take proof of the invention and your signature, seal it in a envelope addressed to yourself, date stamp those sealed edges and mail it so you have official government proof of the date. It's a cool idea... If patents were possible to obtain without any sort of widespread, official public disclosure, or, y'know, granted to the first to invent rather than first to file. Since the Leahy-Smith America Invents Act of 2011, the USPTO gives precedence to inventors who file for an invention first, not show proof they were the first with the idea. So unless you really need some kind of semi-official evidence that you had an idea before a date (and I don't know of any related to obtaining patents), this is a waste of time, energy, and postage. 

Mail it to Yourself (Copyright)

Do the same thing as above, except instead of proof of invention or idea, enclose a recording or hard copy of your creative work. In fact, this is (somehow) even less useful. I learned local musicians used this method to try and secure copyrights on the cheap. In the US, copyright is automatically applied to any creative work as soon as it is "fixed", or recorded in some physical or digital format. This blog? Covered by copyright laws. Photos on your phone? Subject to copyright. Poem you wrote on a grade school assignment? Technically copyrighted. Unfortunately, any sort of realistic legal protection or enforcement of those copyrights is almost impossible if the work isn't registered with the US Copyright Office. Also unfortunately, the musicians didn't know they had a cut-rate copyright before wasting time, postage, recording media, and shipping material, and the effort earned them no extra protection.

Unlike patents and copyrights, a mark registered with the USPTO can be infinitely renewed, remaining a protected registered mark, so long as it is in use. Also unlike copyrights and patents, any mark that is considered "dead"--abandoned, cancelled, filed but not registered--does not become public domain. Confusion about what it means when a mark is dead leads some people to the next erroneous conclusion:

A Dead Mark is Free to Use

As in the first example, reality is much more complicated. It is possible a commercial entity could choose to let a mark "die" yet still continue to use it to represent their good or service. Perhaps the cost of maintenance was too great a burden, who knows. If the owner makes a point to remove the registered symbol, they can keep using a mark with common law protection provided by the TM or SM symbol. For another entity to start using that mark woudld be infringement. And that's just one potential scenario. Trying to register a mark that already exists might cause rejection on the basis of likelihood of confusion, or objections from prior owners, among others. To use an extant mark, the rights to it must be purchased from the owner or through re-registration via the USPTO. The only time a mark might be considered to have entered public domain is if it has suffered from "genericide".

Not everyone has a fully-formed plan when they choose to pursue a patent. Sometimes, inventors or investors view obtaining a patent as the end goal.  However, a patent should be one part of a larger business plan, or an inventor/owner may find they've wasted time, money, and effort. One of the fallacies that leads to people simply wanting a patent without knowing why:

Patents Earn Money

A patent can lead to an income, but just having one does not guarantee any. In fact, some (many) patents will never generate a cent. Inventors and owners can make money by marketing the invention, licensing the technology, or selling the rights to the patent. Even then, there is no assurance that a significant amount will result. Patents are an exclusionary property right, and nothing more. They grant owners the right "to exclude others from making, using, offering for sale, or selling" the invention in the US or importing it into the US (according to the USPTO). In the end, it might be more valuable to not pursue a patent if one doesn't fit into a strong business strategy.

Those five misconceptions pop up frequently in my IP Basics class and during individual consultations. Some, like the dead marks and patent mailing strategy, make more sense to me than others. I suspect they mostly stem from with misinformation spread between people and online. Again, leave a comment if you think I missed something important.

Why Fullerenes Aren't Patented

If you’re familiar with Rice’s high-profile scientific contributions, you are likely aware that the efficient production method of fullerene, or a “Buckyball”, was discovered by our Richard Smalley and Robert Curl, and Harold Kroto of the University of Sussex. The method is important because it essentially allowed them to discover the C60 form and other uses of fullerenes.

"Dr. Richard E. Smalley and Dr. Robert Curl, posing with a Buckyball." (2000) Woodson Research Center, Fondren Library, Rice University: https://hdl.handle.net/1911/37139.

 

The three of them were awarded the 1996 Nobel Prize in Chemistry for their discovery. 

"Richard Smalley receives Nobel Prize." (1996) Rice University: https://hdl.handle.net/1911/71843.

After the team discovered fullerenes, Dr. Smalley proceeded to help Rice University obtain numerous patents throughout the rest of his career. My search listed a total of 79! 

Search results in Patent Public Search for Dr. Smalley and Rice

The first patent for Dr. Smalley and Rice was in 1993, US 5227038A, “Electric Arc Process for Making Fullerenes”; see it here. This, along with the next three (granted in 1994, 1996, and 1997), are all for fullerene-making processes. The rest are focused on carbon nanotubes, which stem from fullerene’s discovery. The last patent granted listing Dr. Smalley as an inventor was granted posthumously, in 2013: US 8562935, “Amplification of Carbon Nanotubes via Seeded-Growth Methods”.

But why wasn't there a patent for the fullerene, the famous Buckyball, itself?

It took me a few minutes to work it out.

Anyone familiar with the rules for patentability—or what can and cannot be patented—probably already guessed (and if not, visit the Research Guide here for more explanation by clicking on the “Patentability” tab).

According to the USPTO and the Manual of Patent Examining Procedure (MPEP) chapter 2100, natural phenomena cannot be patented. Fullerenes are natural phenomena, and therefore un-patentable.

However, patentability does allow processes, so many of Dr. Smalley and Rice’s patents are for fullerene-related processes.

Collected papers from Richard Smalley’s career with Rice, from the 1970s to his death in 2005, are maintained by the Woodson Research Center. Most of the materials are from 1990 - 2005, the era when his fullerene research was making major waves.

That’s one patent mystery easily solved.

But…

You know what is really curious? Robert Curl isn’t listed as an inventor on any Rice-owned patents related to fullerene work that also list Dr. Smalley. Drs. Curl and Smalley worked together on the team that discovered fullerene production; the eponymous Smalley-Curl Institute combines their names. And Dr. Curl appears in a large number of prior art references within these patents. Did they work together once and then call it quits?

Dr. Curl and Rice have their own patents, let me know if you want to see a future post about them!