Patents Cut Both Ways

Patents are not revenue

Back when I was younger (2018, I know not that long ago) I thought I was going to do the following:

1. Study for the patent bar

2. Pass the patent bar

3. Get hired by a law firm to become a patent agent

4. Get said law firm to pay me to go to law school

5. Graduate, pass the bar, and become a patent attorney

6. Get Rich

Spoiler Alert: This didn’t happen. It also didn’t help that every patent lawyer I spoke to seemed a bit miserable and wished they could have done it differently. Patent lawyers told me to go get an MBA if I wanted another degree. Finally, I found studying for the patent bar was boring so I stopped.

The reason I was interested in patent was because I spent a lot of time between 2016-2019 inventing new polymers in the lab. This means I was reading a lot of the patent literature and spending a lot of time drafting patents with patent lawyers. As with anything, the more time you spend doing it the better you get at it and the more you think, “I could do this full time and it beats handling [insert your favorite dangerous chemical here] in the lab.”

Readers of the newsletter have asked me with some concern and curiosity about patents over the last couple of years. What do I think about X patent from Y company? Is this patent going to make/break us? Is it a useful patent?

I think it’s time for an ENTERTAINMENT PURPOSES ONLY post on patents. I’m not a lawyer. This is not legal advice. This is mostly just my opinion for your entertainment. Patent lawyers, feel free to weigh-in via comments or add your own opinions. I’m not here to rehash patent basics. There’s plenty of stuff out there for that like this series (class?) from PennLaw

The Goal of Patents: Disclosure

The end goal of getting you to patent something is for you to disclose your invention to the public. Yes, a granted patent allows you to exclude other people from practicing your invention for 20 years (from the filing date), but after those 20 years your invention is open to the public. Your patent might take 2 years to prosecute and get granted. It might not get granted. Either way, the stuff you’ve been working on is now out in the public domain. If you stop paying your fees or someone invalidates your patent (e.g., you left an inventor off the list, you overlooked a key piece of prior art that didn’t get discovered, etc.) your stuff is out there and now belongs to the public.

By disclosing your invention to the public it eventually becomes part of the public domain, thus some might argue we get to see progress in our world. If it’s your job to read old patents and try and knock off existing innovations—you are probably trying to do it cheaper than the name brands.

The public domain of already invented stuff is where we get the lower cost generic versions of stuff like prescription drugs, toys, tools, candy, and you guessed it.

Chemicals and synthetic polymers.

The Structure of an Industrial Chemistry Patent

There are a few different variants of patents in this area where I’ve got familiarity, but they all come back to two main parts.

1. The Specification

2. The Claims

The specification or the description are those paragraphs that describe the problem, some of the prior art (stuff that happened before) and will/should contain the best mode of the invention (the reduction to practice). The specification helps frame your claims and provides support for your claims. All of the stuff you need to demonstrate for a patent such as it being non-obvious to a “person having ordinary skill in the art,” happens in the specification.

The claims are the legal scope of the invention. These are the phrases that will both broadly define your invention while also keeping it relatively narrow in scope. I don’t really have time to make up a whole specification and set of claims so let’s use US8021864B2. The assignee: Mitsubishi Chemical Corp.

If you have the time go read the patent and come back. If not let’s do a quick summary.

Mitsubishi Chemical states that if you are trying to make polyesters from biomass with diacids and diols then the polymer chemists will ultimately run into issues caused by purity. The issues are things like:

1. Bad mechanical properties

2. Resistance to degrading in water/humidity

3. Difficult to injection or cast mold (like a clay mold, not the fungus)

The inventors think that these issues are due to nitrogen content. Thus, we arrive at the claims in the US.

A biomass-resource-derived polyester comprising as main repeating units thereof a dicarboxylic acid unit and a diol unit, wherein at least one of the dicarboxylic acid and diol used as raw materials of the polyester is obtained from biomass resources, an amount of terminal acid in the polyester is 50 equivalents/metric ton or less, and the nitrogen atom content in the polyester, except nitrogen atoms covalently bonded in the functional groups of the polyester, is, in terms of a mass ratio, 0.01 ppm or greater but not greater than 500 ppm relative to the polyester.

The above is their independent claim and I’ve bolded what I consider to be important words. So in regular person terms the scope here is limited to polyesters derived from biomass made of a dicarboxylic acid and a diol. At least one of the units must be made from biomass. The amount of end groups that can be an acid is limited and the free nitrogen content must be between 0.01 to 500 ppm of the polymer.

The word comprising is also a sign that this composition of matter patent has some relatively broad leeway of interpretation. Narrower language would be phrases like, “consisting of or consisting essentially of” (explainer on these phrases here).

Overly Broad Claims Can Be Difficult to Enforce

Mitsubishi’s claim is really broad, especially considering the variants of polyesters out there.

The problem with broad claims like the one above from Mitsubishi is that they are probably too broad to enforce or vulnerable to an invalidation. This is like being John Dutton telling people to “get off my Ranch,” because his ranch “is the size of Rhode Island,” and the Ranch is a money pit that isn’t profitable. If you actually get granted a very broad patent claim you better get ready to become an enforcer, spend a bunch of money on litigation, and hope you can win.

The idea of biobased polyesters from diacids and diols isn’t new. Two years ago, I wrote about polyethylene furanoate and furan dicarboxylic acid and the idea of using furan based diacids derived from biomass goes back to the 1970s or earlier. Commercially, Coca-Cola was trying to commercialize a 100% plant-based PET bottle in 2015 (via biobased terephthalic acid). Thus, the idea of biobased polyesters is about as old as most polyesters.

Mitsubishi does offer some additional narrowing of their claims though with the nitrogen content and free acid content. Not having any nitrogen in a biobased polyester seems somewhat obvious to me as many primary, secondary, or tertiary amines (common forms of nitrogen) will inhibit acid catalysts used to make polyesters. Free acid being below “50 equivalents/metric ton” seems like a weird way to describe it (why not use acid number like everyone else in the world?), but I suspect there are polyesters that meet all of these requirements such as polyester polyols (excess of diol used in the synthesis).

A polyester polyol would be of relatively low molecular weight, usually dissolved in a diol (e.g., ethylene glycol, butane diol, 1,6-hexane diol, etc.), contains low free acid content (excess diol used in synthesis) probably contains almost no nitrogen. Using a biobased diol or diacid seems obvious here.

I think this is a classic example of wanting to patent “everything close to the actual invention,” and usually the patent examiner pushes back, and the claims get narrowed. Sometimes, the examiner doesn’t push back and the inventors get the very broad claims they submitted are granted (kind of like a dog catching the car). Now, they Mitsubishi needs to decide if they want to become patent trolls or if their business is in making and selling chemicals.

Oh yeah, Mitsubishi’s patent also expires in 2026 so depending on when you read this their invention will be part of the public domain soon and we will all be free to practice it.

The Takeaway

Patents. Can’t live with them and can’t live without them. When I used to work with in-house patent lawyers on patent prosecution the estimate of the cost was about $70-80k per patent in 2016. I suspect it’s closer to $100k now depending on the law firm and maybe even higher. Start-ups need to be strategic in what they patent, when they file, and how many they want to submit. If you aren’t careful you could spend $500k on lawyer fees in a year or two.

Investors, if things don’t work out with the start-up, patents allow you to at a minimum sell the patents to someone else. Maybe you get to re-coup part of your investment and you get to minimize the write down.

In the short term the real winners seem to be the patent lawyers (lots of billable hours) and the litigators.

The long-term winners are the public.

Tony