Patenting Your Basement Fusion Reactor: Utility Requirements Under U.S. Patent Law

lightbulbMultiple projects are currently underway to demonstrate feasibility of fusion energy. The goal of the ITER multinational project in southern France (of which the United States is a participant) is to deliver ten times the power that is consumed during operation. Back in the United States, Lockheed Martin’s Skunk Works is working on a more compact nuclear fusion reactor. However, if you ask certain inventors, fusion energy has already been demonstrated in labs, garages, and workshops. Some of them even filed patent applications, such as U.S. Pub. No. 20110044419 or U.S. Pub. No. 20040137289, to protect these valuable discoveries. But why haven’t more patent applications covering cold fusion matured into patents that can be licensed or shared for the benefit of mankind?

To be patentable, an invention needs to be useful, novel, and nonobvious. Arguably, being useful is the lowest hurdle that needs to be overcome of those three requirements. An invention has utility (or usefulness) when it does something substantial and credible. By substantial, the invention needs to do more than merely take up space in a landfill or serve as a paperweight. Some small degree of utility is sufficient. However, even if it has a substantial use, an invention that is scientifically impossible or potentially inoperable can still fall short of the utility requirement because of credibility problems. Thus, patent applications usually cannot cover devices deemed impossible by current scientific thinking, such as perpetual motion machines, time travel, whole-human teleportation, or, arguably, cold fusion.

Evidence that an invention works is not typically required to show utility, but may be requested for an invention where the alleged utility seems incredible or misleading. The examiner has an initial burden of showing that one of ordinary skill in the art would reasonably doubt the patent application’s asserted utility. The burden then shifts to the inventor to provide evidence of usefulness.

Some cases illustrate this point. Back in 1992, the Board of Patent Appeals and Interferences reviewed an invention by Professor John Dash and Patrick Keefe purporting to generate energy by cold fusion. Ex Parte Dash, 27 USPQ2d 1481 (BPAI 1992). The board pointed out that there was no evidence in the record that an operating cold fusion system had been produced using the invention. The inventors were reminded that allegations that “border on the incredible” or “would not be readily accepted by a substantial portion of the scientific community” would require sufficient evidence proving operability. Merely presenting an object of scientific research, as provided by Dash and Keefe, was not enough to meet the utility requirement and the board sustained the examiner’s rejections.

Dash and Keefe then filed a continuation application covering cold fusion that was rejected and appealed up to the Federal Circuit in 2004. In re Dash, 118 Fed. Appx. 488 (Fed. Cir. 2004) (nonprecedential). The Federal Circuit held that an examiner can rely on any source (e.g., related technology, anecdotal information, or sources that are not peer-reviewed) to establish a case of non-operability of the claimed invention. The Federal Circuit also held that the inventors’ evidence purporting to show a fusion reaction was not convincing and did not rebut the examiner’s rejection for inoperability. The examiner provided sound reasoning to disbelieve every piece of evidence submitted by the inventors, so the examiner’s rejections were affirmed by the Federal Circuit.

While inventors may have groundbreaking ideas that could fix mankind’s energy or greenhouse gas problems, an invention that appears scientifically impossible may be challenged at the U.S. Patent and Trademark Office as to whether this invention has utility. The inventor may be asked by an examiner to provide evidence of operation if there is no scientific consensus that an invention can operate. So if you’re tinkering with a cold fusion reactor in your basement, you may have trouble convincing an examiner of operability or scientific feasibility to overcome a rejection for lack of utility until some other project shows positive results.