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Is it Patentable?
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   Is enhanced process efficiency patentable per se?
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   Author  Topic: Is enhanced process efficiency patentable per se?  (Read 460 times)


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Is enhanced process efficiency patentable per se?
« on: Jan 26th, 2007, 7:54pm »
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I'd like to determine whether enhanced process efficiency is considered a basis for invention by the USPTO.  Here's the fact pattern:  I've devised a novel process that makes material X at a substantially greater efficiency (and therefore at substantially lower cost) than the prior art.  Material X is a material already in the stream of commerce, produced by other, lower-efficiency processes.  Assume there's no controversy that my new process  meets the tests of novelty, utility, and non-obviousness, and further that the enhancement in efficiency it provides is both novel and very significant with respect to greatly lowering the cost of material X.  That is, no prior art provides efficiencies nearly as great as my new process.  (Efficiency is rigorously defined as a function of energy and raw materials used vs. the amount of material X produced.)
In my patent strategy for this invention, I could of course seek to patent my novel process.  What I would rather do is patent the novel high efficiency, and the material made thereby.  I would draft an independent claim to material X produced in a process exceeding Y efficiency, having given my novel process as the preferred embodiment (without limitation) in the specification.  
If this approach were successful, my patent protection would extent to any instance of material X produced from a process whose efficiency falls within my claim, even if done by another process technology.  This would seem a much better, broader position to have, as it would provide protection that insulates against subsequent development of novel material X manufacturing process of high efficiency.
My question is, does the patent office recognize improved process efficiency as inventive matter?  
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Re: Is enhanced process efficiency patentable per
« Reply #1 on: Jan 27th, 2007, 6:41am »
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Typically a patent application for a new process for an existing material would focus on the process itself, e.g. a different catalyst, a different type of reactor, carrying out steps in a different order, using different raw materials. etc.  The application needs to enable one skilled in the art to make and use the invention that is claimed; i.e. an enabling disclosure is required.  Certainly the improved efficiency of the process would be disclosed as well.
The application would normally include claims to the embodiments disclosed, and also more broadly disclose the invention.  Certainly some claims such as:  A process of making a gadget with greater than 85% efficiency as measured by .... could be included.  If you wish to make such a claim, your application should include comparative data to show the improved efficiency.  You would have a better chance of getting such a claim allowed in the US than in Europe.
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Richard Tanzer
Patent Agent
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