Rossi Fights for his Patent (More from E-Cat Patent Amendment)

Thanks to Omega Z for providing a link to the full patent amendment recently filed on behalf of Andrea Rossi in which an extended time period is requested for consideration of the application pending the upcoming third party tests.

Readers here might recall that Sean Burke, patent examiner at the US Patent and Trademark Office, in March of this year issued a “non-final rejection” of Andrea Rossi’s patent for the following stated reasons:

“The specification is objected to as inoperable. Specifically there is no evidence in the corpus of nuclear science to substantiate the claim that nickel will spontaneously ionize hydrogen gas and thereafter “absorb” the resulting proton…”

“There is presently no peer-reviewed evidence to demonstrate the spontaneous fusion of nickel and protons…”

“Additionally the Examiner notes that if the reaction occurred as claimed by the Applicant, it would also spontaneously occur in nature.. not be patentable subject matter,,.”

“…the specification and all claims are found to be inoperable.”

The amendment document shows a response from Rossi’s team. Typographical and grammatical errors found in the first patent are corrected, and claim number 8 in the original application — “A method according to claim 1, characterized in that in said method catalyze materials are used” — is cancelled.

In the remarks, the examiner is thanked for granting a personal interview to Andrea Rossi and his patent attorney on April 22 where the invention was discussed as well as the non-final rejection decision. In this interview the examiner “indicated that a submission which provided evidence of the operability of the process would be considered.”

In response to the reasons for rejection of the claim provided by Mr. Burke as quoted above, the document states:

“Furthermore, the objection to the specification as being inoperable has not been based on any cited reference. It is essentially a recitation of opinion that is not supported by any authority and does not address the subject matter of the claims of the present application. When inoperability is raised by the PTO, the legal basis for refusing the application is actually the lack of a practical utility for the claimed subject matter. The burden is upon the Office to provide evidence that one of ordinary skill in the art would reasonably doubt the asserted utility.”

In other words, Rossi is contending here that rejection of a patent on the grounds inoperability cannot be based on uninformed opinion of the examiner — it must be because a device does not work, and the Patent Office must have some evidence of that. If the upcoming test results demonstrate that the E-Cat does indeed work reliably, it may cause the examiner to reconsider this application.

  • Owen Geiger

    Once the report is finished it will be time to take Mr. Burke to the customer’s factory so he can see the reactor in operation. How could they deny it works and has utility when it’s actually operating in a factory? Take along a hidden camera just in case so you can later sue the USPTO.

  • Ophelia Rump

    What magnetic field?

    • Dave Lawton

      In the late Harold Aspdens cold fusion patent he passes a AC from a
      transformer through the nickel and points out that the created magnet
      field acts as the catalyst.

      • Ophelia Rump

        That is interesting.
        Rossi’s Nickel may not be pure. If it has traces of other metals, it might actually be Mu Metal, which is unique in relation to magnetic fields.

  • artefact

    from Mistero in a different thread:

    • Frost*

      Looks like a pyramid scheme to me. Caveat Emptor!!

      • ecatworld

        Just heard back from Andrea Rossi about this:

        “This is a fraudolent website. We do not know them and never had any connection with them. They have no authorization to deal with E-Cats. We never authorized clowneries as the sales they propose. Please give information about what I write in this email !!!”

  • Curbina

    “Additionally the Examiner notes that if the reaction occurred as
    claimed by the Applicant, it would also spontaneously occur in nature..
    not be patentable subject matter,,.” this statement is standar issue for rejection of patents. I have seen it wrote in many rejections of patents, the last one one of Ruggero Santilli for production of fast neutrons.

    • Doug Cutler

      Its a rather peculiar objection, don’t you think? Hot fusion obviously also occurs in nature. Do you then automatically rule against any future claims to hot fusion technology? No.

      • Curbina

        Well Doug, the rationale behind that standard statement would not apply to hot fusion. This statement refers to the patent claims regarding what is currently “known” (the prior art), and from that point of view, “cold fusion”, “LENR” and all related “prior art” is pseudocience.
        Not that I agree with that.

    • Omega Z

      It’s a Lawyers World.
      If it naturally occurs in nature, you can’t patent it.
      If it doesn’t naturally occur in nature, probably impossible. No Patent.

      Thus you need a Good Lawyer to argue for you that,
      No, It doesn’t “Naturally Occur” in nature,
      But you have devised/created an Environment or means where it can occur.

      I was going to conclude, You can also force a patent approval with a working product. In the U.S. anyway & that’s the prized patent.
      A Simplistic Example: Rockets are impossible. Patent declined. Patent Master, look at this. Whoosh. Oops, sorry, here’s your patent.

      And it dawned on me. This is not such a simple task with the E-cat.
      Sure it works as far as producing heat. Proving it produces excess heat is not so simple. For the Patent Officer, this is not conclusive proof.

      And you wouldn’t likely get a Patent Officer to observe a test over many months of which he isn’t a qualified expert anyway. This would require multiple Scientists in multiple disciplines & multiple Universities. The Patent Officer would in fact need outside experts to validate the E-cat.

      In Essence, This is what Rossi has done. If the Universities & Scientists who administered the test have impeccable credentials, the patent office have to take these into account. At the very least, It sets the stage to force them to administer an additional test with people of their choosing. At IH/Rossi’s expense of course. Everything is at the patentee’s Expense.

      If this were declined, From my understanding, If the patent office refused to accept such a test or undertake their own, Rossi/IH have enough (ITP Test) to take it to the U.S. Congress for redress.
      (Caveat: With Patent Law changes from time to time, I could be wrong in this interpretation)

  • Nixter

    There has been speculation on Vortex that the coiled “heating element” used in Rossi’s device has a dual role, ie, resistance heater, and (Possibly) a magnetic (induction?) coil when fed DC current.

    • Dave Lawton

      In the late Harold Aspdens cold fusion patent he passes a AC from a transformer through the nickel and points out that the created magnet field acts as the catalyst.

  • GreenWin

    Intellectual property protection of an exceptional innovation such as E-Cat can and should avail itself of both patent and trade secret law.

    In the early 1940s pharmaceutical giant Wyeth (now Pfizer) patented a highly successful hormone replacement therapy drug called Premarin. It was the most widely prescribed drug in the US and Canada, making it worth ~ $billions. After patent expiration (20 years) there was still no generic competitor because Wyeth had kept a key extraction process, Premarin’s “secret sauce” a trade secret.

    Wyeth elected to keep its “secret sauce” a trade secret providing the added and extra IP protection of the U.S. Uniform Trade Secrets Act. Trade secret and patent law can co-exist. In 2002 a Minnesota company, Natural Biologics Inc., claimed to have independently developed its own extraction process and began to market a generic form of Premarin. In January of 2005, the United States Court of Appeals Eighth Circuit issued a decision confirming that Natural Biologics had misappropriated Wyeth’s trade secret – i.e. it had unlawfully stolen Wyeth’s secret, permanently enjoining NBI from exploiting its illegally obtained process.

    Trade Secret Law provides for generous damages, punitive damages, penalties, royalties and legal fees for winning plaintiffs. For example, a Silicon Valley jury recently ordered Toshiba to pay $380M to Lexar Media for stealing Lexar’s trade secrets. The decision was upheld on appeal.

    It would appear that IH/Rossi is pursuing the dual protection path by keeping the E-Cat’s catalyst (or other proprietary process) secret, while properly patenting an excess energy device. The patent application process then becomes an incorporated element of IH/Rossi’s trade secret. This is, IMO, the reason for the extreme secrecy and lack of public disclosure with respect to the development and testing of the E-Cat and derivative works.

    Beyond that, Dottore Rossi et al has the benefit of support from superior powers which guide and direct this endeavor above human perception. It is fitting for an innovation of this order able to benefit all of mankind. Have a lovely Sunday afternoon and evening people. 🙂

    • Andreas Moraitis

      It’s a tightrope walk. As timycelyn has pointed out below, there is always a chance that somebody else would discover the catalyst and protect it to its own advantage. The probability for this to happen will depend mainly on three factors, I guess: First, the more complex the catalyst is, the better. Secondly, the less the effect is theoretically understood, the better. Third, the more careful Rossi and his staff are in their statements and in their handling of data, the better. However, even if all these parameters were optimally adjusted, nobody could guarantee that the secret would be kept for decades. Therefore I expect that we will see a description of the catalyst – whatever it might be – as soon as IH’s new patent applications become public, possibly in summer 2015. At least until then IH should have a foothold on the market.

      • Andreas Moraitis

        One could add protection against reverse engineering as a fourth important point; this has been a favourite subject in various discussions some time ago. Reverse engineering could become a problem at the latest when household units are available for everyone.

        • GreenWin

          My point is that combining trade secret AND patent protection is a regular practice in the U.S. by major corporations – and the Courts uphold this strategy. If anyone attempts to reverse engineer the IH/Rossi trade secret, they can be found guilty of misappropriation – i.e. illegally obtaining ingredients or process.

          For a competitor to succeed they will have to prove beyond any doubt they produced their product without disassembling or reverse engineering the E-Cat. So far as we know, absolutely no one has done that.

          • Andreas Moraitis

            Understood. However, it could be possible to manipulate information in a way that the court would accept it. Besides, the legal practice in other countries than the USA is far less strict. There is apparently some progress with regard to China, but elsewhere one could surely find enough loopholes.

          • GreenWin

            Yes, and an invention as important as E-Cat will establish/contract a group or company that survey’s the competition for any such manipulations. Internationally, the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement, 1995), provides Trade Secret enforcement. TRIPS is administered by the World Trade Organization including Russia, India, China, EU, North America and Asia. As of 2008 WTO members represent 97-98% of ALL trade on Earth.

            Many in this discussion, are confused about patent and trade secret differences. The reason Rossi is vague or not forthcoming about E-Cat details and progress is to meet and adhere to the letter of Trade Secret law. It may be frustrating for bystanders, but it IS the best way to guarantee the product actually gets to market, IMO.

  • deleo77

    Just for clarity sake I think it is good to note that this is not Rossi doing this, it is IH. Of course his name is still on the patent, but the intellectual property belongs to IH, so the patent will belong to them. I think that Tom Darden (a Yale Law School educated attorney) and his very well heeled NYC intellectual property firm have been devising their patent strategy for months. Their knowledge of this process runs far and wide. So I trust they have a plan of attack. If anything, this convinces me a little more that Darden truly believes he has something with the e-cat. There is no reason to pay $1,000 per hour attorney fees and fight through this process unless you know what you have is the real deal. Rossi spent time with the testers. He and Darden have talked about it. You have to think they have some general indication at this point that the results are positive.

    The question is can they get a patent without having to reveal the catalyst. If they can get a positive result in a peer reviewed journal and take the patent examiner to the factory floor to show him a working e-cat that is providing a benefit to the customer, then they may have a shot. I think the two month time period for the report is definitely padded to be conservative, so it is very likely that we will see the report in a month or less.

  • Chris I

    It is the usual problem: that he is attempting to patent a secret. Without this shortcoming, the application would be sufficient to allow the examiner to check whether it works, instead of talking about the corpus of nuclear science.

    • builditnow

      Has anyone been able to authenticate that this document
      requesting the delay, is genuine. I’ve tried web searches and searches on the website but have not found it as yet. Perhaps one has to pay or be an attorney to get it. It has all the appearances of being genuine but I’d like a solid verification if anyone knows how to achieve this.

      • PD

        Cobraf seems to be a forum. Perhaps this is a leaked document from USPTO.

        Document properties seem to indicate that this is a genuine document (but a very recent one).

        Application: USPTO PDF Builder
        PDF Producer: USPTO
        Creation Date: 27/09/2014

        • builditnow

          Yes, could be a leaked document, or, perhaps one can get this level of detail by paying some money to the site. I noticed some of the services state that you must be a patent attorney before you can use them. I’m no expert on the uspto.

    • Pekka Janhunen

      If Rossi tries to patent the E-cat without describing the secret sauce (assuming such exists and is needed), the patent would be commercially worthless even if granted. True, Rossi could deny a competitor from using the design, but the competitor could in turn reverse engineer and patent the secret sauce and deny Rossi from using it. After this, both parties would have to negotiate and grant each other licenses before other competitors would pop up, or alternatively they would have to try and get around each other’s patents by modifying the design and the sauce. For Rossi it would be effectively the same as not having a patent at all.

      • Sanjeev

        That sums it up well.
        Patent or no patent, ECat will lay hundreds of ekittens all over the world (within weeks perhaps).
        If IH is really smart they will not try the security by obscurity and control way (always fails), rather they will reach out to all in the world by the way of licenses, manufacturing contracts and tech transfers. If they get major partners in the big countries around the world, they will have a legal cover from major governments and can keep a big share of income flowing.

        If they try to monopolize, I’m afraid, no one can help them from destruction.

      • Omega Z

        If Rossi/IH are building & selling systems & they are in the market using the secret sauce, wouldn’t that prevent another entity from filing a patent on the sauce.

  • Daniel Maris

    I don’t really accept the parallel with coca cola.

    Surely it would be more like the Wright Brothers trying to get their plane patented while not telling exactly how they construct their wings…or Benz seeking to get an ICE patented without revealing the exact formula for the petrol or oil used in the vehicle.

    As in many areas of life there seems to be a huge amount of BS in patent law. I bet you loads of multinational corporations get their patents through without revealing in full secret sauce formulae.

    INcidentally, Rossi did get an Italian patent granted with a very, very description of the E cat machine. So clearly there must be national differences.

  • Alan DeAngelis

    Yeah, I know nothing about patent law, but even though they could whack him for it being “impossible”, perhaps the application would be enough to block others from stealing the “special sauce”.

    “Good thing I was too stupid to know this.”
    Sir Frank Whittle (inventor of the jet engine) when he learned that it was thought that the jet engine would be impossible it make at that time.

  • jousterusa

    So is Coca-Cola unprotected by a patent? I don’t think their secret ingredient was ever disclosed – at least since they took the cocaine out!

    • Ophelia Rump

      They filter it through dinosaur bones.
      That may or may not be secret but it is true.

    • Omega Z

      Never disclosed, Locked in a vault that I believe only 2 people have access to. At least according to the occasional news story about it.

      With today’s technology, it would be quite easy to figure it out down to the parts per Billion. But that would be a waste of money. If you tried to use it & were discovered, You’d have the full financial weight of Coke come down on you.

      As a Final Option, You accidentally fall into a vat at 1 of their facilities and no body ever found. (If someone were to suspect foul play, You were burglarizing their facility. That’s the cover story & their sticking to it.)

  • Ophelia Rump

    You may be right, and they may also be waiting for the last moment of the last day to reveal the catalyst. When it is the last remaining issue.

  • HHiram

    This is exactly correct. There is a big difference between patents and trade secrets, and the formula for Coke is a trade secret.

    Any device that can be readily reverse-engineered is not going to be safe by treating its technology as a trade secret, so without a patent Rossi would see the ECat get reverse engineered within months of units going on sale to the public.

    A patent is therefore the only sensible approach to trying to protect the ECat’s intellectual property.

    My guess is that what has really happened is that Rossi is in a race against other competitors, and so the initial patent application *deliberately* did not include all of the necessary details. Instead, Rossi filed a patent as early as possible to acquire precedence for the technology, and he/IH are drawing the out the process of actually revealing the details of the technology for as long as possible – i.e. until the products are ready for market.

    This is really quite a clever way to do it. He will still get the first LENR patent in the end, but by not revealing the details at the beginning he was able to keep developing the ECat in secret for more than a year after filing the initial patent application – a huge advantage when he is racing against competitors to be the first to market with a working commercial product.

    I also suspect is that this arrangement was discussed and “approved” by the patent examiner, since the examiner is playing along very nicely with the “non-final rejection”.

  • Doug Cutler

    So no one can patent terrestrial hot fusion itself as a category, rather specific means and tech to control it. So if Rossi is still leaving out the “secret sauce” it reduces his claim back to a lower common denominator of natural occurring process which is seen as too general – even assuming its occurring. So even if the new test comes back positive, patent examiners will likely still want a full disclosure of the process. Something like that . . .?

  • Andreas Moraitis

    Interestingly, Coca Cola Company is not lazy when it comes to patents, here you can see a snapshot:

    There are some patens for sweeteners. Sweeteners could be used as well by others, without jeopardizing the originality of Coca Cola itself. Maybe it makes a difference if they see an option to license a recipe or not?

  • Jonnyb


  • Donk970

    Getting a patent on this is going to be a tricky process. On the one hand a patent is only as good as your ability to defend it and getting the patent will probably require divulging the secret sauce thus making it possible for someone to simply use it. On the other hand relying on secrecy to protect the product leaves them open to someone figuring out the secret sauce and getting a patent which locks Industrial Heat out of the market.

  • GreenWin

    Correct. However, if one duplicates a trade secret by misappropriation of elements proprietary to an existing trade secret – and this is proven in Court, as in the well established case of Wyeth’s Premarin – the appropriator will be found liable and suffer significant if not fatal penalty. Additionally, if the misappropriation was made by theft or e.g. cyber-espionage, the defendant may also be subject to criminal prosecution.

    • Andreas Moraitis

      Apart from reverse engineering: If somebody would gain access to confidential information by illegal means before the product in question is available on the market, would that make a difference from a legal point of view?

      • Andreas Moraitis

        And, related question, what if the means were legal? For example, if the information was obtained incidentally, or the secret was discovered by own effort?

        • Omega Z

          “if the information was obtained incidentally, or the secret was discovered by own effort?”

          This would be Legal. However, you better have deep pockets for the coming lawsuit where you have to prove it. If it were a matter of just trying various additives such as Example 1% iron ferrite powder, You may win in court. If it’s a far more complex combination, such as adding multiple elements & different percentages or processes with 1 in a million shot, you may then be in trouble.

          Judges & Juries tend to raise an eyebrow even when you stumble upon something by chance. They know it’s a corrupt world to begin with. They don’t usually buy into 1 in a million shots.

          Penalties can be very harsh. Not only can they award any & all profits, they can award total Gross income & more at their discretion. Especially if they determine it was done with willful intent. The penalties are harsh on purpose. If they only required you to pay the amount of lost licenses fees, an argument some defenders would make, Everyone would do it with hopes of getting away with it. Play the odds.

          Still, Even should you stumble upon it & bypass the legal hurdles, You would not be able to patent it, As it would fall under prior art. It’s in the market already(Rossi/IH pilot plant). I believe the prior art condition was part of the recent Patent Law change a couple years ago.

          Honestly, I wondered about Rossi/IH doing this, But with what GreenWin has proposed, it now makes sense. Secret formula was intended from the beginning. Copy it & face civil action & possibly criminal action if you reversed engineered it with intent.

          • Andreas Moraitis

            I did not express my thought clearly enough, sorry. My question was if they could lay claim to a trade secret (or prior art) at a point where the product is not yet on the market, but still in the development phase. Even if this should be so, they might have difficulty to prove that they had used the idea first. But as you say, the existence of the pilot could be the decisive point in the present case.

          • Omega Z

            Yes, as I said, Rossi installing a pilot plant confused me due to the prior art section on patents. Unless I misread it, it would apply to the originator as well as anyone else.
            The Patent, Trade Secret scenario proposed by GreenWin allows to make sense of it.

  • GreenWin

    Cases where a company employee or contractor fails to honor an NDA inadvertently, and let some element of trade secret slip; if that information is used by a competitor knowing its source – I’d call that simple misappropriation. If someone physically steals information, e.g. documents, or intercepts a phone call, text, or data transmission – I would consider that misappropriation by unlawful act. Both can be litigated in civil court, the latter is evidence for criminal proceeding. IMO. However, I am not a lawyer. 🙂

    • Robert Ellefson

      OK, I read you as expressing the difference between civil vs. criminal misappropriations, either of which would fail to break the trade secret protection status of an invention. Fair enough. At this point I suppose we’re splitting hairs about what constitutes fair appropriation vs. misappropriation vs. criminal misappropriation, when all of these precise divisions are in practice determined by legal precedence, arcane laws and policies, etc., and exist well-outside of my range of pertinent knowledge. I just wanted to point out that reverse engineering, if done “properly,” is most certainly legal, and is a significant consideration for anybody attempting to maintain a monopoly via trade secrets.

      • GreenWin

        I appreciate your point Robert. Years back a chip manufacturer told me how they had to sanitize their attempt to legally copy the functional capabilities of an Intel processor – without “appropriation.” It was a complex, expensive project starting with engineers that had little or no prior knowledge of Intel’s internal code, bios, etc. They also could not physically dissect the Intel chip as that would apparently expose them to infringement.

        I doubt IH, given their charitable philosophy is interested in monopoly. I would think they are happy to freely license to industry or perhaps to partner with power purchase agreement companies – as proposed by BlackLight Power. Thanks for your comments.

  • Andreas Moraitis

    Different context, but perhaps of interest: According to Robert Godes, India has imposed a secrecy order on Brillouin’s patent application, see

    (Click on “secrecy order”, or use this link: )

  • Green_Goo

    That is an objectively weak response to office action. Precedent should have been cited and applied. Rossi could have submitted a declaration regarding the operability of the claimed invention. The PTO will almost never second guess the facts asserted in a declaration. And additional claims should have been presented that contain additional elements to overcome the operability rejection. These things are really standard fare. I don’t know why Rossi is doing the bare minimum on the patent front.

    Just two cents from a patent attorney.

  • Omega Z

    Why Yes, Yes I Do, but due to NDA,
    No Actually the 100% sold come from a former associate of Rossi’s who also added that IH had acquired all future Rossi LENR IP as well up to & including any new elements he may develop besides nickel. Considering the E-cat was still under R&D this was understandable. Except the Associate was a little put out by the inclusion of other elements clause. Tungsten, etc…

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