The Patent Law of Perpetual Motion

Over the weekend I wrote an article titled Turning Your Idea into an Invention.  In the article I talked about the fact that you do not need to have a prototype, but rather you need to be able to describe your invention with enough detail so that others will be able to understand what you have invented.  This is true except in the scenario of a perpetual motion machine, which I acknowledged in the article.  I didn’t want to go off on what would have been a lengthy tangent, but I knew as I was typing that paragraph I would circle back and fill in the blanks regarding the law as it pertains to perpetual motion machines.

The laws of physics and nature tell us that it is impossible for a machine to produce more energy than it consumes, which creates a very real impediment to obtaining a patent. Such a machine is characterized as a perpetual motion machine and when claimed as such it is ordinarily and routinely rejected by the United States Patent and Trademark Office. The rejection provided by the Patent Office for a claim that recites a device capable of producing more energy than it consumes is a utility rejection, which is based on the belief that an invention cannot have utility if it does not work.

But why do we need law pertaining to things that science says are impossible?  Why do we need law pertaining to a perpetual motion machine?  Those are two very different questions.

First, it needs to be noted that so-called impossibility rejections have been issued in the past relative to inventions previously thought to be impossible and later proved to be possible. For example, utility rejections were once common with respect to hair re-growth methods and treatments. When a patent examiner issues a rejection, including a utility rejection, the burden shifts to the applicant to demonstrate entitlement to the claim. In the utility scenario an examiner would reject a claim and then it would be up to the applicant to produce sufficient proof that the invention does actually work. Eventually there was sufficient proof that hair re-growth methods, treatments and compounds did actually cause at least some hair to re-grow.  Upon the presentation of this evidence the utility rejection is withdrawn and the patent examiner considers the invention on its merits, moving forward to determine if the invention is novel and non-obvious.  Ordinarily in the situation where the initial rejection was due to impossibility one would anticipate smooth sailing through novelty and non-obviousness.

In the case of a perpetual motion machine the production of a working prototype is the only way the Patent Office would ever issue a claim for a device claimed as being able to produce more energy than it consumes. More specifically, you will need to produce the working prototype before the Patent Office is going to engage in any examination.  The prototype will be tested thoroughly and if the output is more than the input then a perpetual motion machine has been achieved and the applicant may move forward through the patenting process.

The best case to discuss whenever the issue of perpetual motion machines comes up is Newman v. Quigg, 877 F.2d 1575 (1989). In that case Mr. Newman claimed a device that increases the availability of usable electrical energy. The patent examiner rejected the claims and the Board of Patent Appeals and Interferences upheld that rejection. Ultimately a number of appeals were taken to courts outside the Patent Office. In one proceeding at the district court level a special master was appointed to investigate.

The special master reported that the results shown for the Newman device appeared to conflict with the laws of thermodynamics, and expressed skepticism concerning Newman’s theory of operation of the invention. The master stated that “[t]here is no evidence corroborating Newman’s scientific theory.” The master also found that the evidence before the Patent Office was overwhelming and that Newman had built and tested a prototype of his invention where the output energy exceeds the external input energy. The special master went on to conclude that there was no contradictory factual evidence to rebut Newman’s claim despite the fact that the operation of the invention violated well-established scientific principles.

Ultimately, the district court did not adopt the special master’s findings because the report was “clearly erroneous in that it apparently contradicts the first law of thermodynamics.” In other words, the district court judge was not about to issue a decision saying that the first aw of thermodynamics is incorrect.  As a result, the district court referred the device for testing by the National Bureau of Standards (“NBS”), which all things being considered was a really good idea.  After all, if one is going to say that the first law of thermodynamics is incorrect it might be a good idea to actually test the device and see if the claims and paper proof really add up to a real-life illustration of the faulty nature of the first law of thermodynamics.

The NBS testing did not confirm the special master’s findings, and in fact found that the device did not produce more energy than it consumes, although it was found to be extremely efficient — 87% efficient.  Newman protested because the NBS tested the device grounded, which he claimed could not be done according to the invention. He further protested that the load added to test for the amount of energy skewed the results. The matter was appealed to the United States Court of Appeals for the Federal Circuit.

The Federal Circuit, having an open mind to the possibility of a perpetual motion machine, said:

This court, like the master and the district court, believes that the laws of thermodynamics do not brook contradiction. However, the laws of thermodynamics do not require closing of either the scientific or the judicial mind to the possibility that the phenomena manifested can be explained by theories that do not violate inviolable scientific principles. The master so recognized, even as he expressed strong skepticism about Mr. Newman’s scientific theory of harnessing gyroscopic or electromagnetic energy. But when the court-ordered test did not verify the results claimed by Mr. Newman, the matter of the scientific explanation of the claimed results became moot.

Taking notice of the unusual nature of Mr. Newman’s asserted technological results and proffered explanation, we discern no error in the district court’s decision to decline to adopt the recommended conclusion of the special master, and instead to order further examination by the PTO, followed by the order that a test of performance of the Newman device be conducted by the NBS.

Essentially, the Federal Circuit found no error in what the district court did. The primary, if not exclusive reason, was because Newman had been provided the testing protocols to be employed by NBS, which included that the machine would be grounded and a load added to test the output electricity, and he did not object prior to the testing. Objecting after the fact to the NBS testing was deemed insufficient and untimely.

What does this all mean? It means that it will be exceptionally difficult to obtain a claim on an invention that purports to produce more energy than it consumes, unless of course you actually have a working prototype that will when tested produce more energy than it consumes. Judge Pauline Newman (no relation to the inventor) was the Federal Circuit Judge who wrote the opinion in Newman v. Quigg and as I read what she wrote I get the sense that she chose her words carefully because she would not want to go down in history as one who wrote that perpetual motion machines are impossible, only years, decades or centuries later to be proven wrong.

The reality is that science fact and science fiction are dictated based on currently accepted understandings, whether they be true or not. As impossible as something sounds, what we understand as science fact is always bounded by our understanding of our surroundings.  As our knowledge expands what was formerly science fact frequently becomes science wrong, sometimes badly wrong.  Does that mean that someday perpetual motion will be a reality?  Who knows.  I am not holding my breath or taking any bets, but there are a lot of highly intelligent people constantly trying to unlock the mysteries of the universe and with so many new discoveries it seems science continues to encroach upon the impossible.  Just think about cloaking devices and a transporter a la Star Trek, which are already to some extent realities.  See here, here, here for cloaking and this, this and NASA acknowledging “small numbers of atoms and photons have been teleported” for transporter technology futurism.

But all of this begs the question about why do we really need to have law dealing specifically with perpetual motion machines?  The truth is that every generation has inventors that believe they have solved the mystery of perpetual motion and the Patent Office and the Courts have gotten rather tired of dealing with those cases, hence the requirement for a working prototype first.

To some it will be shocking that there are people who actually believe they have invented a device that produces more energy than it consumes.  I can say with great authority that there are far more inventors working on creating a perpetual motion machine than anyone probably would believe.  In some cases there is even a working prototype, so there is obviously some kind of machine, but does it provide more energy than it consumes, which is the Patent Office definition of a perpetual motion machine.   Frequently inventors discount the initial energy input into the system, thereby skewing their output readings and erroneously having them believe they have created a perpetual motion machine.  But there are many working in what seems a hopeless field, at least if you buy into the first law of thermodynamics.

The pursuit of the impossible, or impossible at least based on our current understandings of the laws of physics and nature, is a particularly strong draw for many.  It is what causes young science fiction fans to grow up into scientists that challenge conventional thinking and chase the cool gadgets the sci-fi visionaries dreamed.  That drive and dedication can lead to places where no one could have imagined, and frequently does.  Just look at all the things NASA learned when they worked to put a man on the moon.  That was believed to be impossible.  Would we have made so many discoveries without reaching for the seemingly impossible?  Perhaps not.

The key for those who dream of perpetual motion or unlimited free energy (as it is sometimes stated) is understanding that it will be a substantial uphill battle to obtain a patent on a perpetual motion machine, and even if you do have a working prototype you will likely need many hundreds of thousands of dollars to fight the legal battles you will face.  Of course most will tell you it is impossible and you should stop wasting your time, and maybe they are right.  But I’m a dreamer myself and not about to tell anyone to stop pursuing their own dream.

What I do want to say, however, is that you need to keep your eyes open along the journey.  Don’t become blinded by disproving the first law of thermodynamics.  What I know for sure is that if you set out to prove the impossible possible you may well stumble across a variety of interesting improvements that are worth protecting.  A stumbled upon invention is still an invention, but that is a story for a different day.  For now suffice it to say that as you reach for the stars don’t lose sight of that which you are creating that is less than what you want but still a great invention.

Happy inventing!