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We have a small company that makes soil amendments from post-consumer food waste, which we compost using acidic anaerobic fermentation, also called Bokashi, the Japanese term, where the technique was perfected.

Well, as it turns out, a guy in Oregon is trying to patent the process of pickling the garbage and making agricultural amendments out of it. And not only that, he is sending us threatening letters and demands for a licensing fee and royalties, even though, as far as we can tell, his patent application has not yet been approved. His application is patent application #US 2013/0344558.

There are millions of people around the world using the process. It is not rocket science. Basically we are pickling garbage in a closed barrel and then using the fermented garbage to make soil for farms, gardens, etc. The process uses Effective Microorganisms (EM1) to activate the fermentation. The patent application (#US 2013/0344558) claims that he "invented" the process, which is a load of B.S. A simple Google search will prove otherwise. There are entire farming schools in Korea that teach and use the practice as the basis for their farming methods. It is widely practiced in Japan, Korea, Germany, New Zealand, and Hawaii! I could go on and on.

I have two questions:

  1. Is it too late to submit prior art in case the USPTO doesn't look for it themselves?

  2. Our process is different in a few significant ways from the process he lays out in his patent application. How different does a process need to be in order to not have to worry about it even if his application does get approved?

Please help. We are diverting tons of food waste from landfills and making it into healthy soil for farmers, using an ancient technique that is not a secret. Please help us defeat this dangerous patent application.

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According to Public Pair, the application has been through a rejection or two. The applicant appears to be amending the application again (March 2015). All the details are viewable. Go to the USPTO website and examine the details... there is lots to read and may alleviate some of your concerns.

I have published references and links to prior-art right here on stackexachange for other patents since Google links their patent database straight here. Later rejections have included the references in the conclusions written by the patent examiner. Did they read it here? I will never know for sure, but it can't hurt. I suggest you include references to both previous patents and non-patent "published" documents from anywhere in the world. From what I saw on Public Pair, the examiner seems to have found quite a bit of prior-art in the USPTO. They seem to do this well. I'm not yet convinced they aggressively search outside the patent database for much. I hope I'm wrong. In the meantime, go ahead and put your prior-art references here right away... literally right now as this patent's application process is winding down now.

There is a process to submit prior-art to the USPTO. I think it changed a bit after after the 2013 changes. Perhaps someone else (George?) can shed some light on this.

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  • uspto.gov/patent/initiatives/… But for this application, it looks like it's too late to submit prior art. I've always wondered, though, if you just send a copy of some prior art to the applicant, then his hand would be forced in including that art in an IDS, no? Jun 25 '15 at 10:12
  • As soon as he is aware, and the patent is not issued, then he should be. Otherwise, he could be charged with committing fraud on the patent office ... which in a lawsuit could invalidate an otherwise valid patent. It would, of course, depend on how relevant the prior art is.
    – SRDC
    Jul 19 '15 at 3:04
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A few things you should know and research-

I've just looked at the current claims, which are what is relevant. Generally, when the examiner rejects the application, they will narrow the scope of the claims to overcome the rejection. The scope is what matters. If they are limited to a point which no longer describes what everyone else is doing, then they would not have a case against those others.

Should the case be allowed, and you feel it is improper, I believe you can also petition for a post-grant review within 9 months:

"Post grant review is a trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition. A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting post grant review took effect on September 16, 2012, and generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA."

http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/post-grant-review

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Here is a cyclical method of performing (what I think is) the method from 1985:

https://www.google.com/patents/US4491522

He himself cites several patents that appear to be the method, he is attempting to make an improvement on the method (by shredding the bio material?):

http://www.google.com/patents/US20040000179 (in particular) http://www.bokashicycle.com/FAQ.html

Additionally, the way that claims work, you have to be performing the entirety of the declared claim in order to claim infringement. If you are not performing the claim, or the claim represents an existing method, it will be tossed.

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