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Defensive Invention

Fortnightly Magazine - October 2008

). We’ve spoken at EPRI about it, and we hosted a web conference to share the license agreement.

It’s important to realize this is a business method patent, which covers the uses of an AMI system and not the technology a vendor might develop. That’s the difference between a business method patent and a technology patent.

 

Fortnightly: The patent application claims some fundamental smart-metering ideas. We’ve published many articles in Fortnightly about those ideas.1 I’ve attended numerous conferences about them. And some of the ideas are discussed in the Energy Policy Act of 2005. How can you claim them as your invention?

DiMartini: The patent process is a long process. We’re at the point now where the patent application was just recently published, and that happens 18 months after a patent is filed. Before that, we had a provisional patent for a year.

I do appreciate that there’s been much said about smart metering in the years since 2004 and 2005, when we first came up with the original ideas. They’re showing up now as a published patent application, but we were talking about them three and a half years before we filed the patent in January 2007.

For example, the idea of using a home-area network (HAN) interface with the meter is something that was there three and a half years ago. But using a chip to bridge into the home, to communicate with an in-home display or thermostat, was a new concept.

We’re strong believers in innovation, and in the industry’s ability to advance both smart metering and the smart grid. In an emerging market, these issues are going to come up. We’ve been talking to the industry about this for a couple of years, starting when we helped form the Utility AMI Working Group. There’s a need for a more structured approach to the contribution of open-source mater-ial, to ensure it stays open.

 

Fortnightly: A principle of the U.S. patent system is that the first person to invent something gets ownership of it, rather than the first person to file a patent application. Under that principle, a patent claim is negated by prior art— i.e., earlier published works describing the invention. So instead of filing a patent, why didn’t you publish an article or make a presentation about these ideas?

DiMartini: Our IP counsel didn’t believe that would be strong enough to establish prior art, or a clear enough articulation [of the methods invented]. We’re developing more than 100 use cases related to the development of AMI and the smart grid.

One reason we filed a patent at the outset was there was no open-source repository at the time. We’re working with EPRI, UtilityAMI, IEEE and others to establish an open-source repository, where we can publish materials so they will be clearly in the public domain, with a date stamp that will establish the prior art. Had that been available at the time, we wouldn’t have pursued the patent.

EPRI and others are looking to complete an open-source repository by the fourth quarter of this year.