A Medical Invention Turns Into Popular Alternative to Kick the Butt

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It all started with a medical intention, but grew into a popular device for those treading the path of quitting smoking. Yes, I am pointing to the ecigarette. With smokers increasingly looking towards the popular nicotine-free and environmentally friendlier ecigars, it is interesting to note that the first patent for this device was filed with a medical intention to help patients inhale vaporized medicine. However, today ecigarettes have become a preferred first step for those who wish to kick the butt.

How do ecigarettes work?

Electronic cigarettes, or ecigarettes, are a class of products which are intended towards simulating smoking using a battery powered vaporizer which vaporizes a liquid and produces aerosol (haze). The liquid includes glycerol, propylene glycol and may contain nicotine. However, it’s a more popular smoking device among those wanting a nicotine-free experience.

While Smokeless Cigarettes were conceptualized decades back, their commercial success is a relatively recent phenomena. Ecigarettes entered the marketplace in 2003-04 and have exhibited rapid growth since then, primarily in US, China and Europe. The US market already surpassed a billion dollar mark last year. The NJOY brand of e-cigars controls 40% of the US market, while other prominent players include V2 Cigs, Reynolds American and Lorillard.

Early Patents

While ecigarettes didn’t enjoy a mass market until recently, it has been 87 years since the first patent application around the concept was filed. Joseph Robinson first patented “Electric Vaporizer” in the year 1927 (US1775947). Interestingly, the patent specification doesn’t discuss tobacco or cigarettes at all; rather it discusses administering medication. However, several modern ecigarette patents (primarily those registered starting circa 2010 and later) cite this early Robinson patent. Robinson’s Vaporizer comprised a container for holding a medicinal compound, which is electrically or otherwise heated to produce vapors for inhalation.

Over 25 years later, in 1955, Otto Lobl was granted a patent (US2721551) titled Tubular mouth inhaler simulating a smoking device. Lobl’s invention was primarily a cigarette simulator with various inhalent or aromatic substances such as Camphor or Menthol, and Lobl wished it could be used for overcoming the habit of cigarette smoking. The inhalant is kept in a glass tube with a tapering structure mounted on a mouthpiece which is closed at the end, with a small hole.

Almost a decade after the Lobl’s patent, in 1965, Herbert Gilbert was granted a patent on Smokeless non-tobacco Cigarette (US3200819).

This is a widely cited patent in the domain (with 92 forward references) and Herbert Gilbert is considered by many to be the inventor of the modern ecigarette. In his invention, burning tobacco and paper was replaced with heated and moist air; thus replacing tobacco smoking with inhaling warm vapor via an object that resembles a cigarette. The patent describes a detachable flavor cartridge fitted in a tubular structure to which a mouthpiece is attached. There is a battery cavity and electric socket in an inner ring of the structure which powers the heating element in an elongated bulb. The patent also accepts the possibility of a rechargeable and detachable battery.

The story from the 1970s-90s

In the ensuing years, several other patents were granted on therapeutic cigarettes (US4149548), device for air purification surrounding a smoker’s nose and mouth (US4184496), cigarette substitute (US4429703), smokeless cigarette (US4911181) and other related inventions. The following table enunciates this:

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Two prolific inventors of the new era

It wasn’t until the 2000s that the modern version of ecigarettes started to be commercially manufactured. An American student, Stephane Vlachos, is credited by some to have invented the functional prototype of the ecigarette in 2001. However, it was a Hon Lik, a Chinese inventor of another version of the ecigarette, who enjoyed the first commercial success. He went on to file several patents in China, Europe and US since 2003 and to this date is the most successful inventor in the domain.

Early Hon Lik patents were assigned to Best Partner Worldwide Entities, which was acquired by Ruyan Group. Ruyan later changed its name to Dragonite International Limited and sold its global ecigarette patent portfolio to Fontem Ventures in Nov 2013 in a $75 million deal.

Another inventor, Qiuming Liu, is even more prolific than Hon Lik, but his patent applications are fairly recent (in the last three odd years) and it remains to be seen how many of those get granted. Liu received several design patents around charging case, charger and mouthpiece, and has filed utility patents for all aspects of the ecigarette. Patent publication searches indicate that US and China dominate the patenting activity in ecigarettes worldwide (with a two-third share between them in 2013), and filings have trebled between 2011 and 2013, with Qiuming Liu as by far the most dominant inventor and assignee.

Smoking off with patent litigations

The industry, though in its early stages of growth, is not without its share of patent disputes though. The earliest US patent lawsuit seems to have been filed by Ruyan Group (Holdings) Limited in Jun 2012 asserting its patents against a host of US companies, including Barjan, Finiti Branding Group, Logic Technology Development, Spark Industries and others.

In Nov 2013, Imperial Tobacco acquired Dragonite’s ecigarette unit, including its patents, in a $75 million deal. Later in March 2014, Fontem Ventures sued eleven US companies on charges of infringement. Fontem Ventures is a subsidiary of Imperial Tobacco and is the assignee for the patents that Imperial Tobacco acquired from Dragonite. The 2014 patent lawsuits allege that several products of the defendants infringe on the five patents namely 8365742, 8375957, 8393331, 8490628 and 8689805.

The products in question are ecigarettes and its accessories such as rechargeable kits, starter kits, cartridge refills, batteries from the big names in the ecigarette industry NJOY, Logic Technology Development and CIG2O brand from Spark Industries among others. While it is too early to tell whether these lawsuits will result in windfall licensing deals for Fontem, or these patents risk getting invalidated by prior art, more patent disputes and counter suits are likely on the way. Several of the defendants in the 2014 litigations have their own ecigarette patents. Similarly, if Qiuming Liu’s utility patent applications are granted, it will be a very lucrative portfolio for the current ecigarette makers given its coverage of ecigarette the accessories.

For now, it’s a wait and watch game in this space.

Disclaimer: This article in no way tries to promote ecigarettes. It accepts that the rapid rise of ecigarettes cannot be wished away and tries to look at several aspects related to the technology behind it, both from an evolutionary and an enforcement standpoint.  

(Featured image source: http://www.google.co.in/patents/US1775947)

Kalyan Banerjee
Kalyan Banerjee

With a quirky twist to a serious topic of discussion, Kalyan has a witty way with words that make his blogs interesting reads.


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