CHEME 7920: Principles and Practices of Graduate Education (Fall 2022): Patents

Patent terms

• Scope: new product or process (novel and non-obvious), reducible to practice (useful)  
• Protection:  exclusive property granted by a patent authority to an inventor "to exclude others from making, using, offering for sale, or selling the invention" in a legal territory for a limited time in exchange for public disclosure of the invention when the patent is granted. (USPTO)
• Jurisdiction (territory): patent regulation varies internationally, and many patents are filed in multiple authorities. Information on multiple filings (patent families) can be found in most patent databases. 
• Duration: 20 years from date of filing (in US and most authorities) 

Patent types (USPTO): 

• Utility patents: process, machine, article of manufacture, or composition of matter, or improvement thereof. (Note, chemistry related patents are generally of this type.)
• Design patents: new, original, and ornamental design for an article of manufacture.
• Plant patents: distinct and new variety of plant (through asexual reproduction).
• Provisional patents: early “claims” (e.g., “patent pending”), must file non-provisional patent within 12 months 

Key concepts

• Prior art: previously described technology (a patent claim lacks novelty and non-obviousness if it is anticipated by a reference) 
• Disclosure: public disclosure prior to filing a patent application can potentially limit the patentability of an invention
• Freedom-to-operate: determination if an existing patent overlaps with plans for technology development and/or commercialization  

Freedom-to-Operate (FTO) analysis: when developing new technologies or products, it is important to search existing patent coverage and prior art to determine freedom-to-operate:  

• Do product designs involve protected technologies? 
• Would production, marketing and use infringe on other patent holders' rights?
• Is there an opportunity to license specific technologies in commercializing a product? 
• Are there technologies that have passed into the public domain that can be leveraged? 

Options when existing patents limit FTO: 

• Purchasing the patent or licensing the option to commercialize.
• Cross-licensing to use patents owned by other parties. 
• Inventing around the patented invention (e.g., develop an alternate process). 
• Patent pools among companies practicing related technologies. 

Limitations on patents balance opportunities for innovation:

• Patent protection is territorial and may be in the public domain outside the main market area. 
• Patents have a limited duration and after 20 years become part the public domain and may be freely used by anyone.
• Patents have limits of scope and any aspect of an invention not covered by the claims is not considered to be protected.

(Note, considerable experience is involved in interpreting patents and ultimately these determinations involve legal opinion.)  
(WIPO article on FTO analysis)

Chemistry related patents in general are granted in the following areas:

• pure chemistry, inorganic compounds, organic compounds, macromolecular compounds, methods of preparation;
• applied chemistry, compositions of these compounds, such as: glass, ceramics, fertilizers, plastics compositions, paints, products of the petroleum industry, explosives, dyestuffs, adhesives, lubricants, and detergents;
• certain marginal industries, such as the manufacture of coke and of solid or gaseous fuels; production and refining of oils, fats and waxes; fermentation industry; sugar industry;
• certain operations or treatments, purely mechanical (e.g., mechanical treatment of leather and skins), or partly mechanical (e.g., treatment of water or the prevention of corrosion in general);
• metallurgy, ferrous or non-ferrous alloys.

• World Intellectual Property Organization (WIPO)
  • Patent Topics (Patent FAQs)
  • Vaccines: Accelerating Innovation and Access (2017)
  • Global Innovation Index (United States 2021)
  • WIPO Translate
  • Global Designs Database
  • Global Brands Database
• United States Patent & Trademark Office (USPTO) 
  • Patent FAQs
• American Chemical Society Committee on Patents
  • What Every Chemist Should Know About Patents (4th edition, 2019)
• Cornell Center for Technology Licensing (CTL)
  • Tech Transfer Process
  • Startup Guide 

The International Patent Classification (IPC) defines codes for filtered searching and analysis. 

Key classes of interest