Patenting Chemical Inventions
Most Inventions are Chemical Inventions
With the exception of software, most inventions have a chemical component. This is true because most inventions are made of some material, or they manipulate some material, change it, or prevent it from changing. Any time an invention has to do with “stuff,” it probably has a chemical component. For example, for any new thing, ask what is it made of?
Types of Chemical Patent Claims
Our patent laws lists four categories of patentable inventions: “whoever invents or
discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of [title 35 of the United States Code]” See 35 U.S.C. 101.
The term “composition of matter” provides for chemical inventions. The inventor of a new chemical or material may claim it as a “composition of matter.” Any new recipe, including new combinations of known ingredients, could be defined as a new composition of matter.
In a patent application, the word “compound” describes a special class of “composition of matter.” A compound is a single chemical, defined by structural formula. An inventor of new atoms or molecules may claim the new chemical entity as a compound.
In addition to claiming compounds and compositions of matter, the inventor of a chemical invention could pursue process claims, defining the methods of making and using the new composition.
New compositions of matter can also be defined as a “product by process.” In a product by process claim, the invention is defined by how it is made. The claim covers the resulting composition, no matter how it is made.
Drafting Chemical Patent Claims
Cheif Judge Rader of the Federal Circuit is the highest patent judge in the most influential patent court in the world—the Court of Appeals for the Federal Circuit. In his book, Cases and Materials on Patent Law, Judge Rader writes this about the claims:
The essence of the patent right is the right to exclude others from making, using, selling, or offering to sell the claimed invention. The claims define the bounds of that right to exclude. Accordingly, the claims are the most significant part of the entire patent application.
Focussing on the claims is particularly important with chemical inventions. Chemical patent claims are difficult to draft because they require a comprehensive understanding of both chemistry and patent law. However, when drafted correctly, chemical patent claims offer a variety of opportunities describing the invention broadly.
One common pitfall would be failing to generalize the chemical component of the invention. For example, limiting the definition to only the specific composition used in one embodiment of the invention. To avoid this pitfall, chemical inventors should carefully consider the broader reach of their specific experimental results. What other molecules (or groups of molecules) would work similarly?
When drafting patent claims, the draftsperson should include dependent claims, defining the chemical components at various levels of generality. This can be easily accomplished by using several chemical formulas, having variable groups. See Compounds
Defining the chemical component of the invention broadly, increases the reach of the claims. The claims literally define 1,000,000,000,000,000 times more property. Practically this coverage protects against design-around products—inventions differing only in subtle chemical differences.