Imagine That IP Law Blog

Kaiser, K. et al. recently reported their synthesis of a brand new carbon molecule, cyclo[18]carbon. The structure and synthesis of cyclo[18]carbon, an 18 ring carbon chain with no substituents, is detailed in Kaiser et al. “An sp-hybridized molecular carbon allotrope, cyclo[18]carbon” (2019) Science Online.

Cyclo[18]carbon is an exciting development, as this molecule has never existed before now and some researches doubted that the molecule could be stably made in the lab. It provides important insights into the organic synthesis of complex carbon-based molecules. Further, if the molecule is similar to graphene, another molecule of carbon that is extremely good at conducting electricity, cyclo[18]carbon could potentially play a role in efficiently powering devices that require significant processing power; e.g., artificial intelligence machines. For at least these reasons, patent rights to the compound, its methods of synthesis, and methods of using it could be pursued. And a driving force in commercialization and distribution of technology like this is often strong patent rights.

Whether the inventors of cyclo[18]carbon decided to pursue patent protection over the compound, the method of its synthesis, or methods of using it is unknown. It serves, however, as a focal point for considering patent protection of inventions in organic chemistry, biochemistry, pharmaceuticals, and life sciences. Three specific points to consider are (1) is the invention patentable subjection matter, (2) when should a patent application be filed, and (3) is the invention ‘ready to file’?

(1) Is the Inventions Patentable Subject Matter?

Cyclo[18]carbon was synthesized in the lab and is not found in nature; it is patentable subject matter in the U.S. under 35 U.S.C. 101. In contrast, if a molecule is found in nature, it is not patentable subject matter unless it is modified such that it has markedly different properties in comparison to the molecule as it is found in nature.

In the US, the law of patentable subject matter has changed significantly in recent years. Further, Congress is considering further changes. If in doubt, consult a patent professional.

(2) When Should a Patent Application Be Filed?

The U.S. is a first inventor to file country, which means that the right to the grant of a patent for a given invention lies with the first inventor to file a patent application for that invention. It is generally recommended that one file a patent application as soon as possible.

In addition, one must file a patent application within one year of the inventor’s first public disclosure of the invention. For example, the authors for the cyclo[18]carbon technology, if they are the inventors, have one year from the date of publication of the article to file a patent application in order to pursue U.S. patent rights. If a patent application is not filed within one year, they will forfeit their rights to a patent on the molecule and technologies disclosed in the article. Beware, however, that disclosure by non-inventors in the U.S. may bar pursuit of patent rights on the day of disclosure. Likewise, many non-U.S. jurisdictions follow strict “absolute novelty” rules that preclude or limit protection immediately after an invention is publicly disclosed. Consider when and where you will file a patent application before publicly disclosing the invention.

(3) Is the Invention ‘Ready to File’?

U.S. Patent Law requires that a patent application enable the invention. This means that a patent application must teach the skilled artisan how to make and use the claimed invention without undue experimentation. Simple inventions may be enabled by a direct explanation of “off the shelf” technology. For cyclo[18]carbon, and other cutting edge technologies, however, the skilled artisan may require additional detail – new technology requires more teaching for the skilled artisan to understand how to make and use the invention.  If you cannot explain how to make and use the invention, it is too early to file.

Technologies in organic chemistry, biochemistry, pharmaceuticals, and life sciences are often patentable subject matter. But these technologies are often driven by academic research, and academics flourish or fail depending on how frequently they publish their results. Publication should be coordinated with patent application filing to ensure that the potential to harvest the good of technology is not lost.