Report
Chemical Patents Profiting
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btaining patent protection for a chemical invention is central to profiting from its commercial application. A patent is also an essential preliminary step if an inventor hopes to license the invention to a company that will provide the substantial labor and financial support necessary for development and marketing. In any case, chemists will not profit from their work in developing the discovery if a suitable patent is not obtained. Although students are taught chemistry and subsequent professional practice sharpens their skills, they are rarely educated in patent matters. In addition, it has been our experience that scientists who become professors seldom have the opportunity to learn patent law without for0003 - 2700/94/0366 -575A/$04.50/0 © 1994 American Chemical Society
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A chemical patent protects your invention and ensures your stake in its future mal study and assistance. In this Report, we will summarize the most important points in the patent process and assist the novice in plugging this information gap. Before we begin our discussion, we caution readers that patent law is a legal specialty of considerable complexity and,
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to some extent, each patent is a case unto itself. Patent law does not lend itself readily to brief exposition any more than organic chemistry does. As a result, the assistance of a trained and experienced patent lawyer or patent agent is essential if a favorable outcome is to be achieved. Nonetheless, we believe that most chemists can understand the basic principles of patent law and apply them successfully as they participate in the process of securing and defending patent protection.
Lester A. Mitscher University of Kansas
Steven R. C r o w l e y J a c o b J . Plattner Abbott Laboratories
Analytical Chemistry, Vol. 66, No. 10, May 15, 1994 575 A
Report
An understanding of basic patent law reinforces the need to keep proper records that support patent assertions and makes chemists aware of the hazards of premature disclosure, which can limit patent protection. These factors are especially important because, in our experience, most academic researchers openly share their results in a manner that is appropriate for scientific inquiry but that can be incompatible with the statutory requirements for patentability. Furthermore, students' notebooks are rarely kept in the manner necessary to establish priority of scientific discovery, let alone to establish legal priority of invention. It is, however, possible to conduct affairs in a manner that does not jeopardize future patent rights or hinder academic inquiry. Fortunately, the necessary behavior modification is slight compared with what is at stake. Most students opt for commercial employment, and they would profit from learning about patent protection. This knowledge, however, is not instinctive. If chemists make discoveries of significant commercial merit, they can disclose this material to a company under the protection of a secrecy agreement. In such a case, the company will usually agree to undertake the necessary patenting steps provided that a licensing agreement can be reached and that the science and records are suitable to support patenting. The information that follows is based primarily on U.S. patent law. The differences in patent law in other countries are somewhat idiosyncratic, but there are great similarities on which we can build. Today most major chemical firms are international in scope and require patent protection in all economically significant markets. Patent protection in the United States conveys no patent rights in Europe, Asia, South America, or elsewhere. likewise, patent protection in Japan will not provide patent protection in any other country. Choosing the countries in which to seek patent protection is important for economic and strategic considerations. Background The first article of the United States Constitution, dating from 1790, contains "An Act to Promote the Progress of Science and the Useful Arts" that reflects the im576 A
portance of an orderly marketplace in commercial existence. In return for a full enabling disclosure of an invention, an inventor receives a 17-year exclusive monopoly on the material claimed. The monopoly rights begin on the date the patent is issued, which often is two or more years after the date of first application. Interestingly, President George Washington and Secretary of State Thomas Jefferson signed the first U.S. patent which, incidentally, was for a chemical process (the making of potash). Such high government officials are no longer directly involved. The U.S. Patent Office, a division of the Department of Commerce, now examines applications and issues patents.
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