How to File Patents for Discoveries of Natural Substances
Generally speaking, the law does not provide patents for discoveries of natural substances. The U.S. Patent and Trademark Office (USPTO) simply won't grant a patent on something that occurs with or without the effort of an inventor, nor will courts enforce a patent against someone who violates a patent through no fault of their own. Nevertheless, in a minority of cases, enforceable patents have been granted for laboratory-synthesized microbes, nanoparticles and gene sequences. The patent application process for these "discoveries" is the same as any patent with the additional burden of proving a legitimate invention.
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Instructions
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Check for existing patents. Checking for existing patents is a mandatory part of the patent application process. If a discovery is truly new, no new patents will exist. However, since natural discoveries cannot be patented, only inventions based on them, it is important to see what patents have been issued in the same or related fields. This can be done through the USPTO directly or through a specialized law firm.
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File a provisional patent. Before publicly disclosing the nature of the discovery, it is essential to obtain "Patent Pending" protection by filing a provisional patent. This is a stripped-down version of the application process and usually provides 12 months of patent protection during which the inventor can organize his full patent. As with all patent forms, provisional patent applications are available for download through the USPTO website and can also be filed online (see resources below).
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Write the claims. A full patent application includes a written description of an invention, its structure and uses, called the claims. It is the claims portion of a patent that usually makes or breaks the application, so consulting a lawyer or legal team is highly recommended. In the case of a natural discovery, the claims must show an invention with a purpose. Thus, oil digesting microbes cannot be patented, but an oil digesting microbe-plastic foam system (US Patent 7354516) can. Similarly, corn itself cannot be patented, but patents have been issued for certain genes and specific genetically modified strains of maize.
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Complete the specification documents. In addition to the claims, the specification document that will become the patent must include adequate description such as to enable replication. Pictures and diagrams often accompany the written description. When the specification is complete, it is submitted to the USPTO's examiners.
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Negotiate. A complex patent is rarely accepted as submitted but usually undergoes modification by the Patent Office examiners to bring it in line with existing patent norms and legal customs. The trend in U.S. patents since the early 1980s has been toward very strong but narrowly tailored patents. Thus, the inventor can be reasonably certain his patent will be enforceable but only according to the specific details listed in the specification documents. Failure to reach a compromise with the examiners, who typically try to narrow the terms of the patent, can cause a patent application to be rejected.
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Apply for international protection. A US patent only protects use in or import to the United States. Filing for patent protection in other countries where competition might arise is highly suggested. Global patent services, such as through the World Intellectual Property Organization are also available, with the process closely resembling the US patent application.
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Tips & Warnings
Natural discoveries, if they are just that, will not be patentable. However, incorporating the discovery into some functioning invention opens the door to legal protection.
Only what is included in the specification becomes part of the patent. Because a lawsuit to enforce a patent will study the specification down to the slightest detail, writing it without a lawyer can seriously jeopardize the enforceability.
Resources
- Photo Credit Damon Lisch (CC-By 2.5)
