How to Patent Scientific Laws
According to the United States Patent and Trademark Office (PTO), scientific laws cannot be patented. As a matter of policy, these laws belong to everyone. 35 U.S.C. 101 states that "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." This rule intentionally excludes scientific laws. If this law were applied to Newton's discovery of the laws of gravity, a court would probably conclude that the laws of gravity did not represent a not a new process, but merely a new understanding of a very old process. This subtle difference lies at the root of what is patentable and what is not.
This distinction aside, it is possible to leverage your knowledge of a particular scientific law by inventing and patenting a methodology that exploits a particular scientific principle. If a scientific law cannot be explored without the use of a particular methodology or apparatus, an influential 2005 article in the Harvard Journal of Law and Technology by Peter Yun-hyoung Lee, asserts that patenting the methodology is almost the same as patenting the law itself.
Other People Are Reading
Instructions
-
Strategic Considerations
-
1
Make a scientific discovery in a cutting edge field of research. Recent discoveries that were leveraged into patents include ways of reproducing human embryonic stem cells, and particular genes. As of 2010, all the inventions that arguably include scientific laws are all in the biological sciences.
-
2
Prepare a patent application for a device that is critical for exploring that field and for which there are no reasonable substitutes. If the field cannot be explored without this particular invention, the inventor will have the exclusive authority over that field, even if the discovery itself cannot be patented. Peter Yun-hyoung Lee suggests that if Newton had patented the prism, he would have occupied the entire field of optical research for generations.
A patent application contains a specification which must completely disclose how to make and use the invention. Almost all patent applications have drawings or flow charts explaining how a particular method works. Consider consulting with an attorney or a graphic artist that specializes in making patent drawings because the rules that govern them are very complex.
-
-
3
Draft the patent claims broadly. While the preamble of a patent claim always refers to "an apparatus" or "a method," the more the claim speaks to a general principal, the broader the claim will be. Peter Yun-hyoung Lee noted that this practice "creates a greater potential for establishing exclusive rights to the exploration of a particular natural law, natural phenomenon or abstract principal."
-
4
File the patent application and prosecute it until the patent issues. Patents can be filed using the electronic filing system (EFS) at the United States Patent and Trademark Office. This involves becoming an authorized user, downloading your patent application and paying a fee. The PTO will contact you periodically about the status of your patent by sending you a document called an Office Action. The process of responding to the PTO is called patent prosecution. Responding to the Office Action promptly can expedite matters greatly.
-
5
Enforce the issued patent aggressively. By doing this, you can stop scientific advancement in a a particular area until new tools are invented to explore the particular scientific principle in question. Patents are enforced by being vigilant that others are not using your device without your authorization. Some inventors hire firms to conduct regular research as to whether the invention is being used by others without a license. These firms send "cease and desist" letters if wrongful activity is discovered. At the very least, you need to pay attention to what others in the field are doing so you can quickly become aware if anyone is violating your intellectual property.
-
1
Tips & Warnings
Some companies resolve the ethical problems associated with this practice by granting a broad exception for academic researchers while at the same time aggressively enforcing the patent commercially. This the approach that Cetus Corporation claimed it would take with polymerase chain reaction technology.
There is a very real possibility that courts will return to enforcing common law standards for patentability. This would have the effect of giving researchers the unfettered ability to research scientific principals without fear of violating another's intellectual property.
It is highly advised that you consult an attorney who can advise you in this rapidly evolving area.
References
- Photo Credit Legal Law Justice image by Stacey Alexander from Fotolia.com
