27/06/2019
To mark the International Year of the Periodic Table, Zack Mummery takes a look at the unusual question of whether individual chemical elements could be patented.
2019 has been designated by UNESCO as the International Year of the Periodic Table. To mark this occasion events are being held across the world throughout 2019.
The periodic table is an iconic display of key information relating to the chemical elements. As well as being an excellent reference tool for the properties of individual elements, it provides a very useful indication of trends and relationships between the elements. The UNESCO designation is a fitting tribute to the world famous table.
Turning now to patent law, I was curious as to whether a chemical element has ever been patented and indeed whether it would be possible to patent any newly synthesised element today.
Elements 95 and 96 (Americium and Curium)
In 1964, the USPTO granted a patent for element 95 (Americium) and element 96 (Curium). The patent specifications can be found here and here. For the dedicated patent scholars out there, it is worth taking a look at claim 1 in each of these patents. These must be some of the shortest patent claims ever drafted!
Americium is widely used in smoke detectors, so patent protection for this element could have been very useful. I do not know whether this US patent was ever enforced or licensed, but one can imagine it being commercially useful in today’s world.
Patent law in many jurisdictions has evolved significantly since the 1960s. In Europe, the European Patent Convention became effective in 1977 and many European jurisdictions heavily modified their patent law as a consequence. Since 1977 various international treaties have also made subtle changes to patent laws around the world.
With this in mind, would it be possible to obtain patent protection for a new chemical element today?
Patenting chemical elements today
To obtain a UK or European patent for an invention, the invention must not be excluded from patentability under certain statutory exclusions. The invention must be capable of industrial application and it must be possible to describe the invention in enough detail to enable it to be worked by a skilled person in the field. Finally, the invention must be novel and inventive over prior public disclosures.
There is a statutory exclusion in many jurisdictions which prevents a patent being awarded for a discovery. For example, the mere discovery that a known material can withstand mechanical shock would not be patentable, but a railway sleeper comprising that material could potentially be patentable.
A newly synthesised chemical element would not be excluded from patentability for being a discovery, at least in the UK and before the European Patent Office (EPO), because the new element would have been synthesised. The practice of allowing patents for new products per se has been recognised in UK law since 1949, so a new chemical element should not be excluded from patentability per se.
The requirement of industrial application could potentially be a problem if there was no plausible use for the new element. If there could be a plausible use, for example, in power generation or as an intermediate in the further synthesis of a useful isotope, then it seems likely that industrial application would be recognised.
As long as it is possible to adequately describe how the new element is made, then the requirement of sufficiency should be met. This means that merely predicting or speculating on the existence of a new chemical element is not enough. The skilled person needs to be able to synthesise the element to put the invention into effect.
Provided the element had not been disclosed publically anywhere in the world, the element would be novel. Of course, the existence of a new element could have been predicted in advance of its discovery, and this prediction could have been published. Perhaps the publication included the atomic number, atomic weight and some predicted properties. Would this count as a disclosure that would destroy the novelty of the new element?
In the UK and before the EPO, a disclosure must be enabled to destroy novelty. This means that the skilled person must be able to reproduce the subject matter of the disclosure using common general knowledge. In this case, a mere prediction would not be an enabling disclosure of the new element if it did not provide enough information for the skilled person to actually synthesise the new element.
As an aside, it is worth noting that in the UK and before the EPO, it may be possible to patent something that already occurred in nature. For example, a natural substance which has been isolated for the first time and which had no previously recognised existence would not lack novelty because it has always been present in the natural world.
Finally, the new element would need to be inventive. If the existence of the new element was not previously predicted, then perhaps the provision of a completely new chemical element that had a useful purpose could be enough to confer an inventive step. However, it is possible that some unexpected effect or advantage would need to be demonstrated.
Thus, as strange as it may seem, something as fundamental as a chemical element could in my view be patented. While I admit that this is all a bit academic, the same principles of patent law apply to new chemical compounds and compositions.
If you need assistance in protecting new technology or advice on third party rights in the chemistry and materials science sectors, then the chemistry and materials team at Reddie & Grose will be pleased to help.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
