Advanced materials patents

What can be protected

• CompositionsNew materials, polymers, blends and formulations.
• Methods of makingSynthesis routes and manufacturing processes.
• DevicesBatteries, fuel cells, OLEDs, sensors and other devices that use the material.
• New usesNew applications of known materials, which can be patented even when the material itself cannot.
• Modeling-driven discoveryMaterials identified through computation and molecular modeling.

Where patents in this field go wrong

1. Claiming more than the data supports

   Broad ranges and families of compounds need enough examples to show the full scope works. Thin data invites rejection or a weak patent.

2. Overlapping with known ranges

   Earlier publications often disclose broad ranges that include yours. Applications should explain what is different and why it matters.

3. Process claims that are hard to enforce

   It can be difficult to prove how a competitor made a material. Claims to the material or the device are often easier to enforce.

4. Publishing before filing

   Papers and conference talks can bar patents outside the United States if they come first.

Building a materials portfolio

1. Composition first

   A claim to the material itself covers every use and every way of making it, so it is usually the most valuable claim.

2. Then the process

   Method-of-making claims protect a manufacturing advantage. Under U.S. law, importing a product made abroad by a patented process can also infringe.

3. Then the device and the use

   Claims to batteries, fuel cells, displays or coatings that contain the material reach the companies selling finished products.

4. Keep testing in step with the claims

   Plan experiments so that data across the claimed ranges exists when you file, or soon after through a follow-on application.

How I work

I read the chemistry and the characterization data, then help decide whether to claim the material, the process, the device or the use, and in what order. See how I work.

Representative experience

Matters are described in general terms to protect client confidentiality.

• Patent prosecution counsel for a company developing fuel cell membranes
• Patent prosecution counsel for a company developing clean hydrogen production technology
• Patent prosecution counsel for a company developing novel fusion technology

Questions

Can we patent a new use of a known material?

In the United States, yes: a new method of using a known material can be patented, even though the material itself cannot.

How much data do we need before filing?

Enough to describe and support what you claim. A provisional application can secure an early date, and you can add data in the full application within 12 months, but newly added material gets the later filing date.

Should we patent the material or the process?

Often both, but material and device claims are usually easier to enforce, because it can be hard to prove how a competitor made something.

What is a product-by-process claim?

A claim to a material defined by how it is made, used when the material is hard to describe by structure alone. In the United States such a claim is generally infringed only by a product made by the same process, so it is usually paired with composition claims.

Can we patent a material discovered through computer modeling?

Yes, if the application shows how to make it and supports its predicted properties well enough for a skilled person to make and use it. See computational chemistry and AI drug discovery.

Can we keep improving the material after we file?

Yes. Improvements can be covered in new applications. If they are made within 12 months of a provisional application, they can often be added to the nonprovisional application, although the new matter only gets the later filing date.