TONY O’LENICK

SurfaTech Corporation, Lawrenceville, USA

1. Provide chemists with a knowledge of the patent system and its processes.
2. Introduce the basic “language” and structure of patent law.
3. Encourage chemists to actively partner with patent attorneys.
4. Motivate chemists to advocate for their inventions.
5. Clarify that legal determinations require lawyers, but technical understanding resides with chemists.
6. Emphasize the importance of inventor advocacy in successful patent filings.
7. Highlight that more good inventions are lost due to lack of advocacy than to patent office rejections.

A patent is a legal right granted by a government to exclude others from making, using, selling, or importing an invention for a limited period—typically 20 years from the filing date. However, it is important to note that a patent does not grant the right to use or sell an invention; rather, it provides the right to exclude others from doing so.

A patent serves both offensive and defensive purposes. As a sword, it allows an inventor or company to challenge infringers. As a shield, it protects against competitors attempting to enter the same technological space. This dual utility makes patents an essential business strategy tool in chemical research and development.

Figure 1. Patents as Swords and Shields.

Figure 2. United States Patent.

The Legal Basis of Patents

​​​​​​​Constitutional and Statutory Foundations

The U.S. Constitution (Article I, Section 8) empowers Congress to grant exclusive rights to inventors to promote the progress of science and useful arts. This authority is implemented through statutes such as Title 35 of the United States Code (U.S.C.), regulations under 37 CFR, and procedural guidelines in the Manual of Patent Examining Procedure (MPEP).

Eligibility

Under 35 U.S.C. §101, a patent may be granted for:

• A process
• A machine
• A manufacture
• A composition of matter
• An improvement of any of the above

This means chemists can potentially patent new compounds, synthetic methods, formulations, or even new uses for known substances.

Standards of Patentability

To be patentable, an invention must meet three primary criteria:

1. Utility (35 U.S.C. §101) – The invention must be useful.
2. Novelty (35 U.S.C. §102) – The invention must be new and not publicly disclosed before the filing date.
3. Non-Obviousness (35 U.S.C. §103) – The invention must not be an obvious improvement to someone skilled in the relevant field.

Chemists often underestimate the patentability of small but significant improvements. These “incremental inventions” are frequently patentable and commercially valuable.

First to File: A Critical Shift

With the implementation of the America Invents Act (AIA), the U.S. transitioned from a first-to-invent to a first-to-filesystem. This makes timely documentation and filing of inventions critical. Chemists should maintain accurate laboratory notebooks and report potential inventions promptly to ensure they’re evaluated for patentability.

The Role of the Chemist in Patent Preparation

Patentability is a legal question, but chemists play a vital role in identifying and describing technical novelty. Lawyers rely on inventors to articulate:

• What was done
• How it differs from prior work
• Why it is unexpected or advantageous

Chemists must provide the technical narrative, while attorneys frame it in the legal context of claims and statutes.

Inventorship and Legal Implications

Determining the proper inventors on a patent is legally important. Only individuals who made an inventive contribution should be named. Those who simply carried out instructions or performed routine experiments should not be listed.

Common Issues:

• Misjoinder: Listing someone who didn’t contribute can jeopardize the patent’s validity.
• Nonjoinder: Leaving out a legitimate inventor can also invalidate the patent.
• Fraudulent Claims: Listing executives or supervisors with no technical input is unethical and risky.

Anatomy of a Patent

​​​​​​​Types of Patents:

• Utility Patents: Cover inventions with practical utility (e.g., compounds, processes, devices).
• Design Patents: Protect the ornamental design of functional items.
• Plant Patents: Cover new plant varieties reproduced asexually.

Sections of a Patent:

1. Title
2. Abstract
3. Background of the Invention
4. Summary
5. Drawings and Descriptions
6. Detailed Description
7. Claims

The claims define the legal boundaries of the patent. They must be drafted carefully to balance breadth (to cover potential variations) and specificity (to ensure enforceability).

Types of Patent Applications

Provisional Patent Applications

A provisional application is a low-cost way to establish an early filing date. It does not require claims and is not examined. However, it provides a 12-month window to file a formal non-provisional application.

Key Benefits:

• Immediate “Patent Pending” status
• Lower initial filing cost
• Time to assess commercial potential

Limitations:

• Must be followed by a non-provisional application within 12 months
• Must fully describe the invention to support future claims

Non-Provisional Applications

This is the full patent application that includes claims and undergoes formal examination. It must provide a clear, detailed, and enabling disclosure of the invention as required by 35 U.S.C. §112.

Writing the Patent: Key Questions for Chemists

Before beginning the patent process, chemists should ask:

1. What is the invention?
2. What are the critical elements?
3. How do these elements interact?
4. Are there multiple inventions or embodiments?
5. What are the unexpected results or advantages?

These insights help patent attorneys draft stronger, more defensible claims.

Chemists must be active participants, not passive observers, in the patenting process. Being an effective advocate involves:

• Documenting the development process
• Explaining the novelty and utility to attorneys
• Engaging during claim drafting and review
• Helping anticipate design-arounds or competitive workarounds

Many potential patents are never filed simply because inventors fail to recognize their invention’s value or believe it’s too minor. As a result, more inventions are lost due to lack of advocacy than to USPTO rejections.

Design-Around Strategies and Competitive Intelligence

Companies frequently develop design-around inventions—variants that avoid infringing existing patents while retaining functionality. Chemists should anticipate how competitors might circumvent their claims and, where possible, broaden their own claims to capture such variations.

Patents are powerful tools in the chemist’s arsenal—not only to protect innovations but to drive business strategy. Chemists who understand the patent system, work closely with attorneys, and advocate for their discoveries can ensure their work receives the protection and recognition it deserves.

Far from being the domain of legal professionals alone, the patent process thrives on a collaborative relationship between chemist and attorney. Chemists hold the technical key to invention; attorneys provide the legal framework. Together, they unlock the full potential of innovation.