Placing Organic Chemical Compounds in the Public Domain

-- By TheodoreSmith - 18 Oct 2008

Table of Contents

Introduction

Chemical compounds are protected under US patent law as "compositions of matter." A successful compound patent will provide the inventor with exclusive rights to all uses of that composition (including research) over the life of the patent. Although an inventor seeking a compound patent must show a use for the claimed composition, the same patent may ordinarily be defeated by prior art showing only the structure of the molecule and "enablement", a means of successfully building or synthesizing the chemical; no showing of usefulness is required. As advances in the material sciences refine techniques for the atomic level manipulation of matter, we are rapidly nearing the point where enablement of a given organic compound becomes trivial; any organic molecule may be constructed from its constituent atoms or pre-synthesized building blocks.

Once this threshold is reached, new organic chemical compounds will become far easier to push into the public domain. Even if such novel compositions are not ruled to be generally unpatentable under the doctrine of obviousness, they will be vulnerable to being placed into the public domain by any individual publishing a sufficiently detailed map of the molecules structure and a simple set of instructions enabling construction of the molecule. The low cost of publishing over the internet paired with the plausibility of algorithmic methods of generating molecular permutations and enablement steps almost guarantee the eventual construction of a database of molecular permutations. This database, showing structure and enablement steps for a wide swath of potential organic compounds, would have the effect of rendering unpatentable every compound appearing within.

Enablement and Scanning Electron Microscopes

Advances in the atomic level manipulation of matter have brought modern science to within striking distance of the ability to manually construct novel molecules from their constituent components. In a 2002 paper, Hla and Reider detail the ways in which technicians may manipulate a scanning tunneling microscope (STM) to sever and reform atomic bonds, reposition atoms, and manipulate molecular structures to form novel molecular structures. Although this technology is still in its infancy, the manual construction of molecular compounds is undeniably possible, and one day may become trivial with further advances in equipment and scientific technique. In the last 19 years, the state of the art in atomic manipulation has moved from the painstaking repositioning of Xenon molecules, to the breaking and reforming of bonds within a molecule itself; it is merely a matter of time before the construction of complex molecular compounds becomes scientific reality.

Losing Enablement

Once the manual construction of any sufficiently described molecule becomes technically feasible, enablement is almost certain to become trivial to a person skilled in the technical art. Computer programs that permute and diagram extant molecular structures are scientific reality; an algorithm capable of generating build routines for known chemical structures would likely be even simpler to develop.

Trivial enablement, by itself, is no block to patentability. Many simple mechanical devices are trivial to enable. Molecular structures, however, have the additional property of having a form consisting of a collection of discrete and finite components. The structure of simple molecule, such as H2O? , can be described in detail simply by extrapolating from the basis of its chemical formula. More complex chemical forms have many more possible structural arrangements, and are more difficult to describe; however, techniques for permuting the possible structures of these complex molecules have been developing in the prior art for some time.

The combination of trivial enablement and a finite structure would place chemical compounds in an unique class of material, respective to patent law. Simply by naming a

Once techniques for systematically fabricating chemical compounds enter the scientific mainstream, the enablement of any sufficiently well described molecule becomes trivial (or at least may be rendered trivial by the development of a computer algorithm capable of generating enablement steps from chemical diagrams). Once this point is reached, any novel compound could be placed in the public domain simply through public online publication of its chemical structure and build routine; an extensive database of permutations of chemical forms would provide a legal basis on which to invalidate new compound patents.

Other forms of Patent Protection

A database of structures and build routines would have the effect of placing many future compound patents into the public domain. Instructions enabling the individual construction of organic molecules could also be argued to invalidate future “purification” patents on molecules within the database; enabling the construction of an individual molecule would have the effect of enabling (very small-scale) production of purified forms of the compound, and would prevent corporations from later claiming that they had newly purified extant substances.

The type of enablement database described in this essay would have no effect on two alternative forms of patent protection: the use patent, and the production patent. The use patent provides exclusive rights over a particular use of a compound, regardless of the legal ownership status of the compound itself. Although use rights are far more limited and difficult to enforce than patents on the compound itself, there is nothing fundamental to the nature of the database itself that would prevent this type of patent.

The enablement database would likewise have no effect on production patents – methods of synthesizing or otherwise producing the molecule. Although the particular production steps in the atomic level build routine would be in the public domain, commercially viable methods of manufacturing the molecule would be available for patent protection.

Neither of these alternate forms of patent protection would be diminished or eliminated by the existence of a public enablement database; however, a public commons could easily be created within a public internet database, simply by adding wiki-like features to the site itself. By providing a place for the posting and discussion of information surrounding

Technical and Legal Issues to be Overcome

Many permutations of chemical compounds – could we have in a database, or would an algorithm suffice – mixed so that requesting a molecule would create a permanent entry in a database. Corporations forming their own databases to gain rights (the one case that does not require uses), BUT look at statutory bars and diligence. Alternately, this may allow purification patenting by corporations, and the fact that the use requirement is set so low may lead to a rush of corporate patents before compounds enter the public domain. They would be potentially be able to patent more stuff, but it would be the final rush – 21 years, and all such compounds would be in the public domain.

Conclusion

An economic or moral analysis of this change is beyond the scope of this paper. Chemical compounds have two important characteristics that make them vulnerable to advances: They have a concrete and definite structure – it is more difficult to write an amorphous business method or algorithm style claim to escape the restrictions of prior art, and they are finite in potential size – NEED DATA.